Ex Parte De Villiers et al

Patent Trial and Appeal Board

Jul 29, 2016

11982420 (P.T.A.B. Jul. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111982,420 10/31/2007
21971 7590 08/02/2016
WILSON, SONSINI, GOODRICH & ROSATI
650 PAGE MILL ROAD
PALO ALTO, CA 94304-1050
FIRST NAMED INVENTOR
Malan De Villiers
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
29850-710.304 9451
EXAMINER
SNOW, BRUCE EDWARD
ART UNIT PAPER NUMBER
3738
NOTIFICATION DATE DELIVERY MODE
08/02/2016 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):
patentdocket@wsgr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MALAN DE VILLIERS and ULRICH R. HAHNLE
Appeal2014-003436
Application 11/982,420
Technology Center 3700
Before LYNNE H. BROWNE, ANNETTE R. REIMERS, and
GORDON D. KINDER, Administrative Patent Judges.
REIMERS, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
STATEMENT OF THE CASE
Malan de Villiers and Ulrich R. Hahnle (Appellants) filed a request
for rehearing under 37 C.F.R. § 41.52 (hereinafter "Request"), dated June
29, 2016, of our decision mailed May 3, 2016 (hereinafter "Decision"). In
that Decision, we affirmed the Examiner's rejection under 35 U.S.C.
§ 103(a) of claims 18-26 as unpatentable over Ferree (US 2004/0030391
Al; pub. Feb. 12, 2004) and Eisermann (US 6,740,118 B2; iss. May 25,
2004), and we reversed the Examiner's rejection under 35 U.S.C. § 103(a)
Appeal2014-003436
Application 11/982,420
of claims 18-26 as unpatentable over Buttner-Janz (US 5,401,269; iss. Mar.
28, 1995) and Eisermann. Appellants "request re-hearing of the issue of
unpatentability over Ferree and Eisermann." Request 1.
ANALYSIS
A request for rehearing is limited to matters overlooked or
misapprehended by the Panel in rendering the original decision. See 3 7
C.F.R. § 41.52; see also Ex parte Quist, 95 USPQ2d 1140, 1141 (BPAI
2010) (precedential) (quoting Manual of Patent Examining Procedure
(MPEP) § 1214.03 (8th ed., Rev. 9, Aug. 2012)). It may not rehash
arguments originally made in the Brief, neither is it an opportunity to merely
express disagreement with a decision. It may not raise new arguments or
present new evidence except as permitted by paragraphs (a)(2) though (a)(4).
Id. The proper course for an Appellant dissatisfied with a Board decision is
to seek judicial review, not to file a request for rehearing to reargue issues
that have already been decided. See 35 U.S.C. §§ 141, 145.
As noted in the Decision, Appellants have waived any arguments
contesting the substance of the Examiner's underlying findings of fact as to
the scope and content of Ferree and Eisermann as it relates to the
Examiner's determination of obviousness of claims 18-26. Rather,
Appellants have limited their challenge of the Examiner's obviousness
rejection to an attempt to remove Ferree as prior art. Decision 2-3; see also
Br. 5-9.
Appellants contend that they "did not argue (and are not arguing) that
the evidence showed actual reduction to practice. Instead, Appellants are
relying on their conception of the invention prior to the effective date of the
Ferree publication, and their subsequent diligence leading up to their
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Application 11/982,420
constructive reduction to practice." Request 1 (citing e.g., Appeal Br. 5).
Appellants contend:
At no point do Appellants argue that the claimed invention was
actually reduced to practice prior to the critical date of Ferree.
Nevertheless, the Decision on Appeal focuses extensively on the
question of actual reduction to practice. . . . However, the
Appellants are not using the Exhibits to show actual reduction to
practice.
Request 2.
