MELIOR INNOVATIONS, INC.

Patent Trials and Appeals Board

Jan 14, 2022

2020006177 (P.T.A.B. Jan. 14, 2022)

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. 14/864,162 09/24/2015 Andrew R. Hopkins 18872.0012 Melior m12b-1 9876 116359 7590 01/14/2022 Belvis Law -Melior P.O. Box 11317 Chicago, IL 60611 EXAMINER SHEIKH, HUMERA N ART UNIT PAPER NUMBER 1784 NOTIFICATION DATE DELIVERY MODE 01/14/2022 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): docket@belvislaw.com gbelvis@belvislaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ___________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ___________________ Ex parte ANDREW R. HOPKINS, ASHISH P. DIWANJI, WALTER J. SHERWOOD, DOUGLAS M. DUKES, GLENN SANDGREN, MARK S. LAND, and BRIAN L. BENAC ___________________ Appeal 2020-006177 Application 14/864,162 Technology Center 1700 ___________________ Before GEORGE C. BEST, CHRISTOPHER C. KENNEDY, and JENNIFER R. GUPTA, Administrative Patent Judges. BEST, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Appellant1 seeks clarification and rehearing of our October 13, 2021 Opinion, Ex parte Hopkins, No. 2020-006177, 2021 WL 4811242 (PTAB, 2021) (“Opinion”). See Reh’g Req. 1-3. In that Opinion, we (1) reversed the 1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant has identified Pallidus, Inc. as the real party in interest. Appeal Br. 2. Appeal 2020-006177 Application 14/864,162 2 rejection of claims 1-5, 39, 41, 43, and 45 as anticipated by Aoki,2 Op. at *3, (2) affirmed3 the rejection of claims 1-5, 39, 41, 43, and 45 as anticipated by Kim,4 id. at *3-*5, (3) affirmed the rejection of claims 1-5, 39, 41, 43, and 45 as obvious over Kim, id., and (4) reversed the rejection of claims 1-5 as obvious over the combination of Aoki, Zweiback,5 and Kusonocki,6 id. at *5. For the reasons set forth below, we grant the request to the extent that we provide additional clarification below, but the request is denied with regard to modifying the result of the Opinion. I. DISCUSSION Appellant’s Request seeks two forms of relief. First, Appellant asks that we clarify our Opinion regarding our affirmance of the rejection of claims 1-5, 39, 41, 43, and 45 as obvious over Kim. Reh’g Req. 1-2. Second, Appellant asks us to rehear and reconsider our determination that 2 US 2012/0219798 A1, published August 30, 2012. 3 In the Opinion, the Summary Table states that the rejection of claims 1-5, 39, 41, 43, and 45 as anticipated by Kim was reversed. Op. at *5. This summary statement is erroneous. As the discussion in the Opinion shows, we determine that Appellant had not met its burden of showing reversible error in the Examiner’s rejection of claim 1 as anticipated by or, in the alternative, obvious over Kim. See id. at *3 -*5. 4 WO 2012/177097 82, published December 27, 2012. The Examiner used US 2014/0127512 A1, published May 8, 2014, as the “English equivalent.” Final Act. 3. It is unclear why the Examiner’s following this practice, since the International Publication is an English-language document. Nonetheless, for the sake of consistency, we shall also cite the US publication. 5 US 2013/0309496 A1, published November 21, 2013. 6 US 2012/0211769 A1, published August 23, 2012. Appeal 2020-006177 Application 14/864,162 3 those claims were properly rejected as obvious by the Examiner. Id. at 2-6. We address these requests in turn. A. Request for Clarification Appellant argues that the Opinion reverses the rejection of claims 1-5, 39, 41, 43, and 45 as anticipated by Kim. Appellant further argues that the Opinion does not address the Examiner’s determination that the claims would have been obvious over Kim. Reh’g Req. 1-2. Appellant seeks “specific findings regarding the Board’s affirmance . . . of the Examiner’s § 103 rejection of the claims based solely on Kim.” Id. at 2. We begin by setting forth more precisely our affirmance of the Examiner’s rejections of claims 1-5, 39, 41, 43, and 45 over Kim. The Examiner rejected these claims as anticipated by, or in the alternative, obvious over Kim. Final Act. 3. Appellants sought reversal of this rejection. Appeal Br. 13-19. In our Opinion, we