Wilson et al.Download PDFPatent Trials and Appeals BoardJun 23, 201713453720 - (J) (P.T.A.B. Jun. 23, 2017) Copy Citation BoxInterferences@uspto.gov Filed: June 23, 2017 Tel: 571-272-9797 UNITED STATES PATENT AND TRADEMARK OFFICE _______________ BEFORE THE PATENT TRIAL AND APPEAL BOARD _______________ BOARD OF REGENTS OF THE UNIVERSITY OF TEXAS SYSTEM (Preston S. Wilson, Kevin M. Lee, and Mark S. Wochner, Inventors) Junior Party (Patent 8,689,935), v. KARL-HEINZ ELMER, Inventor Senior Party (Patent Application 14/300,282). Patent Interference No. 106,062 (DK) (Technology Center 2800) Judgment 37 C.F.R. §§ 41.127 and 41.204(a)(3) Before SALLY GARDNER LANE, JAMES T. MOORE, and DEBORAH KATZ, Administrative Patent Judges. KATZ, Administrative Patent Judge. Interference 106,062 -2- Following the Decision on Motions (Paper 69) judgment under 35 U.S.C. § 135(a)1 is entered against Junior Party Texas. Texas asserted a conception on 29 April 2009 and a date of “first experiment demonstrating the invention” on 14 May 2009 in its Priority Statement. (See Paper 22.) Because both of these dates are later than the filing date of Elmer’s German application, 3 April 2008, which was accorded to Elmer by the grant of its Motion 1, we determine that Texas cannot prevail on a showing of priority. Therefore, it is ORDERED that Texas patent 8,689,935 claims 1-14 be CANCELED. FURTHER ORDERED that a copy of this judgment shall be entered into the administrative record of patent 8,689,935, application 14/300,282. FURTHER ORDERED that the parties are directed to 35 U.S.C. § 135(c) and to 37 C.F.R. § 41.205 regarding the filing of settlement agreements; and FURTHER ORDERED that a party seeking judicial review timely serve notice on the Director of the United States Patent and Trademark Office; 37 C.F.R. §§ 90.1 and 104.2. See also 37 C.F.R. § 41.8(b). Attention is directed to Biogen Idec MA, Inc., v. Japanese Foundation for Cancer Research, 785 F.3d 648, 654–57 (Fed. Cir. 2015) (determining that pre-AIA § 146 review was eliminated for interference proceedings declared after September 15, 2012). 1 Patent interferences continue under the relevant statutes in effect on 15 March 2013. See Pub. L. 112-29, § 3(n), 125 Stat. 284, 293 (2011). Interference 106,062 -3- cc (via e-mail): Counsel for Junior Party Texas Mark R. DeLuca Ryan T. Beard MEYERTONS, HOOD, KIVLIN, KOWERT & GOETZEL, PC mdeluca@intprop.com rbeard@intprop.com Counsel for Senior Party Elmer Wesley O. Mueller Thomas P. Canty Elias P. Soupos LEYDIG, VOIT & MAYER, LTD. wmueller@leydig.com tcanty@leydig.com esoupos@leydig.com BoxInterferences@uspto.gov Filed: June 23, 2017 Tel: 571-272-9797 UNITED STATES PATENT AND TRADEMARK OFFICE _______________ BEFORE THE PATENT TRIAL AND APPEAL BOARD _______________ BOARD OF REGENTS OF THE UNIVERSITY OF TEXAS SYSTEM (Preston S. Wilson, Kevin M. Lee, and Mark S. Wochner, Inventors) Junior Party (Patent 8,689,935), v. KARL-HEINZ ELMER, Inventor Senior Party (Patent Application 14/300,282). Patent Interference No. 106,062 (DK) DECISION ON MOTIONS 37 C.F.R. § 41.125(a) Before SALLY GARDNER LANE, JAMES T. MOORE, and DEBORAH KATZ, Administrative Patent Judges. KATZ, Administrative Patent Judge. Interference 106,062 2 I. Introduction This interference was declared after an initial determination that the claims of patent 8,689,935 (“the ’935 patent”), assigned to the Board of Regents of the University of Texas System (“Texas”) and the claims of application 14/300,282 (“the ’282 application”), owned by Karl-Heinz Elmer (“Elmer”) interfere. (See Decl., Paper 1.) A. Subject matter According to the parties’ specifications, underwater noise, for example from drilling and pile driving activities, can be harmful to migratory marine animals. (’935 patent”, Exh. 2001, at 1:18-20; ’282 appl., Exh. 2002, at ¶ 3.) In the past, curtains of air bubbles were used to block sound waves to address this problem. Air bubbles, though, require power and create noise to generate. (See ’935 patent, Exh. 2001, at 1:33-42; see ’282 appl., Exh. 2002, at ¶¶ 11-13.) The parties both claim apparatuses that use multiple gas-filled containers arranged on an apparatus as a way to block underwater sounds instead of air bubbles. (See [Texas] Clean Copy of Claims, Paper 13, and Elmer Clean Copy of Claims, Paper 5.) The specific subject matter of the Interference is defined by the Count, which recites: An apparatus that reduces the decibel level of underwater sounds emanating from an underwater device comprising: a support positionable proximate to the underwater device, wherein the support comprises a plurality of rigid support members; and a plurality of gas-filled containers coupled to the support, wherein each of the plurality of gas-filled containers comprises a flexible membrane filled with a gas, and wherein the plurality of gas-filled containers are connected to the plurality of rigid support members such that at least some of the plurality of gas-filled containers are in contact with one or more of the plurality of rigid support members, and wherein when deployed Interference 106,062 3 proximate to the underwater device, the rigid support members prevent vertical movement of the plurality of gas-filled containers; wherein the gas-filled containers include gas-filled bodies each of which has a physical characteristic that confers a selected resonance frequency to each of the gas-filled bodies upon immersion into the water surrounding the underwater device; and wherein the gas-filled containers create a void fraction for the device such that a preselected noise reduction is achieved. (Decl., Paper 1, at 4.) B. Motions Three motions are before us in this phase of the interference.1 Texas Motion 1 argues that the interference should be terminated because there is no interference-in-fact. (See Paper 23.) We deny this motion. Texas Motion 2 argues that Elmer’s claims are unpatentable under 35 U.S.C. § 112, first paragraph. (See Paper 24.) We deny this motion. Elmer Motion 1 argues that Elmer should be accorded benefit of its prior German application as a constructive reduction to practice of the Count. (See Paper 32.) We grant this motion. II. Texas Motion 1 – No Interference in Fact “Whenever an application is made for a patent which, in the opinion of the Director, would interfere with any pending application, or with any unexpired patent, an interference may be declared . . . .” 