Ex Parte Greuter et al

Patent Trial and Appeal Board

Dec 16, 2016

12894755 (P.T.A.B. Dec. 16, 2016)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
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Alexandria, Virginia 22313-1450
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APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/894,755 09/30/2010 Felix GREUTER 146906 6567
759025944
OLIFF PLC
P.O. BOX 320850
ALEXANDRIA, VA 22320-4850
01/05/2017 EXAMINER
YOUNG, WILLIAM D
ART UNIT PAPER NUMBER
1761
NOTIFICATION DATE DELIVERY MODE
01/05/2017 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):
OfficeAction25944@oliff.com
j armstrong @ oliff.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL
AND APPEAL BOARD
Ex parte TSUTOMUISHIMOTO and TOSHIHIRO HORIGOME
Appeal 2015-001334
Application 12/984,755
Technology Center 1700
Before ADRIENE LEPIANE HANLON, KAREN M. HASTINGS, and
GEORGE C. BEST, Administrative Patent Judges.
PER CURIAM
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s
decision rejecting claims 1,2, and 4-13. An oral hearing was conducted
December 9, 2015. We have jurisdiction over the appeal under 35 U.S.C.
§ 6(b).
For the reasons presented by Appellants in the briefs, we REVERSE.
The § 102 rejections of independent claim 1 on appeal rely upon
picking and choosing from various lists or examples in either Gupta or Tan.
Appeal 2015-001334
Application 12/894,755
A preponderance of the evidence supports Appellants’ position that Gupta’s
disclosure is insufficient to establish anticipation of the compositional
components of independent claim 1, and Tan’s disclosure is likewise
insufficient to establish anticipation of the compositional components of
independent claims 1 and 12 (App Br. 5, 10; Reply Br. 7, 10). Furthermore,
the Examiner has not commented on Appellants’ evidence submitted in the
Appeal Brief that compositions described in Gupta or Tan do not necessarily
have the claimed ratio of pyrochlore phase to spinel phase as recited in each
independent claim (claims 1, 12, and 13) (see e.g., Ans. generally, Reply Br.
2, 8). Inherency “may not be established by probabilities or possibilities.
The mere fact that a certain thing may result from a given set of
circumstances is not sufficient.” Continental Can Co. USA, Inc. v.
Monsanto Co., 948 F.2d 1264, 1269 (Fed. Cir. 1991) (quotingIn re Oelrich,
666 F.2d 578, 581 (CCPA 1981)). An inherent characteristic must be
inevitable. See Oelrich, 666 F.2d at 581. The Examiner has not met the
initial burden of establishing a prima facie case of anticipation or
obviousness based on an inherent or explicit disclosure of the claimed
subject matter under 35 U.S.C. §§ 102 or 103, respectively. In re Oetiker,
977 F.2d 1443, 1445 (Fed. Cir. 1992) (“[T]he examiner bears the initial
burden, on review of the prior art or on any other ground, of presenting a
prima facie case of unpatentability.”).
The Examiner’s rejections and response to argument presented in the
Answer do not persuasively address the contentions raised by the Appellants
in their briefs (Ans. generally).
Under these circumstances, we are constrained to reverse all of the
§§102 and 103 rejections before us.
2
Appeal 2015-001334
Application 12/894,755
ORDER
REVERSED
3