11101573 (P.T.A.B. Jul. 9, 2013)

Ex Parte Okada et al

Patent Trial and Appeal BoardJul 9, 2013

11101573 (P.T.A.B. Jul. 9, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE 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. 11/101,573 04/08/2005 Hiroyuki Okada 396.44990X00 4438 20457 7590 07/10/2013 ANTONELLI, TERRY, STOUT & KRAUS, LLP 1300 NORTH SEVENTEENTH STREET SUITE 1800 ARLINGTON, VA 22209-3873 EXAMINER HORNING, JOEL G ART UNIT PAPER NUMBER 1712 MAIL DATE DELIVERY MODE 07/10/2013 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 BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte HIROYUKI OKADA, MOTOHARU TAKEUCHI, and MASAHIRO JOHNO ____________ Appeal 2012-001904 Application 11/101,573 Technology Center 1700 ____________ Before CHING K. PAK, TERRY J. OWENS, and KAREN M. HASTINGS, Administrative Patent Judges. HASTINGS, Administrative Patent Judge. DECISION ON APPEAL This is a decision on an appeal under 35 U.S.C. § 134 from the Examiner’s rejection of claims 1, 3, 4, and 7-14. We have jurisdiction pursuant to 35 U.S.C. § 6. We AFFIRM. Appeal 2012-001904 Application 11/101,573 2 BACKGROUND Claim 1 is illustrative of the claimed subject matter and is reproduced below: Appeal 2012-001904 Application 11/101,573 3 All of the rejections on appeal are under 35 U.S.C. § 103(a) and rely upon the combined prior art of Nakayama1 and Kadowaki2. (For a full listing of all the rejections on appeal, see App. Br. 10; Ans. 4-8). MAIN ISSUE ON APPEAL Have Appellants identified reversible error in the Examiner’s obviousness rejection of claim 1 over the applied prior art? If not, have Appellants overcome the rejection by rebutting the prima facie case with sufficient evidence of commercial success and long-felt need? We answer both of these questions in the negative. PRINCIPLES OF LAW “A person of ordinary skill is also a person of ordinary creativity, not an automaton.” KSR Int’l. Co. v. Teleflex Inc., 550 U.S. 398, 421. See also DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1367 (Fed. Cir. 2006) (“Our suggestion test is in actuality quite flexible and not only permits, but requires, consideration of common knowledge and common sense.”). ANALYSIS Appellants mainly argue the claims as a group in the first ground of rejection under § 103 over Nakayama and Kadowaki. Accordingly we select independent claim 1 as representative. We have thoroughly reviewed each of Appellants’ arguments for patentability. However, we are in agreement with the Examiner that the claimed subject matter of representative claim 1 would have been obvious to 1 Nakayama et al., US 7,338,984 B2, patented Mar. 4, 2008 2 Kadowaki, JP 2001-083301 A, published Mar. 30, 2001, as translated Appeal 2012-001904 Application 11/101,573 4 one of ordinary skill in the art within the meaning of § 103 in view of the applied prior art. Accordingly, we will sustain the Examiner’s rejections for essentially those reasons expressed in the Answer, including the Examiner’s Response to Argument section, and we add the following primarily for emphasis. Appellants’ main argument is that Kadowaki does not disclose or suggest the claimed cleaning process and its attendant advantages because its examples concentrate on the use of ozone versus hydrogen peroxide (App. Br. 17). This argument is unavailing, since it is well established that, in a Section 103 inquiry, “[a]ll the disclosures in a reference must be evaluated, including nonpreferred embodiments, and a reference is not limited to the disclosure of specific working examples.” In re Mills, 470 F.2d 649, 651 (CCPA 1972) (citations omitted). See also Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (“the fact that a specific [embodiment] is taught to be preferred is not controlling, since all disclosures of the prior art, including unpreferred embodiments, must be considered”) (internal quote and citation omitted; square brackets original). A preponderance of the evidence supports the Examiner's determination that the combined teachings of the applied prior art provides the requisite motivation, suggestion, and teaching to use an acid dipping treatment step followed by washing in an alkali solution as encompassed by the claims and as exemplified in Kadowaki on the polymer lenses cured episulfide substrate of Nakayama (which is also encompassed by the claimed substrate), in order to improve the adhesion of the hard coating to the substrate (Ans. 5). As pointed out by the Examiner, Kadowaki explicitly Appeal 2012-001904 Application 11/101,573 5 teaches that such a cleaning process improves adhesion of the coating onto a polymer lens substrate (Kadowaki paras. 