12549780 (B.P.A.I. May. 8, 2012)

Ex Parte Samanta et al

Board of Patent Appeals and InterferencesMay 8, 2012

12549780 (B.P.A.I. May. 8, 2012)

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. 12/549,780 08/28/2009 Susnata Samanta L4032-02 9663 33250 7590 04/12/2012 W. R. GRACE & CO.-CONN ATTENTION: PATENT DEPARTMENT 62 WHITTMORE AVENUE CAMBRIDGE, MA 02140 EXAMINER SHAH, SAMIR ART UNIT PAPER NUMBER 1787 MAIL DATE DELIVERY MODE 04/12/2012 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 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. 12/549,810 08/28/2009 Susnata Samanta L4060-01 9711 33250 7590 04/12/2012 W. R. GRACE & CO.-CONN ATTENTION: PATENT DEPARTMENT 62 WHITTMORE AVENUE CAMBRIDGE, MA 02140 EXAMINER HUANG, CHENG YUAN ART UNIT PAPER NUMBER 1787 MAIL DATE DELIVERY MODE 04/12/2012 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 ____________________ BOARD OF PATENT APPEALS AND INTERFERENCES ____________________ Ex parte SUSNATA SAMANTA and ROBERT A. WIERCINSKI ____________________ Appeal 2011-006299 Application 12/549,780 Technology Center 1700 ____________________ Ex parte SUSNATA SAMANTA and ROBERT A. WIERCINSKI ____________________ Appeal 2011-006620 Application 12/549,810 Technology Center 1700 ____________________ Before: FRED E. McKELVEY, RICHARD TORCZON and RICHARD M. LEBOVITZ, Administrative Patent Judges. McKELVEY, Administrative Patent Judge. ORDER FOR ADDITIONAL BRIEFING Appeals 2011-006299 and 2011-006620 Applications 12/549,780 and 12/549,810 2 Introduction W. R. Grace & Co.—Conn (“Grace”), the real party in interest requests 1 rehearing of decisions entered in Appeal 2011-006299 and Appeal 2011-006620 2 on 22 February 2012. 3 A request for rehearing must be filed within two months of the decision 4 sought to be reheard. 37 CFR § 41.52(a)(1). The request for rehearing was timely 5 filed on 26 March 2012. 6 Upon consideration of the request for rehearing, we have determined that 7 further briefing in the appeal is appropriate. 37 CFR §§ 1.105(a)(1) and 41.50(d). 8 Background 9 The claims in both appeals relate to waterproofing membranes. 10 Claim 1 in Appeal 6299 is representative and reads [indentation and 11 bracketed matter added; limitation in issue in italics]. 12 Appeal 6299 Claim 1 13 A waterproofing membrane in the form of a sheet-like laminate 14 comprising 15 [1] a carrier support layer and 16 [2] an adhesive layer, 17 wherein the adhesive layer comprises [3] a pressure sensitive bitumen 18 composition comprising 19 [3a] bitumen, synthetic rubber, high density polyethylene, 20 ground vulcanized crumb rubber and, 21 [3b] optionally, a plasticizer. 22 Appeals 2011-006299 and 2011-006620 Applications 12/549,780 and 12/549,810 3 The matter in dispute is the language “sheet-like.” 1 The Examiner had difficulty with the language “sheet-like” finding it to be 2 indefinite. In effect, the Examiner indicated that it was not clear how one skilled in 3 the art would interpret “sheet-like.” A § 112 , paragraph 2, rejection followed. 4 Grace’s basic response was that the language “sheet-like” appears in over 5 19,000 patents and that a large volume of uses of the term “sheet-like” in U.S. 6 patents suggests that it is an acceptable, well-understood term. In calling the 7 Examiner’s attention to the “over 19,000” patents, Grace did not identify specific 8 patents using “sheet-like” related to the field of the claimed invention. 9 An examination is an inquiry into whether a claimed invention is patentable. 10 What the Examiner did in this case was to ask a question: “What is the meaning of 11 sheet-like to a person skilled in the art in the field of the invention?” 12 Insofar as we can tell, Grace has never directly answered that question. 13 As a result, we affirmed the § 112 indefiniteness rejection in both appeals. 