Ex Parte Sixt et al

Patent Trial and Appeal Board

Sep 18, 2013

10585378 (P.T.A.B. Sep. 18, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte BERNHARD SIXT and STEFAN SIXT
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Appeal 2011-011725
Application 10/585,378
Technology Center 3700
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Before: JAMES P. CALVE, NEIL T. POWELL, and
JEREMY M. PLENZLER, Administrative Patent Judges.

POWELL, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims
30-32, 34, 35, 38, and 44-51. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

THE CLAIMED SUBJECT MATTER
Independent claim 30, the sole independent claim on appeal, is
reproduced below, and is illustrative of the appealed subject matter.
30. A transport container for keeping
frozen material chilled, comprising an insulating
chamber; an insulation which is a superinsulation
with a coefficient of thermal conductivity λ of <
0.005 W/m K and encloses said insulating
chamber; an inner container arranged in said
insulating chamber, said inner container having at
least one chilling chamber for the material and at
least one refrigerant chamber which is permanently
hermetically sealed, such that there is no insulation
between said inner container and said chilling
chamber; and a refrigerant located in said
refrigerant chamber and giving off cold by
sold/liquid phase transformation, said refrigerant
being a pure organic substance undergoing the
phase transformation between solid and liquid state
in a temperature range from -15° to -100°C, and
having a heat of melting of at least 50 J/ml.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Connelly US 52,269 Jan. 30, 1866
Drake US 3,858,410 Jan. 7, 1975
Guice US 5,355,684 Oct. 18, 1994
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Cook US 5,934,099 Aug. 10, 1999
Mosby US 6,032,481 Mar. 7, 2000
Ryu US 6,068,882 May 30, 2000
Mullens US 6,119,465 Sep. 19, 2000
Owen US 6,209,343 B1 Apr. 3, 2001
Coetzee US 6,467,299 B1 Oct. 22, 2002
Yomei JP 09243223A Sep. 19, 1997

REJECTION
Appellants seek our review of the following rejections.
I. Claims 30-32, 34, 35, 38, and 44-51 stand rejected under 35 U.S.C.
§ 112, first paragraph, as failing to comply with the enablement requirement.
II. Claim 49 stands rejected under 35 U.S.C. § 112, first paragraph, as
failing to comply with the written description requirement.
III. Claims 30, 32, 46, and 48-51 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Coetzee, Ryu, Owen, and Drake.
IV. Claim 31 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Coetzee, Ryu, Owen, Drake, and Guice.
V. Claims 34 and 35 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Coetzee, Ryu, Owen, Drake, and Cook.
VI. Claim 38 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Coetzee, Ryu, Owen, Drake, and Connelly.
VII. Claim 44 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Coetzee, Ryu, Owen, Drake, and Yomei.
VIII. Claim 45 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Coetzee, Ryu, Owen, Drake, Yomei, and Mosby.
IX. Claim 47 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Coetzee, Ryu, Owen, Drake, and Mullens.

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ANALYSIS
Enablement Rejection
Appellants challenge the Examiner’s contention that claims 30-32, 34,
35, 38, and 44-51 do not comply with the enablement requirement. See Ans.
4; App. Br. 14. The Examiner specifically indicates that the pending
application does not enable the claim 30 limitation “said refrigerant being a
pure organic substance” or the claim 50 recitation of specific refrigerants.
Ans. 4. In support of this, the Examiner asserts that these claim limitations
are “not disclosed in the specification and it is unclear what types of
refrigerants are purely organic and how the specific refrigerants as recited in
claim 50 can be used in the transport container.” Id. The Examiner then
states that:
A person of ordinary skill in the art at the time of
invention would have known that a pure organic
substance is a substance which contains only organic
material and the specific refrigerants as recited in claim
50 have a phase transformation between a solid and
liquid state similar to that of -15 to -100 degrees Celsius
as recited in claim 1.
Id. The Examiner closes by explaining how the offending claim limitations
have been interpreted for purposes of examination. Id.
The Examiner bears the initial burden of establishing a reasonable
basis for questioning the enablement provided for the claimed invention. In
re Wright, 999 F.2d 1557, 1562 (Fed. Cir. 1993). We do not believe that the
Examiner has met this burden because the Examiner has not explained why
a skilled artisan would have been unable to practice the claimed invention
without undue experimentation. See AK Steel Corp. v. Sollac, 344 F.3d
1234, 1244 (Fed. Cir. 2003) (“The enablement requirement is satisfied when
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one skilled in the art, after reading the specification, could practice the
claimed invention without undue experimentation.”) (quoting In re Wands,
858 F.2d 731, 736-37 (Fed. Cir. 1988)). For example, the Examiner does
not address any of the Wands factors. See Wands, 858 F.2d at 737. The
Examiner’s statement regarding what a person of ordinary skill in the art
would have understood at the time of the invention appears to eviscerate the
Examiner’s prior statement of confusion as a reasonable basis for
questioning enablement. Additionally, without further explanation of its
relevance, the Examiner’s statement regarding the applied claim
construction does not appear to support the enablement rejection.
Accordingly, we do not sustain the enablement rejection.

