Ex Parte 6,289,841 B1 et al

Patent Trial and Appeal Board

Sep 29, 2014

90011793 (P.T.A.B. Sep. 29, 2014)

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.
90/011,793 07/11/2011 6,289,841 B1 20264.0003.000000 2608
30764 7590 09/29/2014
SHEPPARD, MULLIN, RICHTER & HAMPTON LLP
12275 EL CAMINO REAL, SUITE 200
SAN DIEGO, CA 92130
EXAMINER
LOPEZ, CARLOS N
ART UNIT PAPER NUMBER
3991
MAIL DATE DELIVERY MODE
09/29/2014 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
____________

NEXTEC APPLICATIONS, INC.
Patent Owner and Appellant
____________

Appeal 2013-010941
Reexamination Control 90/011,793
Patent U.S. 6,289,841 B1
Technology Center 3900
____________

Before MARK NAGUMO, RICHARD M. LEBOVITZ, and
JOHN A. JEFFERY, Administrative Patent Judges.

LEBOVITZ, Administrative Patent Judge.

DECISION ON APPEAL
Patent Owner appeals from the Patent Examiner’s rejections of claims
1 and 57 in the above-identified ex parte reexamination of US 6,289,841 B1.
The Board’s jurisdiction for this appeal is under 35 U.S.C. §§ 6(b), 134(b),
and 306. We affirm.

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I. STATEMENT OF CASE
This is an appeal from the final rejection by the Examiner in an ex
parte reexamination of claims 1 and 57 of US Patent 6,289,841 (“the ’841
patent”) which issued Sept. 18, 2001. The real party in interest is the Patent
Owner, NexTec Applications, Inc. Appeal Brief (“Appeal Br.”) 1, dated
May 13, 2013. Reexamination was requested under 35 U.S.C. § 301-307
and 37 C.F.R. § 1.510 by a third-party requester on July 11, 2011.
The claimed subject matter pertains to a system “for controlling the
placement of a shear-thinnable polymer composition into a porous web.”
Claim 1. The porous web can be a fabric. ’841 patent, col. 1, ll. 42-43.
The shear-thinnable composition can be “shear thinned to controllably and
significantly reduce its viscosity and place it into selected places within the
web.” Id. at col. 4, ll. 48-50. A “means” or tool is used to create a force that
reduces the viscosity of the shear-thinnable composition. Id. at col. 7, ll. 9-
20; col. 9, ll. 3-6; col. 19, ll. 43-50. The method can impart water resistance,
increased durability, and improved barrier qualities to the fabric. Id. at col.
5, ll. 10-11. The fabrics can be used for carpets, specialized clothing,
surfaces for diagnostic applications, and upholstery. Id. at col. 5, ll. 14-18.
Claims 1 and 57 are pending. The claims stand rejected by the
Examiner in the Final Office Action (“Final Rej’n,” October 11, 2012) as
follows:
1. Claims 1 and 57 under 35 U.S.C. § 103(a) as obvious in view of
PCT Published Application No. WO 80/00709 A1 (“West”) and U.S. Patent
No. 2,117,432 to Linscott (“Linscott”). Final Rej’n 6.
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2. Claim 57 under 35 U.S.C. § 103(a) as obvious in view of West,
Linscott, U.S. Patent No. 3,265,529 to J.R. Caldwell et al. (“Caldwell”) and
Robert R. Grant, Coating Techniques for the Manufacture of Continuous
Web Products, 8 J. Coated Fabrics 171-82 (1978) (“Grant”). Final Rej’n 9.
Claim 1 reads as follows (numbers [1]-[4] have been added for
reference to each of the recited “means for”):
1. System for controlling the placement of a shear-thinnable
polymer composition into a porous web, having a three
dimensional structure of a plurality of structural elements with
interstitial spaces therebetween, comprising:
[1] means for pretreating and impregnating the porous
web with a fluorochemical;
[2] means for applying tension to the porous web;
[3] means for applying a curable, shear-thinnable,
polymer composition onto one surface of the tensioned web;
and
[4] means for shear thinning the polymer composition to
substantially reduce its viscosity and selectively place it into the
tensioned web to encapsulate at least some of the structural
elements of the porous web by enveloping exposed surface
portions of the structural elements.

