Ex Parte Draper et al

Patent Trial and Appeal BoardNov 29, 2012

11148624 (P.T.A.B. Nov. 29, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE 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. 11/148,624 06/09/2005 Michael Draper 930131-2001 8858 20999 7590 11/30/2012 FROMMER LAWRENCE & HAUG 745 FIFTH AVENUE- 10TH FL. NEW YORK, NY 10151 EXAMINER MATZEK, MATTHEW D ART UNIT PAPER NUMBER 1789 MAIL DATE DELIVERY MODE 11/30/2012 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 ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte MICHAEL DRAPER and JOHN JAMES ____________ Appeal 2011-009080 Application 11/148,624 Technology Center 1700 ____________ Before JEFFREY T. SMITH, BEVERLY A. FRANKLIN, and KAREN M. HASTINGS, Administrative Patent Judges. PER CURIAM DECISION ON REQUEST FOR REHEARING This is in response to a Request for Rehearing (“Request”), dated November 19, 2012, of our Decision, mailed September 19, 2012 (“Decision”), wherein we affirmed the Examiner’s § 103 rejections based on Carrier and Ishikawa, or Carrier and Dzenis, of all of the appealed claims. We have reconsidered our Decision of September 19, 2012, in light of Appellants’ comments in the Request for Rehearing, and we find no error in the disposition of these § 103 rejections. Appeal 2011-009080 Application 11/148,624 2 We have thoroughly reviewed the arguments set forth by Appellants in the Request. However, we remain of the opinion that the subject matter of claims 2-25, 28-31, 33-36, and 38 is properly rejected and unpatentable under 35 U.S.C. § 103(a). Appellants first argue that the Decision “failed to meaningfully consider” the Declaration and “overlooked or misapprehended” the documentary evidence and Declaration evidence (Request 2) with respect to various claims (Request 2-11). As we stated at page 4 of our original opinion, we have considered the Draper Declaration, and we find the Draper Declaration (which is directed to prior art no longer applied to the claims) and Appellants' arguments (which rely upon the Declaration and documentary evidence) insufficient to overcome the Examiner’s prima facie case of obviousness. Appellants have not presented any persuasive reasoning or evidence that the use of reinforcement nanoparticles or nanofibers in Carrier would not have been within the level of skill in the art in light of the teachings of Ishikawa or Dzenis as discussed in the Decision and in the Examiner’s Answer. If a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond that person's skill. KSR Int'l. Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). Any need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed. Id. at 420. Thus, the standard for Appeal 2011-009080 Application 11/148,624 3 motivation is not whether the reference discloses a specific problem, but whether the prior art discloses a reason for combining elements in the manner claimed because of any problem (see also, e.g. Ans. 20). As stated in Kubin, “[r]esponding to concerns about uncertainty in the prior art influencing the purported success of the claimed combination, this court [in O'Farrell] stated: ‘[o]bviousness does not require absolute predictability of success … all that is required is a reasonable expectation of success.”’ In re Kubin, 561 F.3d 1351, 1360 (Fed. Cir. 2009) (citing In re O'Farrell, 853 F.2d 894, 903-904 (Fed. Cir. 1988)). Accordingly, no persuasive merit is present in Appellants’ arguments (which rely upon the Declaration and documentary evidence) that it would require more than routine experimentation and that there is motivation and no reasonable expectation of success for modification of Carrier with known nanoparticles or nanofibers reinforcements as exemplified in either of Ishikawa or Dzenis (Request 2-11). In addition, we emphasize that, although secondary considerations (such as unexpected results) and any other evidence of record must be taken into account, they do not necessarily control the obviousness conclusion. Cf. Sud-Chemie, Inc. v. Multisorb Technologies, Inc., 554 F.3d 1001, 1009 (Fed. Cir. 2009) (“[E]vidence of unexpected results and other secondary considerations will not necessarily overcome a strong prima facie showing of obviousness”). Here, the case of obviousness established by the Examiner is so strong that Appellants' evidence that it would not have been prima facie obvious for an ordinary skilled artisan to have used nanoparticles because it would have unpredictable results for a planar element of a papermaking machine is ultimately insufficient. Appeal 2011-009080 Application 11/148,624 4 Appellants’ argument that the Examiner’s reliance on inherency for claimed advantages that result from the combination of Carrier and Ishikawa is an error of law (Request 11-14), is unavailing. The fact that Appellants have recognized another advantage which would flow naturally from following the prior art’s teaching or suggestion of using nanoparticle reinforcements cannot be the basis for patentability when the differences, if any, would otherwise have been obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (BPAI 1985). Here, when Carrier is modified in view of Ishikawa's teachings, the claimed result(s) would necessarily occur. (e.g., Ans. 16-17) Cf. In re Huai-Hung Kao, 639 F.3d 1057, 1070 (Fed. Cir. 2011); In re Kubin, 561 F 3d. at 1357; In re Wiseman, 596 F.2d 1019, 1023 (CCPA 1979). Likewise, Appellants’ arguments that the rejection of dependent claims 5-7, 28, 29 and 36 which recite specific ranges is an error of law (Request 15-17) are also unavailing, since well-established legal principles support the Examiner's conclusion that it would have been obvious for an artisan to develop workable or optimum ranges for result-effective parameters (e.g., Ans. 14-15, 18-19). See In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990); In re Boesch, 617 F.2d 272, 276 (CCPA 1980). Thus, we decline to modify our decision to affirm the Examiner’s §103 rejections based on Carrier and Ishikawa, or Carrier and Dzenis, of the appealed claims. In conclusion, based on the foregoing, Appellants’ Request is granted to the extent that we have reconsidered our Decision, but is denied with respect to making changes to the final disposition of the rejections therein. Appeal 2011-009080 Application 11/148,624 5 This Decision on the Request for Rehearing incorporates our Decision, mailed September 19, 2012, and is final for the purposes of judicial review. See 37 C.F.R. 41.52 (a)(1). 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)(v)(2010). DENIED kmm