Ex Parte HOSAKA et al

Patent Trials and Appeals Board

Jun 19, 2019

15323928 - (D) (P.T.A.B. Jun. 19, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
15/323,928 01/04/2017
2292 7590 06/21/2019
BIRCH STEW ART KOLASCH & BIRCH, LLP
8110 Gatehouse Road
Suite 100 East
Falls Church, VA 22042-1248
FIRST NAMED INVENTOR
Mitsuteru HOSAKA
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
3673-0625PUS 1 3187
EXAMINER
WHITE, EVERETT
ART UNIT PAPER NUMBER
1623
NOTIFICATION DATE DELIVERY MODE
06/21/2019 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
mailroom@bskb.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MITSUTERUHOSAKA, TOSHINORI OKANO, and YUJI IDA
(APPLICANT: DAICEL CORPORATION)
Appeal2019-000045
Application 15/323,928
Technology Center 1600
Before DONALD E. ADAMS, ELIZABETH A. LA VIER, and
DAVID COTTA, Administrative Patent Judges.
ADAMS, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING 1
Appellants request rehearing of the decision entered April 12, 2019
("Decision") affirming the rejections of: (I) Claims 1 and 4 under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Meldal,2 Ueno,3 and Nutt4
and (II) Claim 5 under 35 U.S.C. § 103(a) as unpatentable over the
combination of Meldal, Ueno, Nutt, and Malm. 5
We GRANT the requested relief and enter New Grounds of Rejection.
1 Appellants identify "DAICEL CORPORATION" as the real party in
interest (Appellants' Appeal Brief (Br.) 1 ).
2 Meldal et al., US 8,796,362 B2, issued Aug. 5, 2014.
3 Ueno, JP 2010094574 A, published Apr. 30, 2010 (English language
Abstract).
4 Nutt, US 3,753,749, issued Aug. 21, 1973.
5 Malm et al., US 2,646,429, issued July 21, 1953.
Appeal2019-000045
Application 15/323,928
ANALYSIS
According to Appellants: (A) "The Board Misapprehended the
Disclosure of Meldal" and (B) "The Board Considered a Reference that was
Not of Record" (Req. Reh'g 3-4 (emphasis omitted)). We address each of
Appellants' contentions below.
(A) Did the Panel Misapprehended Meldal's Disclosure?
Appellants contend that Meldal provides alternative examples of the
various types of, inter alia, crushers and mills that fall within the scope of
Meldal's disclosure and, thus, "one of ordinary skill in the art would not
consider [Meldal's] disclosure to mean a two-stage disintegration process,"
but rather "a single-stage disintegration process because of the conjunction
'or"' (Req. Reh'g 3). We are not persuaded.
As the Decision makes clear, Meldal discloses the preparation of a
powder, wherein
the powder may for example be obtained using a blender
and/or a mill and/or a [crusher] and/or a grinder, such as for
example a jaw crusher, a cone crusher, a gyratory crusher, a
roller crusher, an impact crusher, a ball mill, a mortar, a rod
mill, an autogenous mill, a semi-autogenous grinding mill, a
pebble mill, a hammer mill, a pin mill, a jet mill, a roller mill or
a roller press. The plant material may be provided in raw form
and then subjected to blending and or milling, thus by way of
example straw from cereal may be dried and divided using
cutting means, such as a blender and then milled.
(Decision FF 3 (emphases added).) Although, as Appellants recognize,
Meldal exemplifies various types of, inter alia, crushers and mills in the
alternative, Meldal makes clear through its disclosure of a blender and/or a
mill and/or a crusher and/or a grinder that Meldal's disclosure encompasses
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Appeal2019-000045
Application 15/323,928
a multi-stage disintegration process (see Decision FF 3; cf Req. Reh' g 3).
Meldal further exemplifies the preparation of a powder from straw through,
for example, the use of a blender and then milling (Decision FF 3).
Nonetheless, Appellants appear to appreciate that Meldal' s disclosure
encompasses a multi-stage disintegration process, but contend that"[ o ]ne of
ordinary skill in the art would not consider [Meldal' s] disclosure to mean
that a plurality of mills is used," but "[r]ather, one of ordinary skill in the art
would consider [Meldal's] disclosure to mean a single mill is used" (Req.
Reh'g 3). We are not persuaded.
As discussed above, Meldal contemplates various combinations of
blending, milling, crushing, and/or grinding and does not, as Appellants'
contend, limit its scope to no more than one milling step. Stated differently,
although Meldal does not expressly state that its disintegration process may
comprise the use of two mills, Meldal not only encompass a multi-stage
disintegration process, which involves a mill, Meldal exemplifies multiple
different types of mills. Thus, we find that a person of ordinary skill in this
art would have understood that Meldal makes obvious a multi-stage
disintegration process that involves two mills. See KSR Int 'l Co. v. Teleflex
Inc., 550 U.S. 398,421 (2007) ("A person of ordinary skill is also a person
of ordinary creativity, not an automaton.").
For the foregoing reasons, we deny Appellants' request for rehearing
as to the scope of Meldal' s disclosure.
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Application 15/323,928
(B) Was Nutt properly made of record?
Appellants contend that although Examiner's Final Action relied upon
Nutt as an evidentiary document and Examiner's Answer cited Nutt in the
statement of the rejection, Examiner failed to make Nutt of record in this
Application (Req. Reh'g. 4). Therefore, Appellants contend that the Board
considered a reference that was not of record (id.).
Upon review of the Administrative file it appears that Nutt was not
entered into the record. Therefore, we grant Appellants' rehearing request
on this issue, modify the Decision to maintain each ground of rejection
discussed therein as a New Ground of Rejection, and reset the time period
for response, as set forth below.
Thus, for the reasons set forth in the Decision, which we incorporate
by reference herein, we enter the following rejections as new grounds of
rejection:
I. The rejection of claims 1 and 4 under 35 U.S.C. § 103(a) as
unpatentable over the combination of Meldal, Ueno, and Nutt; and (II)
II. The rejection of claim 5 under 35 U.S.C. § 103(a) as unpatentable
over the combination of Meldal, Ueno, Nutt, and Malm.
TIME PERIOD FOR RESPONSE
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b) (effective September 13, 2004, 69 Fed. Reg. 49960
(August 12, 2004), 1286 Off. Gaz. Pat. Office 21 (September 7, 2004)).
37 C.F.R. § 41.50(b) provides "[a] new ground of rejection pursuant to this
paragraph shall not be considered final for judicial review."
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Application 15/323,928
37 C.F.R. § 41.50(b) also provides that the appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the proceeding
will be remanded to the examiner ....
(2) Request rehearing. Request that the proceeding be
reheard under§ 41.52 by the Board upon the same record ....
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l .136(a).
REHEARING GRANTED
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