Ex Parte Hamilton

Patent Trial and Appeal Board

Aug 7, 2017

12831339 (P.T.A.B. Aug. 7, 2017)

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.
12/831,339 07/07/2010 Sheila Hamilton 713-2720 2250
22429 7590 08/09/2017
HAUPTMAN HAM, LLP
2318 Mill Road
Suite 1400
ALEXANDRIA, VA 22314
EXAMINER
LEE, DOUGLAS
ART UNIT PAPER NUMBER
1714
NOTIFICATION DATE DELIVERY MODE
08/09/2017 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):
docketing @ ipfirm. com
pair_lhhb @ firsttofile. com
EAnastasio @ IPFirm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SHEILA HAMILTON
Appeal 2015-004173
Application 12/831,3391
Technology Center 1700
Before KAREN M. HASTINGS, JAMES C. HOUSEL, and
JULIA HEANEY, Administrative Patent Judges.
HOUSEL, Administrative Patent Judge.
DECISION ON REHEARING
Appellant requests rehearing of a DECISION ON APPEAL dated
April 27, 2017,2 affirming the Examiner’s decision that claims 1—20 are
unpatentable over the prior art of record.
A request for rehearing must state with particularity the points
believed to have been misapprehended or overlooked by the Board.
Arguments not raised in the Briefs before the Board and evidence not
1 According to Appellants, the real party in interest is ITW CS (UK)
Limited. Appeal Br. 2.
2 Hereinafter, “Decision.”
Appeal 2015-004173
Application 12/831,339
previously relied upon in the Briefs are not permitted in a Request for
Rehearing except as permitted by 37 C.F.R. §§ 41.52(a)(2) and (a)(3). See
37 C.F.R. § 41.52(a)(l)(2015).
We have reconsidered our Decision of April 27, 2017, in light of
Appellant’s comments in the Request for Rehearing, and we find no error in
the disposition of the affirmed rejections. We remain of the opinion that the
subject matter of the claims is unpatentable in view of the applied prior art.
I.
The Board’s Decision affirmed the Examiner’s rejections under
35 U.S.C. § 103(a) of claims 1—20 as unpatentable over Saito in view of
Takeuchi and Nonaka, as evidenced by Kim, alone or further in view of
Hamilton or Van Rheenen.
In the Request for Rehearing, Appellant somewhat passionately and,
through the use of analogy, words in capitals, and large and bold font,
expresses general dissatisfaction with the Decision. We note Appellant
takes issue with nearly every aspect of the Decision, asserting that the Board
failed to consider Appellant’s arguments and failed to establish a complete
record, primarily because the Board did not find Appellant’s arguments
persuasive. In doing so, Appellant resubmits and elaborates on arguments
already made in the Appeal and Reply Briefs. We find no merit to
Appellant’s resubmission of these arguments. Nonetheless, we address
Appellant’s arguments to ensure completeness in the record.
We can distill from the Request, albeit with some difficulty, certain
points which Appellant believes were improperly decided. In particular,
Appellant contends that the Decision fails to show where a suitable adhesive
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Application 12/831,339
containing no silicone exists (Request 1). In addition, Appellant urges that
the Decision completely misconstrues the inventor’s Declaration without
addressing that a negative cannot be proved (id.). Appellant further
apparently is asserting, by reference to a label for COCA-COLA®, that the
Decision creates a factual fallacy that failure to list an ingredient does not
mean the ingredient is not present (id. at 3). A further point Appellant raises
is that the Decision failed to consider the difference between Saito’s
adhesive for cleaning computer chips and Takeuchi’s adhesive for applying
labels to hard drives (id. at 2-4). Finally, the Request seeks reconsideration
of the Decision with regard to the determination that Nonaka is analogous
prior art (id. at 32—36).
II.
