ROWE, Michael Paul.

Patent Trials and Appeals Board

Jun 18, 2020

13565250 - (D) (P.T.A.B. Jun. 18, 2020)

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.
13/565,250 08/02/2012 Michael Paul ROWE 398660US71 7845
22850 7590 06/18/2020
OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P.
1940 DUKE STREET
ALEXANDRIA, VA 22314
EXAMINER
PATEL, RONAK C
ART UNIT PAPER NUMBER
1788
NOTIFICATION DATE DELIVERY MODE
06/18/2020 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):
OBLONPAT@OBLON.COM
iahmadi@oblon.com
patentdocket@oblon.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MICHAEL PAUL ROWE
____________

Appeal 2019-000905
Application 13/565,250
Technology Center 1700
____________

Before BEVERLY A. FRANKLIN, JAMES C. HOUSEL, and
MONTÉ T. SQUIRE, Administrative Patent Judges.

SQUIRE, Administrative Patent Judge.

DECISION ON APPEAL1
Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner’s
final rejection of claims 1–6, 10, and 11.3 We have jurisdiction under
35 U.S.C. § 6(b). An oral hearing was held on June 11, 2020.4

1 This Decision refers to the Specification filed Aug. 2, 2012 (“Spec.”); Final
Office Action dated Apr. 16, 2018 (“Final Act.”); Appeal Brief filed July 23,
2018, as amended Aug. 14, 2018 (“Appeal Br.”); Examiner’s Answer dated
Sept. 14, 2018 (“Ans.”); and Reply Brief filed Nov. 14, 2018 (“Reply
Brief”).
2 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies Toyota Motor Engineering &
Manufacturing NA, as the real party in interest. Appeal Br. 1.
3 Claims 7 and 9 are cancelled and claim 8 is withdrawn. Appeal Br. 16.
4 A written transcript of the oral hearing will be entered into the record when
the transcript is made available.
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We AFFIRM.
CLAIMED SUBJECT MATTER
The invention relates to a magnetic core of superparamagnetic core
shell nanoparticles, wherein the core is an iron cobalt ternary alloy and the
shell is a silicon oxide. Abstract; Spec. 1:12–17, 8:6–10. Independent claim
1 illustrates the subject matter on appeal and is reproduced below from the
Claims Appendix to the Appeal Brief:
1. A magnetic core, comprising:
core shell nanoparticles;
wherein
the core is an iron cobalt ternary alloy and the shell
is a silicon oxide,
the third component of the ternary alloy is a
transition metal selected from the group consisting of
scandium, titanium, vanadium, chromium, manganese,
nickel, copper and zinc,
the magnetic core is a monolithic structure of
superparamagnetic core grains of the iron cobalt ternary
alloy having a particle size of 5 to 30 nm directly bonded
by the silicon oxide shells, which form a silica matrix,
the magnetic core has a length dimension and a
thickness dimension greater than 1 mm, and
the magnetic core is superparamagnetic.
Appeal Br. 15 (key disputed claim language italicized and bolded).
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REJECTIONS
On appeal, the Examiner maintains (Ans. 3) the following rejections:
1. Claims 1–6, 10, and 11 are rejected under 35 U.S.C. § 112(a) or
pre-AIA 35 U.S.C. § 112, first paragraph, as failing to comply with the
written description requirement (“Rejection 1”). Ans. 3–4.
2. Claims 1–6, 10, and 11 are provisionally rejected on the
ground of nonstatutory double patenting as being unpatentable over claims
7, 9–12, 15, and 16 of copending Application No. 13/921878
(“Rejection 2”). Id. at 5–6.
OPINION
Having considered the respective positions the Examiner and
Appellant advance in light of this appeal record, we affirm the Examiner’s
rejections based on the fact-finding and reasoning set forth in the Answer
and Final Office Action, which we adopt as our own. We add the following
primarily for emphasis.
Rejection 1
The Examiner rejects claims 1–6, 10, and 11 under 35 U.S.C. § 112
for lack of written description. Ans. 3–4. In response to the Examiner’s
rejection, Appellant presents argument for the patentability of claims 1–6 as
a group and claims 10 and 11 as a group. Appeal Br. 4, 12. However,
Appellant’s argument for the patentability of claims 10 and 11 is
substantially the same as the argument for the patentability of claim 1. We
select claim 1 as representative and claims 2–6, 10, and 11 stand or fall with
claim 1. 37 C.F.R. § 41.37(c)(1)(iv).
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The test for compliance with the written description requirement is
“whether the disclosure of the application relied upon reasonably conveys to
those skilled in the art that the inventor had possession of the claimed
subject matter as of the filing date.” Ariad Pharm., Inc. v. Eli Lilly & Co.,
598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc).
The Examiner determines that adequate written descriptive support is
not provided in the originally-filed Specification for “the magnetic core has
a length dimension and a thickness dimension greater than 1 mm” recitation
of claim 1. Ans. 3–4. The Examiner finds that although the Specification
discloses “discs were produced that were 9 mm in diameter and 2.5 mm
thick” (Spec. 10:16–18), without more, such disclosure does not reasonably
convey to one skilled in the art that the inventor had possession of the
claimed subject matter at the time the application was filed. Id. at 3–4; see
also id. at 8 (explaining “with the exception of one example (example 9) that
discloses one specific diameter and one specific thickness, it cannot be
concluded that appellant is in possession of the claimed monolithic structure
having any length and any thickness of greater than 1 mm”).
Appellant argues the Examiner’s rejection of claim 1 should be
reversed because the originally-filed Specification provides written
description that fully supports the claimed subject matter, including each
element recited in the claim. See Appeal Br. 4–12; Reply Br. 4 (“[I]t is clear
that the specification as originally filed does notify one of ordinary skill in