Written Description Rejection
Appellants challenge the Examiner’s contention that claim 49 fails to
comply with the written description requirement. Ans. 4-5; App. Br. 15.
The Examiner notes that the Specification discloses using a refrigerant with
a phase transformation temperature between -30° and -85°C, but “[t]he
recitation ‘a refrigerant which melts/solidifies as the temperature is less than
-85 degrees Celsius’ is not in the original specification.” Ans. 5. The
Examiner adds that “[a] person of ordinary skill in the art at the time of
invention would have known that a phase transformation occurring below
-85 degrees Celsius would require refrigerant that has specific properties in
order to allow it to be cooled to such a temperature.” Id. The Examiner
closes by stating that “[f]or purposes of this examination, it is interpreted
that the phase transformation cannot exceed a temperature lower than -100
degrees Celsius.” Id.
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“The burden of showing that the claimed invention is not described in
the specification rests on the [Examiner] in the first instance, and it is up to
the [Examiner] to give reasons why a description not in ipsis verbis is
insufficient.” In re Wertheim, 541 F.2d 257, 265 (CCPA 1976). We do not
believe the Examiner has met this initial burden by showing that the original
disclosure does not reasonably convey to a skilled artisan that Appellants
had possession of the claimed subject matter as of the filing date. See Ariad
Pharmaceuticals, Inc. v. Eli Lilly and Co., 598 F.3d 1336 (Fed. Cir. 2010).
In noting that the Specification discloses an example that the
refrigerant may have a phase transformation temperature in the range of -30°
to -85°C (Ans. 5; Spec. 3), the Examiner overlooks that the Specification
also discloses a broader range of -15° to -100°C. Spec. 3. Thus, the
Specification indicates that the disclosed invention can include a refrigerant
with a phase transformation temperature < -85°C, specifically a phase
transformation temperature in the range of -100°C to -85°C.
Consistent with this, the phase transformation temperature of the
refrigerant recited in claim 49 appears to be limited to the range of -100°C to
-85°C. The language of claim 30, from which claim 49 depends, appears to
limit the phase transformation temperature to no lower than -100°C (see
App. Br. 16, Claims Appendix), and the language of claim 49 limits it to
< -85°C (see App. Br. 19, Claims Appendix). Thus, it appears that claim 49
simply claims a narrower subset of the expressly disclosed range for the
phase transformation temperature. See 35 U.S.C. § 112, para. 4. And the
Examiner’s statement that “it is interpreted that the phase transformation
cannot exceed a temperature lower than -100 degrees Celsius” appears to
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correctly state the scope of claim 49, but does not provide any readily
apparent reason to doubt the written description support for the claim.
Similarly, without further explanation, the Examiner’s assertion that a
person of ordinary skill in the art would understand that the claimed
refrigerant would require specific properties does not clearly illuminate a
reason for doubting adequate written description. Accordingly, we do not
sustain the written description rejection.