35 U.S.C. § 135(a)2. Because the 1 The parties both requested oral argument. (See Papers 67 and 68.) After reviewing the briefs filed, we determine that no oral argument is necessary. Accordingly, as is our discretion, none was scheduled. See 37 C.F.R. § 41.124 (“(c) If a request for oral argument is granted . . . .”). 2 Interferences continue under the statutes that were in effect on March 15, 2013. See Pub. L. 112-29, § 3(n), 125 Stat. 284, 293 (2011). Interference 106,062 4 interference was declared by an administrative patent judge acting on behalf of the Director, 37 C.F.R. § 41.203(b), there is presumption that at least one claim of each party interferes. To prevail, Texas bears the burden of showing that the parties do not claim the same subject matter. See 37 C.F.R. §§ 41.121(b) and 41.208(b). Whether an interference occurs is determined by comparing the parties’ claims. See Noelle v. Lederman, 355 F.3d 1343, 1352 (Fed. Cir. 2004). Specifically, we determine interference under a “two-way test” wherein “the subject matter of a claim of one party would, if prior art, have anticipated or rendered obvious the subject matter of a claim of the opposing party and vice versa.” 37 C.F.R. §41.203(a). See Eli Lilly & Co. v. Bd. of Regents of Univ. of Wash., 334 F.3d 1264, 1270 (Fed. Cir. 2003). Thus, Texas must present sufficient argument, supported by evidence, to persuade us that either none of the Texas claims would anticipate or render obvious any Elmer claims or that none of Elmer’s claims would anticipate or render obvious any Texas claims. Texas’s burden is a negative one: to show that the subject matter claimed by each party is not obvious over the other. One of the ways Texas could satisfy this burden is with testimony from a knowledgeable witness. (See Standing Order ¶ 208.1.) Texas did not rely on testimony. We evaluate Texas’s arguments based on the evidence it does cite. A. Vertical and horizontal movement Texas argues that Elmer’s claims lack certain limitations present in the Texas claims. (See Texas Motion 1, Paper 23, at 1:10-153.) First, Texas argues its own claims 1, 12, and 13 require that “the rigid support members prevent vertical 3 The line numbers provided in Texas’s briefs begin with line 5, not 1. We cite to the line numbers as they appear in the brief. Interference 106,062 5 and horizontal movement of the plurality of gas-filled containers” while Elmer’s claims require “the rigid support members prevent vertical movement of the plurality of gas-filled containers . . . .” (See Texas Motion 1, Paper 23, at 7:16- 8:6.) According to Texas it would not have been obvious to include a rigid support that prevents horizontal, as well as vertical, movement in Elmer’s claimed apparatus because the Elmer specification teaches allowing the envelope bodies to “move freely horizontally, at least to a limited extent,” so as to not be an obstacle for fish or other marine life. (See id. at 8:6-21, citing Elmer appl., Exh. 2002, at ¶ 19.) According to Texas, this portion of the Elmer application teaches away from an apparatus with a rigid support that prevents horizontal movement. Texas argues further that its claims and the Elmer claims are different, citing Figure 4 of the Elmer specification and Figure 5A of the Texas patent. (See id. at 8:22-10:7.) We are not persuaded by this argument because even if the parties’ claims are different, if the claims of each party would have been obvious over each other they interfere. See Aelony v. Arni, 547 F.2d 566, 569–70 (C.C.P.A. 1977) (holding that even though the two sets of claims were mutually exclusive, they were patentably indistinct, and hence there was an interference in fact). Therefore, even if Elmer’s written disclosure explains benefits of movement in the horizontal direction, the claims interfere if it would have been obvious to prevent such movement. Texas fails to direct us to persuasive evidence that addresses obviousness, such as the testimony of one skilled in the art. We are also not persuaded that by describing a benefit of horizontal movement, the Elmer specification teaches away from an embodiment where the rigid support members prevent such movement. “A reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a Interference 106,062 6 direction divergent from the path that was taken by the applicant.” In re Gurley, 27 F3d 551, 553 (Fed. Cir. 1994). Teaching an advantage of a claimed invention does not necessarily discourage one from a different path. Texas argues further that its claimed configurations provide a better effect, wherein “[b]y connecting gas-filled bodies to the support, the position of the gas- filled bodies is fixed, ensuring more consistent sound-dampening effects since the gas-filled bodies do not move due to water currents.” (Texas Motion 1, Paper 23, at 6:16-18, citing ’935 patent, Ex. 2001, at 2:10-11, and 10:47-50.) Again, even though there may be differences or advantages to the Texas apparatus, we are not persuaded without evidence showing these differences or advantages would not have been obvious. Texas argues that during prosecution the examiner allowed its claims only after adding a limitation to rigid support members that inhibit vertical and horizontal movement of the plurality of gas-filled containers. (See id. at 10:8-27, citing Amendment in appl. 13/453,720, dated 10 May 2013, Exh. 2004, at 2.) Texas cites the examiner’s reasons for allowance, wherein “the prior art [including a parent of the involved Elmer application] fails to disclose the invention in the combination as required.” (Id. at 10:19-21, citing Notice of Allowance in appl. 13/453,720, dated 30 May 2013, Exh. 2005, at 7.) We are not persuaded that the prosecution of the Texas claims is determinative of the obviousness of the currently involved Elmer claims. The examiner rejected the Texas claims over the specification of a parent to the current Elmer