Ex Parte 6,289,841 B1 et alDownload PDFPatent Trial and Appeal BoardSep 29, 201490011793 (P.T.A.B. Sep. 29, 2014) 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. 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. Appeal 2013-010941 Reexamination Control 90/011,793 Patent 6,289,841 B1 2 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. Appeal 2013-010941 Reexamination Control 90/011,793 Patent 6,289,841 B1 3 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 Appeal 2013-010941 Reexamination Control 90/011,793 Patent 6,289,841 B1 4 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 Appeal 2013-010941 Reexamination Control 90/011,793 Patent 6,289,841 B1 5 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 . . . Appeal 2013-010941 Reexamination Control 90/011,793 Patent 6,289,841 B1 6 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 Appeal 2013-010941 Reexamination Control 90/011,793 Patent 6,289,841 B1 7 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 Appeal 2013-010941 Reexamination Control 90/011,793 Patent 6,289,841 B1 8 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. Appeal 2013-010941 Reexamination Control 90/011,793 Patent 6,289,841 B1 9 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- Appeal 2013-010941 Reexamination Control 90/011,793 Patent 6,289,841 B1 10 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 Appeal 2013-010941 Reexamination Control 90/011,793 Patent 6,289,841 B1 11 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 Appeal 2013-010941 Reexamination Control 90/011,793 Patent 6,289,841 B1 12 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. Appeal 2013-010941 Reexamination Control 90/011,793 Patent 6,289,841 B1 13 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 Appeal 2013-010941 Reexamination Control 90/011,793 Patent 6,289,841 B1 14 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. Appeal 2013-010941 Reexamination Control 90/011,793 Patent 6,289,841 B1 15 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 Copy with citationCopy as parenthetical citation