95000664 (P.T.A.B. Feb. 15, 2017)

Ex Parte 6,745,513 B2 et al

Patent Trial and Appeal BoardFeb 15, 2017

95000664 (P.T.A.B. Feb. 15, 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. 95/000,664 04/13/2012 6,745,513 B2 54936.030008 9131 7590 02/16/2017 PHILIP M. WEISS WEISS & WEISS 410 JERICHO TURNPIKE, SUITE 105 JERICHO, NY 11753 EXAMINER FETSUGA, ROBERT M ART UNIT PAPER NUMBER 3993 MAIL DATE DELIVERY MODE 02/16/2017 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 ____________________ THE SCOTTS COMPANY LLC Requester, Cross-Appellant, Respondent v. ENCAP, LLC. Patent Owner, Appellant, Respondent ____________________ Appeal 2016-006082 Inter partes Reexamination Control 95/000,664 Patent US 6,745,513 B21 Technology Center 3900 ____________________ Before STEVEN D.A. McCARTHY, DANIEL S. SONG and BRETT C. MARTIN, Administrative Patent Judges. SONG, Administrative Patent Judge DECISION ON REQUEST FOR REHEARING 1 Patent US 6,745,513 B2 (hereinafter “the ’513 patent”) issued June 8, 2004 to Krysiak et al. Appeal 2016-006082 Reexamination Control 95/000,664 Patent US 6,745,513 B2 In the Request for Rehearing (hereinafter “Rehr’g Req.”), the Patent Owner requests reconsideration under 37 C.F.R. § 41.79 of our Decision mailed September 28, 2016 (hereinafter “Original Decision” or “Orig. Dec.”) affirming Rejections 4 and 5 that reject claims 1–8 and 12–19. The Patent Owner bases its request on recent Federal Circuit precedent (Rehr’g Req. 1–2). We are also informed that the Requester has agreed not to participate in the present proceeding, and that the related legal action Encap, LLC v. The Scotts Company LLC, The Scotts Miracle-Gro Company and OMS Investments, Inc., Case No. 1:11-cv-000685-WCG (E.D. Wis.) has been settled (Rehr’g Req. 1). We grant the Request to the extent that we consider the Patent Owner’s arguments and clarify the Original Decision infra, but DENY the request to modify our Original Decision. Issue A The Original Decision affirmed the Examiner’s rejection of claims l– 8, 12–16, 18, and 19 under 35 U.S.C. § 103(a) as being unpatentable over Spittle (Rejection 4), and affirmed the rejection of claim 17 as being unpatentable over Spittle and Holton (Rejection 5) (Orig. Dec. 19). The Patent Owner asserts that in the Original Decision, the Board “erred in determining that the Requester met the high standard required by law in order to rely on inherency.” (Rehr’g Req. 1). Specifically, the Patent Owner asserts that: The Board, relying solely on the Declarations of Requester’s expert, Muzzio, held that Spittle inherently teaches Appeal 2016-006082 Reexamination Control 95/000,664 Patent US 6,745,513 B2 3 the limitation “possess hook-type projections”, and that to the extent Spittle is only substantially identical to the invention claimed in all of the claims on appeal, any difference in structure would have been obvious to one of ordinary skill in the art. (Rehr’g Req. 2). The Patent Owner points out that Dr. Muzzio merely testified that he would “expect the flakes to be asymmetrical and have interlocking properties including hook-type projections for the same reasons given above with respect to Holton;” and that this testimony of expectation does not meet the requirements to find inherency, which requires that the result must happen (Rehr’g Req. 3, quoting 1st Decl. Muzzio ¶ 22). In this regard, the Patent Owner directs our attention to a case in which the Federal Circuit “held that the use of inherency, a doctrine originally rooted in anticipation, must be carefully circumscribed in the context of obviousness.” (Rehr’g Req. 2, citing Par Pharmaceutical, Inc. v. TWI Pharmaceutical, Inc., 773 F. 3d 1186 (Fed. Cir. 2014)). We are not persuaded of error and observe the following. The rejection of the claims is not of anticipation, but rather, is based on obviousness. While obviousness rejections can also rely on a fact finding based on inherency, the Original Decision does not find that Spittle inherently discloses “hook-type projections” required by various claims. In this regard, we specifically declined to reach Rejection 2, which was an anticipation rejection of certain claims based on Spittle (Orig. Dec. 19). If inherent disclosure of “hook-type projections” in Spittle was relied upon, we would have affirmed the anticipation rejection of Rejection 2. Appeal 2016-006082 Reexamination Control 95/000,664 Patent US 6,745,513 B2 4 While one position of the Examiner was that Spittle inherently discloses a mulch product having “hook-type projections” as required by certain claims, the Examiner was also clear that such a structure would have been obvious to one of ordinary skill in the art (RAN 12). Accordingly, we observed that: in rejecting claims 1–8 and 12–19 as being unpatentable over Spittle in Rejection 4, the Examiner also finds that to the extent that Spittle is only substantially identical to the invention claimed in the claims of Rejection 2 as well as all of the claims on appeal, “any differences in structure would have been obvious to one of ordinary skill in the art. In this regard, both products are intended for the same use in functioning as a seed carrier, and both products can be created by different agglomeration processes.” ([RAN] 12). (Orig. Dec. 6–7). In considering the factual issue of “hook-type projections,” we considered the disclosure of Spittle and Dr. Muzzio’s testimony, as well as the contrary testimonial evidence and arguments relied upon by the Patent Owner (Orig. Dec. 8–9, 10–13). We did not merely accept Dr. Muzzio’s testimony as asserted by the Patent Owner. Instead, the