0006, 0007; e.g., Ans. 6, 9). Appellants do not dispute that the applied prior art teaches improved adhesion, nonetheless they argue that neither reference recognizes improved adhesion after a humidity resistance test, or appearance. (e.g., App. Br. 17, 27; Reply Br. 2-6). This argument is unavailing. The fact that Appellants may have recognized another property which would flow naturally from following Kadowaki's teaching or suggestion for the dipping/washing treatment cannot be the basis for patentability when the differences, if any, would otherwise have been obvious. In re Kao, 639 F.3d 1057, 1070 (Fed. Cir. 2011) (“Maloney's express teachings render the claimed controlled release oxymorphone formulation obvious, and the claimed ‘food effect’ adds nothing of patentable consequence.”); see also Ex parte Obiaya, 227 USPQ 58, 60 (BPAI 1985). For the foregoing reasons and those stated in the Answer, we agree with the Examiner’s findings in support of obviousness for all of the claims on appeal.3 Unexpected Results Having determined that prima facie obviousness has been established, we begin our consideration anew and consider any evidence of obviousness against any evidence of non-obviousness (such as evidence of unexpected results). See In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). 3 To the extent Appellants have presented substantive separate arguments for any of the dependent claims, such as claims 12 -14, including those separately rejected, a preponderance of the evidence supports the rejections as set out in the Examiner’s Answer. Appeal 2012-001904 Application 11/101,573 6 Appellants contend that the evidence of record, including Example 4 of the Specification as well as the supplemental comparative Example of the Declaration filed Dec. 1, 2010 shows that the invention achieves “unexpectedly better results” (App. Br. 19; see also Reply Br. generally). The burden of showing unexpected results rests on the person who asserts them by establishing that the difference between the claimed invention and the closest prior art was an unexpected difference. See In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972); Ex parte Ishizaka, 24 USPQ2d 1621, 1624 (BPAI 1992). Further, the showing of unexpected results must be commensurate in scope with the claims. See In re Peterson, 315 F.3d 1325, 1330-31 (Fed. Cir. 2003). Finally, unexpected results must be established by factual evidence, and attorney statements are insufficient to establish unexpected results. See In re Geisler, 116 F.3d 1465, 1470-71 (Fed. Cir. 1997). Significantly, Appellants have not persuasively rebutted the Examiner's determination that Example 4 of the Specification and the additional comparative example of the Declaration do not evince nonobviousness because the results of improved adhesion are entirely expected results based on Kadowaki, and the single inventive Example 4 is not commensurate in scope with claim 1 (or claim 13 or 14) (e.g., Ans. 11, 12). We determine that Appellants have not met the burden for showing unexpected results, for at least the reasons provided by the Examiner (Ans. 10-14)4. The facts and law support the position of the Examiner. 4 We consider the Examiner’s brief discussion of scope of enablement (Ans. 13; Reply Br. 6) to be harmless error. The Examiner properly focused on the Appeal 2012-001904 Application 11/101,573 7 Appellants’ assertions that while the applied prior art recognizes improved adhesion, it does not recognize improved adhesion after a humidity resistance test, or appearance, are unavailing (e.g., App. Br. 17, 27; Reply Br. 2-6) for the reasons discussed previously. In addition, we emphasize that, although secondary considerations such as unexpected results must be taken into account, they do not necessarily control the obviousness conclusion. See Agrizap, Inc., v. Woodstream Corp., 520 F.3d 1337, 1344 (Fed. Cir. 2008); see also, Sud- Chemie, Inc. v. Multisorb Technologies, Inc., 554 F.3d 1001, 1009 (Fed. Cir. 2009) (“[E]vidence of unexpected results and other secondary considerations will not necessarily overcome a strong prima facie showing of obviousness”); Pfizer, Inc. v. Apotex, Inc., 480 F.3d, 1348, 1372 (Fed. Cir. 2007) (“[T]his secondary consideration does not overcome the strong showing of obviousness in this case. Although secondary considerations must be taken into account, they do not necessarily control the obviousness conclusion.”); see also Newell Cos., Inc. v. Kenney Mfg. Co., 864 F.2d 757, 769 (Fed. Cir. 1988). Here, the case of obviousness established by the Examiner is so strong that Appellant’s alleged unexpected results, as presented in this record, are ultimately insufficient. Accordingly, the § 103 rejections advanced by the Examiner in this appeal are sustained. principle that the evidence was not commensurate in scope with the claimed subject matter. Appeal 2012-001904 Application 11/101,573 8 ORDER The Examiner’s decision is affirmed. 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 cam