specification (application publication 2011/0031062, which corresponds to application 12/936,235), not an application with the current Elmer claims. The examiner was not evaluating the relationship between the claims of the involved Elmer ’282 application and the involved Texas claims. The examiner’s short Interference 106,062 7 statement regarding patentability of the Texas claims, without more explanation, does not persuade us that the parties’ claims do not interfere. After evaluating the parties’ arguments and evidence, we are not persuaded that there is no interference-in-fact because the Texas claims require preventing vertical and horizontal movement of the gas-filled containers and the Elmer claims only require preventing vertical movement. B. Toroidal shape Although our determination that Texas has failed to show no interference-in- fact between its claims 1, 12, and 13 and Elmer claim 1 is sufficient to deny Texas Motion 1, we exercise our discretion to review Texas’s arguments regarding its claim 14. (See Texas Motion 1, Paper 23, at 11:9-12:19.) Texas claim 14 includes the limitation “wherein one or more of the plurality of gas-filled containers have a toroidal shape, and wherein the central portion of the toroidal gas-filled containers is open such that, during use, water passes through the center of the toroidal gas-filled containers . . . .” ([Texas] Clean Copy of Claims, Paper 13.) Texas argues that although Elmer claim 9 recites gas-filled containers that are “round,” round is different from toroid. (Texas Motion 1, Paper 23, at 11:12-17.) Texas argues that the Elmer application discloses only bubble- shaped envelopes, which are not toroid-shaped. (See id. at 11:18-12:9.) Again, we are not persuaded by this argument because Texas argues only about the differences between the parties’ claims, not that they would have been unobvious. That is, Texas does not direct us to persuasive evidence that one of ordinary skill in the art would have considered toroid-shaped containers to have been unobvious over round containers. Texas argues: “The Texas inventors found that improved sound-dampening effects can be used by using toroidal gas-filled containers, instead of spherical bubbles (such as produced by a bubble cloud generator).” (Texas Motion 1, Paper Interference 106,062 8 23, at 12:13-15.) Even if this statement is supported by evidence, it is not persuasive because an improvement may still be obvious. Accordingly, we are not persuaded that there is not interference-in-fact between Texas claim 14 and Elmer claim 1. C. Dependent claim limitations Texas argues that its dependent claims 2-7 and 9 do not interfere with Elmer’s claims. (See Texas Motion 1, Paper 23, at 12:23-14:11.) Because we are not persuaded there is no interference between Texas claims 1, 12, 13, and 14 and Elmer claim 1, we need not consider these arguments. See 37 C.F.R. § 41.203(a) (“An interference exists if the subject matter of a claim of one party would, if prior art, have anticipated or rendered obvious the subject matter of a claim of the opposing party and vice versa.” (emphasis added).) D. Conclusion Based on our decision regarding Texas claims 1, 12, 13, and 14 and Elmer claim 1, we deny Texas Motion 1. III. Texas Motion 2 – Unpatentability under 35 U.S.C. § 112 The test for written description under 35 U.S.C. § 112, first paragraph, “is whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.” Ariad Pharm., Inc., v. Eli Lilly & Co., 598 F3d 1336, 1351 (Fed. Cir. 2010). The test for enablement is whether one of ordinary skill in the art would have been able to make and use the full scope of the invention without undue experimentation. In re Wands, 858 F.2d 731, 736-37 (Fed. Cir. 1988). Texas argues that the Elmer application fails to provide either a sufficient written or enabling description of every element of the claimed invention. Interference 106,062 9 A. Gas-filled containers “in contact with” rigid support members Texas argues that Elmer independent claims 1 and 7 are unpatentable under 35 U.S.C. § 112, first paragraph, because the Elmer specification does not describe gas-filled containers in contact with a rigid support member. Elmer claim 1 recites an apparatus that includes the limitation: wherein the plurality of gas-filled containers are connected to the plurality of rigid support members such that at least some of the plurality of gas-filled containers are in contact with one or more of the plurality of rigid support members . . . . (Elmer Clean Copy of Claims, Paper 5.) Texas argues that the portions of its specification cited by Elmer as support for this limitation, specifically paragraphs 17 and 37, do not provide sufficient written description. (See Texas Motion 2, Paper 24, at 7:9-8:2, citing Suggestion of Interference, Exh. 2003, App’x C, at 1.) Elmer does not argue in its Opposition that these paragraphs describe “gas-filled containers [that] are in contact with one or more of the plurality of rigid support members,” as claimed. Texas relies on statements made by the examiner during prosecution of its own application to argue that the Elmer specification does not describe gas-filled containers in contact with rigid support members. (See Texas Motion 2, Paper 24, at 8:13-9:12.) According to the examiner, the prior art, including the closest prior art, Elmer US20110031062) discloses a rigid support structure which includes a plurality of gas filled containers, however the prior art does not disclose wherein any of the gas filled containers are in contact with the rigid structure and wherein the gas filled containers are prevented from moving. Elmer discloses the gas filled containers being attached to the structure, by means of carrier elements and teaches away from the direct attachment (paragraph 0034). Interference 106,062 10 (Corrected Notice of Allowability in application 13/453,720, mailed 16 September 2013, Exh. 2006, at 3.) Texas also cites to the Notice of Allowability mailed a month later, which provides a similar statement, adding that “Elmer further discloses a plurality of gas filled containers attached directly to the pile being