Ex Parte 6210459 et alDownload PDFPatent Trial and Appeal BoardJun 7, 201695002388 (P.T.A.B. Jun. 7, 2016) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 95/002,388 09/15/2012 6210459 19626.0006.RXUS00 2485 7590 06/07/2016 HOVEY WILLIAMS LLP 10801 MASTIN BOULEVARD SUITE 1000 OVERLAND PARK, KS 66210 EXAMINER MCKANE, ELIZABETH L ART UNIT PAPER NUMBER 3991 MAIL DATE DELIVERY MODE 06/07/2016 PAPER Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ SHELL OIL COMPANY Requester and Appellant v. SPECIALTY FERTILIZER PRODUCT, LLC Patent Owner and Respondent ____________ Appeal 2015-001671 Reexamination Control 95/002,388 Patent 6,210,459 C11 Technology Center 3900 ____________ Before ROMULO H. DELMENDO, RICHARD M. LEBOVITZ, and RAE LYNN P. GUEST, Administrative Patent Judges. GUEST, Administrative Patent Judge. DECISION ON REHEARING This decision on rehearing is in response to Third Party Requester’s Request for Rehearing Pursuant to 37 C.F.R. §41.79 for Correction of 1 US Patent 6,210,459 B1, issued April 3, 2001, to John Larry Sanders, was subject to Ex Parte Reexamination 90/011,759, for which an Ex Parte Reexamination Certificate 6,210,459 C1 was issued on October 4, 2012 (hereinafter the “’459 patent”). Claims 2, 4, 6, 8–10, 12, 14–16, and 45–156 of Reexamination Certificate 6,210,459 C1 are subject to Inter Partes Reexamination in this proceeding. Appeal 2015-001671 Reexamination Control 95/002,388 Patent 6,210,459 C1 2 Typographical Errors, filed August 18, 2015, which seeks correction of the claim identified in the new grounds of rejection on page 21 of the original decision, mailed July 28, 2015 (“Decision”). Indeed, the new grounds of rejection of the Decision included a typographical error in that the first rejection inadvertently omitted claims 50-59 and the second rejection inadvertently omitted claim 149. Accordingly, we amend the New Grounds of Rejection I and II from page 21 of the Decision as follows (with brackets showing deletion and underlining showing additions): I. Claims 2, 4, 6, 8, 9, 12, 14–16, 45–[49]59, 72–86, 99–113, 126–131, 137–139, 143,145–148, 150–152, and 154–155 under 35 U.S.C. § 103(a) as obvious over Bexton, in view of one of Norton, Sharples, or Barber (Grounds 1, 2, and 4); II. Claims 10, 132–136, 140–142, 144, 149, 153, and 156 under 35 U.S.C. § 103(a) as obvious over Bexton, in view of Norton, Sharples, or Barber, and Jones (Grounds 5 and 6); This decision on rehearing is also in response to Patent Owner’s Request for Rehearing Pursuant to 37 C.F.R. § 41.79, filed August 27, 2015 (“Request”). In rendering this decision on rehearing, we also considered Requester Comments in Opposition to Patent Owner’s Request, filed September 28, 2015 (“Comments”). Patent Owner contends that the Board misapprehended or overlooked the following: (1) legal precedent regarding consideration of the breadth of prior art disclosures in obviousness analysis (Request 2-3); Appeal 2015-001671 Reexamination Control 95/002,388 Patent 6,210,459 C1 3 (2) the reliability of the Hutter Declaration in light of his being an interested party and the errors identified therein (Request 3-9); (3) the plot relied upon in our Decision was based on back- calculations made using the Sanders claim limitations as starting points, which is improper hindsight analysis (Request 9-10); (4) Patent Owner was denied due process as being unable to directly cross-examine Requester’s declarants in this proceeding (Request 10-13); (5) the Board’s analysis of Patent Owner’s evidence of commercial success ignores an aspect of novelty of the invention recited in the claims, namely that the granules produce “lower pH portions within the soil” (Request 18); and (6) the Board’s commercial success analysis erred by requiring Patent Owner to establish commercial success vis-à-vis the closest prior art in an instance where the closest prior art was not a marketed product, in contrast to accepted principles of law that the commercial success is presumed to be due to the patented invention. Request 16-19. Breadth of Prior Art Disclosure We find no error in our discussion on pages 13-16 of the Decision discussing why the breadth of the prior art range of ammonium sulfate in Bexton is distinguishable from the cases cited by Patent Owner where the breadth suggests a lack of predictability because Bexton “teaches components that would perform predictably when the concentrations are routinely varied.” Decision 16. Appeal 2015-001671 Reexamination Control 95/002,388 Patent 6,210,459 C1 4 Reliability of Hutter Declaration Patent Owner has not shown that our Decision relied upon erroneous facts provided in the Hutter Declaration. The Decision cites to the Hutter Declaration twice.2 The first noting Requester’s support for finding Bexton’s sole example teaching “the use of a greater concentration of ammonium sulfate (60-90% by weight) than elemental sulfur (1-40% by weight).” Decision 8. Patent Owner has shown no error with respect to this finding, and Hutter’s observation appears to be consistent with the teachings of Bexton. See Bexton 14:1-5. The second citation to Hutter’s Declaration is in support of a finding that Sharples teaches a ratio of ammonium phosphate to ammonium sulfate of 2:1. Decision 9. Again, Hutter’s testimony appears to be consistent with the teachings of Sharples. See Sharples 4:23-25, Example V. Patent Owner does not dispute this fact, but rather argues that the disclosed ratios are directed to powdered products and not granulated products. Request 8. We find no error because the rejection did not rely on Sharples for describing a granulated product, as a granulated product is described in Bexton. See Decision 6 and 8-9. Moreover, the Decision stated that We need not even reach the particular ratio of ammonium sulfate to ammonium phosphate taught by Norton, Barber, and Sharples as being particularly known in the art, because the skilled artisan would have been able to determine a composition having optimum amounts of elemental sulfur, ammonium 2 The Decision also notes Hutter in footnote 16, particularly contrasting a lack of any evidence on the part of Patent Owner that the fertilizer compositions of Bexton do not create lower pH portions inherently when applied to the soil as granules. Decision 17. Appeal 2015-001671 Reexamination Control 95/002,388 Patent 6,210,459 C1 5 phosphate, ammonium sulfate, and trace micronutrients by routine experimentation. Decision 16. Accordingly, our reliance on the teachings of Sharples was not particularly crucial to our decision. Plot presented in the Second Rush Declaration The Decision references the plot “first presented by the Patent Owner (see Second Rush Decl. 9, ¶ 15a).” Decision 10. The Decision does not reference the allegedly erroneous plot submitted by the Hutter Declaration. See Request 5-7. Patent Owner does not dispute that the plot in the Second Rush Declaration is an accurate representation of the scope of the teaching of amounts of ammonium sulfate and elemental sulfur from Bexton (represented by the largest trapezoid defined by four bold lines) or the scope of the amounts of ammonium sulfate and elemental sulfur recited in the claims (represented by the small pentagon in the lower left of the plot). See Decision 10-11, RAN 9, Second Rush Decl. 8-10, and Request 5-7 and 9-10. We are not persuaded that the Rush plot constitutes hindsight analysis. Rather, the plot is a graphical interpretation of an aspect of the claims in dispute as compared to a graphical interpretation of the teachings of the prior art. Nor is the plot particularly or significantly relied upon in the Decision. Rather, the Decision turns on our determination that a skilled artisan would have had predictable results from using “any amount” of elemental sulfur and ammonium sulfate within the broadest ranges disclosed in Bexton for the purposes described therein. See Decision 13. Due Process We decline to address the due process issues raised on appeal in this case and again on request for rehearing. See Patent Owner’s Respondent Appeal 2015-001671 Reexamination Control 95/002,388 Patent 6,210,459 C1 6 Brief (“PO Res. Br.”) 11, n. 3; Request 10-13. A lack of ability for direct cross-examination generally does not generate due process violations in inter partes reexamination cases. See Abbott Laboratories v. Cordis Corp., 710 F.3d 1318, 1328 (Fed. Cir. 2013) (“35 U.S.C. § 24 only empowers a district court to issue subpoenas for use in a proceeding before the PTO if the PTO’s regulations authorize parties to take depositions for use in that proceeding. We therefore hold that section 24 subpoenas are not available in inter partes reexamination proceedings.”). Commercial Success Patent Owner contends that the Board erred in finding that “nothing rebuts that merely having these elements in any amount would result in the same success.” Request 17. Patent Owner points to precedent presents evidence of commercial success of a product “disclosed and claimed in the patent . . . it is presumed that the commercial success is due to the patented invention.” Id. (quoting Ormco Corp. v. Align Tech. Inc., 463 F.3d 1299, 1312 (Fed. Cir. 2006)). Moreover, Patent Owner argues that this presumption should be give considerable weight because Patent Owner’s evidence is unrebutted by the Requester. Id. Patent Owner further argues that the Board’s reasoning “makes it impossible to establish commercial success in instances where no one has chosen to sell what the Board deems to be the closest prior art.” Id. at 18-19. Patent Owner has the burden of persuasively showing that the novel parts of the invention that are determined prima facie obvious over the prior art, i.e., the specific concentrations of elemental sulfur and ammonium sulfate, are nonetheless actually