Ex Parte Pak et al

Board of Patent Appeals and Interferences

Sep 17, 2010

11183140 (B.P.A.I. Sep. 17, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte CHARLES Y.C. PAK, KHASHAYAR SAKHAEE,
and NEILL B. WALSDORF SR.
__________

Appeal 2009-010246
Application 11/183,140
Technology Center 1600
__________

Before TONI R. SCHEINER, RICHARD M. LEBOVITZ, and
STEPHEN WALSH, Administrative Patent Judges.

WALSH, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING1
Charles Y.C. Pak et al. (Appellants) request reconsideration of the
Decision on Appeal entered March 26, 2010, which affirmed anticipation
and obviousness rejections of all the pending claims.

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
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THE ISSUES
Appellants request modification of the Decision on the grounds that
“the Board has misapplied the controlling law as to the proper construction
of claims reciting the transition ‘consisting essentially of.’ Under the proper
construction, the claims on Appeal should be found patentable.” (Req. 12.)
We consider Appellants’ points in the order presented.
ANALYSIS
A. Appellants argue that “[t]he Board Misconstrues the Controlling Law
and Misidentifies the Dispositive Issue in this Appeal.” (Req. 2 (bold font
removed).)

Appellants contend that the issue to be decided is not “whether the
Specification identified what Appellants regard as constituting a material
change in the basic and novel properties of the invention” because “[t]he
controlling law does not require this.” (Req. 2-3.) Appellants contend that
the Specification disclosed the basic and novel features of the invention as
including “mixtures of potassium calcium citrate as pure chemical salts
which have superior dissolution and absorption properties useful for the
efficacious treatment and prevention of osteoporosis and kidney stones.”
(Id. at 3, citing Spec. paragraphs [007] and [0031]-[0032].)
The dispute in this case is like the dispute in Ex parte Davis, a leading
case on construing “consisting essentially of.” In that case, the Board wrote:
In the present case where the claims recite three
ingredients and the reference discloses four, the important
question is whether the term “consisting essentially of”
excludes that fourth ingredient. We think that it does, since the
“modifier” materially changes the fundamental character of the
three-ingredient composition of claims 13, 14 and 16. We
therefore hold that these claims are patentably distinguished in
substance from Abrams et al. . . . . In so doing, we are
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influenced by the facts that the construction of the term
“consisting essentially of” quoted hereinbefore from the code of
the Primary Examiners suits the situation in this case . . . .

Ex parte Davis, 80 U.S.P.Q. 448, 450 (Bd. Pat. App. 1948). The reason we
are not persuaded that the same result should be reached in Appellants’ case
is that the evidence here is the opposite. The Buddemeyer and Chang
compositions were disclosed as having the activity that Appellants claim for
their composition.
B. Appellants argue that in addition to “[m]isconstrue[ing] [the]
Controlling Legal Authority,” the Board “Applies Exactly the Opposite and
Therefore Improper Rule of Law.” (Req. 4 (bold font removed).)

According to Appellants, “the proper claim construction analysis
compels a presumption that such additional component would materially
change the composition, resulting in [a] narrower claim scope.” (Req. 5,
citing PPG Industries v. Guardian Industries Corp., 156 F.3d 1351, 1354
(Fed. Cir. 1998). That is, “‘[c]onsisting Essentially Of’ Should Not Be
Construed as Broadly as ‘Comprising,’” and “[t]he Examiner Should Be
Required to Prove Immateriality; the Burden is Properly on the Examiner.”
(Req. 6 (bold font removed).) We disagree that the law requires the
Examiner to prove immaterialty. The Examiner produced evidence of
immateriality: Buddemeyer and Chang described their compositions as
having the same properties asserted in Appellants’ Specification. The
burden is on Appellants to rebut with evidence that phosphate or other
components make a material difference.
Appellants argue that “[e]ven if the Examiner is Allowed to Presume
Immateriality, There is No Authority Allowing the Examiner to Make the
Presumption Irrebuttable.” (Req. 7(bold font removed).) The Examiner did
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not say the presumption is irrebuttable. Appellants had the opportunity to
produce a comparative showing demonstrating a material difference between
the Buddemeyer or Chang composition and the claimed composition, or
between the composition that would have been obvious over Buddemeyer
and Chang and the claimed composition.
Appellants argue that “[t]he Board’s Construction of the Claim as
Equivalent to a ‘Comprising’ Claim is Inconsistent with the Specification,”
and “[a] ‘Comprising’ Disclosure Necessarily Includes a ‘Consisting of’ or
‘Consisting Essentially of’ Disclosure.” (Req. 8 (bold font removed).)
Because the Specification does not support interpreting “consisting
essentially of” to differentiate the Buddemeyer or Chang composition, we
disagree. “Consisting essentially of” has a meaning defined by convention.
We disagree that any disclosure necessarily discloses the conditions in the
convention.
C. Appellants argue that “[t]he Board Misconstrues Other Legal
Authority and Improperly Disregards Appellants’ Substantive, Limiting
Amendments.” (Req. 11(bold font removed).)