CLAIM INTERPRETATION
Claim 1, as reproduced above, is directed to a “[s]ystem for
controlling the placement of a shear-thinnable polymer composition into a
porous web.” The system comprises four elements, each which are recited
in “means-plus-function” format. For clarity in referring to the four
elements, we have numbered them [1]-[4]. Means-plus-function limitations
invoke 35 U.S.C. 112, ¶ 6, which states:
An element in a claim for a combination may be expressed as a
means or step for performing a specified function without the
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recital of structure, material, or acts in support thereof, and such
claim shall be construed to cover the corresponding structure,
material, or acts described in the specification and equivalents
thereof.
35 U.S.C. § 112, ¶ 6.
The means-plus-function analysis of a claim is a two-step process.
First, the recited function must be identified. Chicago Board Options
Exchange Inc. v. Int’l Securities Exchange LLC, 677 F.3d. 1361, 1367 (Fed.
Cir. 2012). Second, the corresponding structure, material, or acts that
perform the function must be identified in the specification. Id.
The Examiner made explicit findings regarding the function recited in the
claim for each element [1]-[4] and the corresponding structure described in
the patent specification for performing the function. Final Rej’n 3-4.
Specifically, the Examiner found:
[1] “means for pretreating and impregnating the porous web with a
fluorochemical” was described in the specification as a “padding” process in
which “squeeze rollers” are used to treat and “preferably” saturate the web
with a composition;
[2] “means for applying tension to the porous web” involves distorting
and pressuring the bed using “rollers,” “blade rolls, “and blades”;
[3] “means for applying a curable, shear-thinnable, polymer
composition onto one surface of the tensioned web” uses a “roller coater,”
“pump,” “hose,” “reservoir,” or other “application device”; and
[4] “means for shear thinning the polymer composition” uses a “two
roller system” or “knife assembly.” Final Rej’n 3-4.
Although steps [3] and [4] involve manipulating a “shear-thinnable,
polymer composition,” the Examiner found that “the claims are drawn to an
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apparatus whose patentable distinction is based on structural difference but
not on the material that the apparatus works on.” Answer 16. In other
words, the Examiner found that the claims do not require the presence of a
shear-thinnable composition. Rather, the Examiner found that the claims
merely recite an “intended use” of the required means. Id. To show that the
“means” limitations are met by the prior art, the Examiner found that only it
must be shown that the recited means are capable of performing the recited
functions. Id. at 13.
The Examiner’s interpretation is consistent with the plain language of
the claim since the claim does not recite the presence of the shear-thinnable
composition. We therefore adopt the Examiner’s interpretation of the claim.