Board considered the disclosure of Spittle itself, which: discloses a mulch/seed product that utilizes material and processing techniques encompassed by the ’513 patent and the claims; discloses characteristics of the final product such as “flakes” and reduced “bulk density”; and discloses that the product remains “more intimately mixed with grass seed.” (Orig. Dec. 7 and citations to Spittle therein). Dr. Muzzio testified as to his understanding of the Spittle disclosure and opined that he would have expected the resultant, final granulated flake Appeal 2016-006082 Reexamination Control 95/000,664 Patent US 6,745,513 B2 5 product of Spittle to have “hook-type projections.” (Orig. Dec. 8–9, 10–13). As discussed in the Original Decision, the Board found the testimony of Dr. Muzzio to be persuasive and “supported by preponderance of the evidence.” (Orig. Dec. 9). For example, the Board found that: Dr. Muzzio’s explanation is persuasive. … The lowering of the bulk density during granulation is consistent with, if arguably not probative of, the presence of hook-like fiber projections. (Orig. Dec. 13, emphasis added). Such a finding is not a finding of “inherent” disclosure in Spittle, but rather, a finding that the testimony of Dr. Muzzio is credible. In contrast, the testimonial evidence and arguments relied upon by the Patent Owner were found to be unpersuasive because, inter alia, they were principally directed to the intermediary pellet product of Spittle rather than the final, granulated flake product of Spittle (Orig. Dec. 10, 12, 14–15). Hence, we found the evidence of record sufficient to support the obviousness conclusion, the evidence indicating that presence of hook-like fiber projections is more likely than not in the product of Spittle, and thus, as the Original Decision continues, to any extent that Spittle’s fiber projections are not inherently “hook-type,” for example, are of insufficient length to twist into hook-type projections upon collision with adjacent particles, we agree with the Examiner that such structure would have been obvious to one of ordinary skill considering that the flake product is used as a seed carrier and is intended to overcome the seed separation problem identified in Spittle (RAN 12; Spittle, col. 1, ll. 58–61). Specifically, in addressing the seed separation problem it would have been obvious to one of ordinary skill in the art to tailor the granulation process so as to result in flakes having fiber projections of sufficient length so Appeal 2016-006082 Reexamination Control 95/000,664 Patent US 6,745,513 B2 6 that upon collision with adjacent particles, they have a hook- type shape. (Orig. Dec. 13–14). The above excerpt regarding “inherently ‘hook-type’” was not intended to convey an inherent finding or reliance on inherency by the Board, but rather, was in reference to the first position of the Examiner (i.e., finding inherent disclosure in Spittle), which was contrasted with the Examiner’s second position of obviousness with which we agreed. Therefore, while we have clarified the Original Decision above, we are not persuaded by the Patent Owner’s assertion of error. Issue B The Patent Owner further asserts that in the Original Decision, the Board “rel[ied] on Muzzio’s only exhibits in his declarations, Figures 1-6[] that relate to the Dog Patch product. Muzzio 1st Dec. ¶¶ 11-12.” (Rehr’g Req. 4). According to the Patent Owner, “[w]ithout, being able to rely on the Dog Patch Product, and the Holton Patent, Muzzio fails to present the necessary facts to support his unsubstantiated opinion of inherency with regards to Spittle.” (Rehr’g Req. 4).2 Thus, the Patent Owner asserts that there is inadequate support for finding inherency (Rehr’g Req. 5). Firstly, the Patent Owner’s assertion that the Board relied on Dr. Muzzio’s exhibits relating to the Dog Patch product is simply false. 2 Thus, notwithstanding the prior assertion that Dr. Muzzio did not testify as to inherent disclosure of Spittle, the Patent Owner now appears to assert that Dr. Muzzio did. Appeal 2016-006082 Reexamination Control 95/000,664 Patent US 6,745,513 B2 7 Paragraphs 11 and 12 of Dr. Muzzio’s first declaration referenced by the Patent Owner above is not referenced at all in the Original Decision. To the contrary, as set forth in the Original Decision: As to the rejections relying on Spittle as the primary reference, as the Examiner notes, Spittle is also analyzed separately from the Dog PatchTM product (RAN 17, FN 15; 1st Muzzio Decl. ¶¶ 21, 22). Correspondingly, this decision does not rely on the evidence and findings related to the Dog PatchTM product in the present decision, but instead, only relies on evidence and findings with respect to the Spittle reference itself. (Orig. Dec. 6). Secondly, we observe that portions of Dr. Muzzio’s testimony relied upon by the Board in the Original Decision rely on the Spittle reference itself, and does not rely on the Dog Patch product. Hence, the Patent Owner’s assertions of error are incorrect and unpersuasive. DENIED Pursuant to 37 C.F.R. § 41.79(d), this decision is final for the purpose of judicial review. A party seeking judicial review must timely serve notice on the Director of the United States Patent and Trademark Office. See 37 C.F.R. §§ 90.1 and 1.983. Appeal 2016-006082 Reexamination Control 95/000,664 Patent US 6,745,513 B2 8 PATENT OWNER: PHILIP M. WEISS WEISS & WEISS 410 JERICHO TURNPIKE, SUITE 105 JERICHO, NY 11753 THIRD PARTY REQUESTER: HUNTON & WILLIAMS LLP INTELLECTUAL PROPERTY DEPARTMENT 2200 PENNSYLVANIA AVENUE, N.W. WASHINGTON, DC 20037