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 03/31/2015 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 03/31/2015 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 APPEAL 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 STATEMENT OF THE CASE Appellant/Patent Owner appeals under 35 U.S.C. Â§Â§ 134(b) and 315(a) from the Examinerâ€™s rejections of claims 1-4, 8-13, 15, 17, and 21- 25. Cross-Appellant/Third Party Requester appeals the non-adoption of certain rejections under 35 U.S.C. Â§Â§ 101 and 112 as detailed in Requester's Brief. Requester Br. 3. Claims 5-7 and 18-20 are not subject to reexamination, and claims 14 and 16 were cancelled. Claims 1 and 13 are the independent claims and each was amended during reexamination prosecution. Claims 2-4, 8-12, 15, 17, and 21 are original claims that depend from amended claims 1 and 13, and claims 23-25 were added during reexamination. We have jurisdiction under 35 U.S.C. Â§Â§ 134(c) and 315(b). We AFFIRM. THE INVENTION Patent Owner's invention is directed generally to a pressure swing adsorption process and optimization. Claim 1, reproduced below, is illustrative of the claimed subject matter with underlining to show what was added during the reexamination via amendment: 1. A pressure swing adsorption process which comprises introducing a feed gas mixture into an inlet of an adsorber vessel during a feed period, wherein the feed gas mixture contains a more strongly adsorbable component and a less strongly adsorbable component and the adsorber vessel contains a bed of adsorbent material which selectively adsorbs the more strongly adsorbable component, and withdrawing a product gas enriched in the less strongly adsorbable component from an outlet of the adsorber vessel during at least a portion of the feed period, wherein a dimensionless cycle-compensated mass transfer coefficient defined as K tfeedVads/Vfeed is maintained in Appeal 2015-000709 Reexamination Control 95/001,886 US Patent No. 6,605,136 B1 3 the range of about 23 to about 250, where K is the linear driving force mass transfer coefficient for diffusion of the more adsorbable component in the adsorbent closest to a product end of the bed of adsorbent material, tfeed is the duration of the feed period, Vads is the empty volume of a section of the adsorber vessel which contains the bed of adsorbent material, and Vfeed is defined as NRT/Pads, where N is the number of moles of the feed gas mixture introduced into the inlet of the adsorber vessel during the feed period tfeed, R is the universal gas constant, T is the average absolute temperature of the feed gas mixture at the inlet of the adsorber vessel, and Pads is the absolute pressure of the feed gas at the inlet of the adsorber vessel, wherein K is determined experimentally by performing a breakthrough or length-of-unused bed test. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Hay Naheiri Ackley '2602 Chiang Ackley '742 US 5,176,721 US 6,156,101 US 6,790,260 EP 1 205 231 A1 WO 02/49742 Jan. 5, 1993 Dec. 5, 2000 Sep. 14, 2004 May 15, 2002 June 27, 2002 Ruthven et al., Pressure Swing Adsorption (VCH Publishers 1994) (hereinafter "PSA Book"). THE REJECTIONS ON APPEAL The Examiner made the following rejections: 2 Both Ackley patents contain essentially the same specification. Accordingly, unless specifically noted otherwise, we will refer to the two references collectively as Ackley. Appeal 2015-000709 Reexamination Control 95/001,886 US Patent No. 6,605,136 B1 4 1. Claims 1-4, 8-10, 12, 13, 15, 17, and 22-25 stand rejected under 35 U.S.C. Â§ 102(a)3 as being anticipated by or, in the alternative, under 35 U.S.C. Â§ 103(a) as being obvious over Ackley '742. RAN 18. 2. Claims 1-4, 8-10, 12, 13, 15, 17, and 22-25 stand rejected under 35 U.S.C. Â§ 102(e) as being anticipated by or, in the alternative, under 35 U.S.C. Â§ 103(a) as being obvious over Ackley '260. RAN 19. 3. Claims 11 and 21 stand rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over Ackley '742 or '260. RAN 27. 4. Claims 10 and 25 stand rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over Ackley '742 or '260 and Hay. RAN 28. 5. Claims 1-4, 9, 11, 13, 15, 17, 21, 24, and 25 stand rejected under 35 U.S.C. Â§ 102(b) as being anticipated by or, in the alternative, under Â§ 103(a) as being unpatentable over PSA Book. RAN 33. 