1. WEST AND LINSCOTT
The claims stand rejected by the Examiner as obvious in view of the
West and Linscott publications. The Examiner found that West describes
element [1] of “means for pretreating and impregnating the porous web with
a fluorochemical” and [4] “means for shear thinning the polymer
composition.” Final Rej’n 6-7. The Examiner found that West does not
describe [2] “means for applying tension to the porous web” and [3] “means
for applying a curable, shear-thinnable, polymer composition onto one
surface of the tension web,” but the Examiner determined that these
elements were described in Linscott. Id. at 7.
The Examiner determined it would have been obvious to one of
ordinary skill in the art “when practicing West’s invention, to have used
Linscott’s [3] means for applying a polymer composition in order to . . .
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avoid the disadvantages of using squeeze rollers.” Final Rej’n 8. With
regard to [2], the Examiner stated “in view that West is silent disclosing the
means for maintaining the fabric taut, it would have been obvious to a
person of ordinary skill in the art to have used known means to maintain the
fabric taut, as shown by Linscott, in order to practice West's invention.” Id.
Patent Owner contends that West does not describe [3] “means for
applying a curable, shear thinnable, polymer composition,” and Linscott
does not describe [4] “means for shear thinning the polymer composition to
substantially reduce its viscosity.” Appeal Br. 18. Appellant provided a
declaration by Randy E. Meirowitz, Ph.D., who testified that West describes
poly dimethyl siloxane (PDMS) compositions, but not all such compositions
are shear thinnable and that “West does not provide sufficient information
for one of ordinary skill in the art to determine if the disclosed PDMS-based
formulation is shear thinnable or not.” Meirowitz Decl. ¶¶ 12, 14 (dated
June 1, 2012).
Patent Owner contends that because neither publication describes
shear thinnable compositions or the recited function of applying the
composition and shear thinning to substantially reduce the composition’s
viscosity, the publications cannot meet the corresponding claim limitations.
As explained above in the claim interpretation section, the claims do
not require a shear thinnable composition. Consequently, the issue of
whether these compositions are described in the publications does not need
to be addressed. The second issue involves the legal question of whether it
is necessary that the West and Linscott publications describe the claimed
“shear-thinnable” functions recited in elements [3] and [4] of claim 1 to
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support a finding that the elements are disclosed or suggested by these
publications.
Because the West and Linscott do not describe shear thinnable
compositions, Patent Owner contends that the claimed functions are not
performed or suggested by either publication, and therefore, West and
Linscott cannot invalidate the claims. Reply Br. 3. Patent Owner’s
arguments are based on Transclean Corp. v. Bridgewood Services, Inc., 290
F.3d 1364 (Fed Cir. 2002) and WMS Gaming v. International Game Tech,
184 F.3d 1339 (Fed Cir. 1999), cases in which means-plus-function
limitations were at issue. We shall address both cases.
In Transclean, the claims were directed to an automatic transmission
fluid changing apparatus. The claimed apparatus comprised a “means . . .
for equalizing the fluid flow into said fluid receiver and out of said source of
fluid.” Transclean, 290 F.3d at 1368. The court interpreted the latter phrase
as a means-plus-function limitation governed by 35 U.S.C. § 112, ¶ 6, and
the recited function as “equalizing fluid flow.” Id. The validity of the
claims were challenged as anticipated by the Becnel patent and a Japanese
patent. Id. at 1369. The court stated that “[t]o anticipate a claim reciting a
means-plus-function limitation, the anticipatory reference must disclose the
recited function identically.” Id. at 1372.
The Becnel patent was found by the court not to describe the
equalizing the fluid flow function. The court wrote:
Bridgewood [the alleged infringer of the patent] presented
testimony from Becnel, the inventor [of the Becnel patent], that
his invention could be operated in such a manner as to equalize
flow rates. However, as the district court found, that manner is
not disclosed in the Becnel patent itself, nor is it inherent in the
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operation of Becnel’s invention. Summary Judgment Opinion
at 1081 (“Becnel was able to read the fluid gauges, and then
manually adjust the flow of fresh fluid so as to equalize the
fluid flows, but neither his declaration, nor [Bridgewood’s
patent expert’s] opinion, offer any explanation as to how a
person of ordinary skill would read the Becnel Patent
specification, and recognize that this method of flow
equalization is necessarily present in the embodiment disclosed
in Fig. 5.”).
Transclean, 290 F.3d at 1372.
For the Japanese patent, the court found that the claimed function was
also not necessarily present. The court held:
Although it is possible that the detection means could under
some circumstances (e.g., if the response time for the feedback
loop is sufficiently fast) effectively equalize the flow rates as
well, it is also possible for that not to be the case. Because
anticipation by inherent disclosure is appropriate only when the
reference discloses prior art that must necessarily include the
unstated limitation, Cont’l Can Co. v. Monsanto Co., 948 F.2d
1264, 1268-69 (Fed. Cir. 1991) (emphasis added), the Japanese
patent cannot inherently anticipate the claims of the ’080 patent.
Transclean, 290 F.3d at 1373.
Appellant also cites WMS Gaming. WMS Gaming was an
infringement case in which WMS Gaming’s Model 400 slot machine had
been found by the district court to have literally infringed claim 1 of the
Telnaes patent. WMS Gaming, 184 F.3d at 1342-43. Claim 1 of the Telnaes
patent was directed to a game apparatus which comprised, inter alia, a
“means for assigning a plurality of numbers” and “means for randomly
selecting one of said plurality of assigned numbers.” Id. at 1346. The
means in both instances were found to correspond to a structure disclosed in
the patent specification of microprocessor programmed with an algorithm.
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Id. at 1347-49. As far as the limitation of selecting a plurality of numbers,