Request for reconsideration of the affirmance of the rejections of claims 1—
20
Appellant requests our reconsideration of the affirmance of the
rejections of claims 1—20, focusing on the limitations of claim 1 only. The
first point is a threshold question: What does a patent that lists the materials
for a structure teach or suggest, implicitly or inherently, to one of ordinary
skill in the art with regard to materials that are not listed? Here, there is no
dispute that Saito lists alternative materials for various layers of a tape,
specifically excluding silicone in a film or tape layer, and lists a number of
adhesive materials for an adhesive layer, wherein the list of adhesive
materials is silent to the presence or absence of silicone in the adhesive
layer. Appellant’s claim 1 excludes silicones from a film and an adhesive
layer on a first side of the film.
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Application 12/831,339
In this regard, Appellant disputes the Decision’s determination that
Saito’s silence as to the presence of silicone in the adhesive either inherently
teaches, or reasonably suggests, that silicone is not present in the adhesive.
In Appellant’s view, silence provides the opposite teaching—that the
ingredient is present. We disagree.
Because Saito teaches a list of adhesives, none of which include
silicone, those skilled in the art would reasonably interpret that Saito’s
adhesives do not require silicone. Inherency in such a case is what the
reference’s teaching suggests to the ordinary artisan, i.e., that silicone need
not, and indeed should not be present. In the Decision, we point out that the
Examiner specifically found that Saito teaches “that the electronic parts that
are being cleaned should not contact silicone” and that “[i]t is either inherent
or reasonably expected that the adhesive layer would also not contain
silicone because the electronic parts are not to contact silicone.” Decision 5;
Ans. 2—3. Appellant’s argument fails to show a misapprehension by the
Board on this point.
Appellant questions how can they refute silence. (Request 10). To
support an anticipation or obviousness rejection when a reference is silent
about a limitation positively recited in a claim, the Examiner must establish
that the missing limitation is necessarily present in the thing described in the
reference. In re Oelrich, 666 F.2d 578, 581 (CCPA 1981) (“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.”). Conversely, where, as here, the Examiner establishes not only
that the reference is silent with regard to a limitation negatively recited in the
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Application 12/831,339
claim, but also finds a teaching in the reference that supports the exclusion,3
the burden is upon Appellant to show that the excluded limitation is
necessarily present in the thing described in the reference. “[W]hen the PTO
shows sound basis for believing that the products of the applicant and the
prior art are the same, the applicant has the burden of showing that they are
not.” In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990). That burden is not
met by establishing that the material excluded by the claim may be present in
the prior art product, if desired. In re Montgomery, 677 F.3d 1375, 1380
(Fed. Cir. 2012).
Here, Appellant’s Declaration fails to carry Appellant’s burden.
Appellant’s Declaration fails to establish that Saito’s adhesive compositions,
while silent to the presence of silicone therein, nonetheless inherently
include silicone. At best, Appellant’s Declaration merely demonstrates that
Saito’s adhesive compositions could or may include silicone. Such a
showing is insufficient to demonstrate that the ordinary artisan would
understand that silicone is necessarily present. Indeed, the ordinary artisan
would reasonably conclude from Appellant’s Declaration that Saito’s
adhesive compositions do not necessarily include silicone. Decision 6.
When a prior art reference (Saito) does not indicate that its adhesives
contain silicone excluded by the claims, it is reasonable for the Examiner to
presume that such adhesives do not contain silicone unless Appellant can
identify some teaching in the prior art reference that may imply the contrary
or can offer an evidentiary showing to the contrary. However, the Examiner
3 See Ans. 2 (citing Saito 13) and the Oral Hearing Transcript from the oral
hearing held May 3, 2017 (Trans.) 3:6—7 (“in [Saito] yes, they do not want
silicone to get to the adhesive layer.”)
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found that Saito suggests that silicone be excluded. Ans. 2. Moreover, as
the Examiner pointed out, Appellant’s Declaration fails to persuasively the
assertion that the Saito’s adhesives are not free of silicone. Id. at 13.