6. Claims 8, 10, 12, 22, and 23 stand rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over PSA Book. RAN 42. 7. Claims 8-10, 12, and 22-24 stand rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over PSA Book and Hay. RAN 46. 8. Claims 1-4, 8-13, 15, 17, and 21-25 stand rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over Neheiri, PSA Book and Chiang. RAN 50. ANALYSIS The Law on Inherency Both parties appear to agree on the statement of the law that "a prior art reference may anticipate without disclosing a feature of the claimed 3 All references to U.S. statues and regulations are prior to relevant effective dates of the Leahy-Smith America Invents Act, signed September 16, 2011. Appeal 2015-000709 Reexamination Control 95/001,886 US Patent No. 6,605,136 B1 5 invention if that missing characteristic is necessarily present, or inherent, in the single anticipating reference." Rexnord Industries, LLC v. Kappos, 705 F.3d 1347, 1354 (Fed. Cir. 2013); see also In re Omeprazole Patent Litigation, 483 F.3d 1364, 1378 (Fed. Cir. 2007) ("anticipation by inherent disclosure is appropriate only when the reference discloses prior art that must necessarily include the unstated limitation, [or the reference] cannot inherently anticipate the claims.") (quoting Transclean Corp. v. Bridgewood Servs., Inc., 290 F.3d 1364, 1373 (Fed. Cir. 2002)). In general, a limitation is inherent if it is the "natural result flowing from" the explicit disclosure of the prior art. Schering Corp. v. Geneva Pharms., 339 F.3d 1373, 1379 (Fed.Cir. 2003). "Inherency ... may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient." Mehl/Biophile Intl Corp. v. Milgraum, 192 F.3d 1362, 1365 (Fed. Cir. 1999)(quoting In re Oelrich, 666 F.2d 578, 581 (CCPA 1981)). The parties disagree, however, as to the meaning of "necessarily present" as applied to the references at issue. See, e.g., PO App. Br. 12-15, Requester Resp. Br. 4-8. Patent Owner argues that Ackley does not inherently disclose the recited dimensionless cycle-compensated mass transfer coefficient because "not all PSA processes performed according to Ackley result in a Dimensionless Parameter within the claimed range." PO App. Br. 15-16. According to Patent Owner, the dimensionless cycle- compensated mass transfer coefficient does not necessarily, or always, fall within the claimed range. Appeal 2015-000709 Reexamination Control 95/001,886 US Patent No. 6,605,136 B1 6 As Requester points out, however, "a single example is sufficient to inherently anticipate a feature in a claim." Requester's Resp. Br. 8 (citing Toro Co. v. Deere & Co., 355 F.3d 1313, 1321 (Fed. Cir. 2004). It is essentially irrelevant that Ackley teaches examples in which the dimensionless cycle-compensated mass transfer coefficient falls outside of the claim language because, as stated above, "necessarily" in this context does not mean "always," it simply means that, in a given, explicit example, a dimensionless cycle-compensated mass transfer coefficient within the claimed range will necessarily result. Where patentability rests upon a property of the claimed material not disclosed within the art, the PTO has no reasonable method of determining whether there is, in fact, a patentable difference between the prior art materials and the claimed material. Therefore, where the Examiner has reason to believe that a claimed property may, in fact, be an inherent characteristic of the prior art, an Examiner possesses the authority to require applicant to prove that the subject matter shown to be in the prior art does not in fact possess the property. In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990); In re Best, 562 F.2d 1252, 1254-55 (CCPA 1977). Before Patent Owner can be put to this burdensome task, however, the Examiner must provide enough evidence or scientific reasoning to establish that the Examinerâ€™s belief that the property is inherent is a reasonable belief. Ex parte Levy, 17 USPQ2d 1461, 1464-65 (BPAI 1990); Ex parte Skinner, 2 USPQ2d 1788, 1789 (BPAI 1986). Appeal 2015-000709 Reexamination Control 95/001,886 US Patent No. 6,605,136 B1 7 Anticipation by Ackley