Ex Parte Kumar et al

Patent Trial and Appeal Board

Feb 13, 2018

12509131 (P.T.A.B. Feb. 13, 2018)

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.
5024.09US01 9349
EXAMINER
EGGERDING, ALIX ECHET .MEYER
ART UNIT PAPER NUMBER
1729
MAIL DATE DELIVERY MODE
12/509,131 07/24/2009 Sujeet Kumar
62274 7590 02/13/2018
CHRISTENSEN, FONDER, DARDI & HERBERT PLLC
33 South Sixth Street
Suite 3950
Minneapolis, MN 55402
02/13/2018 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 SUJEET KUMAR, JAMES P. BUCKLEY, and HANG SHI
Appeal 2016-002239
Application 12/509,131
Technology Center 1700
Before ADRIENE LEPIANE HANLON, N. WHITNEY WILSON, and
JENNIFER R. GUPTA, Administrative Patent Judges.
WILSON, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
Appellants1 timely filed a Request for Rehearing under 37 C.F.R.
§ 41.52 (“Request”)2 of our Decision mailed September 13, 2017 in
connection with the above-captioned appeal (“Decision”). Requests for
Rehearing are limited to matters overlooked or misapprehended by the Panel
in rendering the original decision. See 37 C.F.R. § 41.52.
In the Decision, we affirmed (1) the rejection of claims 1, 3, 9-12, 14,
and 16 under 35 U.S.C. § 103(a) as unpatentable over Wakasugi3 in view of
1 Appellant identifies the real party in interest as Envia Systems, Inc.
(Appeal Br. 3).
2 Request for Rehearing filed November 10, 2017.
3 Wakasugi et al., US 8,021,785 B2, issued September 20, 2011.
Appeal 2016-002239
Application 12/509,131
Amine4, (2) the rejection of claims 5 and 15 under 35 U.S.C. § 103(a) as
unpatentable over Wakasugi in view of Amine and Sun5, (3) the rejection of
claims 6—8 under 35 U.S.C. § 103(a) as unpatentable over Wakasugi in view of
Amine and Suzuki6, and (4) the rejection of claim 21 under 35 U.S.C. § 103(a)
as unpatentable over Wakasugi in view of Amine, Suzuki, Radev7, and Sun.
We reversed the rejection of claims 17—19 under 35 U.S.C. § 103(a) as being
unpatentable over Wakasugi in view of Amine, Suzuki, and Radev.
ISSUES RAISED IN REQUEST
Claim 21. Appellants state that because claim 21 depends from
claim 17, its rejection should have been reversed for the same reason as
claim 17 (Request 3).8 We agree, and, upon reconsideration, hereby reverse
the rejection of claim 21 under 35 U.S.C. § 103(a) as unpatentable over
Wakasugi in view of Amine, Suzuki, Radev, and Sun.
Rejections 1 and 3. Appellants correctly note that Rejections 1 and 3
were considered together in the Decision, but suggest that the Board
incorrectly failed to consider the Suzuki reference at all (Request 4). However,
in the Appeal Brief Appellants stated that the claims subject to Rejections 1
and 3 would “stand and fall together” (Appeal Br. 6) and that claims 6 and 7
(the subject of Rejection 3), “are not separately argued with respect to
patentability” (Appeal Br. 21). Accordingly, the Decision appropriately did
4 Amine et al., US 2006/0147809 Al, published July 6, 2006.
5 Sun et al., US 2009/0253042 Al, published October 8, 2009.
6 Suzuki et al., US 2004/0072072 Al, published April 15, 2004.
7 Radev, US 7,497,285 Bl, issued March 3, 2009.
8 Appellants acknowledge (Request 4) that the Appeal Brief mistakenly
indicated that claim 21 stood or fell with claims 5 and 15.
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Application 12/509,131
not separately consider Rejection 3. 37 C.F.R. § 41.37(c)(l)(iv). Moreover,
on appeal, Appellants did not dispute the Examiner’s factual findings as to
Suzuki in setting forth Rejection 3 (see, Appeal Br. 21-23) and, therefore, did
not persuasively demonstrate reversible error in the portions of Rejection 3
which are not duplicative of Rejection 1.
Appellants argue that “the presence of the missing descriptive matter
of the claim in not considered in the context of whether it is inherent in the
combination of features pulled from two or more references since this
approach is completely inconsistent with a large body of law relating to
obviousness” (Request 6). Appellants further suggest that inherency is only
relevant in an obviousness context “to fill in an obvious necessary feature
from a single reference that are [sic] specifically described in the reference”
(id.). Appellants contend that it was improper for the Examiner to determine
that it would have been obvious to combine the teachings of Wakasugi and
Amine and that the properties recited in the claim would have been inherent
(id.).
However, the Federal Circuit has held that it is appropriate to apply
the doctrine of inherency in this situation (i.e. when the combined prior art
inherently has the claimed properties), stating that “the limitation at issue
necessarily must be present, or the natural result of the combination of
elements explicitly disclosed by the prior art.” PAR Pharm., Inc. v. TWI
Pharm., Inc., 773 F.3d 1186, 1196 (Fed. Cir. 2014) (emphasis added). We