not obvious. Any presumption does not Appeal 2015-001671 Reexamination Control 95/002,388 Patent 6,210,459 C1 7 attach to the patented invention unless Patent Owner can show both that product asserted to be commercially successful is the claimed invention and that the commercial success is attributable to aspects of the invention not readily available in the prior art. J.T. Eaton & Co., Inc. v. A. Paste & Glue Co., 106 F.3d 1563, 1571 (Fed. Cir. 1997) (“If Eaton can demonstrate that the commercial success of its product derives from the claimed invention and is attributable to something disclosed in the patent that was not readily available in the prior art, it is entitled, on the record in this case, to the presumption that the commercial success of its product is attributable to its patented invention.); Ormco, 463 F.3d at 1312 (“[I]f the commercial success is due to an unclaimed feature of the device, the commercial success is irrelevant. So too if the feature that creates the commercial success was known in the prior art, the success is not pertinent.”) (footnotes omitted); Richdel, Inc. v. Sunspool Corp., 714 F.2d 1573, 1580 (Fed. Cir. 1983) (holding claims obvious despite purported showing of commercial success when patentee failed to show that “such commercial success as its marketed system enjoyed was due to anything disclosed in the patent in suit which was not readily available in the prior art”). See also Demaco Corp. v. F. Von Langsdorff Licensing Ltd., 851 F.2d 1387, 1392 (Fed. Cir. 1988) (“When the thing that is commercially successful is not coextensive with the patented invention—for example, if the patented invention is only a component of a commercially successful machine or process—the patentee must show prima facie a legally sufficient relationship between that which is patented and that which is sold.”). Appeal 2015-001671 Reexamination Control 95/002,388 Patent 6,210,459 C1 8 In this case, as explained in the Decision, the prior art describes fertilizers comprising the claimed salts, elements, and micronutrients. Patent Owner has not persuasively demonstrated that the commercial success is due to the broad ranges of these components in claim 4, rather than just due to the presence of the components themselves, which were known in the cited prior art to be beneficial in a soil nutrient composition. In other words, Patent Owner has not established that the commercial success is a result of a claimed feature which was not “readily available” in the prior art, e.g., through routine optimization. Requester need not provide additional evidence of obviousness when the rebuttal evidence presented by Patent Owner is not deemed persuasive to overcome the prima facie case of obviousness. Yet, Requester did provide argument and evidence to rebut Patent Owner’s contention. See Req. App. Br. 41-42 (citing the “Peacock I” and “Peacock II” patents) and Req. App. Br. 43 (arguing commercial success is due to unclaimed features of the invention, namely the presence of ammonium phosphate as a major component of the invention). In particularly, Requester argued, similar to the Board’s determination, that in view of the strong showing of prima facie obviousness discussed above, even if nexus were shown, it carries no weight. Tokai Corp v. Easton Enterprises, 632 F.3d 1358, 1370 (Fed. Cir. 2011) (“Even if [the patentee] could establish the required nexus, a highly successful product alone would not overcome the strong showing of obviousness”) quoting Media Technologies Licensing, LLC v. Upper Deck Co., 596 F.3d 1332 (Fed. Cir 2010). Req. App. Br. 43. Thus, Patent Owner cannot assert that its evidence of commercial success was “unrebutted” by Requester. Appeal 2015-001671 Reexamination Control 95/002,388 Patent 6,210,459 C1 9 Patent Owner further contends that the recited invention included another novel aspect over Bexton, namely “lower pH portions within the soil.” Request 18. Patent Owner has presented no persuasive evidence to support a finding that this aspect of the invention is novel, as discussed in detail in the Decision. See Decision 17, n. 16. Patent Owner has not shown the reasoning provided in the Decision to be untenable or that a change in the Decision is warranted. Based on the foregoing, we have granted Patent Owner’s request to the extent that we have reconsidered the Decision, but we deny Patent Owner’s request to alter our decision. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. §1.136(a)(1)(iv). REQUESTER’S REQUEST IS GRANTED; PATENT OWNER’S REQUEST IS DENIED Appeal 2015-001671 Reexamination Control 95/002,388 Patent 6,210,459 C1 10 PATENT OWNER: HOVEY WILLIAMS LLP 10801 Mastin Boulevard Suite 1000 Overland Park, KS 66210 THIRD-PARTY REQUESTER: NOVAK DRUCE & QUIGG, LLP (NDQ REEXAMINATION GROUP) 1000 Louisiana Street Fifty-Third Floor Houston, TX 77002 Copy with citationCopy as parenthetical citation