14 We also suggested that in the event of further prosecution, Grace may wish to 15 consider (1) submitting Rule 132 testimony explaining how one skilled in the 16 relevant art would understand the language “sheet-like” and/or (2) identifying 17 specific patents in the relevant art among the “over 19,000” patents which use the 18 term and thereby clarify for the Examiner what “sheet-like” means in context. 19 The request for rehearing 20 The request for rehearing addresses several points. 21 First, Grace maintains that the Examiner and the Board have shifted to 22 Grace the burden of establishing that “sheet-like” is not indefinite. According to 23 Grace, the Examiner did not conduct an adequate examination. For example, 24 Appeals 2011-006299 and 2011-006620 Applications 12/549,780 and 12/549,810 4 Grace states that “[t]here was no indication that the Examiner endeavored to 1 inform himself about the meaning of the term or determine whether it was an 2 ordinary term of art, nor did the Examiner supply any objective reasoning.” 3 Request, page 4. 4 Second, Grace now notes that “sheet-like” or “sheetlike” appears in 24,949 5 U.S. patents, up from the “over 19,000” called to the Examiner’s attention. 6 Request, page 4 n.1. 7 Third, Grace maintains that there is nothing to suggest that Grace has used 8 the language “sheet-like” “in other than its ordinary sense.” In support of its third 9 argument, Grace calls our attention for the first time on rehearing to Strattec Sec. 10 Corp. v. Gen. Auto. Specialty Co., 126 F.3d 1411 (Fed. Cir. 1997). Strattec 11 includes the following statement: 12 A review of the ‘482 patent and its prosecution history reveals 13 that the terms “sheet” and “sheet-like” do not have any special 14 meanings in the art and that the ‘482 inventors used these terms in 15 their ordinary, everyday sense, i.e., to describe something flat with a 16 fairly broad surface relative to its thickness. The claims thus include 17 within their literal scope only devices with conductive material that 18 comprises a fairly broad surface relative to its thickness. 19 Id. at 1417-18. The need to interpret “sheet” and “sheet-like” arose in the context 20 of determining whether claims using the language were infringed by defendant’s 21 “key elements.” In addition, the Federal Circuit observed that “sheet” and “sheet-22 like” were added to the claims during prosecution to overcome a patent cited by 23 the examiner in rejecting claims. 24 Appeals 2011-006299 and 2011-006620 Applications 12/549,780 and 12/549,810 5 Analysis 1 Burden shifting 2 Grace’s burden shifting argument is based essentially on Grace’s view that 3 the Examiner did not conduct an adequate examination. We do not know what 4 steps the Examiner took to make findings and conclusions. Nor is that our 5 business. There is a presumption that an examiner conducting examination of 6 patent application performs examination in a proper manner. U. S. v. Chem. 7 Found., 272 U.S. 1, 14-15 (1926); Hakim v. Cannon Avent Group, PLC, 479 F.3d 8 1313, 1317 (Fed. Cir. 2007) (in the absence of clear evidence to the contrary, 9 courts presume that government employees have properly discharged their official 10 duties). 11 An examination is an inquiry into patentability. The essence of an inquiry is 12 asking questions. Insofar as we can tell, in this case the Examiner was seeking 13 help from Grace in resolving the meaning of “sheet-like” in the context of the 14 subject matter of the invention. The Examiner’s action in asking for help is 15 entirely consistent with 37 CFR § 1.105(a)(1), the validity of which was upheld in 16 Star Fruits S.N.C. v. U. S., 393 F.3d 1277 (Fed. Cir. 2005). By analogy, the 17 rejection in the cases before us is consistent with events in Hyatt v. Dudas, 18 492 F.3d 1365 (Fed. Cir. 2007). In Hyatt, the examiner could not find a written 19 description of the claimed subject matter in a specification. A rejection followed. 