Ex Parte Eng et al

Patent Trial and Appeal BoardMay 12, 2017

12974296 (P.T.A.B. May. 12, 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. 12/974,296 12/21/2010 Aik Hwee Eng A0221-00 3448 99653 7590 05/16/2017 Moser TahnaHa / An sell T imiterl EXAMINER 1030 Broad Street OSTRUP, CLINTON T Suite 203 Shrewsbury, NJ 07702 ART UNIT PAPER NUMBER 3765 NOTIFICATION DATE DELIVERY MODE 05/16/2017 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 AIK HWEE ENG, LOK SI TANG, DAVID M. LUCAS, and WAN ASHRUZI WAN AHMAD Appeal 2014-0077361 Application 12/974,296 Technology Center 3700 Before STEFAN STAICOVICI, TARA L. HUTCHINGS, and AMEE A. SHAH, Administrative Patent Judges. HUTCHINGS, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Appellants filed a Request for Rehearing dated January 17, 2017 (“Request”), seeking reconsideration of our Decision on Appeal mailed December 21, 2016 (“Decision”), in which we affirmed the Examiner’s rejection of claims 1—11, 14—16, and 21—23 under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. In the Request, Appellants suggest that this Request for Rehearing be heard 1 Our decision references Appellants’ Appeal Brief (“App. Br.,” filed Mar. 5, 2014) and Reply Brief (“Reply Br.,” filed July 7, 2014), and the Examiner’s Answer (“Ans.,” mailed May 8, 2014), Advisory Action (“Adv. Act.,” mailed Dec. 6, 2013), and Final Office Action (“Final Act.,” mailed Sept. 18,2013). Appeal 2014-007736 Application 12/974,296 before an expanded panel. Request 6. The Chief Judge was informed of, and declines, Appellants’ suggestion for an expanded panel. For the reasons explained below, we deny Appellants’ Request. ANALYSIS We note at the outset that a Request for Rehearing “must state with particularity the points believed to have been misapprehended or overlooked by the Board.” 37 C.F.R. § 41.52(a). A Request for Rehearing is not an opportunity to rehash arguments raised in the Appeal Brief. Neither is it an opportunity to merely express disagreement with a decision without setting forth points believed to have been misapprehended or overlooked. Arguments not raised in the briefs before the Board and evidence not previously relied on in the briefs also are not permitted except in the limited circumstances set forth in §§ 41.52(a)(2) though (a)(4). Id. To the extent Appellants present supplemental or new arguments in the Request, those arguments are untimely and, as such, will not be considered except where the arguments are based on a recent relevant decision of either this Board or a federal court, or on an allegation that the Board’s decision contains an undesignated new ground of rejection. See id. Turning to the Request, Appellants assert that our Decision “erroneously focused on the misleading ‘reason to exclude’ language found in Santarus [Inc. v. Pharm., Inc., 694 F.3d 1344 (Fed. Cir. 2012)].” Request 4. Accordingly, Appellants contend that the Specification provides “more than enough information for one of skill to unambiguously conclude that the invention is not about a film forming approach — and that thus the 2 Appeal 2014-007736 Application 12/974,296 inventors possessed the currently claimed invention.” Id. at 6—7. We disagree. Whether a specification complies with the written description requirement is a question of fact. Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1562 (Fed. Cir. 1991) (collecting cases). What is needed to meet the description requirement necessarily varies depending on the nature of the invention claimed. In re DiLeone, 435 F.2d 1404, 1405 (CCPA 1971). The function of the written description requirement is to ensure that the applicant had possession, as of the filing date of his or her application, of the specific subject matter later claimed by him or her. In re Wertheim, 541 F.2d 257, 262 (CCPA 1976) (citing In re Smith, 481 F.2d 910 (CCPA 1973 and cases cited therein). The test requires an objective inquiry into the four comers of the specification from the perspective of a person of ordinary skill in the art. Ariad Pharm. v. Eli Lilly and Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010). Based on that inquiry, the Specification must describe an invention understandable to the skilled artisan and show that the applicant actually invented the invention claimed. Id. The written description requirement does not demand any particular form of disclosure, but a description that merely renders the invention obvious does not satisfy the requirement. Id. at 1352 (citing Carnegie Mellon Univ. v. Hoffmann-La Roche Inc., 541 F.3d 1115, 1122 (Fed. Cir. 2008); Lockwood v. Am. Airlines, 107 F.3d 1565, 1571-72 (Fed. Cir. 1997)). Here, as correctly acknowledged by Appellants, the description of the invention makes “no mention ... of a film-forming polymer.” Request 9. Appellants contend that the absence of such description allows “those of skill [to] clearly see that no film-forming polymer is needed or important to 3 Appeal 2014-007736 Application 12/974,296 the invention.” Id. at 8. But the absence of description of film-forming polymer is insufficient to clearly convey that Appellants invented a coating that is essentially free of film-forming polymer. Under such a view, any chemical component that is not required to form the claimed “non-tacky coating” would be supported by the original disclosure by its mere omission from the original disclosure. Appellants rely on Inphi Corp. v. Netlist, Inc., 805 F.3d 1350 (Fed. Cir. 2015) to charge the panel with improperly applying a heightened written description standard for a negative claim limitation. See, e.g., Request 8 (“Appellant just cannot see how, once the alleged heightened standard is disposed of, the claimed invention can be deemed not described.”) But no such heightened written description standard was applied. Instead, this panel carefully considered each portion of the Specification on which Appellants relied as providing implicit support for the negative limitation. We considered whether these portions clearly convey to those skilled in the art that Appellants invented an elastomeric medical glove with a coating that is essentially free of film-forming polymer. And we determined they do not. See Decision 4. This approach is wholly consistent with instructions from our reviewing court to ascertain “whether the description ‘clearly allow[s] persons of ordinary skill in the art to recognize that [the inventor] invented what is claimed.’” Inphi Corp., 805 F.3d at 1355 (citing Vas-Cath, 935 F.2d at 1562-63). We agree with Appellants that there are various ways to support a negative limitation (see Request 4), but in this case we find no such support. Appellants’ Specification not only fails to describe advantages or disadvantages, as in Santarus, but it also fails to describe alternatives, as in 4 Appeal 2014-007736 Application 12/974,296 Inphi. See Inphi Corp., 805 F.3d at 1355. Appellants’ citations to various Board decisions in which a negative limitation was held to be supported (or unsupported) also do not apprise us of any points of fact or law believed to have been misapprehended or overlooked by the Board. For foregoing reasons, we decline to modify our original Decision. DECISION Appellants’ Request has been granted to the extent that we have reconsidered our Decision in light of Appellants’ Request, but is denied in all other respects. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). DENIED 5