The amendment of the claims with the transitional phrase “consisting
essentially of” in this case failed to differentiate Appellants’ compositions
from those in the prior art. According to the evidence of record, the prior art
compositions were known to have the same properties or uses that
Appellants teach for the claimed compositions. Neither the Board nor the
Examiner disregarded the amendment.
The fact pattern in this case is not unlike other cases where
“consisting essentially of” failed to differentiate prior compositions already
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known to have the same properties. See, e.g., In re Janakirama-Rao,
317 F.2d 951 (CCPA 1963):
We find ourselves somewhat at a loss, in view of the foregoing
statement in appellant’s specification, to determine therefrom
just what aspect of his glass batch compositions he considers to
be patentably significant. The ‘objects’ stated in appellant’s
specification are not informative in this regard as they recite
that it is desired that appellant’s glasses possess such properties
as a high refractive index, high dielectric constant, and others
which the art would apparently expect them to possess from the
use therein of cadmium and bismuth compounds, according to
the recital in the specification of what the art already knew.

317 F.2d 951 at 952.
D. Appellants argue that “[u]nder the Proper Claim Construction, the
Rejections under § 103(a) are Also Improper.” (Req. 11 (bold font
removed).)

Appellants’ arguments reduce to the idea that the Examiner, or the
Board, must interpret the claims in the light most favorable to patentability.
We disagree. We interpreted the claim in light of the Specification, which
sheds no light on how “consisting essentially of” differentiates Appellants’
composition from those of Buddemeyer or Chang or their combined
teachings. See PPG Industries v. Guardian Industries Corp., 156 F.3d 1351,
1355 (Fed. Cir. 1998) (“That does not mean, however, that a court, under the
rubric of claim construction, may give a claim whatever additional precision
or specificity is necessary to facilitate a comparison between the claim and
the accused product. Rather, after the court has defined the claim with
whatever specificity and precision is warranted by the language of the claim
and the evidence bearing on the proper construction, the task of determining
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whether the construed claim reads on the accused product is for the finder of
fact.”).
Appellants were entitled to provide their own definition but did not do
so. E.g., PPG, 156 F.3d at 1355 (“Under well-settled principles, PPG was
entitled to provide its own definition for the terms used in its patent claim,
including the transition phrase ‘consisting essentially of’”).
Appellants were also entitled to produce evidence showing the
properties of the Buddemeyer or Chang compositions, but did not do so.
“[A]ppellant has the burden of showing the basic or novel characteristics of
[the invention].” In re De Lajarte, 337 F.2d 870, 874 (CCPA 1964).
Instead, Appellants argue they have no burden to produce the pertinent
evidence, citing De Lajarte to support the argument. However, the facts
here are very different from the facts in De Lajarte. In De Lajarte, the
Office produced no evidence that the prior art materials were likely to have
the properties of De Lajarte’s compositions. De Lajarte, 337 F.2d at 874.
Thus, the court wrote: “[i]n the total absence of evidence in the record to
indicate that the amber glass disclosed by Lyle would be expected to have
desirable electrical insulating properties, we can find no justification for
placing the burden on applicant to conduct experiments to determine the
insulating properties of the colored glass disclosed by Lyle.” Id.
(“Appellant, in showing that his glass has basic novel properties (at least as
far as the record is concerned), would appear to have met his burden.”) Id.
Here however, in contrast, the Examiner produced evidence that the
Buddemeyer and Chang compositions, and compositions suggested by their
teachings, were known for the same properties claimed for Appellants’
compositions. Even Appellants’ Specification agreed that compositions of
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potassium citrate, citric acid, and other ingredients were known in the prior
art for treating or preventing kidney stones and osteoporosis. We decline to
change our decision that the Examiner’s evidence supported the anticipation
and obviousness rejections.
CONCLUSION
We have considered Appellants’ request for rehearing but decline to
change the decision.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

DENIED

alw

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