Ex Parte Stroud et al

Patent Trial and Appeal Board

Oct 26, 2017

12613813 (P.T.A.B. Oct. 26, 2017)

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.
12/613,813 11/06/2009 ERIC STROUD VM013 7123
54698 7590 10/30/2017
MOSFR TAROADA
EXAMINER
1030 BROAD STREET ABU ALI, SHUANGYI
SUITE 203
SHREWSBURY, NJ 07702 ART UNIT PAPER NUMBER
1731
NOTIFICATION DATE DELIVERY MODE
10/30/2017 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
docketing@mtiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ERIC STROUD and GARY J. PIERINGER
Appeal 2017-001447
Application 12/613,8131
Technology Center 1700
Before LINDA M. GAUDETTE, N. WHITNEY WILSON, and
BRIAN D. RANGE, Administrative Patent Judges.
RANGE, Administrative Patent Judge.
DECISION ON APPEAL
SUMMARY
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1, 3—7, 9—11, 19, and 20. We have jurisdiction.
35 U.S.C. § 6(b). We AFFIRM-IN-PART.
1 According to Appellants, the real party in interest is Viscot Medical, LLC.
Appeal Br. 3.
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Application 12/613,813
STATEMENT OF THE CASE2
Appellants describe the invention as relating to an ink to be used for
marking a patient for surgery (for example, to indicate the correct part of the
patient to operate on) that will not be readily scrubbed off with surgical
disinfectants. Spec. 2—3. Claim 1, reproduced below with emphases
added to certain key recitations, is illustrative of the claimed subject matter:
1. A scrub-resistant ink composition, comprising:
a dye for marking skin, wherein the dye is 0.1 to 40 percent
of the ink composition; and
a solvent dissolving a marking effective amount of the
dye, wherein the solvent comprises 50 to 90 percent of a polar
aprotic solvent, and wherein the ink composition is free of
resin.
Appeal Br. 16 (Claims App’x).
REJECTIONS
The Examiner maintains the following rejections on appeal:
Rejection 1. Claims 1, 3—7, 9—11, 19, and 20 under 35 U.S.C. § 112
as failing to comply with the written description requirement. Final Act. 2.
Rejection 2. Claims 1, 3, 5—7, 9—11, 19, and 20 under
35 U.S.C. § 103 as unpatentable over Yoshida et al., U.S. Patent No.
5,507,865, issued April 16, 1996 (hereinafter “Yoshida”). Id. at 3.
The Examiner withdrew the rejection based on Patel et al., U.S. Patent
Application No. 2005/0011404 Al, published January 20, 2005. Ans. 2.
2 In this opinion, we refer to the Final Office Action dated August 18, 2015
(“Final Act.”), the Appeal Brief filed March 3, 2016 (“Appeal Br.”), the
Examiner’s Answer dated September 26, 2016 (“Ans.”), and the Reply Brief
filed October 28, 2016 (“Reply Br.”).
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Application 12/613,813
ANALYSIS
Rejection 1, written description. The Examiner rejects claims 1, 3—7,
9—11, 19, and 20 under 35 U.S.C. § 112 as failing to comply with the written
description requirement. Final Act. 2. In particular, the Examiner finds that
the claim 1 recitation “free of resin” is not supported by the Specification.
Id.
The Examiner finds that the Specification does not reference whether
or not resin may be included in Appellants’ ink. Id.', see also Ans. 2—3.
Appellants nonetheless argue that the written description requirement is
satisfied because the Specification provides a reason to exclude the resin.
Appeal Br. 6 (citing Santarus, Inc. v. Par Pharm., Inc., 694 F.3d 1344, 1351
(Fed. Cir. 2012)) (“Negative claim limitations are adequately supported
when the specification describes a reason to exclude the relevant limitation.
Such written description support need not rise to the level of disclaimer.”).
Appellants further argue that the Specification discloses a scrub-resistant ink
for marking surgery patients and does not teach using a resin. Id.
Appellants argue that the Matzinger reference emphasizes that binder choice
is critical and teaches that resinous binders are key for solvent-based jet
printing inks. Id. Appellants also argue that a felt pen would be clogged if a
resin were used {id. at 7) and that the Shintani reference3 teaches use of resin
in a “film-forming” ink (Reply Br. 3).
