Ex Parte Nishimura et al

Patent Trial and Appeal BoardMay 16, 2018

13984675 (P.T.A.B. May. 16, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/984,675 08/09/2013 Y asuyo Nishimura 22850 7590 05/18/2018 OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P. 1940 DUKE STREET ALEXANDRIA, VA 22314 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. 419737US99PCT 3099 EXAMINER NGUYEN, SON T ART UNIT PAPER NUMBER 3643 NOTIFICATION DATE DELIVERY MODE 05/18/2018 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): patentdocket@oblon.com oblonpat@oblon.com tfarrell@oblon.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte Y ASUYO NISHIMURA and T AKASHI W AKUI Appeal2017-006378 Application 13/984,675 Technology Center 3600 Before: CHARLES N. GREENHUT, JEFFREY A. STEPHENS, and ERIC C. JESCHKE, Administrative Patent Judges. Opinion for the Board filed by Administrative Patent Judge GREENHUT. Opinion concurring filed by Administrative Patent Judge STEPHENS. GREENHUT, Administrative Patent Judge. DECISION ON APPEAL Appeal2017-006378 Application 13/984,675 STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. Â§ 134 from a rejection of claims 1- 4 and 6-8. 1 We have jurisdiction under 35 U.S.C. Â§ 6(b). We reverse. CLAIMED SUBJECT MATTER The claims are directed to a culture medium for plant cultivation. Claim 1, the sole independent claim, is reproduced below, and is illustrative of the claimed subject matter: 1: A medium comprising an ethylene-vinyl alcohol copolymer chip, wherein the ethylene-vinyl alcohol copolymer chip comprises ethylene-vinyl alcohol copolymer and water, and a water content is from 20 to 300 parts by mass relative to 100 parts by mass of the ethylene-vinyl alcohol copolymer. REJECTIONS Claims 1--4 and 6-8 are rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over Sumitomo (JP 06-98627 A). OPINION In rejecting independent claim 1 the Examiner recognized that the cited embodiments of Sumitomo (Final Act. 4 citing paras. 6, 13, 14) did not disclose the recited range for water content. Without pointing to any specific instruction in Sumitomo as to how to determine water content, the Examiner held that the claimed subject matter would have been obvious due 1 The Examiner indicated the amendment of April 26, 2016 would overcome theÂ§ 112 rejections and be entered for purposes of appeal. Adv. Act. (July 1, 2016). 2 Appeal2017-006378 Application 13/984,675 to the absence of any disclosed "criticality or unexpected result." Final Act. 4. Criticality and unexpected results in this context refer to a type of objective evidence, typically used to rebut a prima facie case of obviousness. See MPEP Â§Â§ 2144.05, 2145. "The absence of objective evidence is a neutral factor" in the obviousness inquiry (Medtronic, Inc. v. Intermedics, Inc., 799 F. 2d 734, 739 n. 13 (Fed. Cir. 1986) (citations omitted)) and "does not dictate a conclusion of obviousness" (Kansas Jack, Inc. v. Kuhn, 719 F.2d 1144, 1150 (Fed. Cir. 1983)). The Examiner does not provide, and we are unaware of, any authority to support the proposition that an Examiner may shift to an applicant the burden of producing evidence that a range recited in a claim is "critical" without first demonstrating, prima facie, that the claimed subject matter, including the recited range, would have been obvious. See In re Stepan Co., 868 F.3d 1342, 1348 (Fed. Cir. 2017); see also MPEP Â§ 2144.05 (III). In disagreeing with Appellants' comparison of Sumitomo to claim 1, the Examiner does not appear to dispute that the content of water discussed in Sumitomo far exceeds that of the recited range but points out that Sumitomo discusses only the absorbed water content after soaking for an extended period of time. Ans. 2-8; Sumitomo paras. 13-14. As the comparison is not an accurate one for the Appellants to rely on to demonstrate Sumitomo's un-soaked or pre-soaked water content, it also cannot be regarded as an one on which the Examiner can base a finding that Sumitomo' s un-soaked or pre-soaked water content was known to be a result-effective variable. See Ans. 4--5. We recognize that the claim does not specify when water content is measured with respect to soaking, so, insofar as the broadest reasonable 3 Appeal2017-006378 Application 13/984,675 interpretation of claim 1 goes, a water content within the range recited at any time would suffice to satisfy the claim language. However, the deficiency in the Examiner's analysis is that there is no evidence that Sumitomo' s medium ever has a water content that low. Nor is there any evidence that the particular water content Sumitomo does appear to be concerned with-the content after soaking-was a variable that, when optimized, would have changed so drastically from the ranges taught in Sumitomo so as to fall within the range recited in claim 1. Without more evidence we cannot regard such a drastic modification to Sumitomo' s range to be the product of mere "routine" optimization. See Ans. 3--4. For the foregoing reasons, on the record before us, the evidence of obviousness does not outweigh the evidence against obviousness. DECISION The Examiner's rejection is reversed. REVERSED 4 