14977833 - (D) (P.T.A.B. Sep. 5, 2019)

Eklavya Calla et al.

Patent Trials and Appeals BoardSep 5, 2019

14977833 - (D) (P.T.A.B. Sep. 5, 2019)

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. 14/977,833 12/22/2015 Eklavya Calla 277511 2091 45364 7590 09/05/2019 PATENT DOCKET DEPARTMENT (17851) ARMSTRONG TEASDALE LLP 7700 Forsyth Boulevard Suite 1800 St. Louis, MO 63105 EXAMINER PENCE, JETHRO M ART UNIT PAPER NUMBER 1717 NOTIFICATION DATE DELIVERY MODE 09/05/2019 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): uspatents@armstrongteasdale.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte EKLAVYA CALLA, JOYDEEP PAL, and KRISHNAMURTHY ANAND Appeal 2018-008607 Application 14/977,833 Technology Center 1700 Before CATHERINE Q. TIMM, KAREN M. HASTINGS, AND MERRELL C. CASHION, JR., Administrative Patent Judges. TIMM, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1–4, 6, 7, and 21–23 under 35 U.S.C. § 103 as obvious over Cox and adding Tanaka to reject claim 5. We have jurisdiction under 35 U.S.C. § 6(b). 1 We use the word “Appellant” to refer to “Applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as General Electric Company. Appeal Br. 1. Appeal 2018-008607 Application 14/977,833 2 Because the claims are indefinite, we enter a new ground of rejection under 35 U.S.C. § 112(b) and procedurally reverse the rejection under 35 U.S.C. § 103. The claims on appeal are directed to a system for coating a component. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A system for coating a component, said system comprising: a feedstock supply comprising a powder mixture comprising a first powder comprising a plurality of first particles and a second powder comprising a plurality of second particles, said second powder being softer than said first powder and having a percentage by mass of said powder mixture of between about 0.1 % and about 3.0%; a carrier fluid supply comprising a carrier fluid configured to receive said powder mixture; and a spray gun configured to receive said carrier fluid containing said powder mixture and to discharge said powder mixture and said carrier fluid onto a surface such that a coating is formed and includes: a plurality of first lamella, each first lamella comprising a first particle of said plurality of first particles; and a plurality of second lamella, each second lamella comprising a second particle of said plurality of second particles. Appeal Br. 10. Appeal 2018-008607 Application 14/977,833 3 OPINION In order to review the obviousness rejection, we must first be able to determine the statutory class of invention into which the claims fall, i.e., process, machine, manufacture, or composition of matter. 35 U.S.C. § 101. Appellant states that the claim is directed to “a system, rather than an ‘apparatus’.” Appeal Br. 6. But a “system” is not one of the statutory classes of invention listed in 35 U.S.C. § 101. Appellant continues that “[c]laim 1 [the only independent claim] positively recites, as part of the system, ‘a feedstock supply comprising a powder mixture comprising a first powder comprising a plurality of first particles and a second powder comprising a plurality of second particles . . . .’.” Id. But the feedstock is the powder mixture that is supplied, along with the carrier fluid, to the spray gun. Thus, it appears Appellant intends the claim to be directed to a combination of an apparatus (spray gun) and the material upon which the apparatus works (feedstock and carrier supplied to the spray gun). Appellant is attempting to bridge more than one statutory class of invention and this makes the claim indefinite because “each statutory class of claims must be considered independently on its own merits” and “[n]o one rule controls them all.” In re Kuehl, 475 F.2d 658, 665, 177 (CCPA 1973). As stated by our reviewing court, “the statutory class of invention is important in determining patentability and infringement.” IPXL Holdings, L.L.C. v. Amazon.com, Inc., 430 F.3d 1377, 1384 (Fed. Cir. 2005) (quoting Ex parte Lyell, 17 USPQ2d 1548, 1550 (BPAI 1990) (citing In re Kuehl, 475 F.2d 658, 665 (1973); Rubber Co. v. Goodyear, 9 Wall. 788, 76 U.S. 788, 796, 19 L.Ed. 566 (1869)). A claim that attempts to combine two separate statutory classes of invention “is not sufficiently precise to provide Appeal 2018-008607 Application 14/977,833 4 competitors with an accurate determination of the ‘metes and bounds’ of protection involved” and is “ambiguous and properly rejected” under section 112(b). IPXL, at 1384 (quoting Ex parte Lyell, at 1550–51). If the claim was to the apparatus, it would be interpreted so that patentability would hinge only on the structure of that apparatus. This is because “[i]t is no new invention to use an old machine for a new purpose. The inventor of a machine is entitled to the benefit of all the uses to which it can be put, no matter whether he had conceived the idea of the use or not.” Roberts v. Ryer, 91 U.S. 150, 157 (1875). Thus, if Appellant’s claim was directed to the apparatus, the claim would be interpreted to encompass all those spray guns having the spray gun structure expressly recited in the claim that would be capable of using the powder mixture feedstock recited in the claim and capable of forming the coating also recited in the claim. See In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997) (holding that where there is a reason to conclude that a prior art structure is inherently capable of being used or can perform the claimed function recited in a claim to an apparatus or article of manufacture, the burden falls on the applicant to show the use or function patentably distinguishes the claimed structure from the prior art structure). “[I]t has been long established that a person may not patent a combination of device and material upon which the device works, nor limit other persons from the use of similar material by claiming a device patent.” In re Smith, 36 F.2d 302, 303 (CCPA 1929) (holding a claim to the combination of a billing machine and the extra length carbon sheets worked upon by the billing machine unpatentable because it merely attempted to patent a new use of an old machine or, viewed in another way, the combination of a device and material upon which the device works); see Appeal 2018-008607 Application 14/977,833 5 also In re Rishoi, 197 F.2d 342, 345 (CCPA 1952) (“In our opinion there is no patentable combination between a device and the material upon which it works.”). Conversely, if the claim were directed to the feedstock, i.e., a composition of matter, the limitations directed to the spray gun would have no effect unless they somehow limited the ingredients and structure of the feedstock composition. Given that the claims are not directed to subject matter within a single statutory class of invention, the claims are indefinite. Because the claims are indefinite, we are unable to determine the propriety of the Examiner's obviousness rejection. Reaching the obviousness rejection would require speculation with regard to the metes and bounds of the claimed subject matter. In re Steele, 305 F.2d 859, 862 (CCPA 1962). Accordingly, we procedurally reverse the Examiner's § 103 rejection, and we enter a new ground of rejection against claims 1–7 and 21–23 under 35 U.S.C. § 112(b) based on the reasons given above. DECISION Claims Rejected Basis Affirmed Reversed New Ground 1–4, 6, 7, 21–23 § 103 Cox 1–4, 6, 7, 21–23 5 § 103 Cox, Tanaka 5 1–7, 21–23 § 112(b) 1–7, 21–23 Outcome 1–7, 21–23 1–7, 21–23 Appeal 2018-008607 Application 14/977,833 6 FINALITY AND RESPONSE This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” 37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the proceeding will be remanded to the examiner. . . . (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same record. . . . REVERSED; 37 C.F.R. § 41.50(b)