Yasufumi Aihara et al.

Patent Trials and Appeals Board

Jul 18, 2019

13706762 - (R) (P.T.A.B. Jul. 18, 2019)

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.
13/706,762 12/06/2012 Yasufumi AIHARA 947_025 DIV 7741
25191 7590 07/18/2019
BURR & BROWN, PLLC
PO BOX 869
FAYETTEVILLE, NY 13066
EXAMINER
KRUER, KEVIN R
ART UNIT PAPER NUMBER
3649
NOTIFICATION DATE DELIVERY MODE
07/18/2019 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):
tpreston@burrandbrown.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte YASUFUMI AIHARA, HIROYA SUGIMOTO,
SHUNSUKE TANAKA, KAZUMA OHBA, and
JYUNYA WAKI
__________
Appeal 2018-007003
Application 13/706,762
Technology Center 3600
__________

Before MICHAEL J. FITZPATRICK, ANNETTE R. REIMERS, and
LEE L. STEPINA, Administrative Patent Judges.

FITZPATRICK, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
Appellant requests rehearing under 37 C.F.R. § 41.52 of our Decision
of May 8, 2019 (“Decision”), wherein we affirmed the Examiner’s rejection
of claims 1–4 under 35 U.S.C. § 112 ¶ 1. See Request for Rehearing filed
June 24, 2019 (“Request”). The Request is denied.

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DISCUSSION
A request for rehearing must state with particularity the point(s)
believed to have been misapprehended or overlooked. 37 C.F.R.
§ 41.52(a)(1). The Request does not comply with this Rule, stating only
generally that the Decision “misapprehends §112.” See Request 2.
However, the Request raises other points, which we nonetheless will
address.
The Request states that the Decision “does not include any case law
that supports any of the stated conclusions.” Id. This, however, is not a
defect of the Decision, as there is no requirement to cite case law, and
Appellant did not cite any case law in either of its briefs. See generally
Appeal Br.; Reply Br. That said, case law does support the Decision. See,
e.g., In re Wright, 999 F.2d 1557, 1561 (Fed. Cir. 1993) (“[T]o be enabling,
the specification of a patent must teach those skilled in the art how to make
and use the full scope of the claimed invention without ‘undue
experimentation.’” (emphasis added)); In re Cortright, 165 F.3d 1353, 1356
(Fed. Cir. 1999) (“The PTO will make a scope of enablement rejection
where the written description enables something within the scope of the
claims, but the claims are not limited to that scope.”); In re Goodman, 11
F.3d 1046, 1050 (Fed. Cir. 1993) (“Naturally, the specification must teach
those of skill in the art ‘how to make and how to use the invention as
broadly as it is claimed.’” (emphasis added) (quoting In re Vaeck, 947 F.2d
488, 496 (Fed. Cir. 1991)).
In Goodman, the Court affirmed a Board decision affirming an
examiner’s rejection of claims for lack of enablement, reasoning as follows:
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Goodman’s specification contains a single example of producing
gamma-interferon in the dicotyledonous species, tobacco. This
single example, however, does not enable a biotechnician of
ordinary skill to produce any type of mammalian protein in any
type of plant cell. The specification does not contain sufficient
information to enable the broad scope of the claims.
Id. at 496.
The Goodman holding is analogous to the Decision’s holding in
which we stated the following:
[Appellant’s] claims encompass “ceramic-metal bonded bodies”
regardless of whether the bonding sheet has been subjected to the
allegedly inventive pre-bake step. Yet, the Specification enables
a person of ordinary skill in the art to make “ceramic-metal
bonded bodies” having the recited property of “no bubbles” only
by subjecting the bonding sheet to the pre-bake step. Thus, the
Specification enables only a partial scope of the claimed
invention.
See Decision 5.
Appellant also argues that the Decision confuses apparatus claims
(such as the rejected claims 1–4) and method claims “by stating that, the
omission of the pre-bake steps (i.e., method steps) disclosed in the
specification, is a ‘fatal’ defect.” Request 2. Appellant is mistaken. The
Decision did not state that Appellant should have included “steps” in its
apparatus claims. Rather, the Decision noted that the claims lacked any
“limitation directed to the ‘pre-bake step’ described in paragraphs 5 and 6 as
the crux of the invention.” Decision 4 (emphasis added). The term “pre-
bake step” is Appellant’s term. See Spec. ¶5 (emphasis added). Appellant
chose to claim an apparatus. In doing so, Appellant claimed beyond what its
Specification enables.
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Appellant next argues that the recitation of “ceramic-metal bonded
bodies” excludes such bodies that have not been subjected to the pre-bake
step disclosed in the Specification. Request 2 (“[T]he PTAB asserted that
the claims ‘also cover uncured bonding material.’ This statement is simply
erroneous.” (quoting Decision 4)). Appellant does not cite to any claim
language reciting such an exclusion. Instead, Appellant argues that the
claims must exclude such uncured “ceramic-metal bonded bodies” because
the claimed apparatus would otherwise not be obtainable. Id. In other
words, according to Appellant, the scope of the claims should be defined,
not by the language of the claims, but rather by the scope of what the
Specification enables. Appellant has not cited any legal authority for such a
claim construction canon. See id. There is none.
Appellant’s next argument is that the Specification “discloses at least
one method for making and using the invention.” Request 3. However, as
already discussed above and on page 5 of the Decision, the disclosed method
yields only a subset of the claim scope.
Finally, Appellant wholly misconstrues the Decision’s reasoning,
stating:
the PTAB asserts, in a completely conclusory manner, that the
present specification “enables only a partial scope of the claimed
invention.” Implicit in this conclusory statement is that the
disclosed pre-bake steps will not be effective for all acrylic resins
and all silicone resins.
Id. (quoting Decision 5). The Decision neither stated nor implied that the
disclosed pre-bake step would not be effective for all acrylic resins and all
silicone resins. Decision 5. Instead, the Decision stated that “the claims
encompass ‘ceramic-metal bonded bodies’ regardless of whether the
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bonding sheet has been subjected to the allegedly inventive pre-bake step,”
yet “the Specification enables a person of ordinary skill in the art to make
‘ceramic-metal bonded bodies’ having the recited property of ‘no bubbles’
only by subjecting the bonding sheet to the prebake step.” Id.

CONCLUSION
We have granted Appellant’s Request to the extent we have
reconsidered our Decision, but we deny Appellant’s request to modify our
Decision to affirm the Examiner’s rejection of claims 1–4.
DENIED