Regarding Ackley, Patent Owner argues the rejection of independent claims 1 and 13 as representative of the group of rejected claims, and further argues separately dependent claims 10, 11, 21, and 25, which are discussed infra. Accordingly, the remaining dependent claims found anticipated by the Examiner stand or fall based upon the Patent Owner's arguments with respect to claims 1 and 13. Patent Owner argues "that it is not possible to determine from reading Ackley the true value of the dimensionless parameter K tfeedVads/Vfeed of the four simulation processes set forth in Table IIIâ€¦because Ackley does not disclose K values determined experimentallyâ€¦as required." PO App. Br. 19-20. Patent Owner goes on to assert that the value for kN2, upon which the Examiner relies to calculate the dimensionless parameter, is "a theoretical number selected for the simulation models." PO App. Br. 20. Patent Owner then states that this is so because the calculations used "may" involve assumptions and that these issues "undermine the sufficiency of the input data." PO App. Br. 20-21. Patent Owner does not provide any showing that the simulated values in Ackley and calculations used by the Examiner actually differ and differ substantially such that the dimensionless parameter would fall outside of the claimed range necessary to anticipate. Both the Examiner and the Requester provide explicit calculations that result in numerical values of the dimensionless parameter that meet the claim language at issue. We are not persuaded that such alleged inconsistencies amount to enough to call into question the explicit findings made by the Examiner. Patent Owner admits that a "small fluctuation is Appeal 2015-000709 Reexamination Control 95/001,886 US Patent No. 6,605,136 B1 8 unlikely to have a substantial impact in the calculated Dimensionless Parameter" and that "the ultimate impact of these inconsistencies on the calculated Dimensionless Parameters may be slight." Id. Thus, absent a showing that the Examiner is actually wrong, we are unpersuaded of error. As to the values of K used to calculate the dimensionless parameter being obtained from a simulation as opposed to being "experimentally" obtained as claimed, we agree with the Requester that this argument is insufficient.4 As Requester points out, "the Knaebel Declaration [upon which Patent Owner relies to challenge the K values, and thus the dimensionless parameter values] merely states that theoretical K values will 'not necessarily' match the true K values." Requester Resp. Br. 4. Dr. Knaebel does not assert that the K values are incorrect, nor does he perform the claimed experimentation to show that the experimental value would be different from the simulation value and call into question the Examiner's finding of inherency. Ackley does not specifically mention or disclose a dimensionless parameter as recited in the claims, but the variables are all taught for the calculation to be made. Ackley was not concerned with dimensionless parameter values, but one of skill in the art could utilize the teachings of Ackley to derive the values associated with the examples provided. Thus, Ackley inherently teaches a dimensionless parameter value by providing the necessary variables used to calculate it. Furthermore, as Requester notes, 4 Patent Ownerâ€™s argument also suggests that, as Requester asserts, the claim is indefinite to the extent that Patent Owner is asserting that a process can have multiple K values, and thus multiple dimensionless mass transfer coefficients, depending only on how that K value is determined, rather than based on changes in the claimed process parameters. Appeal 2015-000709 Reexamination Control 95/001,886 US Patent No. 6,605,136 B1 9 "Ackley teaches that '[s]ince the sorption rate associated with a given adsorbent's internal physical properties has been quantified for the examples herein, the breakthrough experiment employed to obtain the mass transfer rate coefficients and effective diffusivities is briefly described below.'" Requester Resp. Br. 10 (citing Ackley '742, p. 19, ll. 7- 12); see Ackley '260, col. 9, ll. 3-7. Ackley, therefore, specifically acknowledges the use of the claimed breakthrough testing to obtain