Ex Parte Desbrandes et al

Patent Trial and Appeal Board

Dec 19, 2016

11569357 (P.T.A.B. Dec. 19, 2016)

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.
11/569,357 11/18/2006 Robert Desbrandes 7416
64501 7590 12/20/2016
E-QUANTIC COMMUNICATIONS
1, ALLEE DES CHERINIERS
GIVARLAIS, FR-03190
FRANCE
EXAMINER
IGYARTO, CAROLYN
ART UNIT PAPER NUMBER
2884
MAIL DATE DELIVERY MODE
12/20/2016 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
Ex parte ROBERT DESBRANDES and DANIEL LEE VAN GENT
Appeal 2015-004021
Application 11/569,357
Technology Center 2800
Before MAHSHID D. SAADAT, JOHNNY A. KUMAR, and
JON M. JURGOVAN, Administrative Patent Judges.
SAADAT, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
Appellants request rehearing of the September 27, 2016, Decision on
Appeal (“Decision”), wherein we affirmed the rejection of claims 141, 143,
146, 150, 151, 154—156, 160, 162-164, 167-177, 180-184, and 186-191
under 35 U.S.C. § 112, first paragraph, as failing to comply with the
enablement requirement. We have reconsidered the Decision in light of
Appellants’ arguments but, for the reasons given below, we are not
persuaded any points were misapprehended or overlooked by the Board in
our Decision.
Appeal 2015-004021
Application 11/569,357
PRINCIPLES OF LAW
Enablement
It is not necessary that a court review all the Wands factors to find a
disclosure enabling, as they are illustrative, not mandatory. See Amgen, Inc.
v. Chugai Pharm. Co., 927 F.2d 1200, 1213 (Fed. Cir. 1991). Rather, the
rejection “should focus on those factors, reasons, and evidence that lead [to]
the [conclusion] that the specification fails to teach how to make and use the
claimed invention without undue experimentation.” See MPEP § 2164.04.
New Ground of Rejection
It is well established that there is no new ground of rejection when the
basic thrust of the rejection remains the same. See In re Kronig, 539 F.2d
1300, 1302-1303 (CCPA 1976); In re Jung, 637 F.3d 1356, 1365 (Fed. Cir.
2011); and In re Adler, 723 F.3d 1322, 1327 (Fed. Cir. 2013). Where the
statutory basis for the rejection remains the same and the evidence relied
upon in support of the rejection remains the same, a change in the discussion
of, or rationale in support of, the rejection does not necessarily constitute a
new ground of rejection. Id.
ANALYSIS
Appellants contend the Board misapprehended the Examiner’s § 112,
first paragraph, lack of enablement analysis, because the § 112 rejection was
linked to the § 101 lack of credible utility rejection, which was reversed by
the Board (Req. Reh’g 2). Appellants argue a separate § 112 lack of
enablement rejection was not legally established by the Examiner because a
full assessment of the Wands factors was not presented in the Final Action,
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Appeal 2015-004021
Application 11/569,357
and, thus, Appellants did not have an opportunity to properly rebut a finding
of lack of enablement (Req. Reh’g 2—3). Appellants further contend the
Board’s discussion of Wands factors in the Decision, in support of the
Examiner’s § 112 lack of enablement rejection, constitutes a new ground of
rejection (id.).
Appellants’ contentions are not persuasive. A full assessment of the
Wands factors by the Examiner is not necessary to support a § 112 lack of
enablement rejection, rather, the focus is on the reasons and evidence the
Examiner relied upon to find the specification fails to teach how to make and
use the claimed invention without undue experimentation. See Amgen 927
F.2d at 1213 and MPEP § 2164.04. The Examiner made a § 112, first
paragraph, rejection that was separate from the § 101 lack of credible utility
rejection (Final Act. 5), and Appellants failed to provide sufficient rebuttal
evidence to persuade us of Examiner error (Dec. 6). Thus, on the record
before us, the Board agreed with the Examiner’s finding that the
Specification does not provide sufficient guidance or working examples for
an invention that lacks relevant prior art, in order for one of ordinary skill to
make and use the claimed invention without undue experimentation (Dec. 5—
7). Further, we do not agree that our Decision constitutes a new ground of
rejection, as the § 112, first paragraph, statutory basis for the rejection
remains the same and the evidence of record relied upon in support of the
rejection remains the same, with a mere clarification of the required
enablement requirements that buttresses the rationale in support of the
Examiner’s rejection (id.).
Accordingly, we are unpersuaded that our Decision misapprehended
the Examiner’s § 112, first paragraph, lack of enablement rejection.
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Appeal 2015-004021
Application 11/569,357
DECISION
Based on the foregoing, we have granted Appellants’ request to the
extent that we have reconsidered our Decision, but we deny Appellants’
request to make any changes therein.
REHEARING DENIED
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