the district court found “that using the random number generator algorithm
several times to select a combination of numbers, as in the WMS 400 slot
machine, was equivalent to selecting a single number, as in the Telnaes
patent.” Id. at 1351.
The Federal Circuit agreed with district court that the Telnaes patent
and the WMS 400 slot machine comprised identical structures for assigning
and randomly selecting numbers. WMS Gaming, 184 F.3d at 1352.
However, the court held that the “WMS 400 slot machine assigns and selects
combinations of numbers rather than single numbers” and, therefore, “it
does not perform a function identical to that of claim 1 of the Telnaes patent.
Accordingly, although it has equivalent structure, the WMS 400 slot
machine does not literally infringe the claim.” Id. (emphasis added).
Patent Owner distills these cases down to mean that the recited
functional limitations [3] and [4] of claim 1 require that the prior art
elements of West and Linscott actually perform the identical function which
is recited in the claim. Reply Br. 8. Thus, even if the structure is equivalent,
Patent Owner contends that the prior art cannot be found to disclose the
means-plus-function limitation unless it performs the identical function
recited in the claim involving a shear-thinnable composition. Id. at 9.
Despite Appellant’s arguments, functional limitations have been
found to be anticipated by a prior art disclosure even when the disclosure
does not describe or perform the claimed function. In In re Schreiber, 128
F.3d 1473 (Fed. Cir. 1997), the claims were directed to a “dispensing top for
passing only several kernels of a popped popcorn at a time from an open-
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ended container filled with popped popcorn.” The Board found that the
claim was anticipated by Harz’s description of a conical top for dispensing
oil because it was inherently capable of performing the claimed function for
dispensing popcorn, even if it had not been used in that way. Id. at 1476.
The court agreed, holding that “Schreiber is correct that Harz does not
address the use of the disclosed structure to dispense popcorn, [but] the
absence of a disclosure relating to function does not defeat the . . . finding of
anticipation.” Id. at 1477.
A means-plus-function limitation is a functional limitation as in
Schreiber and should be treated the same when the prior art describes the
same structure as claimed. When the structures are the same, a reasonable
presumption arises that the prior art structure would be inherently capable of
performing the same function recited in the claim. While the analysis as to
whether the structure disclosed in the prior art meets the claim limitation
would be different when the structure is couched in a means-plus-function
format, the functional determination would be the same.
Despite Patent Owner’s contentions, neither Transclean or WMS
Gaming changed the principle set forth in Schreiber. In Transclean, the
court found that Becnel was not anticipated by the claimed means because
the function was not “necessarily present” in the embodiment of Becnel
disclosed in Fig. 5. Transclean, 290 F.3d at 1372. Similarly, for the
Japanese patent, the court found that anticipation was not met because
“anticipation by inherent disclosure is appropriate only when the reference
discloses prior art that must necessarily include the unstated limitation.” Id.
at 1373. The Transclean court expressly recognized “inherency” as a basis
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for finding anticipation, but found that it was not met because inherency
requires the element to be “necessarily present” and the evidence did not
establish such. In other words, even absent the disclosure of identical
function, the publications could have been found to inherently capable of
performing the claimed function had the evidence showed it, as the evidence
did in Schreiber.
Patent Owner focuses on language in Transclean, WMS Gaming, and
other cases where identical structure was found to be insufficient to establish
that the claimed means-plus-function was met because the structure was not
disclosed to perform an identical function as claimed. These holdings are
not inconsistent with Schreiber.
In Schreiber, the question was whether the top of the oil container had
a structure which was capable of performing the claimed function, a
question which was answered in the affirmative. In Transclean, the court
referred to evidence that “Becnel was able to read the fluid gauges, and then
manually adjust the flow of fresh fluid so as to equalize the fluid flows.”
Transclean, 290 F.3d at 1372. In other words, the structure that was alleged
to perform the recited function in Transclean was not an independent
structure as in Schreiber, but was operated as a part of a system. The court
did not find sufficient evidence that the structure, when operated as part of
the automatic transmission fluid changing apparatus, performed the same
function as claimed. With respect to the Japanese patent, while certain
structures may have been identical between Transclean’s automatic
transmission fluid changing apparatus and the apparatus described in the
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Japanese patent, the court specifically found differences1 which may have
led the devices to operate differently, despite certain equivalency in
structure.
The identity in structure in WMS Gaming was between a
microprocessor loaded with an algorithm that selects and assigns numbers in
the prior art and the claimed device. WMS Gaming, 184 F.3d at 1347-49.
This case was not based on anticipation, but involved a determination of
whether WMS Gaming’s slot machine literally infringed the Telnaes patent.
Thus, the legal issue in WMS Gaming is different from the one here which is
based on obviousness under 35 U.S.C. § 103. While the court upheld the
district courts finding of “equivalent structure,” it did so because the district
court did not “clearly err[ ]” in finding that “the difference between
assigning and selecting single numbers [in the Telnaes patent] and assigning
and selecting combinations of single numbers [in the WMS 400 slot
machine] is insubstantial.” Id. at 1352. The functions were found to be
different, however, because the WMS slot machine selected a plurality of
numbers, while the cited prior art patent only selected one number. Id.