We turn next to Appellant’s assertion, by reference to a label for
COCA-COLA®, that the Decision creates a factual fallacy that failure to list
an ingredient does not mean the ingredient is not present.4 The Request also
inexplicably attempts to analogize to a picture of collapsed bridge with no
sign in an attempt to show the Decision is deficient in treating Appellant’s
teaching away argument in the Appeal Brief. Request 8—9. We note that
neither of these arguments were presented in the Appeal or Reply Briefs, nor
has Appellant asserted that the submission of these new arguments is in
accordance with any of 37 C.F.R. §§ 41.37, 41.41, 41.47, and 41.52(a)(2)—
(4). Therefore, we decline to consider or otherwise address these new
arguments.
4 Appellant’s attempt to analogize the ingredient list on a container of
COCA-COLA® to the disclosure of a patent not only represents a new
argument not previously raised, but reveals a fundamental misunderstanding
of the difference between food labeling law and patent law. Ingredients
Appellant believes are present in COKE® may be covered broadly by
generic terms such as “flavors” which may satisfy food labeling laws.
FD&C Act § 403(i)(2) and 21 C.F.R. § 101.22(h)(1). In addition, food
labeling is intended to convey information to the general public with regard
to nutritional value and product contents. The patent disclosure, on the other
hand, is a functional document in that it must teach those skilled in the
relevant art how to make and use the invention as well as demonstrate
possession of the invention. Generally, absent evidence to the contrary, the
ordinary artisan would understand a patent disclosure that is silent as to the
presence of a component in a composition does not include such a
component.
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Appellant’s next argument is that the Decision failed to consider the
difference between Saito’s adhesive for cleaning computer chips and
Takeuchi’s adhesive for applying labels to hard drives {id. at 2-4). Before
addressing this argument, it is important to note that the Decision makes
clear that the Examiner’s reliance on Takeuchi represents an alternative
basis (to obviousness based on Saito and Nonaka only) upon which the
Examiner concluded that the claimed invention would have been obvious to
one of ordinary skill in the art. Decision 7 (“Therefore, on this record, we
are satisfied that the Examiner has established that Saito’s binders inherently
do not contain [silicone].”)5
The Request urges that the Decision fails to address, or at least
properly address, Appellant’s arguments that Saito’s adhesive for cleaning
computer chips and Takeuchi’s adhesive for applying labels to hard drives
are fundamentally different in function and strength. Request 3—6, 9, 14,
22—29. Appellant’s arguments, though more passionately presented in the
Request, substantively repeat those made in the Appeal and Reply Briefs
regarding the Examiner’s reliance on Takeuchi. In particular, Appellant
contends that Takeuchi’s adhesive is used to permanently affix labels to an
electronic device, which if used in Saito, would result in a “ferris wheel”
5 We note that the Decision states “Saito’s binders inherently do not contain
binders.” Decision 7. In the context of the paragraph concluding with the
sentence in question, it is clear that the issue was whether Appellant’s
Declaration persuasively showed that Saito’s binders inherently contain
silicone. As such, it is clear in this context that the sentence erroneously
referred to Saito’s binders not containing binders rather than not containing
silicone. Accordingly, we are of the opinion that this is harmless error.
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effect as depicted in the figures on pages 5 and 29 of the Request and page
15 of the Appeal Brief.6
However, the Decision expressly considered Appellant’s arguments
that it would not have been obvious to modify Saito to use a non-silicone
adhesive as taught by Takeuchi. Decision 7—11. Appellant’s general
dissatisfaction with the Decision in this regard is insufficient to demonstrate
that the Board misapprehended Appellant’s arguments. Appellant’s “ferris
wheel” effect argument, advanced for the purpose of demonstrating that
substitution of Takeuchi’s adhesives in Saito would render Saito unsuitable
for its intended purpose, presumes that Takeuchi’s adhesives would be
physically substituted for those of Saito’s. However, as the Decision
indicates (Decision 10), this aspect of the rejection is not based on physical
substitution of Takeuchi’s adhesives into Saito, but on what the combined
teachings of Saito and Takeuchi suggest to one of ordinary skill in the art.
See In re Keller, 642 F.2d 413, 425 (CCPA 1981) (citations omitted) (“The
test for obviousness is not whether the features of a secondary reference may
be bodily incorporated into the structure of the primary reference. . . .