the mass transfer rate coefficients, which would then be used to determine the dimensionless parameter as claimed. Also, we agree with the Examiner's finding that "the recitation in claims 1 and 13 'wherein K is determined experimentallyâ€¦' is not a process step, but rather simply defines how the Kâ€¦has been determined." The only process steps recited in claim 1 are "introducing a feed gas . . . " and "withdrawing a product gas . . . ". The dimensionless mass transfer coefficient is merely a parameter during the two steps of the process claimed. We agree with the Examiner that "K can be determined from said equation (2), or by breakthrough or length-of-unused-bed test." RAN 58 (see '136 patent, col. 5, ll. 47-50). Accordingly, calculated and experimental K values are expected to be substantially similar. Patent Owner has not persuasively shown that the calculated values would be different from experimentally determined values, thus causing the dimensionless parameter calculated from the teachings in Ackley to fall outside of the claimed ranges. The whole point of determining K by simulation is to approximate experimental results and simulations such as those in Ackley cannot be performed without first accumulating Appeal 2015-000709 Reexamination Control 95/001,886 US Patent No. 6,605,136 B1 10 experimental data upon which to base the simulations. Accordingly, we agree with the Examiner and the Requester that Ackley recognizes the use of breakthrough testing and that the simulated results specifically relied upon are intended to approximate, and are ultimately derived from, those experimental results. In other words, the Examiner has a reasonable basis for finding, based on the data reported in Ackley, that the dimensionless mass transfer coefficients of the examples in Ackley fall within the range claimed, whether using simulated K values or experimental K values. As noted above, the Patent Office has no means for providing the experimental data to confirm these findings. Thus, the burden shifts to Patent Owner to show that this is not the case. Spada, 911 at 708; Best, 562 at 1254-55. Absent a showing of the simulated results being different from actual experimental results and that the dimensionless mass transfer coefficient value falls outside the claims, which Patent Owner has not shown, we agree with the Examiner's findings on this point and are unpersuaded of error. Obviousness over Ackley Alone or in Combination with Hay Regarding claims 11 and 21, Patent Owner further argues that Ackley does not teach a pressure drop near zero. PO App. Br. 24. According to the Examiner, it would have been obvious to have the pressure drop maintained at or close to zero because "Ackley teaches minimizing or reducing pressure drop, and such would help avoid disruption of the adsorbent bed during the purge step, reduce operating costs, reduce potential for mechanical problems, etc." RAN 28. Patent Owner does not address the Examinerâ€™s reasoning why the skilled artisan would have modified the already low (3 Appeal 2015-000709 Reexamination Control 95/001,886 US Patent No. 6,605,136 B1 11 psig) pressure drop described in Ackley further. See Ackley, col. 3, ll. 4-19. Accordingly, we find no error in the Examinerâ€™s determination of obviousness. As to claims 10 and 25, the Examiner found that Figure 7 of Ackley can be extrapolated to show particle size and cycle times that substantially overlap the claimed particle sizes and cycle times. RAN 22-23. Patent Owner does not dispute the Examinerâ€™s finding. See generally PO App. Br. Br. The Examiner further determined that the claimed ranges would have been obvious based on the teachings of simulation R_3 in Table III and the disclosure of LiX adsorbents with a particle size of 0.7mm and 0.55 mm in Table II. RAN 26-27. Patent Ownerâ€™s arguments regarding undesirable results with respect to simulation R_3 are not persuasive. Patent Owner does not address the Examinerâ€™s findings with respect to the LiX adsorbents in Table II. Further, "[a] known or obvious composition does not become patentable simply because it has been described as somewhat inferior to some other product for the same use." In re Gurley, 27 F.3d 551, 552-3 (Fed. Cir. 