90008630 (B.P.A.I. Mar. 17, 2011)

Ex Parte 5764543 et al

Board of Patent Appeals and InterferencesMar 17, 2011

90008630 (B.P.A.I. Mar. 17, 2011)

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. 90/008,630 05/10/2007 5764543 1180.0136R 3691 53184 7590 03/17/2011 Booth Udall, PLC 1155 W Rio Salado Parkway Suite 101 Tempe, AZ 85281 EXAMINER STEELMAN, MARY J ART UNIT PAPER NUMBER 3992 MAIL DATE DELIVERY MODE 03/17/2011 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 BOARD OF PATENT APPEALS AND INTERFERENCES ____________________ Ex parte i2 Technologies, US, Inc., Appellant and Patent Owner ____________________ Appeal 2010-001687 Application 90/008,630 Patent 5,764,543 Technology Center 3900 ____________________ Before SCOTT R. BOALICK, KEVIN F. TURNER, and STEPHEN C. SIU, Administrative Patent Judges. SIU, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING1 STATEMENT OF THE CASE In papers filed December 29, 2010, Appellants request a rehearing under 37 C.F.R. § 41.52 from the Opinion of the Board of Patent Appeals 1 The two-month time period for filing an appeal or commencing a civil action, as recited in 37 C.F.R. § 1.304, begins to run from the “MAIL DATE” shown on the PTOL-90A cover letter attached to this decision. Appeal 2010-001687 Application 90/008,630 United States Patent 5,764,543 2 and Interferences (hereinafter Opinion), dated October 29, 2010. In the Opinion, we affirmed the Examiner’s rejection of claims 1, 12, and 39 under 35 U.S.C. § 102(b) as being anticipated by Insight. This case is related to Application No. 90/008,645 (Appeal No. 2010-002337) for which a Request for Rehearing was filed December 27, 2010. Appellants allege that the Board erred by misapprehending or overlooking Appellants’ arguments previously raised in the Briefs. (Req. Reh’g. 1-13). In particular, Appellants allege the following errors: i. The Board misconstrues the meaning of the term “consume” (Req. Reh’g. 2-7). ii. The Board overlooked “certain matters of fact or law with regard to whether the Insight reference is qualified as a printed publication under 35 U.S.C. § 102” (Req. Reh’g. 8). “Consumed” We find without merit Appellant’s first allegation of error that we misconstrued the meaning of the term “consume” as recited in claim 1. Claim 1 recites that “material is consumed.” While Appellant argues that the term “consumed” “connotes a use of material, such that the material is not available for use in subsequent operations” (Req. Reh’g. 2), Appellant does not indicate such a definition as disclosed in the Specification. Nor does Appellant indicate a limitation on “consuming” as requiring that the Appeal 2010-001687 Application 90/008,630 United States Patent 5,764,543 3 material not be available for use in subsequent operations as recited in claim 1. Also, as we noted in the Opinion, even if we adopt Appellant’s suggested definition of the term “consume” as requiring that “the material is not available for use in subsequent operations” (Req. Reh’g. 2), Insight discloses “a blood cell” that oxygenates blood, then is removed from the circulation and is no longer available for use in subsequent oxygenation operations at the conclusion of its lifespan (Opinion 19). Appellant argues that Insight fails to disclose “a red blood cell is in ‘circulation in a blood stream’” (Req. Reh’g. 5) but instead discloses “A blood cell . . . circulating in a blood stream” (Req. Reh’g. 5). Despite Appellant’s argument, we do not find a difference in the Insight reference disclosure of a red blood cell in circulation in the blood stream and Appellant’s asserted characterization of a red blood cell as “circulating in a blood stream.” As we stated in the Opinion, as one of ordinary skill in the art would have understood, the red blood cell circulates and oxygenates blood in the blood stream until the end of its lifespan (approximately 120 days) after which time the red blood cell is no longer available for use (Opinion 19). Appellant also argues that “the Insight reference describes the blood cell as not being consumed, but instead presently circulating in a blood stream” and that “[i]f the ‘blood cell’ had been consumed [in the Insight reference], then the ‘blood cell’ would not be circulating” (Req. Reh’g 5). Appeal 2010-001687 Application 90/008,630 United States Patent 5,764,543 4 However, not only has Appellant failed to indicate that the Insight reference actually describes a blood cell as not being consumed, but also Appellant has not shown that the red blood cell in the Insight reference is a special red blood cell (if such a red blood cell even exists) that is never removed from circulation. “Printed Publication” We also find without merit Appellant’s second allegation of error that we overlooked “certain matters of fact or law with regard to whether the Insight reference is qualified as a printed publication under 35 U.S.C. § 102” (Req. Reh’g. 8). Appellant re-iterates arguments pertaining to corroboration of a printed publication and argues that “the Board erred . . . by not determining, at least the issue of corroboration to prove publication” (Req. Reh’g. 8). As we stated in the Opinion, Appellant has not shown any requirement for corroboration if no specific doubts have been raised as to the credibility of the evidence, which may include, for example, “doubts as to the credibility of the testimony of witnesses because ‘the . . . document itself is undated,’ ‘the testimony itself is somewhat tentative,’ there was a ‘discrepancy in the file data’ for which a witness failed to ‘determine whether his recollection was correct,’ . . .” (Opinion 10). Here, Appellant has still not raised any specific doubts with respect to the Insight reference. Appeal 2010-001687 Application 90/008,630 United States Patent 5,764,543 5 CONCLUSION We have considered Appellant’s arguments. For at least the foregoing reasons, we find Appellant’s arguments to be unpersuasive as to error in the Decision. Therefore, Appellant’s request for rehearing is denied with respect to making any change to our decision to affirm the Examiner’s rejections. DENIED rvb Patent Owner Booth Udall, PLC 1155 W. Rio Salado Parkway Suite 101 Tempe, AZ 85281 Third Party Requester Paul A. Harrity Harrity Snyder LLP 11350 Random Hills Road, Suite 600 Fairfax, VA 22030