Ex Parte Tran et alDownload PDFPatent Trial and Appeal BoardDec 30, 201613242806 (P.T.A.B. Dec. 30, 2016) Copy Citation 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. 13/242,806 09/23/2011 Luong (Louie) M. Tran 7784-000827/US/COB 1993 120226 7590 01/04/2017 Patterson & Sheridan - The Boeing Company c/o Patterson & Sheridan, LLP 24 GREENWAY PLAZA, SUITE 1600 Houston, TX 77046 EXAMINER KRUPICKA, ADAM C ART UNIT PAPER NUMBER 1784 NOTIFICATION DATE DELIVERY MODE 01/04/2017 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): PAIR_eofficeaction@pattersonsheridan.com PatentAdmin@boeing.com PS Docketing @ pattersonsheridan .com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte LUONG (LOUIE) M. TRAN, MATTHIAS P. SCHRIEVER, and JOHN H. JONES Appeal 2014-009789 Application 13/242,806 Technology Center 1700 Before ADRIENE LEPIANE HANLON, ROMULO H. DELMENDO, and CHRISTOPHER L. OGDEN, Administrative Patent Judges. HANLON, Administrative Patent Judge. DECISION ON REHEARING The Appellants request rehearing of a DECISION ON APPEAL dated August 17, 2016 (“Decision”), affirming the rejection of claims 9-12, 14—16, and 18 under 35 U.S.C. § 112, second paragraph, as indefinite and the rejection of claims 9-12, 14—16, and 18 under 35 U.S.C. § 103(a) as obvious over Keener in view of Opaskar. A request for rehearing must state with particularity the points believed to have been misapprehended or overlooked by the Board. Arguments not raised in the briefs before the Board and evidence not previously relied on in the briefs are Appeal 2014-009789 Application 13/242,806 not permitted in a request for rehearing except as provided in 37 C.F.R. § 41.52(a)(2) through (a)(4). 37 C.F.R. § 41.52(a)(1) (2016). For the reasons set forth below, the request is DENIED. A. Rejection under 35U.S.C. $ 112, second paragraph Claim 9 states: 9. A zinc nickel plated article comprising a substrate and a zinc nickel alloy plating on the substrate, wherein the plating is characterized by a morphology as shown in Figure 2a. App. Br. 8 (emphasis added). On rehearing, the Appellants argue: [T]he current version of the MPEP specifically identifies a photomicrograph as an example of an “exceptional circumstance” where incorporation by reference is permitted. The current version of MPEP 2173.05(s) provides that incorporation by reference to a specific figure or table is permitted in “exceptional circumstances,” citing Ex parte Fressola[, 27 USPQ2d 1608 (BPAI 1993)]. ... In [Fressola], the Board expressly relied upon Ex parte Gring[, 158 USPQ 109 (Bd. App. 1967)] for the proposition that a photomicrograph is an “exceptional circumstance” where incorporation by reference is allowed. Request 2—3. Therefore, the Appellants argue that “[t]he Board’s refusal to accept the photomicrograph of Figure 2a as an ‘exceptional circumstance’ is error.” Id. at 3. MPEP §2173.05(s) (8th ed., Rev. 9, Aug. 2012) states, in relevant part: Where possible, claims are to be complete in themselves. Incorporation by reference to a specific figure or table “is permitted only in exceptional circumstances where there is no practical way to define the invention in words and where it is more concise to incorporate by reference than duplicating a drawing or table into the claim. Incorporation by reference is a necessity doctrine, not for applicant’s convenience.” Ex parte Fressola, 27 USPQ2d 1608, 1609 (Bd. Pat. App. & Inter. 1993) (citations omitted). 2 Appeal 2014-009789 Application 13/242,806 MPEP § 2173.05(s) does not state that a photomicrograph is an “exceptional circumstance” per se. Fressola, however, refers to Gring as an example of an exceptional circumstance. See Fressola, 27 USPQ2d at 1609 (citing Gring, 158 USPQ 109 (Bd. App. 1967) (reference to photomicrograph)). In Gring, the claim at issue read: “5. The product of claim 1 which is that crystallographically depicted in Figure 1.” Gring, 158 USPQ at 110. The Board stated: Section 608.02 of the Manual of Patent Examining Procedure authorizes the acceptance in lieu of drawings of photomicrographs meeting specified formal requirements and showing crystalline structures, metallurgical microstructures, grain structures, or other specified substance which can be shown more clearly by photomicrographs than by drawings. Also in effect it has been held proper to make reference in a claim to a figure of an application drawing where such reference points out with sufficient clarity what could be set forth in words only with prolixity and less clarity. Id. (emphasis added). In this case, claim 9 recites that “the plating is characterized by a morphology as shown in Figure 2a.”1 App. Br. 8 (emphasis added). In the rejection on appeal, the Examiner concluded: [I]t is unclear exactly how applicants are limiting the claimed plating by generally referring to the morphology of figure 2a. Do applicants intend to require the prior art to have the exact shape, size, and configuration? If applicants are not requiring an identical structure, what elements of the structure are being required? Is figure 2 intended to limit the size and number of apparent pores and/or require the general shape of the metallic portions of the figure? Final 3. 1 During prosecution, the Appellants declined to amend claim 9 to recite that the claimed morphology exactly corresponds to Figure 2a, “thereby conceding all equivalents that Applicant would otherwise be entitled to.” See App. Br. 5. 3 Appeal 2014-009789 Application 13/242,806 In response, the Appellants argued: Figure 2a shows pores in a plating surface along with a scale showing 10 pm for determination of pore sizes. Thus, determination of pore sizes and pore distribution can be readily determined from Figure 2a without limiting the claims to the exact morphology in the small region shown in Figure 2a. App. Br. 5 (emphasis added). Significantly, the Appellants have not explained, in any detail, why there is no practical way to define, in words, the pore sizes and pore distribution depicted in Figure 2a.