We acknowledge Appellants' contention that they "are relying on
their conception of the invention prior to the effective date of the Ferree
publication, and their subsequent diligence leading up to their constructive
reduction to practice." Request 1. However, we disagree with Appellants
that the Decision "focuses extensively on the question of actual reduction to
practice." Id. at 2. Here, the Board pointed out that "[t]he 131
Declarations [of de Villiers and Hahnle] 1 do not specifically point to
descriptions or data within Exhibits A, E, F, or G to show evidence of
conception or reduction to practice of the method of claim 18." Decision 3
(emphasis added). The Board further pointed out:
The 131 Declarations consist of vague and general statements in
the broadest terms as to what Exhibits A, E, F, and G show along
with an assertion that these Exhibits indicate conception ... prior
to April 24, 2002. These statements amount essentially to mere
pleading, unsupported by proof or showing of facts. In re
Borkowski, 505 F.2d 713, 718 (CCPA 1974); In re Harry, 333
F.2d 920 (CCPA 1964) [(A mere statement that the claimed
1 As noted in the Decision, "[t]he affidavits are substantially identical, but
signed separately by each inventor. For ease of reference, we refer to the
affidavits of de Villiers and Hahnle as the "131 Declarations." Decision 3,
note 2; see also Request 4.
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Application 11/982,420
subject matter "was diligently reduced to practice" is not a
showing)]. The 131 Declarations do not adequately explain what
facts or data Appellants are relying upon to show a completion
[diligence] of their invention prior to the critical date. See
Borkowski, 505 F .2d at 718.
Decision 4 (emphasis added). The Board also pointed out:
Appellants have failed to point to the specific information in
Exhibits A, E, F, and G on which they rely to show conception
of the invention. Neither the 131 Declarations nor the arguments
in the Appeal Brief establish facts sufficient to tie the information
found in Exhibits A, E, F, and G to the claim limitations in a
manner to show conception of the method of claim 18. As such,
Exhibits A, E, F, and G are of little assistance in enabling the
Office to ascertain whether there was conception of the
invention ... prior to the effective date of the prior art.
Id. at 4--5 (emphasis added).
Appellants contend:
The Board seems to have missed the significance of the
inventors' statements in the declaration of how the device shown
in Exhibit A was intended to be implanted and used in a patient.
Appellants have met the burden of showing conception of the
invention with Exhibit A and the explanation in the 131
Declarations of Exhibit A. The 131 Declarations and Exhibits
B-G provide evidence of diligence.
Request 3; see also id. at 1 ("The 131 Declarations submitted in support of
Appellants' arguments provide evidence of conception (Exhibit A) and
evidence of subsequent diligence (Exhibits B-G)."); id. at 8 ("Appellants
have presented Exhibits B-G as evidence of diligence between the
conception of Exhibit A and the filing of the application. Exhibit A in
combination with the 131 Declarations provide the evidence of conception
of the invention.").
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We disagree with Appellants' assertions for the following reasons. As
pointed out in the Decision:
The 131 Declarations state that "[t]he illustrations contained in
Exhibit A ... fully support each limitation recited in the claims
of [the subject] patent application." 131 Declarations, para. 3.
The 131 Declarations further state that Exhibits E, F, and G are
"sheet[ s] of engineering drawings with improvements for the
devices first illustrated in Exhibit A." 131 Declarations, paras.
17, 18, 19. The 131 Declarations do not specifically point to
descriptions or data within Exhibits A, E, F, or G to show
evidence of conception ... of the method of claim 18.
Decision 3 (emphasis added). The Board further pointed out that "Exhibits
B, C, and Dare examples of 'invoice[s] from the contractor for work done
on the devices illustrated in Exhibit A.' 131 Declarations, paras. 9, 10, 11"
and "[ s ]imilar to Exhibits A, E, F, and G ... , Exhibits B, C, and D are of
little assistance in enabling the Office to ascertain whether there was
conception of the invention ... prior to the effective date of the prior art."
Id. at 6.2 Further, merely stating in the Appeal Brief that the inventors
"were diligent from that date until a constructive reduction to practice of
the claimed invention upon the filing of the Applicants' South African
priority application on September 19, 2002" is "not proof or 'showing of
facts' but mere pleading," Harry, 333 F.2d at 922, which is not sufficient to
show diligence. See Appeal Br. 5---6; see also Decision 4; Request 1, 2.
