Ex Parte Lamb et al

Patent Trial and Appeal BoardSep 26, 2012

12276658 (P.T.A.B. Sep. 26, 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. 12/276,658 11/24/2008 Christopher Lamb CM3240 4543 27752 7590 09/26/2012 THE PROCTER & GAMBLE COMPANY Global Legal Department - IP Sycamore Building - 4th Floor 299 East Sixth Street CINCINNATI, OH 45202 EXAMINER DOUYON, LORNA M ART UNIT PAPER NUMBER 1761 MAIL DATE DELIVERY MODE 09/26/2012 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 CHRISTOPHER LAMB and NEIL JOHN ROGERS ______________ Appeal 2011-008563 Application 12/276,658 Technology Center 1700 _______________ Before JEFFREY T. SMITH, LINDA M. GAUDETTE, and GEORGE C. BEST, Administrative Patent Judges. PER CURIAM. DECISION ON APPEAL Appeal 2011-008563 Application 12/276,658 2 Appellants appeal to the Board from the decision of the Primary Examiner finally rejecting claims 1-14 in the Office Action mailed June 28, 2010. We have jurisdiction under 35 U.S.C. Â§ 6. We reverse the decision of the Primary Examiner. Appellants request review of the following rejection (App. Br. 2) from the Primary Examinerâ€™s Final Office Action: Claims 1-14 stand rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Inamorato (US 4,082,682 issued Apr. 4, 1978) in view of Rogers (US 6,293,402 B1 issued Sept. 25, 2001). OPINION After thorough review of the respective positions provided by Appellants and the Examiner, we agree with Appellants that the Examiner erred in maintaining the rejection of claims 1-14 under Â§ 103(a) over Inamorato and Rogers. According to Appellants, Inamorato in view of Rogers does not teach or suggest all of the present claim limitations. Specifically, there is no teaching or suggestion in either reference of a bag comprising a material having particular secant tensile modulus, much less one having a particular 2% secant modulus, much less a 2% secant modulus of at least about 100 MPa. App. Br. 3 (emphasis in original). In rejecting the claimed subject matter the Examiner found that Rogers teaches a satchel made from a flexible film having a tensile modulus Appeal 2011-008563 Application 12/276,658 3 between 50 MPa and 2000 MPa. (Ans. 4-5). The Examiner has not provided an explanation as to why Rogersâ€™ tensile modulus teaches or suggests the 2% secant tensile modulus of the claimed invention. We are cognizant of the fact that from the standpoint of patent law a composition and its properties are inseparable. Cf. In re Papesch, 315 F.2d 381, 391 (CCPA 1963) (a compound and all of its properties are inseparable). Thus, the recitation of a property, inherently possessed by a prior art composition, does not distinguish a claim drawn to that composition from the prior art. See In re Best, 562 F.2d 1252, 1254 (CCPA 1977). Therefore, where the prior art is silent with respect to the property, but the Examiner has reason to believe that the property may, in fact, be an inherent characteristic of the prior art product, the Examiner possesses the authority to require an Applicant to prove that the subject matter shown to be in the prior art does not, in fact, possess the property. Id. However, before an Applicant can be put to this burdensome task, the Examiner must provide enough evidence or scientific reasoning to establish that the belief that the property is inherent is a reasonable belief. Ex parte Levy, 17 USPQ2d 1461, 1464 (BPAI 1990); Ex parte Skinner, 2 USPQ2d 1788, 1789 (BPAI 1986). It must be remembered that the burden of establishing a prima facie case of unpatentability rests upon the Examiner. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992); In re Piasecki, 745 F.2d 1468, 1472 (Fed. Cir. 1984). It is therefore incumbent on the Examiner to provide a factual basis for the assertion that the tensile modulus is not different from the secant tensile modulus. (Ans. 6). In the present case, the Examiner has not discharged that burden. Appeal 2011-008563 Application 12/276,658 4 The Examinerâ€™s rejection is reversed. REVERSED bar