the art of all the elements now claimed and therefore, the requirement under
35 U.S.C. 112, first paragraph is fulfilled.”).
Appellant contends
an artisan of magnetic core technology readily recognizes
that the subject matter and elements of Claim l as now
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recited are fully supported by the description of the
specification as originally filed.
Appeal Br. 10–11; see also Reply Br. 3 (same).
In particular, based principally on the disclosures at pages 1, 8, and 10
of the Specification (see Spec. 1:13–17, 1:25–29, 8:19–30, 10:15–20),
Appellant contends one of ordinary skill would have recognized Appellant
was in possession of a magnetic core structure, which adequately supports
the magnetic core having “a length dimension and a thickness dimension
greater than 1 mm” element of the claim. Appeal Br. 7 (arguing “that one of
ordinary skill, based on the descriptions provided above recognizes that the
toroid obtained in the example was obtained from a monolithic structure
disc”). Relying on the Declaration under 37 C.F.R. § 1.132 of Inventor, Dr.
Michael Paul Rowe filed Jan. 3, 2018 (“Rowe Decl.”), Appellant further
contends
it is entirely obvious and common knowledge to anyone of
ordinary skill in the art that these electronic devices are
typically a few millimeters to several inches in size, with
large examples of the technology measuring several feet
in diameter.
Id. at 8 (quoting Rowe Decl. 2); see also Reply Br. 3 (same).
We do not find Appellant’s arguments persuasive of reversible error
in the Examiner’s rejection based on the fact-finding and for the reasons the
Examiner provides at pages 3–4 and 6–10 of the Answer and pages 2–3 and
5–6 of the Final Office Action, which a preponderance of the evidence
supports.
Rather, on the record before us, we determine that “the magnetic core
has a length dimension and a thickness dimension greater than 1 mm”
recitation of claim 1 is not adequately supported by the originally-filed
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Specification. We have reviewed the portions of the Specification Appellant
relies upon, but find that the written description does not adequately describe
and is not commensurate in scope with that element of the claim. In
particular, as the Examiner finds and explains (Ans. 8), although page 10 of
the Specification describes an example of a structure having a diameter of 9
mm and a thickness of 2.5 mm (Spec. 10:15–20), we do not find that
disclosure, without more, sufficient to reasonably convey to one of ordinary
skill in the art that the inventor had possession of a magnetic core
encompassing a length dimension and a thickness dimension greater than 1
mm, as claimed. Likewise, none of the other portions of the originally-filed
Specification Appellant cites and relies upon provide adequate written
descriptive support for that element of the claim. See, e.g., Spec. 1:13–17,
1:25–29, 8:19–30.
We do not find the Rowe Declaration and Appellant’s arguments
regarding the Rowe Declaration (Appeal Br. 8; Reply Br. 3) persuasive
because the fact that it may have been “entirely obvious” and “common
knowledge” to one of ordinary skill that devices, such as the device of claim
1, are typically a few millimeters to several inches in size, without more,
does not establish reversible error in the Examiner’s rejection. Contrary to
what Appellant’s argument seems to suggest, as discussed above, the test for
compliance with the written description requirement is not whether the
claimed subject matter would have been obvious to one of ordinary skill, but
whether the disclosure of the application relied upon reasonably conveys to
one of ordinary skill in the art that the inventor had possession of the
claimed subject matter as of the filing date. Ariad Pharm., 598 F.3d at 1351.
Indeed, it is well-settled
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[t]he question is not whether a claimed invention is an
obvious variant of that which is disclosed in the
specification. Rather, a prior application itself must
describe an invention, and do so in sufficient detail that
one skilled in the art can clearly conclude that the
inventor invented the claimed invention as of the filing
date sought.
Lockwood v. American Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997)
(citations omitted).
Accordingly, we affirm the Examiner’s rejection of claims 1–6, 10,
and 11 under 35 U.S.C. § 112(a) or pre-AIA 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
Rejection 2
Appellant does not present any substantive argument in response to
the Examiner’s provisional rejection of claims 1–6, 10, and 11 on the ground
of nonstatutory double patenting as being unpatentable over claims 7, 9–12,
15, and 16 of copending Application No. 13/921878 (Ans. 5–6). See Appeal
Br. 13 (noting “that once patentable subject matter is identified, a Terminal
Disclaimer, if warranted, may be filed”).
Accordingly, because the Examiner’s rejection of claims 1–6, 10, and
11 for nonstatutory double patenting has not been withdrawn (see Ans. 3)
and is not substantively addressed by Appellant, we summarily affirm this
rejection. Cf. Hyatt v. Dudas, 551 F.3d 1307, 1314 (Fed. Cir. 2008); Ex
parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential) (“If an
appellant fails to present arguments on a particular issue — or, more
broadly, on a particular rejection — the Board will not, as a general matter,
unilaterally review those uncontested aspects of the rejection”) (cited with
approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011)).
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CONCLUSION
In summary:
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–6, 10, 11 112 written description

1–6, 10, 11
1–6, 10, 11 nonstatutory double
patenting
1–6, 10, 11
Overall
Outcome
1–6, 10, 11

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