Ex Parte DoblerDownload PDFPatent Trial and Appeal BoardFeb 12, 201610986123 (P.T.A.B. Feb. 12, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 10/986,123 11/10/2004 7590 02/16/2016 Paul M, Denk 763 S. New Ballas Road St. Louis, MO 63141 FIRST NAMED INVENTOR Sven Dobler 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. 7579 7303 EXAMINER AHMED, HASAN SYED ART UNIT PAPER NUMBER 1615 MAILDATE DELIVERY MODE 02/16/2016 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 Ex parte SVEN DOBLER 1 Appeal2013-000504 Application 10/986,123 Technology Center 1600 Before ERIC B. GRIMES, MELANIE L. McCOLLUM, and CHRISTOPHER G. PAULRAJ, Administrative Patent Judges. McCOLLUM, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134 involving claims to a sampler. The Examiner has rejected claims as being obvious and as lacking written description. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. STATEMENT OF THE CASE Claims 9 and 15 are pending and on appeal (App. Br. 6). We will focus on claim 15, the only independent claim on appeal, which is set forth in the Claims Appendix to Appellant's Appeal Brief (id. at 16-17). 1 Appellant identifies the real parties in interest as Sven Dobler and Orlandi, Inc. (App. Br. 4). Appeal2013-000504 Application 10/986,123 Claim 15 stands rejected under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement (Ans. 5). Claims 9 and 15 stand rejected under 35 U.S.C. § 103(a) as obvious over: Greenland2 in view of Seidler,3 Matsos,4 Bootman,5 and Cloud6 (id.); Dobler I7 in view of Seidler, Matsos, and Cloud (id. at 9); and Dobler II8 in view of Seidler, Matsos, and Cloud (id. at 12). I As noted above, the Examiner rejects claims 9 and 15 under 35 U.S.C. § 103(a) as obvious over Greenland in view of Seidler, Matsos, Bootman, and Cloud (Ans. 5). In rejecting the claims, the Examiner finds: The embossing recited in claim 15 is not essential to a determination of patentability of the sampler disclosed in the claim. The patentability of product-by-process claims is based on the product itself. "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." (Id. at 7-8 (citing In re Thorpe, 777 F.2d 695 (Fed. Cir. 1985).) 2 Greenland, US 5,622,263, Apr. 22, 1997. 3 Seidler, US 5,031,647, July 16, 1991. 4 Matsos et al., US 6,006,916, Dec. 28, 1999. 5 Bootman et al., US 5,391,420, Feb. 21, 1995. 6 Cloud, US 5,348,031, Sept. 20, 1994. 7 Dobler, US 6,251,408 B 1, June 26, 2001. 8 Dobler, US 6,461,620 B2, Oct. 8, 2002. 2 Appeal2013-000504 Application 10/986,123 Analysis Appellant argues that Greenland "has no embossed wall or other shape for forming a well, chamber, or wall formed in the bottom ply, which cooperates with walls of the top ply, all of which are embossed in place" (App. Br. 11-12). We conclude that the Examiner has not set forth a prima facie case of obviousness. Claim 15 recites that the top and bottom plies "are embossed" (id. at 17). As noted by the Examiner, "[i]f the product in a product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." Thorpe, 777 F.2d at 697. However, the structure implied by the process should be considered when assessing the patentability of a product- by-process claim over the prior art. See In re Garnero, 412 F.2d 276, 279 (CCP A 1979). Here, the Examiner does not indicate how the applied art discloses or suggests the structure implied by the recitation in claim 15 that the top and bottom plies are embossed. Therefore, we conclude that the Examiner has not set forth a prima facie case of obviousness. Conclusion The Examiner has not set forth a prima facie case that Greenland, Seidler, Matsos, Bootman, and Cloud suggest the product of claim 15. We therefore reverse the obviousness rejection, over these references, of claim 15 and of claim 9, which depends from claim 15. II The Examiner rejects claim 15 under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement (Ans. 5). The 3 Appeal2013-000504 Application 10/986,123 Examiner also rejects claims 9 and 15 under 35 U.S.C. § 103(a) as obvious over Dobler I in view of Seidler, Matsos, and Cloud and over Dobler II in view of Seidler, Matsos, and Cloud (id. at 9 & 12). Appellant does not traverse any of these rejections. We therefore summarily affirm them. SUMMARY We reverse the obviousness rejection of claims 9 and 15 over Greenland in view of Seidler, Matsos, Bootman, and Cloud. However, we summarily affirm the obviousness rejections of claims 9 and 15 over Dobler I in view of Seidler, Matsos, and Cloud and over Dobler II in view of Seidler, Matsos, and Cloud, as well as the written description rejection of claim 15. TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED dm 4 Copy with citationCopy as parenthetical citation