Obviousness Rejections
The Examiner finds that the cited references disclose most of the
limitations of independent claim 30. See Ans. 5-9. The Examiner finds that
the cited references do not teach the claim limitation that the insulation is “a
superinsulation with a coefficient of thermal conductivity λ of < 0.005 W/m
K” or the claim limitation of “said refrigerant being a pure organic substance
. . . having a heat of melting of at least 50 J/ml.” Ans. 6, 7, 8.
Regarding the former limitation, the Examiner finds that Ryu teaches
superinsulation material with a thermal conductivity of 0.005 W/m K and
discloses selecting an appropriate superinsulation material based on the
temperature of the intended application. Ans. 6. Thus, the Examiner asserts
that Ryu demonstrates that the coefficient of thermal conductivity was
recognized as a result effective variable. Id. at 6. Given this, the Examiner
determines that it would have been obvious to decrease the coefficient of
thermal conductivity below the 0.005 W/m K disclosed by Ryu to provide
better insulation. Id. at 6-7.
Regarding the claim limitation “said refrigerant being a pure organic
substance . . . having a heat of melting of at least 50 J/ml,” the Examiner
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determines that it would have been an obvious matter of design choice to use
such a refrigerant. Id. 8-9. In support of this determination, the Examiner
offers significant explanation, including the explanation that using such a
refrigerant would be environmentally friendly and provide long-lasting
cooling for a biological sample. Id.
Appellants emphasize that the cited references do not disclose super
insulation having a coefficient of thermal conductivity < 0.005 W/m K or a
refrigerant that has a heat of melting > 50 J/ml and is a pure organic
substance (App. Br. 13), suggesting that (as the Examiner concedes) the
cited references do not disclose the claim limitation “a superinsulation with a
coefficient of thermal conductivity λ of < 0.005 W/m K” or the claim
limitation of “said refrigerant being a pure organic substance . . . having a
heat of melting of at least 50 J/ml.” Appellants also argue that these features
constitute key elements essential for providing badly needed, highly
advantageous results that many previous attempts have tried and failed to
provide. Id. at 11-14. Appellants add that “[t]he references contain no hint,
suggestion or motivations for combining them with one another” and that
“multiple references have been combined by the Examiner, which
additionally shows the present invention cannot be considered as obvious.”
Id. at 13, 14.
Appellants’ observation that the references do not disclose the
disputed claim limitations does not address the Examiner’s explanation of
why the disputed claim limitations would have been obvious
notwithstanding the lack of explicit disclosures in the references. The
Examiner’s discussion of each of the disputed limitations logically explains
why it would have been obvious to a person of ordinary skill in the art to
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arrive at the claimed limitations. Appellants do not address the Examiner’s
reasoning for concluding that each of the disputed limitations would have
been obvious. Thus, we believe the Examiner has provided unrebutted
rational underpinning for the conclusion that the disputed limitations would
have been obvious. Additionally, regarding the claim limitation of “a
superinsulation with a coefficient of thermal conductivity λ of < 0.005 W/m
K,” the Examiner’s finding that Ryu discloses a superinsulation with a
thermal coefficient (0.005 W/m K) overlapping the claimed range creates a
prima facie case of obviousness. See Wertheim, 541 F.2d 257 (CCPA
1976). Accordingly, Appellants’ argument that the references do not
explicitly disclose the disputed limitations does not apprise us of error.
Nor do Appellants’ other arguments apprise us of error. Without any
supporting evidence, Appellants’ bare attorney argument regarding the
essential nature of the disputed limitations in providing advantages and
solving problems does not convince us of error in the Examiner’s conclusion
of obviousness. Regarding Appellants’ assertion that the cited references
“contain no hint, suggestion or motivations for combining them with one
another” (App. Br. 23), Appellants do not rebut the Examiner’s contention
that the motivation to combine the teachings of the references would have
stemmed from the knowledge available to one of ordinary skill in the art
(Ans. 23). Regarding the number of references cited, the Examiner correctly
notes that citing numerous references in a rejection does not, by itself,
undermine the conclusion of obviousness. Ans. 23 (citing In re Gorman,
933 F.2d 982 (Fed. Cir. 1991)).
For the foregoing reasons, Appellants do not apprise us of error in the
obviousness rejection of independent claim 30. Appellants do not present
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separate arguments regarding the obviousness rejections of claims 31, 32,
34, 35, 38, and 44-51. Accordingly, we sustain the obviousness rejections of
claims 30, 31, 32, 34, 35, 38, and 44-51.

DECISION
We reverse the Examiner’s decision rejecting claims 30-32, 34, 35,
38, and 44-51 as lacking enablement.
We reverse the Examiner’s decision rejecting claim 49 as failing to
comply with the written description requirement.
We affirm the Examiner’s decision rejecting claims 30-32, 34, 35, 38,
and 44-51 as obvious.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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