Appellants analogize the present fact pattern to, for example, Ex Parte
Parks, 30 U.S.P.Q.2d 1234 (BPAI 1993). Appeal Br. 5. In that non-
precedential decision, the Board determined that the written description for
3 Shintani, et al., U.S. Patent No. 4,623,689, issued November 18, 1986
(hereinafter “Shintani”).
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Application 12/613,813
the negative recitation “in the absence of a catalyst” was satisfied by a
specification describing high temperature pyrolysis. Id. at *3. The In re
Parks appellants, however, presented two expert declarations providing
evidence that a person of skill would have recognized that the reaction
taught by the specification was conducted without a catalyst. Id.
Here, the only evidence Appellants rely on to support their position
that a person of ordinary skill would understand the specification to teach
exclusion of a resin is the Shintani and Matzinger patents. Neither of those
references, however, establish that a resin could not be used in conjunction
with the ink composition of claim 1. Indeed, Appellants do not dispute that
Shintani teaches that its ink composition can be used in a pen. Ans. 3; see
also, e.g., Shintani 9:53—55 (“the aqueous colored polymer may be used as
an ink of a writing tool such as an aqueous ball point pen, a line marker or a
felt pen”). Appellants also do not identify any particular aspect of the
present Specification (other than use of a pen) that implies no resin is used.
The present facts thus contrast with those of, for example, Ex Parte William
Ralph Bond, Appeal 2013-007491, 2015 WL 4911902, *3^1 (PTAB Aug.
11, 2015) (holding that specification’s figures satisfied written description
requirement for “a separate elongated planar support which has no
attachments thereto ” recitation). Moreover, Appellants’ argument is
essentially supported only by attorney argument, which cannot substitute for
evidence that would support Appellants’ position. Cf. Estee Lauder Inc. v.
L’Oreal, S.A., 129 F.3d 588, 595 (Fed. Cir. 1997) (“arguments of counsel
cannot take the place of evidence lacking in the record.”) (internal quotes
and citation omitted).
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Application 12/613,813
Because Appellants do not identify reversible error, we sustain the
Examiner’s written description rejection of claim 1. We also sustain the
Examiner’s rejection of claims 3—7, 9—11, and 19 because each of those
claims depends from claim 1.
The Final Office Action also states that claim 20 is rejected based on a
lack of written description for the same reason as claim 1. Final Act. 2.
Independent claim 20, however, does not recite “free of resin,” and this
recitation is the Examiner’s only stated basis for the written description
rejection. Id.', see also Appeal Br. 4 (noting difference between claim 1 and
claim 20).4 Accordingly, we do not sustain the Examiner’s written
description rejection of claim 20.
Rejection 2, obviousness. The Examiner rejects claims 1, 3, 5—7, 9—
11, 19, and 20 as obvious over Yoshida. Final Act. 3. Yoshida is generally
directed to an aqueous ink that retains water resistance and does not undergo
bronzing. Yoshida 2:25—31. At least some embodiments of Yoshida’s ink
may be used in an inkjet. Id.
The Examiner finds that Yoshida teaches 1 to 20 weight percent dye,
1 to 40% weight percent organic aprotic solvent, and 0.01 to 20 weight
percent amino acid. Final Act. 3. Without explaining the math, the
Examiner further finds, “[tjherefore, the percentage of the organic solvent
such as DMSO in the total solvent overlaps with the percentage defined by
4 We note that Appellants do not explicitly argue reversal of the Examiner’s
rejection of claim 20 on this basis. Despite the Board having the discretion
to treat claims as a group when claims are not separately argued (see 37
C.F.R. § 41.37(c)(l)(iv) (2013)), we nonetheless exercise our discretion to
reverse the written description rejection with respect to claim 20 as a matter
of fairness.
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the claims.” Id. at 3^4. The Examiner finds that Yoshida teaches
overlapping ranges and concludes that the overlapping ranges establish
prima facie obviousness. Id. at 4.
Appellants argue that most of the solvents taught by Yoshida (more
than 75%) are protic while claim 1 recites a large percentage of aprotic
solvent. Appeal Br. 8. Appellants agree, however, that Yoshida teaches
some aproptic solvents, such as N-methyl-2-pyrrolidone. Id. Therefore, this
argument by itself would not be persuasive of Examiner error. See In re
Lamberti, 545 F.2d 747, 750 (CCPA 1976) (“all disclosures of the prior art,
including unpreferred embodiments, must be considered”). Appellants’
point is noted, however, because it bears on the remainder of Appellants’
argument.
