Ex Parte Wallace

Patent Trial and Appeal BoardAug 21, 2017

12415157 (P.T.A.B. Aug. 21, 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. 12/415,157 03/31/2009 Chester A. Wallace 166002USP 2228 139533 7590 Vobach IP Law, LLC P.O. Box 100498 Denver, CO 80250 EXAMINER GORADIA, SHEFALI DINESH ART UNIT PAPER NUMBER 2665 MAIL DATE DELIVERY MODE 08/21/2017 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 CHESTER A. WALLACE Appeal 2016-006828 Application 12/415,157 Technology Center 2600 Before MAHSHID D. SAADAT, NORMAN H. BEAMER, and ADAM J. PYONIN, Administrative Patent Judges. PYONIN, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Appellant filed a Request for Rehearing under 37 C.F.R. § 41.52(a)(1) (hereafter “Request”) on May 24, 2017, for reconsideration of the Decision mailed March 24, 2017 (hereafter “Decision”). We have reconsidered the Decision in light of Appellant’s arguments; however, we are not persuaded of any error therein. Appeal 2016-006828 Application 12/415,157 DISCUSSION A. Independent Claim 1 In the Request, “Appellant respectfully submits that the Office erred in rejecting the claims based on the cited references and asserted rationale.” Request 16. A central contention of Appellant is that the claim language reflects the disclosure in “Appellant’s specification^ which] explains to the public for the first time that fluid expulsion structures can be vehicles for large deposits of minerals — particularly mineral deposits that emanate from large mineral deposits in subsiding sedimentary basins.” Request 11. We disagree, as fluid expulsion structures were well known to be vehicles for large deposits of minerals at the time of the invention. See Decision 10; Wenrich Table 1; Boorman Abstract, 364; Hawkes 225. Further, we agree with the Examiner that the correlation—between fluid expulsion structure locations and searching for mineral deposits that emanate from large mineral deposits in subsiding sedimentary basins—was obvious to one of ordinary skill, in light of the cited references at the time of the invention. See Final Act. 6; Ans. 14; Decision 8—10; Wenrich 1—2; Boorman 359; Hawkes 225— 226. Appellant also asserts we ignored claim limitations and arguments in the Decision, including the recited limitations “non-collapse” and “minerals that migrated from a subsiding sedimentary basin and were deposited via an oxidation-reduction reaction.” See Request 2—10. Although Appellant disagrees with our analysis, Appellant does not show we misapprehended or overlooked any points. See, e.g., Decision 8—12. In the Decision, we construed the claim terms in light of Appellant’s Specification. See Decision 8—10. Thus, Appellant’s contention that “[t]he PTAB erred by 2 Appeal 2016-006828 Application 12/415,157 relying upon the teachings of the Appellant’s own specification for purposes of obviousness” does not show error, as we relied upon the Specification in construing the claims, not to “support [the] obviousness rejection.” Contra Request 14 (emphasis omitted); see In re Bond, 910 F.2d 831, 833 (Fed. Cir. 1990) (“claim language should be read in light of the specification as it would be interpreted by one of ordinary skill in the art”). For example, claim 1 recites a “non-collapse fluid expulsion structure”; however the term “non-collapse” is not recited in the Specification, and a “fluid-expulsion structure” is described as both “hav[ing] been misidentified as ‘collapse’ pipes” (Spec. 135) and including breccia pipes in Arizona1 (Spec. 138). Accordingly, we are not persuaded that we misapprehended or overlooked any points in determining the combination of Wenrich and Boorman reasonably teaches or suggests the claimed non-collapse fluid expulsion structures. See Decision 8—9; Wenrich 1 (“mineralizing fluids that passed through some pipes deposited a large suite of metallic minerals” (emphasis added)), 2 (“Metallic minerals within the pipes were probably deposited by at least two separate mineralizing fluids .... With such a large number of breccia pipes, an equally large number of accompanying minerals might be expected”); Boorman Abstract 1 In the Decision, we found “Appellant’s Specification, however, describes an example of a fluid expulsion structure as a breccia pipe similar to the breccia pipes discussed in Wenrich.” Decision 9. Appellant contends our logic in making the finding was incorrect (see Request 6—7), but does not state that these findings, themselves, were incorrect. See, e.g., Oral Hearing Transcript 9-10. Based on the record before us, we find the Breccia pipes disclosed by Wenrich to teach the Arizona Breccia Pipes disclosed in Appellant’s Specification, which are encompassed by the claimed fluid expulsion structures. See Wenrich 4; Spec. 126. 