driven. Elmer does not disclose the direct attachment to a rigid support structure, formed of a plurality of rigid support members, that is proximate the sound source.” (Notice of Allowability mailed 10 October 2013, Exh. 2007, at 5.) The examiner’s statements, without more, do not persuade us that Elmer’s claims lack written description. We note that Elmer’s claims were not rejected for lack of written description when they were examined. Because the examiner’s statement in the Texas notices were made during ex parte prosecution, without an opportunity for Elmer to respond, we consider Elmer’s opposition to Texas’s arguments in this proceeding, before determining the weight to accord the examiner’s statements in prosecution. Elmer argues that its specification describes a construction of the gas-filled containers (envelope bodies) as integral to the carrier element, wherein: It is particularly advantageous that the envelope body is a part of the carrier element and/or the envelope bodies and the carrier body are produced as a single piece from the same material. It is thereby possible to produce a single-piece carrier element having integrated gas volumes, in which the carrier element then constitutes the envelope body. (’282 appl., Exh. 2002, ¶ 32 (emphasis added); Elmer Opp. 2, Paper 44, at 3:11- 20.) Elmer argues further that this integrated gas-filed container/carrier element can be part of an apparatus that includes a support framework comprising a plurality of rigid cages. (See Elmer Opp. 2, Paper 44, at 3:21-4:10.) Specifically, the Elmer specification describes gas-filled containers (carrier elements integrated Interference 106,062 11 with the envelope body) clamped to rigid cages. (See ’282 appl., Exh. 2002, Fig. 1, Fig. 5, and ¶ 57 (“The envelope bodies 1 enclosing the gas are fastened in the cages 12 by means of the carrier elements 2 clamped in the cages 12.”) According to James L. Cairns, Ph.D.4, Elmer’s witness, [i]n the embodiment in which the carrier elements are integral with the envelope bodies, a person skilled in the art would have understood the gas-filled bodies to themselves be clamped to the cages. A person skilled in the art would therefore have understood the Elmer application to provide written description for the requirement that gas-filled containers be “in contact with one or more of the plurality of rigid support members,” as set forth in Elmer independent claim 1. (Second Declaration of James L. Cairns, Ph.D. (“Second Cairns Decl.”), Exh. 1012, at ¶ 69.) Thus, Elmer argues that the description of gas-filled envelopes integrated into a carrier element and clamped to a cage fulfills the written description requirement of 35 U.S.C. § 112. (See Elmer Opp. 2, Paper 44, at 4:10- 14.) Citing to Dr. Cairn’s testimony, Elmer also argues that the description of carrier elements as a cable would be interpreted by one of skill in the art to be an element held in tension and, therefore, rigid, especially given the buoyancy of the envelopes. (Id. at 5:1-17, citing ’282 appl., Exh. 2002, ¶ 31.) Dr. Cairns testifies: In this alternative embodiment, a person skilled in the art would have understood, in connection with Fig. 5 of the Elmer application, a 4 Dr. Cairns testifies that he has a Ph.D. in physical oceanography and has been active in research related to marine physics, including underwater acoustics for 50 years. (First Declaration of James L. Cairns, Ph.D. (“Cairns Decl.”), Exh. 1008, at ¶¶4 and 5.) Dr. Cairns testifies that he has been employed by the U.S. Navy and was responsible for all operations aboard a U.S. Navy offshore research tower, including design, installation, and maintenance of sensor arrays mounted directly to the tower pilings or attached to cables buoyed upward from the seafloor. (Id. at ¶ 5.) We find Dr. Cairns qualified to testify about the subject matter of this interference. Interference 106,062 12 plurality of gas-filled containers to be fastened to the cages as the envelope body arrays are arranged on carrier elements or cables that can be held in tension such that they become rigid. (Second Cairns Decl., Exh. 2012, at ¶ 70.) Texas rejects this explanation, arguing that “[i]f, as alleged by Elmer, the cables are ‘held in tension’ such that the cables act as rigid (inflexible) members, the cables would not allow the gas-filled bodies to move freely horizontally and would place mechanical strain on the gas-filled bodies.” (Texas Reply 2, Paper 65, at 2:22-24.) According to Texas, this arrangement would contradict the provision in the Elmer specification that the carrier elements move freely horizontally to avoid becoming an obstacle for fish and other marine life. (See id. at 2:24-3:6.) Texas does not persuade us that Elmer’s reading of its specification is wrong. We are not persuaded that a rigid cable could not move freely in a horizontal direction, “at least to a limited extent” as described in the Elmer specification. (See ’282 spec., Exh. 2002, ¶ 19.) Texas does not direct us to evidence showing that tension on the cable would indicate how the cable, as a whole, would move in its environment. “Argument of counsel cannot take the place of evidence lacking in the record.” Meitzner v. Mindick, 549 F.2d 775, 782 (CCPA 1977). Texas also argues that because the Elmer specification teaches that the gas- filled envelopes are protected against excessive mechanical loading, it would be inconsistent to incorporate them into a rigid cable serving as the carrier element. (See Texas Reply 2, Paper 65, at 3:8-14, citing ’282 spec., Exh. 2002, at ¶ 39.) According to Texas, such an arrangement would put an “excessive mechanical load” on the gas-filled envelope bodies. Again, Texas fails to direct us to support for this statement and fails to explain what an “excessive mechanical load” would Interference 106,062 13 be. We are not persuaded that the arrangement proposed by Elmer would be inconsistent with any other description in its specification. We credit Dr. Cairns’s testimony that the Elmer specification describes gas- filled envelope bodies integrated into the carrier element and his testimony that because the carrier element