Ex Parte Eng et al

Patent Trial and Appeal Board

May 12, 2017

12974296 (P.T.A.B. May. 12, 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.
12/974,296 12/21/2010 Aik Hwee Eng A0221-00 3448
99653 7590 05/16/2017
Moser TahnaHa / An sell T imiterl
EXAMINER
1030 Broad Street OSTRUP, CLINTON T
Suite 203
Shrewsbury, NJ 07702 ART UNIT PAPER NUMBER
3765
NOTIFICATION DATE DELIVERY MODE
05/16/2017 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):
docketing@mtiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte AIK HWEE ENG, LOK SI TANG, DAVID M. LUCAS, and
WAN ASHRUZI WAN AHMAD
Appeal 2014-0077361
Application 12/974,296
Technology Center 3700
Before STEFAN STAICOVICI, TARA L. HUTCHINGS, and
AMEE A. SHAH, Administrative Patent Judges.
HUTCHINGS, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
Appellants filed a Request for Rehearing dated January 17, 2017
(“Request”), seeking reconsideration of our Decision on Appeal mailed
December 21, 2016 (“Decision”), in which we affirmed the Examiner’s
rejection of claims 1—11, 14—16, and 21—23 under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement. In
the Request, Appellants suggest that this Request for Rehearing be heard
1 Our decision references Appellants’ Appeal Brief (“App. Br.,” filed
Mar. 5, 2014) and Reply Brief (“Reply Br.,” filed July 7, 2014), and the
Examiner’s Answer (“Ans.,” mailed May 8, 2014), Advisory Action (“Adv.
Act.,” mailed Dec. 6, 2013), and Final Office Action (“Final Act.,” mailed
Sept. 18,2013).
Appeal 2014-007736
Application 12/974,296
before an expanded panel. Request 6. The Chief Judge was informed of,
and declines, Appellants’ suggestion for an expanded panel.
For the reasons explained below, we deny Appellants’ Request.
ANALYSIS
We note at the outset that a Request for Rehearing “must state with
particularity the points believed to have been misapprehended or overlooked
by the Board.” 37 C.F.R. § 41.52(a). A Request for Rehearing is not an
opportunity to rehash arguments raised in the Appeal Brief. Neither is it an
opportunity to merely express disagreement with a decision without setting
forth points believed to have been misapprehended or overlooked.
Arguments not raised in the briefs before the Board and evidence not
previously relied on in the briefs also are not permitted except in the limited
circumstances set forth in §§ 41.52(a)(2) though (a)(4). Id.
To the extent Appellants present supplemental or new arguments in
the Request, those arguments are untimely and, as such, will not be
considered except where the arguments are based on a recent relevant
decision of either this Board or a federal court, or on an allegation that the
Board’s decision contains an undesignated new ground of rejection. See id.
Turning to the Request, Appellants assert that our Decision
“erroneously focused on the misleading ‘reason to exclude’ language found
in Santarus [Inc. v. Pharm., Inc., 694 F.3d 1344 (Fed. Cir. 2012)].”
Request 4. Accordingly, Appellants contend that the Specification provides
“more than enough information for one of skill to unambiguously conclude
that the invention is not about a film forming approach — and that thus the
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Application 12/974,296
inventors possessed the currently claimed invention.” Id. at 6—7. We
disagree.
Whether a specification complies with the written description
requirement is a question of fact. Vas-Cath Inc. v. Mahurkar, 935 F.2d
1555, 1562 (Fed. Cir. 1991) (collecting cases). What is needed to meet the
description requirement necessarily varies depending on the nature of the
invention claimed. In re DiLeone, 435 F.2d 1404, 1405 (CCPA 1971).
The function of the written description requirement is to ensure that
the applicant had possession, as of the filing date of his or her application, of
the specific subject matter later claimed by him or her. In re Wertheim,
541 F.2d 257, 262 (CCPA 1976) (citing In re Smith, 481 F.2d 910 (CCPA
1973 and cases cited therein). The test requires an objective inquiry into the
four comers of the specification from the perspective of a person of ordinary
skill in the art. Ariad Pharm. v. Eli Lilly and Co., 598 F.3d 1336, 1351 (Fed.
Cir. 2010). Based on that inquiry, the Specification must describe an
invention understandable to the skilled artisan and show that the applicant
actually invented the invention claimed. Id. The written description
requirement does not demand any particular form of disclosure, but a
description that merely renders the invention obvious does not satisfy the
requirement. Id. at 1352 (citing Carnegie Mellon Univ. v. Hoffmann-La
Roche Inc., 541 F.3d 1115, 1122 (Fed. Cir. 2008); Lockwood v. Am.
Airlines, 107 F.3d 1565, 1571-72 (Fed. Cir. 1997)).
Here, as correctly acknowledged by Appellants, the description of the
invention makes “no mention ... of a film-forming polymer.” Request 9.
Appellants contend that the absence of such description allows “those of
skill [to] clearly see that no film-forming polymer is needed or important to
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Application 12/974,296
the invention.” Id. at 8. But the absence of description of film-forming
polymer is insufficient to clearly convey that Appellants invented a coating
that is essentially free of film-forming polymer. Under such a view, any
chemical component that is not required to form the claimed “non-tacky
coating” would be supported by the original disclosure by its mere omission
from the original disclosure.
Appellants rely on Inphi Corp. v. Netlist, Inc., 805 F.3d 1350 (Fed.
Cir. 2015) to charge the panel with improperly applying a heightened written
description standard for a negative claim limitation. See, e.g., Request 8
(“Appellant just cannot see how, once the alleged heightened standard is
disposed of, the claimed invention can be deemed not described.”) But no
such heightened written description standard was applied. Instead, this
panel carefully considered each portion of the Specification on which
Appellants relied as providing implicit support for the negative limitation.
We considered whether these portions clearly convey to those skilled in the
art that Appellants invented an elastomeric medical glove with a coating that
is essentially free of film-forming polymer. And we determined they do not.
See Decision 4. This approach is wholly consistent with instructions from
our reviewing court to ascertain “whether the description ‘clearly allow[s]
persons of ordinary skill in the art to recognize that [the inventor] invented
what is claimed.’” Inphi Corp., 805 F.3d at 1355 (citing Vas-Cath, 935 F.2d
at 1562-63).
We agree with Appellants that there are various ways to support a
negative limitation (see Request 4), but in this case we find no such support.
Appellants’ Specification not only fails to describe advantages or
disadvantages, as in Santarus, but it also fails to describe alternatives, as in
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Application 12/974,296
Inphi. See Inphi Corp., 805 F.3d at 1355. Appellants’ citations to various
Board decisions in which a negative limitation was held to be supported (or
unsupported) also do not apprise us of any points of fact or law believed to
have been misapprehended or overlooked by the Board.
For foregoing reasons, we decline to modify our original Decision.
DECISION
Appellants’ Request has been granted to the extent that we have
reconsidered our Decision in light of Appellants’ Request, but is denied in
all other respects.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
DENIED
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