addressed the appeal of the alternative rejections together. Op. at *3-*5. In the Appeal Brief, Appellant presented three arguments for reversal of claims on appeal as anticipated by, or in the alternative, obvious over Kim. See Appeal Br. 13-19. In each instance, we determine that Appellant had not met its burden of demonstrating reversible error in the rejection. See Op. at *3-*5. In light of our determination that Appellant had not shown reversible error, we affirmed the Examiner’s rejection that Kim anticipated claims 1-5, 39, 41, 43, and 45 of the ’162 Application. Op. at *3-*5. Because anticipation is the “epitome of obviousness,” Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1373 (Fed. Cir. 2019) (“[I]t is well settled that ‘a disclosure that anticipates under § 102 also renders the claim invalid under § 103, for Appeal 2020-006177 Application 14/864,162 4 “anticipation is the epitome of obviousness.”’” (quoting Connell v. Sears, Roebuck & Co., 722 F.2d 1572, 1548 (Fed. Cir. 1983))), we also affirmed the rejection of those claims under § 103. B. Request for Rehearing In a request for rehearing, the appellant is charged with stating the points believed to have been misapprehended or overlooked by the Board. 37 C.F.R. § 41.52 (2019). We review the points of the decision contested by the appellant and determine whether we made an error in fact finding or applying the law, and further determine whether any error changes the outcome when viewing all the evidence and arguments anew in light of the preponderance of the evidence standard. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992) (“patentability is determined on the totality of the record, by a preponderance of evidence with due consideration to persuasiveness of argument”); Gardner v. TEC Sys., Inc., 725 F.2d 1338, 1344 (Fed. Cir. 1984) (any error concerning nonessential facts is harmless and not a basis for reversal). We do not give our original Opinion any deference. As discussed above, in our Opinion, we affirmed the Examiner’s rejection of all pending claims as anticipated by and, therefore, obvious in view of Kim. In the Request, Appellant seeks reconsideration of our affirmance of the obviousness rejection. Reh’g Req. 2-6. We assume that Appellant was misled by the error in the Summary Table included in the Opinion and believes that the anticipation rejection has been reversed. We, therefore, treat Appellant’s request for rehearing regarding the § 103 rejection in view of Kim as also including a request for rehearing regarding the § 102 rejection. Thus, we will consider Appellant’s arguments regarding the obviousness rejection is also applying to the anticipation rejection. Appeal 2020-006177 Application 14/864,162 5 In its Appeal Brief, Appellant argued that the Examiner’s § 102/§ 103 rejection should be reversed for any of three reasons. Appeal Br. 13-19. In the Request, Appellant argues that we either misapprehended or overlooked points related to two of these three arguments. Reh’g Req. 2-6. We address each of these points in turn. 1. “Polymer derived ceramic” SiC In the Appeal Brief, Appellant argued that the Examiner erred by failing to give weight to claim 1’s language requiring a “polymer derived ceramic SiC.” Appeal Br. 13-14. As the Opinion explained, the Examiner determined that this language was a product-by-process limitation. See Op. at *3 (citing Final Act. 9; Answer 13). The Examiner then found that Appellant had not demonstrated a structural difference between its polymer derived ceramic SiC powder and Kim’s ceramic SiC powder. Id. We affirmed both the Examiner’s claim construction and factual determinations. Id. In the Request, Appellant argues that we either misapprehended or overlooked the contents of the ’162 Application’s Specification. Reh’g Req. 3-6 (relying upon ¶ 122 of the Specification). In particular, Appellant argues that paragraph 122 of the Specification contains teachings which “meet Applicant’s burden to establish that the claimed polymer derived SiC is different from Kim’s SiC.” Id. at 3. This argument is not persuasive. Paragraph 122 teaches that the polysilocarb derived