3 Appeal 2016-006828 Application 12/415,157 (“Fluids ... are becoming recognized as having important functions in magma chamber processes for the . . . movement and concentration of economically important ore elements. We re-examine a breccia pipe in the Bushveld Complex to investigate the role of volatile fluid overpressure in its emplacement”), 364 (“As anhydrous minerals crystallize from a vapor- saturated liquid, separation of a volatile-rich fluid must occur. This can lead to an overpressured situation. For example, Burnham (1979) has shown how differentiation-induced redistribution of water in a magma body can lead to local vapor saturation”). Nor are we persuaded we misapprehended or overlooked any points in determining the cited references teach or suggest a correlation of mineral exploration locations, and minerals that migrated upward from a subsiding sedimentary basin via the non-collapse fluid- expulsion structure and were deposited via an oxidation-reduction reaction, within the meaning of the claim. See Decision 10—11; Ans. 11—12; Wenrich 2—4, 8, 11; Boorman 359, 363; Hawkes 225—226. Appellant further argues “[t]he only mention of ‘testing’ in the PTAB’s decision appears to be at page 8 of the Decision on Appeal,” and the Decision thus overlooks Appellant’s argument “that testing at a specific location — namely, proximate to the non-collapse fluid expulsion structure — is not taught by the combination of references.” Request 2 (emphasis omitted). These arguments do not persuade us we overlooked any points in the Decision. We found the recited method steps, including testing the geochemistry of material proximate to a specific location, were well known in the art at the time of invention. See Decision 8; Final Act. 14; Hawkes 225—226. Further, as discussed above, we found the correlation between the claimed specific location (“proximate to the non-collapse fluid-expulsion 4 Appeal 2016-006828 Application 12/415,157 structure”) and the minerals for exploration (“minerals that migrated upward from a subsiding sedimentary basin via the non-collapse fluid-expulsion structure and were deposited via an oxidation-reduction reaction”) were taught or suggested by the cited references. See Decision 8—11. Thus, we are not persuaded the finding that one of ordinary skill would test an area proximate a non-collapse fluid expulsion structure, as claimed was in error. See Decision 8. Although Appellant contends “the types of minerals recited in claim 1 are most certainly functionally related to non-collapse fluid expulsion structures” (Request 12), Appellant has not shown the method steps (including the testing step) are functionally related to the minerals or structures. See Request 6. Rather, Appellant is reciting known mineral prospecting steps (see Decision 8; Final Act. 13—15; Hawkes 225—226), and as discussed above, the correlation of the locations recited in the claim and the potential2 for minerals was well known in view of the cited references. See, e.g., Wenrich Table 1. Thus, we find claim 1 to be obvious in view of the cited references, as “the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007); see Request 15. 2 As we noted in the Decision, “[t]he designating step, furthermore, merely designates an area for exploration', although the claim preamble recites a ‘method of locating mineral deposits,’ the claim is silent regarding a step of locating mineral deposits.” Decision 6. That is, claim 1 recites “a mineral exploration location,” which may not contain any minerals. 5 Appeal 2016-006828 Application 12/415,157 B. Dependent Claim 3 In the Request, Appellant argues “[t]he PTAB erred by implying in its Decision on Appeal that sandstone has mineral exploration potential,” and “[t]o assert that a person of ordinary skill in the art would be motivated to use the Appellant's method to search for individual crystals of sand (i.e., individual crystals of quartz) is without merit.” Request 13; see also Request 4. Appellant reasserts that sandstone is not a mineral, but does not provide evidence to challenge the finding that sandstone contains a mineral (i.e., quartz). See Request 13—14; Decision 15; see also Final Act. 18; Ans. 15. Moreover, Appellant has not shown that the Examiner erred in finding one of ordinary skill in the art, in view of the teachings of the cited references, would perform the method steps of claim 1 with respect to a fluid expulsion structure that “is a non-collapse sand injectite,” as claimed. See Final Act. 18. As discussed above, we find that one of ordinary skill would designate areas proximate to non-collapse fluid expulsion structures as mineral exploration locations. See Decision 12. Braccini, furthermore, teaches sand injectites are exploration targets. See Braccini Abstract, 35; Decision 15. Thus, we did not overlook or misapprehend any points in determining “an artisan of ordinary skill would perform the steps of claim 1 on a non-collapse sand injectite, in view of the references cited in the rejection of claim 1 combined with Braccini’s teaching of searching for sand injectites.” Decision 15; see also Braccini 35, 38, 49; Final Act. 18. 6 Appeal 2016-006828 Application 12/415,157 DECISION We have granted Appellant’s request to the extent that we have reconsidered the Decision, but we deny the request with respect to making any changes therein. DENIED 7