Appellants also argue that it would not be obvious to reach claim l’s
recitation of 50 to 90 percent of a polar aprotic solvent in the solvent
component. Appeal Br. 8—12. Appellants note that of Yoshida’s three
examples, only one example (example one) makes use of a polar aprotic
solvent and, in that instance, the aprotic component (N-methyl-2-
pyrrolidone) only makes up about 5% of the solvent. Appeal Br. 8; see also
Yoshida 5:30—8:11. The Examiner does not dispute this point.
Appellants further emphasize that a person of ordinary skill in the art
would have to choose nearly every parameter of Yoshida in a very unlikely
way to reach 50 to 90 percent polar aprotic solvent. Appeal Br. 10-11.
Appellants argue that one cannot reach 50 to 90 percent polar aprotic solvent
by following Yoshida without exercising hindsight. Id.
We agree with Appellants’ position. For example, a person of skill in
the art could, within Yoshida’s literal teachings of its ranges taken in
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Application 12/613,813
isolation, choose 20% dye, 20% amino acid, and 40% aprotic solvent thus
leaving the composition with only 20% water. Yoshida 3:50-4:49. In such
a scenario, only 60% of the composition would be solvent (i.e., 100% - 20%
dye — 20% amino acid)5, and 66.7% of the solvent would be aprotic solvent
(i.e., 40% weight percent aprotic solvent in the composition divided by 60%
total weight percent solvent). Yoshida’s examples, however, teach 3% dye
and around 2% amino acid. Yoshida never teaches using both a very high
percentage of dye and a very high percentage of amino acid.
Moreover, Yoshida’s examples use around 75% water. This is
nowhere near the low percentage of water that would have to be utilized to
meet Appellants’ claimed composition. It makes sense that Yoshida’s dyes
need a reasonable amount of water because Yoshida teaches use of water
soluble dyes. See, e.g., Yoshida 3:44—39. Appellants explain that using a
high percentage of both dye and amino acids with a low percentage of water
in the context of Yoshida would be problematic because of the amount of
water needed to dissolve the preferred amino acids. Appeal Br. 11—12. The
Examiner does not dispute this point.
Appellants further emphasize that Yoshida teaches that images tend to
blur when concentration of the organic solvent exceeds 40% by weight.
Appeal Br. 9; see also Yoshida 4:45—55. While, as explained above, it is
hypothetically possible to reach the recited range while aprotic organic
solvent remains under 40% by weight of the entire composition, we agree
with Appellants that Yoshida’s teaching in this regard (combined with the
high percentage of water used in Yoshida’s example) would steer a person
5 We assume that the Examiner considers the water component as being part
of the solvent given that Yoshida uses water-soluble dyes. Yoshida 3:44-49.
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of skill in the art away from a solvent having a very high percentage of
organic solvent as compared to water. Appeal Br. 9—10.
The Examiner provides no explanation as to why a person of skill in
the art would have had reason to maximize dye, maximize solvent, choose
100% aprotic solvent over other solvent choices, or minimize water content.
Yet precisely this combination of choices is necessary to reach Appellants’
claim. Reply Br. 7. As Appellants correctly argue, Yoshida also does not
teach such a combination {id.), and as explained above, Yoshida as a whole
suggests that a combination of choices all at the extreme edge of Yoshida’s
possible ranges would best be avoided. Accordingly, we do not sustain the
Examiner’s obviousness rejection of claim 1. Cf. In re Kahn, 441 F.3d 977,
988 (Fed. Cir. 2006) (“Rejections on obviousness grounds cannot be
sustained by mere conclusory statements; instead, there must be some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness.”).
We also do not sustain the Examiner’s rejection of claims 3, 5—7, 9—
11, and 19 because those claims depends from claim 1, and we do not
sustain the Examiner’s rejection of claim 20 because claim 20, like claim 1,
recites “wherein the solvent comprises 50 to 90 percent of a polar aprotic
solvent.” Appeal Br. 17 (Claims App’x). Because the issue addressed
above resolves the Examiner’s entire rejection, we need not address
Appellants’ separate arguments regarding certain dependent claims. Appeal
Br. 12-13.
DECISION
For the above reasons, we affirm the Examiner’s rejection pursuant to
the written description requirement of 35 U.S.C. § 112 of claims 1, 3—7, 9—
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11, and 19. We reverse the Examiner’s written description rejection of
claim 20. We reverse the Examiner’s obviousness rejection of claims 1, 3—
7,9-11, 19, and 20.
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-IN-PART
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