Ex Parte Tran et al

Patent Trial and Appeal Board

Dec 30, 2016

13242806 (P.T.A.B. Dec. 30, 2016)

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
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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.
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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).
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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.
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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).
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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.
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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.
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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
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