Ex Parte Durance et al

Patent Trial and Appeal Board

Jul 24, 2018

12682989 (P.T.A.B. Jul. 24, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/682,989 05/05/2010
22885 7590 07/26/2018
MCKEE, VOORHEES & SEASE, P.L.C.
801 GRAND A VENUE
SUITE 3200
DES MOINES, IA 50309-2721
FIRST NAMED INVENTOR
Timothy D. Durance
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.
P09610US01 8311
EXAMINER
YUEN, JESSICA JIPING
ART UNIT PAPER NUMBER
3743
NOTIFICATION DATE DELIVERY MODE
07/26/2018 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):
patatty@ipmvs.com
michelle. woods@ipmvs.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TIMOTHY D. DURANCE, JUN FU, and
P ARASTOO Y AGHMAEE
Appeal 2016-007246
Application 12/682,989
Technology Center 3700
Before LYNNE H. BROWNE, ERIC C. JESCHKE, and
BRENT M. DOUGAL, Administrative Patent Judges.
BROWNE, Administrative Patent Judge.
DECISION ON REMAND
STATEMENT OF THE CASE
We entered a decision on appeal on August 23, 2016, affirming the
Examiner's rejections of claims 1-13, 16-23, and 26-35 and reversing the
Examiner's rejection of claims 14, 15, 24, 25, 36, and 37. Ex parte
Durance, Appeal 2016-007246 (PT AB Aug. 23, 2016). We denied
Appellants' request for rehearing of this decision on November 10, 2016.
Appellants timely appealed from that decision to the U.S. Court of Appeals
for the Federal Circuit. In due course, the Federal Circuit issued a mandate
vacating our affirmance of the Examiner's rejection of claims 1-13, 16-23,
and 26-35 under 35 U.S.C. § 103(a), and remanding to the Board to consider
Appeal 2016-007246
Application 12/682,989
"( 1) whether the divider walls in the containers are a part of the claimed
structure of the tumbling limitation under§ 112; and (2) whether a structural
identity rejection can be used to find a prima facie case of obviousness for
method claims." In re Durance, Appeal No. 2017-1486, slip op. at 22 (Fed.
Cir. June 1, 2018). The appeal is before the Board for further consideration
consistent with the Federal Circuit's remand.
We reverse.
DISCUSSION
A. Issue 1: Are the divider walls in the containers part of the tumbling
limitation under 35 U.S.C. § 112, sixth paragraph?
Claim 1 requires, inter alia, "means for rotating the container inside
the vacuum chamber so as to tumble the organic material in the container."
Appeal Br. 15 (Claims App.). In the Reply Brief, Appellants contend that
this "means include gears 7 6 and 78 driven by motors 84 and 86.
Furthermore divider walls 146 promote tumbling of the organic material
when the container is rotated." Reply Br. 2. In other words, Appellants
contend that the structure corresponding to the claimed means includes gears
76, 78, motors 84, 86, and divider walls 146. In support of this contention,
Appellants direct our attention to paragraphs 24, 35, and 39 of the
Specification. See id. Paragraph 35, reproduced below, specifically pertains
to this issue:
The container 3 8 is a basket made of high density
polyethylene, with a cylindrical side wall 138, a closed bottom
wall 140 and a removable lid 142. The side wall, bottom wall
and lid are perforated by a plurality of holes 144 for the escape
of water vapor from the organic material during the dehydration
process. The basket has a plurality of support ribs 14 7 and a
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Appeal 2016-007246
Application 12/682,989
support ring 145. Longitudinally-extending divider walls 146
divide the interior space into four segments, to promote the
tumbling of the materials in the baskets, as the baskets rotate in
the vacuum chamber.
Id. ,r 35 ( emphasis omitted).
Appellants maintain that rotating of the container does not guarantee
tumbling of the contents as required by claim 1. See, e.g., Appeal Br. 11;
see also Reply Br. 2. Rather, as Appellants explain, "tumbling would be
dependent on speed of rotation as well as the adherence of the contents to
the inner surface of the container." Id. at 11. From these arguments, we
understand Appellants' position to be that in order for the claimed "means
for rotating" to guarantee tumbling of the contents, some other feature
beyond a rotating container must be a part of the claimed means. The
Specification identifies this feature as the divider walls. Spec. ,r 35.
Accordingly, in order to anticipate the claim language as issue, the prior art
must include divider walls or equivalents thereof.
B. Issue Two: Can a structural identity rejection be used to find a prima
facie case of obviousness for method claims?
Claims 16, 34, and 3 5 are method claims. Appeal Br. 18, 21-22
(Claims App.) In responding to Appellants' arguments in the Appeal Brief,
the Examiner addressed claims 1, 16, 34, and 35 together. See Ans. 16-18.
Specifically, the Examiner's statement that "there is no structural difference
between the claimed invention and the combined teachings of the prior art
references" does not consider the differences between apparatus claim 1 and
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Appeal 2016-007246
Application 12/682,989
method claims 16, 34, and 35. In other words, the Examiner's response does
not address how either Wefers or Burger performs the method steps at issue.
Although we are aware of instances where the performance of a
method is inherent in provision of the apparatus (most notably in cases
where the method merely recites steps of providing the components of an
apparatus), structural identity alone is not always sufficient to show that a
method is known or suggested by the prior art.
C. Conclusions Based on Issues A and B
As discussed supra with reference to issue A, the rotation means set
forth in claim 1 requires divider walls or equivalents thereof. Neither
W efers nor Burger discloses divider walls or equivalents thereof.
Accordingly, neither reference discloses a rotation means as claimed. For
this reason, we do not sustain the Examiner's decision rejecting claim 1, and
claims 2-6, 12, and 26-29, which depend therefrom.
As discussed supra with respect to issue B, identity of structure does
not always provide sufficient support for a prima facie case of obviousness
for a method claim. In this case, the Examiner fails to explain how either
W efers or Burgers meets the method limitations pertaining to tumbling the
organic material. Thus, the Examiner fails to set forth a prima facie case of
obviousness for claims 16, 34, and 35, and claims 17-20, which depend
from claim 16. Accordingly, we do not sustain the Examiner's decision
rejecting these claims.
The remaining rejections suffer from the same deficiencies as the
rejections of claims 1, 16, 34, and 35. Accordingly, we do not sustain the
Examiner's rejections of claims 7-11, 13-15, 21-25, 30, 32, 36, and 37.
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Application 12/682,989
DECISION
The Examiner's rejections of claims 1-37 are REVERSED.
REVERSED
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