may be a cable clamped on a cage, the specification describes an embodiment with gas-filled envelope bodies in contact with a rigid support member. Although it contradicts the statement made by the examiner of the Texas application, we give more weight to Dr. Cairns’s testimony because it is supported by specific parts of the specification. Texas fails to direct us to contradictory evidence from the Elmer specification or to contradictory testimony, such as elicited on cross-examination of Dr. Cairns. B. Creating a void fraction Elmer independent claims 1, 7, and 9 include a limitation “wherein the gas- filled containers create a void fraction for the device such that a preselected noise reduction is achieved.” (Elmer Clean Copy of Claims, Paper 5, at 3.) Texas argues that this limitation is not supported in Elmer’s application because a “void fraction” is not described. (See Texas Motion 2, Paper 24, at 9:20-12:10.) Texas explains that according to its specification, a void fraction is the ratio of the volume of air to the total volume of water and air in a bubbly region. (See Texas Motion 2, Paper 24, at 10:8-10, citing ’935 patent, Exh. 2001, at 7:56-60.) Texas argues that there is no equivalent calculation to achieve a preselected noise reduction in the Elmer specification. (See Texas Motion 2, Paper 24, at 10:10-11.) In its suggestion for an interference, Elmer cited paragraphs 25 and 26 as support for this element of its claims, but according to Texas nothing in paragraph 25 indicates sound reduction is related to void fraction. (See id. at 10:12-22.) Texas argues that even though paragraph 26 teaches tailoring the apparatus to a specific application, it teaches that reduction of sound is dependent on four Interference 106,062 14 limitations, not just the void fraction. According to Texas, “even if the function set forth in the Elmer Application is considered to teach some of the variables used in the void fraction calculation, the Elmer Application also requires additional variables that are not part of the determination of the void fraction.” (Id. at 11: 12- 15.) Texas concludes that, like paragraph 25, nothing in paragraph 26 indicates that sound reduction is related to the void fraction. (See id. at 11:19-20.) Elmer opposes, arguing that its claims do not require calculation of a void fraction and do not require that the noise reduction achieved be created solely through a void fraction. (Elmer Opp. 2, Paper 44, at 6:16-19.) Elmer argues further that those of ordinary skill in the art would have understood its specification to demonstrate possession of gas-filled containers that create a void fraction based on Dr. Cairns’s testimony that the term was generally understood by those in the art. (See id. at 6:20-7:19, citing Second Cairns Decl., Exh. 1012, at ¶¶ 72-74.) Dr. Cairns testifies that “a person skilled in the art would have understood [fractional air volume] to describe the fractional volume of air bubbles within the air-water mixture, and its effect on sound attenuation.” (Second Cairns Decl., Exh. 1012, at ¶¶ 72-74, citing U.S. Patent 6,145,459, Exh. 1018, at 1:21-29, and 47 Geophysics 345 (1982), Exh. 1020.) In general, Dr. Cairns testifies: A person of ordinary skill in the art would have considered all of the Elmer Application’s teachings, including those regarding “the frequency-dependent reduction of a sound wave passing through the body of water is a function, substantially, of the natural frequencies, the damping capacity, the distribution, the concentration of the air- filled envelope bodies and the dimension of the device through which the sound wave passes” (Ex. 2002, [0026]), together with disclosure of “the material, diameter and pressure of each envelope body [that] corresponds to an emitted frequency range of the hydrosound so as to dampen the hydrosound” (Ex. 2002, [0015]) whereby “[t]he natural frequency… is a function of the diameter, the adjustable elasticity and Interference 106,062 15 the internal pressure of the envelope body” (Ex. 2002, [0020]) to demonstrate possession of gas-filled containers that create a “void fraction” or “concentration” such that the preselected noise reduction is achieved. (Second Cairns Decl., Exh. 1012, at ¶ 80.) According to Dr. Cairns, “[a] person of ordinary skill in the art would have understood that an arrangement of gas-filled containers designed and deployed in accordance with the teachings of the Elmer Application would inherently create a predefined ‘void fraction’ when placed in the water that achieves a preselected noise reduction.” (See id. at ¶ 82.) We find Dr. Cairns’s testimony persuasive because even though the Elmer specification does not expressly recite a “void fraction” it discloses the components of a void fraction that are inherently created when noise reduction is achieved. Texas’s argument that the void fraction is the “primary factor” for achieving a preselected noise reduction does not persuade us otherwise. (See Texas Reply 2, Paper 65, at 4:15-5:7.) That the Elmer specification discusses other factors, does not change the fact, supported by Dr. Cairns’s testimony, that noise reduction would inherently involve creation of a void fraction. To determine compliance with the written description requirement, we look to “whether the disclosure of the application as originally filed reasonably conveys to the artisan that the inventor had possession at that time of the later claimed subject matter, rather than the presence or absence of literal support in the specification for the claim language.” In re Kaslow, 707 F.2d 1366, 1375 (Fed. Cir. 1983). Accordingly, we are not persuaded that the limitation to gas-filled containers that create a void fraction is not sufficiently described in the Elmer specification. C. Round shape Interference 106,062 16 Texas argues that Elmer’s independent claim 9 is unpatentable because its specification fails to adequately describe the term “wherein in one or more of the plurality of gas-filled containers include a round shape.” (Texas Motion 2, Paper 24, at 12:18-15:7.) According to Texas, Elmer describes spherical envelope bodies only, but