Appellants contend that they "have shown by the inventors own 131
Declarations that the inventors had possession of each and every step of the
method invention." Request 3. However, the Board pointed out that
2 We note that "centurion disc" was illegible on the copies of Exhibits B, C,
and D submitted with the Appeal Brief. See Appeal Br. 131 Declarations
Exhibits B, C, and D filed Sept. 25, 2013; see also Request 9.
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"neither Appellants' description of the prosthetic device in the 131
Declarations nor Exhibits A, E, F, and G correspond to every limitation of
the claims." Decision 5. For example, "neither the description of Exhibits
A, E, F, and G in the 131 Declarations nor Exhibits A, E, F, and G identify
the 'placing' [step] of claim 18." Id. The Board further pointed out that
"Appellants acknowledge that '[t]he drawings [of Exhibits A, E, F, and G]
do not show the prosthesis implanted between adjacent vertebrae with at
least one fin entering a slot cut in an associated vertebral surface."' Id.
(citing Br. 6). Even in the chart submitted by Appellants to provide the
Board evidence "where each of the limitations [of claim 18] is found in the
131 Declarations," there is no Exhibit cited for the "placing" step. See
Request 4, 7.
As correctly pointed out by the Examiner, "[the] parent application
was directed to device claims whereas the [subject] application is directed
to method claims." Ans. 8 (emphasis omitted); see also Decision 5 ("Even
if one were to find that the 131 Declarations provide sufficient evidence of
a prosthetic device, Appellants have not met their burden to show the
specifics of that prosthetic device in sufficient detail to establish that the
prosthetic device is used in the method as claimed."). In particular, we
agree with the Examiner that
the step of "placing the plates into place between adjacent
vertebrae with at least on [sic] fin entering a slot cut in an
associated vertebral surface" is not supported in the exhibits and
is not inherently concluded therefrom. For example, the fin
maybe pushed into the softer/deceased cancellous bone via
subsidence. Or, . . . additional bone maybe removed to
accommodate the fin which is outside the definition of a "slot[."]
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See Final Act. 3 (emphasis omitted); see also Ans. 9; Appeal Br. 12, Claims
App. As such, we disagree with Appellants that "the evidence provided in
the 131 Declarations describing the manner in which the devices were
intended to be used are sufficient to prove conception of the method step[]
of placing." Request 8.
Appellants contend:
As noted at [page] 6 of Appellants' Brief, substantially identical
131 Declarations were successfully employed in the parent of the
present application (US Serial No. 11/084,224) to overcome a
rejection of the claims in that case over Ferree. There was thus
no reason for Appellants to believe that the declarations would
be found to be deficient in this case.
Request 2; see also id. at 3.
At the outset, we do not agree with Appellants that the 131
Declarations for the subject application are "substantially identical" to the
131 Declarations for the parent application (US Application No.
11/084,224). See e.g., paragraph 4 of the 131 Declarations submitted with
the Appeal Brief for the subject application and paragraph 4 of the 131
Declarations for the parent application submitted April 30, 2008. Even
assuming arguendo that the 131 Declarations for the subject application
and the parent application are "substantially identical," as Appellants
contend, as noted above, the Examiner correctly points out that "[the]
parent application was directed to device claims whereas the [subject]
application is directed to method claims." Ans. 8 (emphasis omitted).
Further, "Appellants have not met their burden to show the specifics of
[the] prosthetic device in sufficient detail to establish that the prosthetic
device is used in the method as claimed." Decision 5. In particular,
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Appellants do not provide sufficient evidence of where the Exhibits
"specifically evidence conception ... of the 'placing' [step] of claim 18."
See Decision 3--4; see also id. at 5; Final Act. 3; Ans. 9; Request 3, 4, 7, 8.
For the above reasons, the arguments in Appellants' Request do not
convince us that we erred in affirming the Examiner's rejection of claims
18-26 as unpatentable over Ferree and Eisermann.
DECISION
Appellants' Request has been granted to the extent that we have
reconsidered our Decision in light of the arguments in Appellants' Request,
but is denied with respect to our making any modification to the Decision.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
DENIED
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