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte Y ASUYO NISHIMURA and T AKASHI W AKUI Appeal2017-006378 Application 13/984,675 Technology Center 3600 Before: CHARLES N. GREENHUT, JEFFREY A. STEPHENS, and ERIC C. JESCHKE, Administrative Patent Judges. STEPHENS, Administrative Patent Judge, concurring. I agree with the result reached by the majority, but write separately to explain my reasoning. In my view, the Examiner's references to the lack of evidence of criticality or unexpected results reflect the Examiner's determination that sufficient findings were made to shift the burden of producing evidence of criticality or unexpected results to Appellants. For the reasons that follow, I agree with Appellants that Sumitomo2 does not establish that the claimed variable, namely the water content by mass relative to the mass of the ethylene-vinyl alcohol copolymer ("EVOH"), is one that is results-effective. 2 All citations to Sumitomo refer to the certified English translation provided with Appellants' response filed March 30, 2016. Appeal2017-006378 Application 13/984,675 The Examiner finds Sumitomo teaches a chip comprising EVOH and water, and discusses water content in two working examples, but that Sumitomo is silent as to the water content by mass relative to the EVOH. Final Act. 4. The Examiner concluded it would have been obvious to have made Sumitomo' s medium with the claimed water content because it has been held that where routine testing and general experimental conditions are present, discovering the optimum or workable ranges until the desired effect (based on the plant being grown with the medium with the requirement of proper water content for that specific plant) is achieved involves only routine skill in the art. Id. The Examiner further explains that "water content selection or amount in a medium is notoriously well-known in the plant industry based on various known factors such as the type of plant being grown in the medium, etc." Id. at 9. The Examiner also notes "applicant has no criticality or unexpected result from [the claimed] ranges of water content," and that, to the contrary, the Specification merely states that the invention "may preferably contain water" in the range claimed. Id. at 4 (quoting Spec. para. 22) (emphasis omitted). Here, I would find that the Examiner's obviousness rationale is insufficient even absent evidence of criticality or unexpected results. Although it cannot be disputed that one of ordinary skill in the art would have recognized the importance of water to growing plants, I agree with Appellants that Sumitomo does not recognize the claimed variable, namely the water content by mass relative to the mass of the ethylene-vinyl alcohol copolymer, as one that is results-effective. App. Br. 6 ("There is nothing in Sumitomo to suggest ... that the water content is recognized as a result- effective variable."). 6 Appeal2017-006378 Application 13/984,675 It is possible, as Appellants have done, to calculate Sumitomo' s potential ranges of the mass of water absorbed by the medium relative to the mass of EVOH. See App. Br. 8-9. 3 In Sumitomo, however, EVOH is described as an excipient that is mixed with a water-absorbent material in order to make the medium easier to mold. Sumitomo para. 6. Typical ratios of excipient to water-absorbent material are provided, id., but Sumitomo's disclosed range of the water absorption ratio is related to the mass of the water-absorption material (e.g., resin or natural polymer), rather than the mass of EVOH, id. at para. 10. Thus, there is no indication in Sumitomo that any resulting ratio of water to EVOH, as opposed to the water content more generally, would have been recognized as affecting any results to be achieved by the medium. 4 For this reason, on this record, I agree that the Examiner's rejections should not be sustained. 3 Appellants concede that Sumitomo' s lowest disclosed water absorption (i.e., 5 times the mass of the water-absorbent material, where the mass of the water-absorbent material and excipient such as EVOH may be equal, see Sumitomo paras. 6, 10) would correspond to a ratio of water content to EVOH that is only 1.7 times the upper value of the claimed range of 300 parts by mass of water to 100 parts by mass of EVOH. See App. Br. 9. Neither Appellants nor the Examiner have provided sufficient evidence or explanation to indicate how drastic such a difference is in the context of this art, but the Examiner does not dispute that the ratios calculated from Sumitomo do not overlap the claimed range. 4 The Examiner also relied on Appellants' Specification to find that the "range as claimed cannot be recognized to have a result-effective variable as appeared to be argued by applicant against Sumitomo." Final Act. 8. Where the evidence shows particular limitations do not "specify a device which performed and operated any differently from the prior art," it may be that such limitations do not support patentability of the claim. Gardner v. TEC Sys., Inc., 725 F.2d 1338, 1349 (Fed. Cir. 1984). Here, however, the Examiner's findings conflict with the findings that the claimed ratio is a results-effective variable, without further explanation. 7