Ex Parte Pearson et al

Patent Trial and Appeal BoardAug 30, 2017

13356004 (P.T.A.B. Aug. 30, 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. 13/356,004 01/23/2012 Trevor Pearson 2156-685A 5620 34238 7590 09/01/2017 ARTHUR G. SCHAIER CARMODY TORRANCE SANDAK & HENNESSEY LLP 195 CHURCH STREET P.O. BOX 1950 NEW HAVEN, CT 06509-1950 EXAMINER PHASGE, ARUN S ART UNIT PAPER NUMBER 1756 NOTIFICATION DATE DELIVERY MODE 09/01/2017 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): patents @ carmodylaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte TREVOR PEARSON and CRAIG ROBINSON Appeal 2016-001723 Application 13/356,004 Technology Center 1700 Before KAREN M. HASTINGS, JENNIFER R. GUPTA, JANE E. INGLESE, Administrative Patent Judges. GUPTA, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Appellants1 filed a request for rehearing under 37 C.F.R. § 41.52 (hereinafter “Request”) of our Decision mailed August 16, 2017. In that Decision, we affirmed the rejection of claims 1—4, 6, 11, 12, 14, 16—19, and 22 under pre-AIA 35 U.S.C. § 103(a) over Schildmann, the rejection of claims 9 and 10 under pre-AIA 35 U.S.C. § 103(a) over Schildmann in view of Bourne, the rejection of claims 7 and 8 under pre-AIA 35 U.S.C. § 103(a) over Schildmann in view of Komatsu, and the rejection of claims 17, 18, and 22 under pre-AIA 35 U.S.C. § 102(b) based on Schildmann. In addition, we 1 Appellants identify the real party in interest as Unified Brands, Inc. Br. 2. Appeal 2016-001723 Application 13/356,004 reversed the rejection of claims 5, 13, 15, 20, and 21 under pre-AIA 35 U.S.C. § 103(a) over Schildmann, and the rejection of claims 20 and 21 under pre-AIA 35 U.S.C. § 102(b) based on Schildmann.2 Requests for Rehearing are limited to matters overlooked or misapprehended by the Panel in rendering the original decision. See 37 C.F.R. §41.52. For the reasons set forth below, we grant Appellants’ Request to the extent that we have reconsidered our Decision in light of Appellants’ arguments raised in the Request. After reconsideration, however, we find no error in the disposition of the rejections. Therefore, we deny Appellants’ Request to modify our prior Decision. ISSUES RAISED IN THE REQUEST Appellants request rehearing because Appellants argue that the Board misapprehended and/or overlooked paragraph 25 of the Schildmann reference. Request 1. Appellants contend that this portion of the Schildmann reference was argued, relied upon, and quoted by Appellants on page 7 of its Appeal Brief and during the Oral Hearing of this matter. Id. According to Appellants, the portion of paragraph 25 of Schildmann that is critically relevant to this appeal is as follows: “As possible counter ions of the permanganese ions present in the pickling solution, the pickling solution itself merely contains H+ and Mn2+ ions.” Id. As argued on page 7 of their 2 In this decision, we refer to the Specification filed January 23, 2012, the Non-Final Office Action mailed January 28, 2015 (“Non-Final Act.”), the Appeal Brief filed March 5, 2015 (“Appeal Br.”), the Examiner’s Answer mailed October 7, 2015 (“Ans.”), and the Reply Brief filed November 24, 2015 (“Reply Br.”). 2 Appeal 2016-001723 Application 13/356,004 Appeal Brief and during the Oral Hearing, Appellants argue that this teaching of Schildmann negates the proposed inherency of Mn3+ ions in solution as required by the present claims. Id. Although not explicitly mentioned in our Decision, the Board did not overlook Appellants’ arguments regarding paragraph 25 of Schildmann, but instead found the argument unpersuasive. Appellants’ interpret paragraph 25 of Schildmann as teaching that Schildmann’s pickling solution contains only H+ and Mn2+ ions, and does not contain Mn3+ ions. Request 2. We, however, find this to be an overly narrow reading of Schildmann’s teachings. In paragraph 25, Schildmann teaches: “As possible counter ions of the permanganese ions present in the pickling solution, the pickling solution itself merely contains H+ and Mn2+ ions.” Thus, although Schildmann teaches that the pickling solution merely contains H+ and Mn2+ ions as possible counter ions, it does not teach that it is not also possible for the pickling solution to contain other counter ions, such as Mn3+. As explained in our Decision, on this record, the Examiner establishes a reasonable basis for inherency and thereby evinces that Appellants’ and Schildmann’s method appear to be the same. Final Act. 3. Thus, the burden is properly shifted to Appellants to show that they are not. In re Best, 562 F.2d 1252, 1255 (CCPA 1977). Appellants have failed to show by a preponderance of the evidence that Schildmann’s method would not necessarily form manganese (III) ions, when, for example, manganese sulfate MnSCF is used as the manganese salt in a solution of 9 to 15 molar sulfuric acid in Schildmann’s oxidation cell, and a current density of 0.1 to 0.4 A/dm2 is applied to the cell. Compare Schildmann || 16, 19, 20, 23 with Spec. 10,11. 23-24, 12,11. 20-28. 3 Appeal 2016-001723 Application 13/356,004 CONCLUSION For the above reasons, we decline to modify our Decision. The Request for Rehearing is granted to the extent we have considered Appellants’ arguments, but denied in that the Decision will not be modified. 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 4