11894999 (B.P.A.I. Jul. 11, 2012)

Ex Parte Jakus et al

Board of Patent Appeals and InterferencesJul 11, 2012

11894999 (B.P.A.I. Jul. 11, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE 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. 11/894,999 08/22/2007 Richard S. JAKUS MP380D 9763 7590 07/11/2012 Edward J. Timmer Suite 205 121 East Front Street Traverse City, MI 49684 EXAMINER LIN, KUANG Y ART UNIT PAPER NUMBER 1735 MAIL DATE DELIVERY MODE 07/11/2012 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 BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte RICHARD S. JAKUS and KURT R. SWARTZ ____________ Appeal 2011-001471 Application 11/894,999 Technology Center 1700 ____________ Before TERRY J. OWENS, LINDA M. GAUDETTE, and KAREN M. HASTINGS, Administrative Patent Judges. GAUDETTE, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s decision1 finally rejecting claims 16, 17, 21, and 25-28 as anticipated under 35 U.S.C. §102(b) by JP 55-5146, pub. Jan. 16, 1980 (“JP ‘146”) , and claims 18-20 and 22- 24 as unpatentable under 35 U.S.C. §103(a) over JP ‘146 or US 3,254,379, patented Jun. 7, 1966 (“Poe”) in view of US 6,129,138, patented Oct. 10, 2000 (“US ‘138”).2 We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 Final Office Action mailed Aug. 3, 2009 (“Final”) 2 Appeal Brief filed May 7, 2010 (“App. Br.”) Appeal 2011-001471 Application 11/894,999 Claim 16, the sole independent claim, is representative of the invention and is reproduced below from the Claims Appendix to the Appeal Brief: 16. A fugitive pattern assembly, comprising a preformed fugitive pattern of an article to be cast and an in-situ-formed gating residing about and capturing a region of the pattern by injecting a fluid gating material about the region of the preformed pattern. The Examiner finds “the pattern assembly of JP ‘146 appears to be the same as or similar to that” claimed. (Final 2 (noting the claims are drafted in product- by-process format).) In the Appeal Brief, Appellants’ arguments in support of patentability consist of the following: 1. with respect to each of the claims rejected under 35 U.S.C. §102(b), a statement that “JP 55-5146 does not disclose” followed by a recitation of the claim language (App. Br. 10-12); 2. with respect to each of the claims rejected under 35 U.S.C. §103(a), a statement that either “JP 55-5146 does not disclose” (App. Br. 12),“US 3,254,379 does not disclose” (id. at 12), or “The primary JP 55-5146 or US 3,254,379 do [sic] not disclose or suggest” (id. at 13-15), followed by a recitation of the claim language (id. at 12-15) and a statement that “The secondary US 6,129,138 patent . . . fails to make up for the deficiencies . . . of JP 55-5146 and US 3,254,379” (id. at 13-16); and 3. statements that “JP 55-5146 teaches away from claim 16” (App. Br. 10) and “US 6,129, 138 . . . teaches away from the features of” claims 18-20 (id. at 13- 14). Appeal 2011-001471 Application 11/894,999 In the Response to Argument (see Ans.3 5-6), the Examiner correctly points out that Appellants’ arguments are not persuasive of error because they fail to identify a difference in the claimed and JP ‘146 structure or JP ‘146 structure as modified by US ‘138. See In re Thorpe, 777 F.2d 695, 697 (Fed. Cir. 1985) (“[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself.”); In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990) (“[W]hen the PTO shows sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.”); 37 C.F.R. § 41.37(c)(1)(vii) (“A statement which merely points out what a claim recites will not be considered an argument for separate patentability of the claim.”). The Examiner also correctly notes that Appellants have not provided any explanation as to why they believe US ‘138 teaches away. In re Gurley 27 F.3d 551, 553 (Fed. Cir. 1994) (“A reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant.”). Additionally, with respect to Appellants’ argument that “JP 55-5146 teaches away from claim 16” (App. Br. 10), we note “the question whether a reference ‘teaches away’ from the invention is inapplicable to an anticipation analysis.” Bristol-Myers Squibb Co. v. Ben Venue Labs., Inc., 246 F.3d 1368, 1378 (Fed. Cir. 2001) (quoting Celeritas Techs., Ltd. v. Rockwell Int'l Corp., 150 F.3d 1354, 1361 (Fed. Cir. 1998)). Appellants’ arguments in their 3 Examiner’s Answer mailed Sep. 3, 2010. Appeal 2011-001471 Application 11/894,999 Reply Brief fail to remedy the above-noted deficiencies in the arguments presented in their Appeal Brief. 4 For the above reasons, we are not convinced of error on the part of the Examiner in rejecting claims 16, 17, 21, and 25-28 as anticipated under 35 U.S.C. §102(b) by JP ‘146, and claims 18-20 and 22-24 as unpatentable under 35 U.S.C. §103(a) over JP ‘146 in view of US ‘138. Accordingly, we sustain these grounds of rejection. However, because the record before us is devoid of any findings with respect to the teachings of Poe, we do not sustain the rejection of claims 18-20 and 22-24 as unpatentable under 35 U.S.C. §103(a) over Poe in view of US ‘138. The Examiner’s decision to reject claims 16-28 is affirmed. 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). AFFIRMED cam 4 We additionally note that Appellants have not explained why the arguments in their Reply Brief were not raised in their Appeal Brief. “Properly interpreted, the Rules do not require the Board to take up a belated argument that has not been addressed by the Examiner, absent a showing of good cause.” Ex parte Borden, 93 USPQ2d 1473, 1477 (BPAI 2010) (informative).