the full scope of the term “round” includes disk-shaped and toroid-shaped envelope bodies. (See id. at 13:24-14:9.) According to Texas, “there is no teaching or suggestion in Elmer that would allow a person of ordinary skill in the art to be able to predict how a change in shape of the envelope bodies would affect the sound reducing properties of the device.” (Id. at 14:15-17.) Elmer argues that Figures 2 and 4 of its specification depict round gas-filled containers. (See Elmer Opp. 2, Paper 44, at 12:1-9.) We agree with Elmer that the depiction of round gas-filled containers in the figures and of spherical bubbles in the text of its specification would have been sufficient to convey to one of ordinary skill in the art that Dr. Elmer was in possession of round gas-filled containers. Disclosure of a species may be sufficient written description support for a later claimed genus including that species. (See id. at 14:18-21.) As explained in Bilstad v. Wakalopulos, 386 F.3d 1116, 1125 (Fed. Cir. 2004), disclosure of one species may be sufficient in predictable arts, where the difference between members of the group is such that the person skilled in the art would readily discern that other members of the genus would perform similarly. Texas bears the burden of proving those of skill in the art would have not been able to predict from the spherical gas-filled containers (bubbles) expressly described in Elmer’s specification that any round container would also work. (See Texas Motion 2, Paper 24, at 14:15-17.) Texas presents attorney argument, but does not direct us to other evidence. Accordingly, we are not persuaded that the disclosure of the spherical and round containers in Elmer’s specification is an insufficient written description of the containers of claim 9. Interference 106,062 17 D. Enablement Texas argues that the Elmer application does not enable the Elmer claims because it does not describe using the void fraction to achieve preselected noise reduction. (See id. at 15:10-17:9.) Texas argues that one of skill in the art would need to perform an undue amount of experimentation to determine how each of the factors taught to be part of frequency-dependent sound wave reduction in the Elmer application would be used to alter noise reduction by the device. (See id. at 16:23-26.) The Elmer claims are drawn to an apparatus with gas-filled containers that create a void fraction to reduce preselected noise. (Elmer Clean Copy of Claims, Paper 5, at 3.) As Elmer argues, its claims are not drawn to a method using a void fraction. (See Elmer Opp. 2, Paper 44, at 16:11-14.) Texas does not argue that one of ordinary skill in the art would not have been able to make an apparatus that achieves preselected noise reduction after reading Elmer’s specification. Instead, we are persuaded by Dr. Cairns’s testimony regarding the skill of those in the art and the evidence upon which he relies. (See Second Cairns Decl., Exh. 1012, at ¶ 73, citing 47 GEOPHYSICS 345 (1982), Exh. 1020, at 350 and Fig. 11.) Exhibit 1020 teaches adjusting fractional air volume of a curtain of air bubbles, i.e., the “void fraction,” along with other parameters to determine the velocity and attenuation of sound waves. (Id.) The Elmer specification teaches void fractions, or an “effective volume concentration” in an embodiment. Thus, we are persuaded that those of skill in the art would have been able to make an apparatus to achieve preselected noise reduction from Elmer’s specification. Texas does not direct us to evidence contradicting Dr. Cairns’s testimony. Accordingly, even if the Elmer specification does not expressly teach using the void fraction to achieve a preselected noise reduction, we are not persuaded Interference 106,062 18 that it fails to enable Elmer’s claimed apparatuses. We are not persuaded that Elmer’s claims are unpatentable for lack of enablement under 35 U.S.C. § 112. Thus, we deny Texas Motion 2. IV. Elmer Motion 1 – Benefit Elmer moves to be accorded benefit of the filing date of its prior German application, DE 10 2008 017 418.1 (“the German application”), as a constructive reduction to practice of the Count. (Elmer Motion 1, Paper 32.) To prevail, Elmer must show that the German application fulfills the requirements of 35 U.S.C. § 112, first paragraph, for one embodiment within the scope of the Count. See Hunt v. Treppschuh, 523 F.2d 1386, 1389 (C.C.P.A. 1975). Findings of fact We make the following findings of fact, which, like other findings in this opinion, are supported by a preponderance of the evidence. 1. The German application discloses that “[t]he invention relates to a device for reducing the transmission and propagation of sound and/or wave motions in a liquid, particularly water, by means of at least one envelope body enclosing a gas.” (German appl., Exh. 1003, at 2:2-45.) 2. The German application provides Figure 3 depicting a support structure with a net that may be formed with cables. (Id. at 10:30-35.) 3. The German application provides Figure 4, which discloses cages made of solid material such as metal or plastic. (Id. at 9:4-6 and 10:1-6; see Cairns Decl., Exh. 1008, at ¶ 37.) 5 Page numbers refer to the page of the exhibit, not the underlying document, except where otherwise noted. Interference 106,062 19 4. The German application discloses flexible membrane envelope bodies composed of a thin-walled, elastic material having a high damping capacity. (German appl., Exh. 1003, at 7:15-25.) 5. The German application discloses a carrier and envelope “produced as a single piece from the same material” in order to “produce a single-piece carrier element having integrated gas volumes, in which the carrier element then constitutes the envelope body.” (German appl., Exh. 1003, at 8:4-7.) 6. The German application discloses that the envelope bodies “fixed in” cages or cable nets. (Id. at 9:10-11.) 7. Dr. Cairns testifies that the disclosure in the German application of envelope bodies produced as a single piece with the carrier elements and fixed to the cages or cables would have been understood by a person or ordinary skill in the art as a description of a gas-filled containers in contact with the plurality of rigid support members (Cairns Decl. Exh. 1008, at ¶¶ 37-43.) 