1 “Broadly speaking, the Japanese patent describes an ‘ATF [automatic
transmission fluid] exchanger device,’ Jap. Pat. 2-72299, abstract (English
translation), which, like the invention described in the ’080 patent,
comprises a supply of fresh fluid, a receptacle for used fluid, and hoses for
connection to a transmission’s fluid circulation system. Id. However, the
Japanese apparatus also includes scales for measuring the weights of the
fresh fluid supplied and used fluid removed, as well as a “detection means so
that the difference between the amount of fluid drained and the amount of
fluid supplied is maintained within an indicated range; and which
automatically balances the amount of fluid drained and fluid supplied within
an indicated range.” Transclean, 290 F.3d at 1372-73.
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Evidently, while the microprocessor with the algorithm was equivalent, it
would have been operated differently in the slot machine in order to select a
plurality of numbers rather than a single number.
In sum, Patent Owner’s analysis has overlooked the fact that an
equivalent structure may not perform an equivalent function because the
structure is part of system, apparatus, or device which can modify the
operation of the structure or is otherwise configured that the asserted
function is not necessarily present in the cited prior art.
In this case, the Examiner provided evidence that the structures
disclosed in the specification for means-plus-function limitations [3] and [4]
were the same as those described in West and Linscott for applying and
spreading a polymer composition. Final Rej’n 6-7. The structural
equivalence between the claimed elements and the corresponding ones
described in West and Linscott gave the Examiner “sound basis for
believing” that the prior art structures would be capable of performing the
shear-thinning functions recited in limitations [3] and [4], shifting the burden
to Patent Owner to show otherwise. See In re Spada, 911 F.2d 705, 708
(Fed. Cir. 1990) noting that when the limitations of a claim are not expressly
described in the prior art, the PTO must show “sound basis for believing”
that despite the failure of the prior art to describe them, the limitations are
inherently there and “the products of the applicant and the prior art are the
same.”). When such circumstances are met, the applicant has the burden of
showing that the limitations are not met by the prior art. Id.
Patent Owner did not provide persuasive evidence that the structures
described in West and Linscott would not necessarily be capable of
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performing the shear thinning functions recited in the claims. Patent Owner
argued that West does not describe a shear-thinnable composition (Appeal
Br. 19), but as noted by the Examiner, the claims do not require the presence
of such a composition.
Patent Owner’s arguments regarding West’s failure to teach a shear-
thinnable composition that encapsulates at least some of the structural
elements of the porous web (id. at 19-27) are also unavailing because the
claims are not directed to a method, but rather to a system comprising
elements capable of performing such function. Patent Owner has not
persuasively identified what language in the claim requires the presence of a
porous web with encapsulated structural elements.
For the forgoing reasons and those of the Examiner, we affirm the
rejection of claims 1 and 57.

2. WEST, LINSCOTT, CALDWELL, AND GRANT
In addition to the limitations of claim 1, claim 57 additionally recites a
means for controlling the tension, a means for curing the polymer
composition and means for advancing the web. To meet these limitations,
the Examiner further relied on Caldwell and Grant for teaching a tension
control device in order to control the amount of coating composition. Final
Rej’n 10. Patent Owner did not identify a defect in the Examiner’s fact-
finding or reasoning with respect to these elements. Appeal Br. 31.
Consequently, we affirm the rejection for the reasons given by the Examiner. 

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TIME PERIOD FOR RESPONSE
Requests for extensions of time in this ex parte reexamination
proceeding are governed by 37 C.F.R. § 1.550(c). See 37 C.F.R. § 41.50(f).

AFFIRMED

peb

PATENT OWNER:

SHEPPARD, MULLIN, RICHTER & HAMPTON LLP
12275 El Camino Real, Suite 200
San Diego, CA 92130

THIRD PARTY REQUESTOR:

SCHWEGMAN LUNDBERG & WOESSNER/REEXAMS
P.O Box 2938
MINNEAPOLIS, MN 55402