Ex Parte Holicza

Patent Trial and Appeal Board

Jan 18, 2018

12541084 (P.T.A.B. Jan. 18, 2018)

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.
12/541,084 08/13/2009 Peter J. Holicza 14223.34 2620
64167 7590
Evan R. Witt
Kirton & McConkie
36 South State Street, Suite 1900
Salt Lake City, UT 84111
EXAMINER
KHAN, AMINA S
ART UNIT PAPER NUMBER
1761
NOTIFICATION DATE DELIVERY MODE
01/22/2018 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):
ipdocket@kmclaw.com
ewitt@kmclaw.com
abirch@kmclaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PETER J. HOLICZA
Appeal 2017-005177
Application 12/541,084
Technology Center 1700
Before ROMULO H. DELMENDO, JEFFREY T. SMITH, and
JANE E. INGLESE, Administrative Patent Judges.
INGLESE, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 requests our review under 35 U.S.C. § 134(a) of the
Examiner’s decision to reject claims 1—23 and 26. We have jurisdiction over
this appeal under 35 U.S.C. § 6(b).
We AFFIRM.
STATEMENT OF THE CASE
Appellant claims a method for preserving untanned and non-salt-cured
hides. Corrected Appeal Brief filed September 1, 2016 (“Corrected App.
Br.”), 2—3. Claim 1 illustrates the subject matter on appeal and is
reproduced below:
1 Appellant identifies the real party in interest as Leatherteq Limited.
Appeal Brief filed March 7, 2016 (“App. Br.”), 2.
Appeal 2017-005177
Application 12/541,084
1. A method for preserving untanned and non-salt-cured
hides, in which the hides are subjected to optional preliminary
steps consisting of washing, fleshing, liming, unhairing,
optionally deliming, and optionally splitting, followed by the
steps consisting of fatliquoring, optionally deliming, bating,
pickling, optionally sammying, and lastly drying, and
optionally staking, wherein the step of fatliquoring is carried
out prior to the step of bating.
App. Br. 17 (Claims Appendix).
The References
Ayles
Ushakoff
Karaghiosoff
Robinson
Brehn
Taeger
Bowker
Moenus
US 1,734,106
US 2,868,614
US 3,638,562
US 4,434,196
US 5,391,784
US 2007/0022541 A1
US 7,578,970 B2
GB 1,138,099
November 5, 1929
January 13, 1959
February 1, 1972
February 28, 1984
February 21, 1995
February 1, 2007
August 25, 2009
December 27, 1968
K. E. Karlsson & H. Magnusson Cleaning and Degreasing Agent for De­
cleaning or hide treatment contains N-Methyl-2-Pyrrolidone and an
Unsaturated Fatty Salt Surfactant as an Alternative to Hydrocarbon(s)
Derwent Information LTD (2001)
Tanning last viewed on April 24, 2001 at Wikipedia, http://en.
Wikipedia.org/w/index.php?title=Tanning&printable=yes (hereinafter
“Famham”)
The Rejections
The Examiner enters the following rejections in the Non-Final Office
Action mailed August 11, 2015 (“Office Act.”), and maintains the rejections
in the Examiner’s Answer mailed December 15, 2016 (“Ans.”):
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Application 12/541,084
I. Claims 1, 2, 10, and 22 under 35 U.S.C. § 103(a) as
unpatentable over Ushakoff;
II. Claims 1—6, 10, 22, and 26 under 35 U.S.C. § 103(a) as
unpatentable over Ushakoff in view of Famham;
III. Claims 2, 10, and 16—21 under 35 U.S.C. § 103(a) as
unpatentable over Ushakoff as evidenced by Taegerhn;
IV. Claims 1,9, 11, and 12 under 35 U.S.C. § 103(a) as
unpatentable over Ushakoff as evidenced by Brehn;
V. Claims 1, 8, and 15 under 35 U.S.C. § 103(a) as unpatentable
over Ushakoff in view of Karaghiosoff;
VI. Claims 1 and 13 under 35 U.S.C. § 103(a) as unpatentable over
Ushakoff in view of Moenus;
VII. Claims 1 and 14 under 35 U.S.C. § 103(a) as unpatentable over
Ushakoff in view of Ayles;
VIII. Claim 23 under 35 U.S.C. § 103(a) as unpatentable over
Ushakoff as evidenced Bowker, Robinson, and the Derwent abstract; and
IX. Claims 1—23 provisionally rejected on the ground of
nonstatutory obviousness-type double patenting as unpatentable over claims
1—20 of copending Application No. 12/523,240.
In addition, the Examiner sets forth the following new ground of
rejection in the Answer:
X. Claims 1—23 and 26 under 35 U.S.C. § 112, second paragraph
as indefinite for failing to particularly point out and distinctly claim the
subject matter that the Applicant regards as the invention.
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DISCUSSION
Upon consideration of the evidence relied upon in this appeal and