8. The German application discloses carrier elements that are aligned vertically because of the buoyancy of the envelope bodies. (German appl., Exh. 1003, at 7:1-3.) 9. The German application discloses envelope bodies fixed in a cage, preventing vertical movement. (Id. at 7:1-3 and 9:10-11.) 10. Dr. Cairns testifies that one of ordinary skill in the art would have understood from the German application that numerous physical characteristics of the envelope bodies that can be tuned to a particular resonance frequency. (Cairns Decl., Exh. 1008, at ¶ 48.) 11. Dr. Cairns testifies that the term “void fraction” refers to a fraction of volume in the water around the underwater device, including the pockets of air contained in envelope bodies. (Id. at ¶ 49.) Interference 106,062 20 12. The German application discloses that the natural frequency of a gas bubble is dependent on the gas volume, as well as the elasticity of the gas bubble, the specific weight of the gas, the water pressure, and the temperature of the gas. (German appl., Exh. 1003, at 3:30-33.) 13. The German application discloses that “gas enclosed by the envelope body is prevented by the mass body from rising up in the water” to maintain gas volumes. (Id. at 6:24-26.) 14. Dr. Cairns testifies that a person skilled in the art would have understood that enclosed and submerged gas, such as in the envelope bodies/gas- filled containers is a “void fraction for the device” and achieves the desired noise reduction. (Cairns Decl., Ex. 1008, ¶ 49.) B. Analysis Elmer cites to the specification of the German application and to Dr. Cairns’s testimony to support its argument that it is entitled to the benefit of the filing date of that application as to the Count. The specification of the German application appears to be very similar to the specification of Elmer’s involved application. First, Elmer argues that the German application describes an apparatus for reducing the transmission and propagation of sound and/or wave motions in water that has a frame structure supporting a plurality of gas-filled containers, referred to as “envelopes.” (See Elmer Motion 1, Paper 32, at 4:9-6:15, citing German appl., Exh. 1003, at 2:2-46 and Figs. 3 and 4; FF 1.) Elmer directs us to the description of the gas-filled envelopes in the German application as being made of thin-walled 6 Page numbers refer to the page of the underlying document, not the numbering in the exhibit, except where otherwise noted. Interference 106,062 21 elastic material fixed to the supports of the cage. (See Elmer Motion 1, Paper 32, at 6:18-7:9, citing German appl, Exh. 1003, at 7:15-25 and 9:10-11; FF 4.) Elmer offers two disclosures showing that the German application supports an apparatus of the Count, including “rigid support members.” (See id. at 4:16- 6:13.) First, Elmer argues that the cable net depicted in Figure 3 of the German application can be held in tension to form a rigid framework. (Elmer Motion 1, Paper 32, at 5:1-11; Cairns Decl., Exh. 1008, at ¶¶ 35 and 52; see FF 2.) In the alternative, Elmer argues that the German application provides Figure 4 depicting for a plurality of stacked cages surrounding the underwater device. (See Elmer Motion 1, Paper 32, at 6:4-13, citing German appl., Exh. 1003, at 9:4-6, and Cairns Decl., Exh. 1008, at ¶ 37; FF 3.) Elmer argues that these cages are expressly described as being made of “a solid material such as metal or plastic.” (See Elmer Motion 1, Paper 32, at 6:8-10, citing German appl., Exh. 1003, at 9:4-6; FF 3.) Texas argues7 that the German application does not disclose an apparatus with rigid support members because the term “tension” does not appear in the application. (See Texas Opp. 1, Paper 57, at 5:10.) Texas argues further that the net shown in Figure 3 of the German application does not teach or suggest sufficient tension to be an inflexible or rigid framework. (See id at 5:10-18.) According to Texas, the net depicted in Elmer cannot be a “rigid support member” because the buoys to which the net is attached will move with waves, periodically releasing the tension on the net. (See id. at 7:2-9:6.) Texas also argues that Figure 4 of the German application does not support the element of “rigid support members” of the Count. (See Elmer Motion 1, Paper 7 In its Opposition, Texas “moves for a Judg[]ment” that Elmer is not entitled to the benefit of the filing date of the German application. (Texas Opp. 1, Paper 57, at 1:6-10 and 2:12-20.) Elmer was not accorded benefit of an earlier filing date upon declaration. Thus, Texas is not the movant on this issue. Interference 106,062 22 32, at 15:11-19:19.) Although Texas does not dispute that the German application discloses an embodiment of the apparatus that uses cages made of metal or plastic with envelope bodies fasted to the cage (see Texas Response to Elmer Material Facts 24-28), Texas argues that because the cables are described as being able to move freely in a horizontal position, they cannot be inflexible or rigid. (Texas Opp. 1, Paper 57, at 16:21-17:20.) Texas also argues, without citing evidence in support, that the thin-walled elastic material used for the envelope bodies in the German application would break or deform if enough tension were placed on them to create a rigid member. (Texas Opp. 1, Paper 57, at 17:21-19:19.) Even if the cables themselves are not rigid, we are not persuaded by Texas’s arguments, because the German application discloses cages made of metal or plastic. The German application also discloses carrier and envelope bodies “produced as a single piece from the same material” in order to “produce a single- piece carrier element having integrated gas volumes, in which the carrier element then constitutes the envelope body.” (German appl., Exh. 1003, at 8:5-7; FF 5.) Because these single pieces are “fixed in” cages or cable nets (id., at 9:10-15; FF 6), we are persuaded that the German application discloses gas-filled containers that are “in contact with” these rigid support members. (See Elmer Motion 