95001886 (P.T.A.B. Mar. 31, 2015)

Ex Parte 6605136 et al

Patent Trial and Appeal BoardMar 31, 2015

95001886 (P.T.A.B. Mar. 31, 2015)

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. 95/001,886 05/02/2012 6605136 INOGN.072X 6884 20995 7590 09/29/2015 KNOBBE MARTENS OLSON & BEAR LLP 2040 MAIN STREET FOURTEENTH FLOOR IRVINE, CA 92614 EXAMINER DIAMOND, ALAN D ART UNIT PAPER NUMBER 3991 MAIL DATE DELIVERY MODE 09/29/2015 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 PATENT TRIAL AND APPEAL BOARD ____________________ INOVA LABS, INC. Third Party Requester/Cross-Appellant v. INOGEN, INC. Patent Owner/Appellant ____________________ Appeal 2015-000709 Reexamination Control 95/001,886 US Patent No. 6,605,136 B11 Technology Center 3900 ____________________ Before JOHN C. KERINS, RAE LYNN P. GUEST, and BRETT C. MARTIN, Administrative Patent Judges. MARTIN, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING 1 Issued to Graham et al. on August 12, 2003 (hereinafter "the '136 patent"). Appeal 2015-000709 Reexamination Control 95/001,886 US Patent No. 6,605,136 B1 2 The Patent Owner filed its Request for Rehearing on April 30, 2015 (hereinafter "Rehearing Request" or "Req. Reh'g") under 37 C.F.R. § 41.79 seeking rehearing of our Decision mailed March 31, 2015 (hereinafter "Decision" or "Dec."), which affirmed various final rejections of the claims made by the Examiner and applied to all pending claims. The Requester filed Requester's Comments on Patent Owner's Request for Rehearing (hereinafter "Req. Cmts.") on May 29, 2015. We grant the Rehearing Request to the extent that we consider the Requester's arguments, but DENY the request to modify the Decision. The Patent Owner first asserts that the Board misapprehended the disclosure of Ackley and, thus, found that it disclosed something that it does not. See Req. Reh'g 3–5. According to the Patent Owner, if a system operates in two modes, A and B, and mode A produces results A and X while mode B produces results B and X, then only result X is necessarily present because A and B are different and X is the only consistent result across modes. Req. Reh'g 4. This is not a proper analysis of inherency based on the facts of this case. For a reference to disclose something inherently, the result must necessarily flow from the teaching, and such a teaching may be found in a lone embodiment regardless of other embodiments. In the Patent Owner's hypothetical, if the teaching of mode A operation (i.e., with results A and X) meets the claim language, then mode A inherently anticipates results A and X. The reference teaches that in operating in mode A, results A and X necessarily occur. It is irrelevant that mode B produces different results. Appeal 2015-000709 Reexamination Control 95/001,886 US Patent No. 6,605,136 B1 3 Accordingly, we do not find this argument persuasive and decline to revise our discussion of the law of inherency as applied to Ackley in the Decision. The Patent Owner next asserts that the Requester's calculations are incorrect because they combine disparate disclosures of Ackley, namely the example shown in Table III with the processes shown in Figure 5. Patent Owner alleges no clear link between these portions of Ackley or that Ackley actually performed the calculations as set forth by the Requester. See Req. Reh'g 5–7. The Requester, however, persuasively points to portions of Ackley (see Req. Cmts. 3–6) that show that "[t]he experiments set forth in Table III were clearly run under the conditions set forth for FIG. 5." Req. Cmts. at 5. We agree with the Requester that, based on a preponderance of the evidence, "the experiments set forth in Table III necessarily produce the results described in Table III, all of which fall within the claimed range for the Dimensionless Coefficient." Req. Cmts. 5–6. In further arguing its case for rehearing, the Patent Owner submits new arguments not previously of record. See Req. Reh'g 7–11. As the Requester points out, during the Appeal, "[t]he Patent Owner failed to raise the issue that differences in the interpretation of the pressure would lead to a Dimensionless Coefficient that is outside of the range of the claims." Req. Cmts. 7. Instead, on appeal, Patent Owner merely alleged that inconsistencies in the Requester's calculations would undermine the Requester's approach, but would likely have little ultimate impact. See Patent Owner’s Appeal Brief 20-21. Patent Owner’s new argument is not permitted upon rehearing and should have been raised during the Appeal. See 37 C.F.R. § 41.79(b) (“Arguments not raised in the briefs before the Appeal 2015-000709 Reexamination Control 95/001,886 US Patent No. 6,605,136 B1 4 Board and evidence not previously relied upon in the briefs are not permitted in the request for rehearing except as permitted by paragraphs (b)(2) [upon a showing of good cause] and (b)(3) [new grounds of rejection have been entered] of this section.”). Furthermore, as the Requester states, "[i]n the Action Closing Prosecution, it was noted that, given the broadest reasonable interpretation consistent with the specification, Vads encompasses both methods of determining Vads," i.e., that proposed by the Requester as well as that proposed by the Patent Owner. Req. Cmts. 7. Accordingly, there is no need to correct the Vads value as proposed by the Patent Owner because the Requester's method of calculation falls within the broadest reasonable interpretation of the claims as determined by the Examiner. We further note that the Requester has shown that using the Requester's Vads, the other proposed corrections set forth by the Patent Owner still produce results that fall within the claimed range. Req. Cmts. 10. Accordingly, we are not persuaded of any error in our original Decision and decline to modify our reasoning in the original Decision. DECISION While we have considered the Decision in light of the Rehearing Request, we decline to modify it in any respect. DENIED Appeal 2015-000709 Reexamination Control 95/001,886 US Patent No. 6,605,136 B1 5 cdc PATENT OWNER: KNOBBE MARTENS OLSON & BEAR LLP 2040 MAIN STREET FOURTEENTH FLOOR IRVINE, CA 92614 THIRD PARTY REQUESTER: MEYERTONS, HOOD, KIVLIN, KOWERT & GOETZEL, P.C. PO BOX 398 AUSTIN, TX 78767-0398