Yasufumi Aihara et al.Download PDFPatent Trials and Appeals BoardJul 18, 201913706762 - (R) (P.T.A.B. Jul. 18, 2019) 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. 13/706,762 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. Appeal 2018-007003 Application 13/706,762 2 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: Appeal 2018-007003 Application 13/706,762 3 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. Appeal 2018-007003 Application 13/706,762 4 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 Appeal 2018-007003 Application 13/706,762 5 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 Copy with citationCopy as parenthetical citation