1, Paper 32, at 7:13-10:14; Elmer Reply, Paper 63, at 4:8-21, citing Cairns Decl. Exh. 1008, at ¶¶ 37-43.) We are also persuaded that the German application describes rigid support members that prevent vertical movement of the plurality of gas-filled containers, as required in the Count. We agree with Elmer that the discussion of vertical alignment and fastening discloses this element and that fixing the envelope bodies in a cage prevents vertical movement. (See Elmer Motion 1, Paper 32, at 9:3-12 and 10:4-7, citing German appl., Exh. 1003, at 7:1-2 and 9:10-11 and Cairns Decl., Interference 106,062 23 Exh. 1008, at ¶ 35; FFs 8 and 9). Texas does not argue or present evidence to the contrary. We are persuaded by Elmer’s arguments that the German application supports the element of the Count that requires gas-filled bodies with a physical characteristic that confers a selected resonance frequency when immersed in water. (See Elmer Motion 1, Paper 32, at 10:17-11:9.) The German application discloses that the natural frequency of a gas bubble is dependent on the elasticity of the gas bubble, the gas volume, the specific weight of the gas, the water pressure and the temperature of the gas (See German appl., Exh. 1003, at 2:30-33; FF 12) and Dr. Cairns testifies that one of ordinary skill in the art would have understood that the envelope bodies that can be tuned to a particular resonance frequency (See Cairns Decl., Exh. 1008, at ¶ 48; FF 10). Texas does not argue or present evidence to the contrary. The parties disagree about support for the term “wherein the gas-filled containers create a void fraction for the device such that a preselected noise reduction is achieved” in the German application. Elmer cites to Dr. Cairns’s testimony that the term “void fraction” refers to a fraction of volume in the water around the underwater device, including the pockets of air contained in envelope bodies. (See Elmer Motion 1, Paper 32, at 11:12-22, citing Cairns Decl., Ex. 1008, ¶ 49; FF 11.) Elmer argues that the German application discloses that “gas enclosed by the envelope body is prevented by the mass body from rising up in the water” to maintain gas volumes. (See German appl., Exh. 1003, at 6:24-26; FF 13.) According to Dr. Cairns, this passage would have been understood to mean that the enclosed and submerged gas in the envelope bodies create a void fraction to achieve the desired noise reduction. (See Cairns Decl., Ex. 1008, ¶ 49; FF 14.) Texas opposes Elmer’s position with arguments similar to those presented in its motion for unpatentability under 35 U.S.C. § 112. As discussed above, we do Interference 106,062 24 not find these arguments to be persuasive. Briefly, Texas argues that the German application does not use the term “void fraction” and does not teach performing a calculation to achieve preselected noise reduction. (See Texas Opp. 1, Paper 57, at 21:15-23:8.) The Count, like Elmer’s claims discussed above, is drawn to an apparatus, not a method of achieving a preselected noise reduction. Accordingly, contrary to Texas’s argument, the German application need not explain how to use a calculation of void fraction to achieve a preselected noise reduction. (See Elmer Reply 1, Paper 63, at 9:23-10:1.) Furthermore, even though the Count requires that the gas-filled containers “create a void fraction,” we are persuaded by the testimony of Dr. Cairns that the disclosure of maintenance of gas volumes would demonstrate possession of gas-filled containers creating a “void fraction.” (See Elmer Reply 1, Paper 63, at 10:14-22, citing Cairns Decl., Exh. 1008, at ¶ 49.) Contrary to Texas’s arguments, we are persuaded by Elmer’s arguments that the German application is enabling of an embodiment of the Count because it discloses making an apparatus with bubbles having certain parameters, including diameter, which will absorb certain sound frequencies. (See Elmer Motion 1, Paper 32, at 12:3-13:4, citing Cairns Decl., Exh. 1008, at ¶ 51, see German appl., Exh. 1003, at 3:30-33.) Because the envelope bodies provided in the German application would inherently create a void fraction as recited in the Count we are not persuaded by Texas’s argument that without express recognition or examples using only the volume of air in the gas-filled containers and the volume of water in the bubbly region, one of skill in the art would not know how to make and use the apparatus of the Count. (See Texas Opp. 1, Paper 57, at 24:15-26:9) Texas also argues that the German application does not provide a written description of gas-filled containers with a round shape. (See Texas Opp. 1, Paper 57, at 23:14-24:10.) Because this is not a limitation recited in the Count, we need not consider this argument. Interference 106,062 25 For the reasons cited above, Elmer has persuaded us that the German application is a constructive reduction to practice of an embodiment of the Count and that Elmer should be accorded its filing date of 3 April 2008. V. Priority In its Priority Statement, Texas asserts conception on 29 April 2009 and a date of “first experiment demonstrating the invention” on 14 May 2009. (See Paper 22.) Because both of these dates are later than the filing date of Elmer’s German application, 3 April 2008, which was accorded to Elmer by the grant of its Motion 1, we determine that Texas cannot prevail on a showing of priority. Accordingly, we enter judgment against Texas. VI. Conclusion We deny Texas Motion 1 for a judgment of no interference-in-fact. We deny Texas Motion 2 for a judgment of unpatentability under 35 U.S.C. § 112. We grant Elmer Motion 1 for benefit of priority of the German application. The interference will be redeclared separately to reflect this benefit. Judgment against Texas will be entered separately. Interference 106,062 26 Counsel for Junior Party TEXAS Mark R. DeLuca Ryan Beard MEYERTONS, HOOD, KIVLIN, KOWERT & GOETZEL, PC mdeluca@intprop.com rbeard@intprop.com Counsel for Senior Party ELMER Wesley O. Mueller Thomas P. Canty Elias P. Soupos LEYDIG, VOIT & MAYER, LTD. wmueller@leydig.com tcanty@leydig.com esoupos@leydig.com Copy with citationCopy as parenthetical citation