SiC can have oxygen in amounts ranging from less than 1000 ppm to less than 0.1 ppm. See also Spec. 112 (describing SiC purity levels of at least about 99.9% to at least about 99.99999%). As noted in the Opinion, see Op. at *4, Kim describes the manufacture of silicon carbide Appeal 2020-006177 Application 14/864,162 6 ceramic powder having a purity of about 99.999% to about 99.9999999%. Kim ¶ 37. Expressed as parts per million, Kim describes impurity levels ranging from 0.0001-10 ppm. Even if we were to assume that all of the impurities present in Kim’s SiC were oxygen, Kim describes synthesis of SiC with the same impurity levels as that described in the Specification. 2. Oxidation resistant surface of the SiC powder In the Appeal Brief, Appellant argued that Kim fails to disclose the claimed oxidation resistant surface. Appeal Br. 14-16. As the Opinion explained, this argument was not persuasive of the existence of reversible error. See Op. at *4. In the Request, Appellant argues that paragraph 122 of the Specification teaches that polymer derived ceramic SiC has oxidation resistant properties not found in SiC made by processes such as Kim’s. Reh’g Req. 3. This argument is not persuasive. We have reviewed paragraph 122, which describes the polymer derived ceramic SiC as being essentially free from oxygen in any form, including as an oxide layer. Paragraph 122 specifically states that the polymer derived ceramic SiC “has the ability to resist, [sic] and does not form an oxide layer when exposed to air under standard temperatures and pressures.” Paragraph 122, however, does not describe the properties of SiC made by any other process. In the Request, Appellant also argues, for the first time, that commercially available SiC forms an oxide layer at ambient conditions. Reh’g Req. 4-6. In support of this argument, Appellant cites four different publications as evidence that Kim’s SiC will inevitably have surface Appeal 2020-006177 Application 14/864,162 7 oxidation. Id. at 4-5. Appellant, however, admits that this evidence was not before the Examiner. Id. at 5. Appeals to the Board are conducted on an essentially closed record. Our rules provide that, after filing a notice of appeal, an applicant may not add evidence to the record unless either (1) the evidence overcomes all appealed rejections and good cause is shown for why the evidence was not presented earlier or (2) prosecution is reopened. 37 C.F.R. § 41.33(d) (2019). We, therefore, cannot consider Appellant’s new evidence, which needs to be considered by the Examiner in the first instance. We express no opinion regarding its persuasive value. In the absence of the publications Appellant has untimely brought to Board’s attention, the most persuasive evidence regarding the properties of SiC are statements from Appellant’s own Specification: “Generally, silicon carbide can function as a semiconductor. As a material it very stable [sic]. Silicon carbide is a very hard material. It is essentially chemically inert, [sic] and will not react with any materials at room temperature.” Spec. ¶ 7 (emphasis added). Thus, Appellant’s argument regarding the oxidation resistance of the surface of Kim’s SiC is not persuasive. II. CONCLUSION We have (1) clarified our previous Opinion in this appeal and (2) reconsidered our affirmance of the Examiner’s rejection of claims 1-5, 39, 41, 43, and 45 as anticipated by or, in the alternative, obvious over Kim. However, the request is denied with regard to modifying the result of the Opinion. Appeal 2020-006177 Application 14/864,162 8 Outcome of Decision on Rehearing: Claims Rejected 35 U.S.C. § Reference(s)/Basis Denied Granted 1-5, 39, 41, 43, 45 102 Kim 1-5, 39, 41, 43, 45 1-5, 39, 41, 43, 45 103 Kim 1-5, 39, 41, 43, 45 Final Outcome of Appeal after Rehearing: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1-5, 39, 41, 43, 45 102 Aoki 1-5, 39, 41, 43, 45 1-5, 39, 41, 43, 45 103 Kim 1-5, 39, 41, 43, 45 1-5, 39, 41, 43, 45 103 Kim 1-5, 39, 41, 43, 45 1-5 103 Aoki, Zweiback, Kusonoki 1-5, 39, 41, 43, 45 Overall Outcome 1-5, 39, 41, 43, 45 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). DENIED