disagree with Appellants’ contention that the Federal Circuit in In re Imes,
779 F.3d 1250 (Fed. Cir. 2015) barred the use of the doctrine of inherency
under the factual situation at issue here.
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Application 12/509,131
Appellants also contend that we overlooked an argument that “the
references under the initial rejection do not even provide any specifics on the
design and construction of their battery.” This argument was not
overlooked. As we explained in the Decision, the Examiner found that the
battery of Wakasugi in combination with Amine issubstantially identical to
that of the claims and, therefore, that the properties recited in the claims
were presumed to be inherent in that battery (Decision 6). We determined
that the Examiner had adequately established that the battery which would
have resulted from the obvious combination of Wakasugi and Amine would
have been substantially similar to the claimed battery, and that Appellants
had not persuasively shown error in that determination (Decision 6—7).
Appellants contend that the Examiner did not adequately set forth a
prima facie case of obviousness and that, therefore, even in the absence of
any showing by the Appellants, the rejection should have been reversed
(Request 8—9). We disagree with Appellants regarding the sufficiency of the
prima facie case of obviousness for the reasons set forth above and in the
Decision.
Appellants also argue that there would have been no reasonable
expectation of success in combining the teachings of Wakasugi and Amine
(Request 9-10). Appellants correctly note that in order for a set of
references to be combined to render a claimed invention obvious, a person of
skill in the art would need motivation to make the necessary combination to
achieve the claimed invention, and have a reasonable expectation of success
in doing so (Request 9, citing Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348,
1361 (Fed. Cir. 2007)). However, Appellants assert that this standard
requires that a person of skill in the art would have to have reasonably
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Application 12/509,131
expected that the combined prior art would have had all of the claimed
properties (Request 9-10). However, this standard would vitiate the use of
the inherency doctrine, which necessarily involves a situation in which the
claimed properties are not specifically mentioned in the art, but which the
Examiner has demonstrated would have been inherent in the proposed
combination. Thus, we reiterate that the Examiner showed that a person of
ordinary skill in the art would have had a reasonable expectation of success
in combining the teachings of Wakasugi and Amine, and that the proposed
combination would inherently have had the claimed properties. Appellants
have not shown reversible error in these findings.
With respect to the objective evidence of patentability presented by
Appellants, Appellants contend that the Board misapprehended the
significance of the information (Request 11). Appellants correctly state that
“[a]n appellant may rebut a prima facie case of obviousness by providing a
‘showing of facts supporting the opposite conclusion.’ Such a showing
dissipates the prima facie holding and requires the examiner to ‘consider all
of the evidence anew’” {id. at 12, citation omitted).
In this instance, the Decision was not perfectly clear that we
considered all of the evidence of record in reviewing the objective evidence
of patentability and found that the preponderance of that evidence supported
the Examiner’s conclusion of unpatentability. That is, as required, we
considered the evidence presented by the Examiner and the counter evidence
as presented by Appellants together, and concluded that the evidence of
unpatentability outweighed the evidence proffered by Appellants, essentially
for the reasons set forth in the Decision at pages 8—9, including the fact that
the showing was not commensurate in scope with the claims. Moreover, in
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Application 12/509,131
the Decision, we noted that Appellants had not disputed the Examiner’s
finding that “many of the data points of Sun appear to be improved
compared to Appellants’] data points” (Decision 9). Appellants now appear
to be attempting to dispute that finding (Request 14). However, having not
been raised earlier, these arguments are untimely, and will not be considered
at this time. 37 C.F.R. § 41.52(a)(1).
CONCLUSION
The subject Request has been granted to the extent that the Decision
has been reconsidered, and we determine that the rejection of claim 21 is
REVERSED, but is otherwise denied with respect to making other changes
therein.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
GRANTED-IN-PART
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