Ex Parte Garcia et al

Patent Trial and Appeal BoardNov 8, 2016

13990476 (P.T.A.B. Nov. 8, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/990,476 05/30/2013 116 7590 11/10/2016 PEARNE & GORDON LLP 1801EAST9TH STREET SUITE 1200 CLEVELAND, OH 44114-3108 FIRST NAMED INVENTOR Justo Garcia 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 ATTORNEY DOCKET NO. CONFIRMATION NO. BRV-50755 9221 EXAMINER IPPOLITO, NICOLE MARIE ART UNIT PAPER NUMBER 2881 NOTIFICATION DATE DELIVERY MODE 11/10/2016 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): patdocket@peame.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Exparte JUSTO GARCIA, PASCAL PRUD'HOMME, and DAI YOKOE 1 Appeal2015-006119 Application 13/990,476 Technology Center 2800 Before BRADLEY R. GARRIS, MICHAEL P. COLAIANNI, and CHRISTOPHER C. KENNEDY, Administrative Patent Judges. GARRIS, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. Â§ 134, Appellants appeal from the Examiner's rejection under 35 U.S.C. Â§ 102(b) of claims 11-23 as anticipated by Gn1bb (WO 2009/007367 (Al), pub. Jan. 15, 2009 with US 2010/0254785 Al, pub. Oct. 7, 2010 relied on and cited to as an English language equivalent). We have jurisdiction under 35 U.S.C. Â§ 6. We AFFIRM-IN-PART. 1 TN International is identified as the real party in interest. App. Br. 2. Appeal2015-006119 Application 13/990,476 Appellants claim a long-term storage device 1 comprising a storage case 9 for receiving a containment case 3 containing radioactive materials (independent claims 11 and 22, Figs. 3--4). A copy of representative claims 11 and 22, taken from the Claims Appendix of the Appeal Brief, appears below. 11. A long-term storage device (1) intended to receive a containment case (3) containing radioactive materials, where the said device includes a main body (2) having an inner surface ( 5) delimiting a housing (7), wherein in an unloaded configuration, in which the said containment case (3) containing radioactive materials is absent from the storage device, the storage device ( 1) includes a storage case (9) housed in the said housing (7) of the body, and delimiting a cavity (4) to receive the containment case (3), where the said storage device also includes ventilation means (17, 18, 117, 118) allowing air to circulate between the exterior of the storage device and a space (30) delimited between the said inner surface (5) of the main body (2) and the storage case (9). 22. A long-term storage device (1) intended to receive a containment case (3) containing radioactive materials, where the said device includes a main body (2) having an inner surface ( 5) delimiting a housing (7), wherein the storage device (1) includes a storage case (9) housed in the said housing (7) of the body, and delimiting a cavity ( 4) to receive a containment case (3) containing radioactive materials, where the said storage device also includes ventilation means ( 17, 18, 117, 118) allowing air to circulate between the exterior of the storage device and a space (30) delimited between the said inner surface (5) of the main body (2) and the storage case (9). Appellants correctly point out that "Grubb merely teaches a package 1 defining a package housing 4 for receiving a case 3 containing radioactive materials" (App. Br. 6) and correspondingly argue that "[Grubb] fails to 2 Appeal2015-006119 Application 13/990,476 disclose an intermediate storage case within the package housing 4 for receiving the case 3 of radioactive material [as required by the independent claims]" (id.). With specific reference to independent claim 11, Appellants further argue: (Id.). Additionally, in an unloaded configuration of Grubb where its containment case 3 is absent, the package housing 4 of Grubb would not contain any casing. As such, Grubb certainly fails to disclose an unloaded configuration wherein a storage case is housed within a housing of a main body, as required by independent claim 11. The Examiner does not respond to Appellants' further argument regarding claim 11 (see Ans. 4--5). Moreover, the rejection of this claim fails to identify any disclosure in Grubb that satisfies Appellants' argued limitation "wherein in an unloaded configuration, in which the said containment case (3) containing radioactive materials is absent from the storage device; the storage device (1) includes a storage case (9) housed in the said housing (7) of the body" (claim 11) (see Final Action 2-3 and Ans. 2-3). For this reason, we do not sustain the Examiner'sÂ§ 102 rejection of independent claim 11 and of claims 12-21 and 23 which depend therefrom as anticipated by Grubb. Significantly, independent claim 22 does not contain the above discussed limitation of claim 11. Instead, claim 22 requires that "the storage device ( 1) includes a storage case (9) housed in the said housing (7) of the body, and delimiting a cavity ( 4) to receive a containment case (3) containing radioactive materials" (claim 22). This requirement of claim 22 (as well as the subsequently recited limitation concerning the ventilation 3 Appeal2015-006119 Application 13/990,476 means) appears to be satisfied when Grubb' s case 3 is considered to read on the claimed storage case. In support of a contrary view, Appellants argue that "the case 3 [of Grubb] does not receive an inner containment case and therefore is not intermediate an outer main body and inner containment case[, and] [a]ccordingly, the case 3 of Grubb does not correspond to the claimed intermediate storage case" (Reply Br. 4). Appellants' argument is directed to the functional limitation that storage case (9) delimits a cavity ( 4) "to receive a containment case (3) containing radioactive materials" (claim 22). As explained in In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997), choosing to define an element functionally, rather than structurally, carries with it a risk, namely: [W]here the Patent [and Trademark] Office has reason to believe that a functional limitation asserted to be critical for establishing novelty in the claimed subject matter may, in fact, be an inherent characteristic of the prior art, it possesses the authority to require the applicant to prove that the subject matter shown to be in the prior art does not possess the characteristic relied on. (Quoting In re Swinehart, 439 F.2d 210, 213 (CCPA 1971)). Here, it is reasonable to believe that the cavity of Grubb' s case 3 inherently possesses the capability of performing the recited function "to receive a containment case (3) containing radioactive materials" (claim 22). The cavity of Grubb' s case is disclosed as performing the function of receiving radioactive materials (see, e.g., Grubb i-f 43), and there is no apparent reason why this cavity would be incapable of performing its receiving-function with respect to radioactive materials contained within a containment case. Under these circumstances, we discern no convincing 4 Appeal2015-006119 Application 13/990,476 merit in Appellants' argument that "case 3 of Grubb does not correspond to the claimed intermediate storage case" (Reply Br. 4). We sustain, therefore, the Â§ 102 rejection of claim 22. The decision of the Examiner is affirmed-in-part. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a). AFFIRMED-IN-PART 5