6 Appellant also asserts that the Decision failed to consider Appellant’s
challenge to the Examiner’s taking of Official Notice that adjusting the
strength of the adhesive would have been within the ordinary skill in the art
depending on the use of the adhesive. Request 26—27. However, we note
Appellant’s “challenge” was based on procedural grounds, in lieu of filing a
petition that the Examiner’s position is a new ground of rejection. Reply Br.
8—9. As Appellant’s own challenge readily admits, the proper procedural
challenge to a new grounds of rejection in an Examiner’s Answer is a
petition to the Director under 37 C.F.R. § 1.181, pursuant to § 41.40.
Absent such a petition, our review of Appellant’s challenge, as set forth in
the Decision, was based on whether Appellant has identified reversible error
in the Examiner’s position. In re Jung, 637 F.3d 1356, 1365 (Fed. Cir.
2011).
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Application 12/831,339
Rather, the test is what the combined teachings of those references would
have suggested to those of ordinary skill in the art.”)
As the Decision outlines, Saito teaches to avoid contacting silicone to
the surface of electronic parts, and lists possible adhesive binders none of
which expressly include silicone; Takeuchi lists silicone-free adhesives,
which overlap some of Saito’s. Decision 11. In addition, the Decision
discusses the Examiner’s finding that it was within the ordinary skill in the
art to either adjust the strength of the adhesive or choose the adhesive with
appropriate strength. Id. at 10. Therein, the Decision indicates that the
overlap in the listed adhesives in Saito and Takeuchi supports the
Examiner’s finding. Id. Appellant, in the Request or elsewhere in the
record, has not identified reversible error in this finding either by persuasive
technical reasoning or evidentiary showing.
Finally, we turn to the Request’s argument that the Decision failed to
provide evidence or rationale to refute Appellant’s argument in the Briefs
that the Examiner provided no evidence or rationale in support of defining
the field of endeavor as “the use of adhesives on electronic parts,” such that
Nonaka is analogous prior art. Request 32. According to Appellant, the
Decision focuses on the problem faced by the inventor rather than the field
of endeavor.7 Id. However, regardless of the merits of the Request’s
argument, we note the Request fails to attempt to identity reversible error in
7 The Request urges that “[i]f the Examiner was going to rely on the problem
faced by the inventors after Applicant traversed the assertion that Nonaka
was analogous art, the [EJxaminer should have stated such.” Request 33.
This view ignores the fact that the Examiner clearly stated reliance on
Nonaka as reasonably pertinent to the particular problem with which
Appellant was concerned, as an alternative to reliance on Nonaka as being in
the same field of endeavor as Appellant. See Ans. 15—16.
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the Examiner’s finding that Nonaka, even if from a different field of
endeavor, is reasonably pertinent to the problem faced by the inventor. As
such, even if we were to agree that the Decision was deficient in regard to
supporting the field of endeavor, the Request fails to show that the Decision
misapprehends or overlooks that Nonaka is nonetheless analogous prior art
as being reasonably pertinent to the problem faced by Appellant.
In addition, the Request ignores the Decision’s analysis of the field of
endeavor in asserting that the Decision fails to provide any evidence or
rationale in support of a broader definition of the field of endeavor than
argued by Appellant. See Decision 12—13. As such, the Request fails to
address with any particularity how the Board misapprehended or overlooked
Appellant’s arguments regarding the field of endeavor.
Accordingly, Appellant has not persuasively shown that the Board
misapprehended or overlooked any of the arguments raised in the Briefs, or
that the Decision should otherwise be modified or reversed.
III.
Appellant’s Request for Rehearing has been granted to the limited
extent that the Decision has been reconsidered in light of Appellant’s
arguments. However, the request is otherwise denied, and the Decision is
not modified in any respect.
This Decision on the Request for Rehearing incorporates our
Decision, mailed April 27, 2017, and is final for the purposes of judicial
review. See 37 C.F.R. § 41.52(a)(1).
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
REHEARING DENIED
11