20 Hyatt, similar to Grace, maintained that the examination was not sufficient. The 21 Federal Circuit observed, however, that since the applicant is in the best position to 22 cheaply provide information about the purported invention, the PTO's authority to 23 shift the burden to obtain information relevant to examination is crucial to ensure 24 Appeals 2011-006299 and 2011-006620 Applications 12/549,780 and 12/549,810 6 that the PTO is not making patentability determinations on insufficient facts and 1 information. The burden was shifted to Hyatt because the PTO pointed out what 2 was missing (in the cases before us: what is the meaning of “sheet-like”) and Hyatt 3 refused to comply with his responsibilities as a patent applicant. 4 In our view, the Examiner did not improperly shift the burden of 5 examination to Grace. 6 Patents using “sheet-like” and “sheetlike” 7 We note that Grace now calls our attention to some 24,949 patents said to 8 use the language “sheet-like” and “sheetlike.” The number is up from the “over 9 19,000” patents referred to in papers filed before the Examiner. Moreover, we 10 note that Grace did not single out any particular patent explaining why that patent 11 would establish that those skilled in the relevant art understand the meaning of 12 “sheet-like.” 13 Grace’s use of “sheet-like” 14 For the first time on rehearing, Grace calls our attention to a 1997 decision 15 of the Federal Circuit. The decision can be distinguished on numerous grounds. 16 First, Strattec did not involve a direct appeal from the PTO. Second, the 17 prosecution history appears to have been of considerable help to the court. Third, 18 the language was added to the claim to overcome the prior art and we do not know 19 what information was provided in the amendment adding the language. 20 Strattec shows what can happen when claims issue which may not be 21 definite. The time to clear up possible indefiniteness is while an application is 22 pending in the PTO. (An essential purpose of patent examination is to fashion 23 claims that are precise, clear, correct, and unambiguous; only in this way can 24 Appeals 2011-006299 and 2011-006620 Applications 12/549,780 and 12/549,810 7 uncertainties of claim scope by removed, as much as possible, during the 1 administrative process). In re Zletz, 893 F.2d 319, 322 (Fed. Cir. 1989). See also 2 Halliburton Energy Servs., Inc. v. M-I LLC, 514 F.3d 1244, 1255 (Fed. Cir. 2008). 3 In our view, the Examiner was making a reasonable effort to clear up possible 4 indefiniteness of the language “sheet-like.” 5 Request for help 6 We ask for help from Grace. Consistent with rules governing appeals 7 (37 CFR § 41.50(d)) and agency practice in general (37 CFR § 1.105(a)(1)), Grace 8 is invited to file additional briefing in this appeal. In particular, we ask that Grace 9 (1) provide definitions of “sheet-like” from technical dictionaries or other non-10 patent literature sources, (2) identify defining portions of the specification as may 11 be appropriate, (3) select appropriate patents from the 24,949 mentioned in the 12 request for rehearing and explain how each shows what “sheet-like” means in this 13 art, and/or (4) provide such other relevant input which would help us determine 14 that one skilled in the art would understand in this art the meaning of “sheet-like.” 15 37 CFR § 1.105(a)(1)(vii). 16 Further action on the request for rehearing will be deferred pending a 17 response by Grace to this Order for Additional Briefing. 18 Order 19 Upon consideration of the record, including the request for rehearing, it is 20 ORDERED that Grace is invited to file additional briefing consistent 21 with discussion in this Order. 22 FURTHER ORDERED that any additional briefing shall be filed on 23 or before 24 May 2012. 24 Appeals 2011-006299 and 2011-006620 Applications 12/549,780 and 12/549,810 8 FURTHER ORDERED that the time period set for response to this 1 Order cannot be extended. 37 CFR § 41.50(d). 2 KMF