* 2 See MPEP § 2173.05(s); see also Fressola, 27 USPQ2d at 1609 (“Incorporation by reference is a necessity doctrine, not for applicant’s convenience.”). Moreover, to the extent that the language of claim 9 is intended to encompass morphology other than the morphology depicted in Figure 2a, that morphology remains undefined on this record. See Decision 5 (“any equivalents of the morphology shown in Figure 2a remain undefined on this record”). In sum, the Appellants have failed to show that the Board erred in concluding that claims 9-12, 14—16, and 18 are indefinite under 35 U.S.C. § 112, second paragraph. 2 In the Answer, the Examiner stated that “a general reference to the morphology of figure 2a does not. . . substitute for a clearly defined surface description using well know [sic, known] measures for the characterization of a surface.” Ans. 3. The Examiner illustrated that position with the following exemplary language: “a plating having a surface comprising voids with an average diameter of 5pm where the density of the voids at the surface is less than 100 voids per mm2.” Id. In response, the Appellants argued that “the ‘word’ examples provided in the Examiner’s Answer are not clearer than a Figure showing morphology.” Reply Br. 2. We note that the Appellants’ argument was in response to a hypothetical situation posed by the Examiner. Moreover, the Appellants, on rehearing, do not contend that the Board misapprehended or overlooked the Appellants’ argument. Rather, on rehearing, we understand the Appellants to be arguing that photomicrographs are exceptional circumstances per se under MPEP § 2173.05(s). 4 Appeal 2014-009789 Application 13/242,806 B. Rejection under 35 U.S.C. $ 103(a) The Appellants argue that Par Pharmaceutical, Inc. v. TWI Pharmaceuticals, 773 F.3d 1186, 1195—96 (Fed. Cir. 2014), was decided after the Reply Brief was filed. In Par, the Appellants argue: [T]he Federal Circuit held that an inherent advantage or property relied upon for an obviousness rejection must have been known at the time of the invention, stating: [T]he inherency of an advantage and its obviousness are entirely different questions. . . . Obviousness cannot be based on what is unknown. Id. (quoting In re Spormann, 363 F.2d 444, 448 (C.C.P.A. 1966)). Request 4. The Appellants argue: The Examiner’s conclusion that the hypothetical article resulting from the combination of Opaskar and Keener would be expected to have substantially the same properties as the claimed article is insufficient to meet the “high standard” set by the Federal Circuit to find an invention inherently obvious. . . . Instead, pursuant to Federal Circuit precedent, the Examiner is required to show that the inherent advantages were known in the prior art at the time of the invention. See, e.g., Par Pharmaceutical, Inc., 773 F.3d at 1195—96 and In re Spormann, 363 F.2d at 444. However, the record here shows just the opposite. Request 4. The Appellants’ arguments do not show that the Board overlooked or misapprehended any point in affirming the § 103(a) rejection on appeal. Contrary to the Appellants’ argument, Federal Circuit precedent does not require the Examiner to show that “the inherent advantages [resulting from the combined teachings of Keener and Opaskar] were known in the prior art at the time of the invention.” Id. Inherency “is not necessarily known.” Spormann, 363 F.2d at 448. Obviousness, however, “cannot be predicated on what is unknown.” Id. 5 Appeal 2014-009789 Application 13/242,806 Therefore, “inherency must be limited when applied to obviousness, and is present only when the limitation at issue is the ‘natural result’ of the combination of prior art elements.” Par, 773 F.3d at 1195 (citing In re Oelrich, 666 F.2d 578, 581 (CCPA 1981)). In this case, the Examiner found that the plating in Opaskar “is carried out using materials and process conditions which are substantially identical to those disclosed by applicants.” Final 5. Although the Examiner found Opaskar “do[es] not appear to explicitly teach the corrosion and embrittlement specifications of the Zn-Ni plating,” the Examiner found the plating of Opaskar on Keener’s article would have substantially the same properties as the claimed article, including a morphology as shown in Appellants’ Figure 2a. Id. at 5, 6, 8. In other words, the Examiner found the claimed properties are the “natural result” of the combined teachings of Opaskar and Keener. See Par, 773 F.3d at 1195 (citing Oelrich, 666 F.2d at 581). Thus, the burden properly shifted to the Appellants to demonstrate otherwise.3 * * 6See In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (where the claimed and prior art products “are produced by identical or substantially identical processes, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product”). On rehearing, the Appellants argue that “Best is inapplicable because the rejections were based on a single reference.” Request 5. To the contrary, the Court in Best expressly stated that “[wjhether the rejection is based on ‘inherency’ 3 On rehearing, the Appellants direct our attention to a Declaration of Luong Tran which is said to show “that the combination of Keener and Opaskar would not provide the inherent advantages or claimed morphology of Figure 2a.” Request 5. The Board addressed the Declaration in the Decision. See Decision 6—8. On rehearing, the Appellants do not contend that the Board misapprehended or overlooked any point in considering the Declaration. 6 Appeal 2014-009789 Application 13/242,806 under 35 U.S.C. § 102, on ‘prima facie obviousness’ under 35 U.S.C. §103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO’s inability to manufacture products or to obtain and compare prior art products.” Best, 562 F.2d at 1255 (footnote omitted). C. DECISION The Appellants’ request for rehearing has been granted to the extent that the DECISION ON APPEAL dated August 17, 2016, has been considered in light of the Appellants’ arguments. However, the request is denied because we decline to modify the decision in any respect. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). REHEARING DENIED 7 Copy with citationCopy as parenthetical citation