Ex Parte Mertens et alDownload PDFPatent Trial and Appeal BoardDec 27, 201613560304 (P.T.A.B. Dec. 27, 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. 13/560,304 07/27/2012 Dennis MERTENS 2902162-038001 4920 84331 7590 MMWV IP, LLC 510 S MARKET ST FREDERICK, MD 21701 12/29/2016 EXAMINER ROSENBAUM, MARK ART UNIT PAPER NUMBER 3725 NOTIFICATION DATE DELIVERY MODE 12/29/2016 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): docketing @ mm w vlaw .com cgmoore @ mmwvlaw. com dwoodward @ mmwvlaw. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte DENNIS MERTENS and THOMAS VOIT Appeal 2014-007876 Application 13/560,304 Technology Center 3700 Before: JOHN C. KERINS, CHARLES N. GREENHUT, and ANNETTE R. REIMERS, Administrative Patent Judges. GREENHUT, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1— 5 and 11. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. Appeal 2014-007876 Application 13/560,304 CLAIMED SUBJECT MATTER The claims are directed to a pulverizer. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1 A pulverizer for biological samples for carrying out a method, comprising a shell that can be opened and sealed, an inlay, and a moveable body. REJECTION Claims 1—5, 11 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Oliver (WO 2004/082837 Al) and Aoki (JP2002066366(A)).1 OPINION Appellants correctly argue that the Examiner fails to “articulate [] reasoning with some rational underpinning to support the legal conclusion of obviousness.” App. Br. 6—7, 11; In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006), cited with approval in KSR Int’l. v. Teleflex, 550 U.S. 398, 418 (2007). Appellants correctly point out that “legal determinations of obviousness, as with such determinations generally, should be based on evidence.” App. Br. 6—7, 11; Alza Corp. v. Mylan Laboratories, Inc., 464 F. 3d 1286, 1290 (Fed. Cir. 2006). The Examiner responds by stating that “both publications deal with ball mills such that the teachings of one are readily combinable with the teachings of the other.” Ans. 2. However, the fact that references relate to the same technical field does not, without more, demonstrate the 1 The Examiner refers to the cited references as “WO” and “Japan,” respectively. Appellants refer to these references as “WO ’837” and “JO ’366,” respectively. 2 Appeal 2014-007876 Application 13/560,304 obviousness of their combination. The relevant technical field relates to the scope and content prong of the Graham analysis. Graham v. John Deere Co. 383 U.S. 1, 17-18 (1966). Finding references are within the same technical field does not conclude that analysis. Rather, it forms part of the background, upon which the obviousness or nonobviousness of the subject matter must be determined. Id. Although a reason or motivation to combine references need not be expressly stated in the prior art, that also forms part of the factual basis upon which obviousness is determined. In re Kahn, 441 F.3d at 985. 674, (Fed.Cir.1985). The Examiner’s core factual findings must be based on some concrete evidence in the record to support them. In re Zurko, 258 F.3d 1379, 1386 (Fed. Cir. 2001). A preponderance of the evidence must show nonpatentability before the PTO may reject the claims of a patent application. In re Caveney, 761 F.2d 671, 674, (Fed.Cir.1985). It is improper to base a conclusion of obviousness upon facts gleaned only through hindsight because doing so is to use the invention as a template for its own reconstruction—an illogical and inappropriate process by which to determine patentability. Sensonics Inc. v. Aerosonic Corp., 81 F.3d 1566, 1570 (Fed. Cir. 1996) (citations omitted). We recognize that contamination may be a concern outside the realm of biological sample processing but, in addition to not discussing contamination, neither Oliver nor Aoki are involved with processing biological samples. That forming the basis for the Examiner’s motivation to combine the references, (Ans. 2 (“one skilled in the art would not want a biological sample to be contaminated during treatment”)), the Examiner’s reasoning appears to be derived directly from Appellants’ own Specification. The Examiner makes several statements concerning linings and/or inlays 3 Appeal 2014-007876 Application 13/560,304 without directing our attention to any evidence supporting those statements in the record before us. See Ans. 2—3. The Examiner concludes that “the addition of a liner/inlay for reasons noted above are well within the scope of one skilled in the art.” Ans. 3. However, in the record before us, we are unapprised of an objective reason to combine the teachings of the cited references that is not derived from Appellants’ own teachings. See, e.g., MPEP § 2143.01(IV). Appellants also raise the issue that adding Aoki’s silicone rubber lining to Oliver’s pulverizer would undermine Oliver’s purpose by providing damping. App. Br. 7. The Examiner does not rebut this argument with any particularity. See Ans. 3 (“Surely one skilled in the art would use a liner/inlay material that was consistent with the material being treated within the apparatus to perform the desired function of the apparatus.”) The breadth of the claims (see Ans. 3) and simplicity of the subject matter defined thereby does not eliminate or lessen the requirement for the Examiner to produce evidence, and articulate reasoning with some rational underpinning, supporting the Examiner decision to deny an applicant the right to a patent. “[T]he precise language of 35 U.S.C. § 102 that ‘(a) person shall be entitled to a patent unless,’ concerning novelty and unobviousness, clearly places a burden of proof on the Patent Office which requires it to produce the factual basis for its rejection of an application under sections 102 and 103.” In re Warner 379 F.2d 1011, 1016 (CCPA 1967). On the record before us, we cannot sustain the Examiner’s rejection. DECISION The Examiner’s rejection is reversed. 4 Appeal 2014-007876 Application 13/560,304 REVERSED 5 Copy with citationCopy as parenthetical citation