11274614 (P.T.A.B. Oct. 31, 2012)

Ex Parte Foxenland

Patent Trial and Appeal BoardOct 31, 2012

11274614 (P.T.A.B. Oct. 31, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE 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. 11/274,614 11/15/2005 Eral Foxenland 9562-6 6236 54414 7590 10/31/2012 MYERS BIGEL SIBLEY & SAJOVEC, P.A. P.O. BOX 37428 RALEIGH, NC 27627 EXAMINER DOE, SHANTA G ART UNIT PAPER NUMBER 1775 MAIL DATE DELIVERY MODE 10/31/2012 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 TRADEMARKOFFICE 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. 11/274,614 11/15/2005 Eral Foxenland 9562-6 6236 54414 7590 10/31/2012 MYERS BIGEL SIBLEY & SAJOVEC, P.A. P.O. BOX 37428 RALEIGH, NC 27627 EXAMINER DOE, SHANTA G ART UNIT PAPER NUMBER 1775 MAIL DATE DELIVERY MODE 10/31/2012 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 ERAL FOXENLAND ____________ Appeal 2011-011422 Application 11/274,614 Technology Center 1700 ____________ Before CHUNG K. PAK, BEVERLY A. FRANKLIN, and LINDA M. GAUDETTE, Administrative Patent Judges. GAUDETTE, Administrative Patent Judge. DECISION ON APPEAL Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s decision1 finally rejecting claims 1, 3, 4, 6, 7, 13, and 14 under 35 U.S.C. §112, first paragraph, as failing to comply with the enablement requirement.2 We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 Final Office Action mailed Jul. 16, 2010 (“Final”) 2 Appeal Brief filed Dec. 20, 2010 (“App. Br.”) Appeal 2011-011422 Application 11/274,614 The invention relates to a cover for electronic equipment, such as a mobile phone. (Spec.3 2:1-3.) Claim 1 is representative of the invention and is reproduced below from the Claims Appendix to the Appeal Brief: 1. A cover for an electronic equipment, comprising: at least one containment area having a transparent wall; and at least one microorganism comprised in said at least one containment area, wherein said at least one microorganism being of a species which forms colonies responsive to propagation stimuli, said colonies having a color for providing an appearance to said cover through said transparent wall. “[T]o be enabling, the specification of a patent must teach those skilled in the art how to make and use the full scope of the claimed invention without ‘undue experimentation.’” In re Wright, 999 F.2d 1557, 1561 (Fed. Cir. 1993). In determining whether undue experimentation would have been required to make and use an invention, the following factors are considered: “(1) the quantity of experimentation necessary, (2) the amount of direction or guidance presented, (3) the presence or absence of working examples, (4) the nature of the invention, (5) the state of the prior art, (6) the relative skill of those in the art, (7) the predictability or unpredictability of the art, and (8) the breadth of the claims.” In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988). It is evident from a review of the Final and Answer that the Examiner’s determination of nonenablement is based on an analysis of the Wands factors. (See generally, Final 4-6; Ans.4 3-6.) Further, the Examiner reasonably explains the 3 Specification filed Nov. 15, 2005. 4 Examiner’s Answer mailed Mar. 15, 2011. Appeal 2011-011422 Application 11/274,614 perceived shortcomings of the present application in a manner sufficient to allow Appellant to respond to the rejection. (See id.) Appellant provides detailed responses to the Examiner’s findings in connection with each of the Wands factors. (See App. Br. 3-5.) Appellant relies on the Declaration of Johan Jendholm (“Decl.”)5 under 37 C.F.R. § 1.132 (App. Br., Evidence Appx.) to establish that sufficient detail is provided in the Specification to enable one of ordinary skill in the art to make and/or use the invention without undue experimentation. (App. Br. 5.) In his Declaration, Dr. Jendholm discusses the Wands factors. (See Decl. ¶ 6.) In the Response to Argument section of the Answer, the Examiner states that Appellant’s arguments are not persuasive. (Ans. 6-7.) There is no indication the Examiner, in evaluating the merits of Appellant’s arguments, took into account the evidence in support thereof, i.e., the Jendholm Declaration. (See id.; Reply Br.6 1 (“The Examiner’s Answer makes no mention of the Jendholm Declaration”).) As properly pointed out by Appellant (Reply Br. 1-2), the Examiner’s failure to meaningfully address submitted evidence constitutes harmful error. Cf. In re Sullivan, 498 F.3d 1345, 1353 (Fed. Cir. 2007). Accordingly, we cannot sustain the rejection of claims 1, 3, 4, 6, 7, 13, and 14 under 35 U.S.C. §112, first paragraph, as failing to comply with the enablement requirement. REVERSED cam 5 Dr. Jendholm is not an inventor of the current application, and does not have a financial interest in the application. (App. Br. 5.) Dr. Jendholm is an expert in the field of microbiology. (Decl. ¶¶ 1-3.) 6 Reply Brief filed May 13, 2011.