1994). Moreover, Patent Owner admits that "Hay discloses some cycle times and/or particle sizes that may overlap with some of the claimed ranges." PO App. Br. 25. Patent Owner, however, further argues that Ackley "does not disclose, teach or suggest a PSA process with the claimed Dimensionless Parameter range and the claimed combinations of feed time and/or particle size recited in Claims 10 and 25." Patent Owner argues that the skilled artisan would not have chosen cycle time and/or particle size disclosed in Hay to modify the parameters described in Ackley because "Hay is directed Appeal 2015-000709 Reexamination Control 95/001,886 US Patent No. 6,605,136 B1 12 to a very different approach in operating PSA cycles." Id. We do not find Patent Owner's argument persuasive because, as Requester points out, "Hay teaches that 'it is an object of the present invention to provide a relatively low cost system by reducing the time of the cycle to increase productivity.'" Requester Resp. Br. 13 (quoting Hay, col. 1, ll. 65-68). Requester also notes that "[h]aving defined the goal of low cost, short cycle time, Hay presents the solution: 'cost savings are obtained by using a smaller quantity of adsorbant (1/3) and smaller adsorbers.'" Id. (quoting Hay, col. 2, ll. 18-19). Requester then concludes, and we agree, that "Hay provides motivation for reducing the particle size and the cycle time to improve the cost and to increase productivity." Id. Patent Owner has not explained why the cost efficiencies would not have been a reason for the skilled artisan to use the smaller particle sizes and cycles times of Hay in the process of Ackley. See KSR International Co. v. Teleflex Inc., 550 U.S. 398, 420 (2007) (â€œ[A]ny need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed.â€). Accordingly, we are not persuaded of error nor that the Examiner has engaged in impermissible hindsight in using the teachings of Hay. Remaining Issues Because the rejections addressed above amount to an affirmance of all claims rejected during reexamination, we decline to reach the other appealed rejections. For the same reasons, we also decline to reach the issues raised in the cross-appeal. Appeal 2015-000709 Reexamination Control 95/001,886 US Patent No. 6,605,136 B1 13 DECISION For the above reasons, we AFFIRM the Examinerâ€™s decision to reject claims 1-4, 8-13, 15, 17, and 21-25. We do not reach the cross-appeal. Requests for extensions of time in this inter partes reexamination proceeding are governed by 37 C.F.R. Â§Â§ 1.956 and 41.77(g). In accordance with 37 C.F.R. Â§ 41.79(a)(1), the â€œ[p]arties to the appeal may file a request for rehearing of the decision within one month of the date of: . . . [t]he original decision of the Board under Â§ 41.77(a).â€ A request for rehearing must be in compliance with 37 C.F.R. Â§ 41.79(b). Comments in opposition to the request and additional requests for rehearing must be in accordance with 37 C.F.R. Â§ 41.79(c) & (d), respectively. Under 37 C.F.R. Â§ 41.79(e), the times for requesting rehearing under paragraph (a) of this section, for requesting further rehearing under paragraph (d) of this section, and for submitting comments under paragraph (c) of this section may not be extended. An appeal to the United States Court of Appeals for the Federal Circuit under 35 U.S.C. Â§Â§ 141-144 and 315 and 37 C.F.R. Â§ 1.983 for an inter partes reexamination proceeding â€œcommencedâ€ on or after November 2, 2002 may not be taken â€œuntil all parties' rights to request rehearing have been exhausted, at which time the decision of the Board is final and appealable by any party to the appeal to the Board.â€ 37 C.F.R. Â§ 41.81. See also MPEP Â§ 2682 (8th ed., Rev. 7, July 2008). In the event neither party files a request for rehearing within the time provided in 37 C.F.R. Â§ 41.79, and this decision becomes final and appealable under 37 C.F.R. Â§ 41.81, a Appeal 2015-000709 Reexamination Control 95/001,886 US Patent No. 6,605,136 B1 14 party seeking judicial review must timely serve notice on the Director of the United States Patent and Trademark Office. See 37 C.F.R. Â§Â§ 90.1 and 1.983. AFFIRMED PATENT OWNER: KNOBBE MARTENS OLSON AND 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