each of Appellant’s contentions, we reverse the Examiner’s rejection of
claims 1—23 and 26 under 35 U.S.C. § 112, second paragraph for the reasons
set forth in the Appeal Brief and below. We affirm the Examiner’s
rejections of claims 1—23 and 26 under 35 U.S.C. § 103(a) for the reasons set
forth in the Final Office Action, the Examiner’s Answer, and below. We
summarily affirm the Examiner’s provisional rejection of claims 1—23 for
non-statutory obviousness-type double patenting because Appellant does not
contest this rejection.
We review appealed rejections for reversible error based on the
arguments and evidence the Appellant provides for each issue the Appellant
identifies. 37 C.F.R. § 41.37(c)(l)(iv); Ex parte Frye, 94 USPQ2d 1072,
1075 (BPAI 2010) (precedential) (cited with approval in In re Jung, 637
F.3d 1356, 1365 (Fed. Cir. 2011) (explaining that “it has long been the
Board’s practice to require an applicant to identify the alleged error in the
examiner’s rejections”)).
Rejection X
The Examiner finds that the recitation of “consisting of’ in claims 1
and 2 following the preamble of each claim restricts or limits the claimed
methods to only those steps that directly follow this transitional phrase.
Ans. 9—10. The Examiner finds that the recitation of additional steps
following the subsequent instance of “consisting of’ in claims 1 and 2
improperly adds steps to the claims that are excluded by the initial recitation
of “consisting of.” Id.
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However, claims 1 and 2 both recite “optional preliminary steps
consisting of. . . followed by the steps consisting of... ” One of ordinary
skill in the art would understand that the “optional preliminary steps” recited
in claims 1 and 2—by virtue of being optional preliminary steps—do not
limit or restrict all the steps in the claimed methods—i.e, to only those steps
that directly follow this transitional phrase, as the Examiner asserts.
Consequently, contrary to the Examiner’s findings, the subsequent recitation
of “followed by the steps consisting of’ in claims 1 and 2 does not
improperly add steps to the claims that are excluded by the initial recitation
of “consisting of’ defining the optional preliminary steps. Accordingly, the
Examiner does not carry the burden of showing that one of ordinary skill in
the art would not understand the scope of claims 1 and 2. See, e.g., Amgen,
Inc. v. Chugai Pharm. Co., Ltd., 927 F.2d 1200, 1217 (Fed. Cir. 1991) (A
claim is considered indefinite under 35 U.S.C. § 112, second paragraph, if it
does not reasonably apprise those skilled in the art of its scope.)
We accordingly do not sustain the Examiner’s rejection of claims 1—
20, 24, and 28 under 35 U.S.C. § 112, second paragraph.
Rejections I—VIII
Appellant argues Rejections I—VIII together on the basis of claims 1
and 2, which Appellant argues as a group. App. Br. 4—15. Therefore, we
select claim 1 as representative, and decide the appeal as to claims 1—23 and
26 based on claim 1 alone. 37 C.F.R. § 41.37(c)(l)(iv).
Ushakoff discloses a process of applying a fatting agent to a skin or
hide that involves substantially dehydrating the skin by contacting it with a
an organic solvent to extract water present in the skin, applying a surface
coating of a fatting agent to the solvated skin, and applying external heat to
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the skin to dry the skin of the organic solvent and distribute the fatting agent
throughout the skin. Col. 1,11. 15—20, 60—61; col. 2,11. 22—34; col. 3,11. 52—
58. Ushakoff discloses that this process “results in the skin having a far
greater tear resistance and tensile strength than is imparted by other fat
liquoring processes.” Col. 1,11.60—64. Ushakoff discloses that preferred
fatting agents include fatty acids, such as oleic acid. Col. 3,11. 26—30.
Ushakoff discloses that “although ordinarily a fatty acid will be applied to a
skin after it has been treated with a tanning agent, the presence of the
tanning agent is not essential to the strengthening effect of the fatty acid.”
Col. 6,11. 1—5. Ushkoff further discloses that “[a] solvated skin, free of any
tanning agent, if similarly treated with a fatty acid, will have the enhanced
tear resistance and tensile strength imparted by the fatty acid.” Col. 6,11. 5—
8.
Ushakoff describes an embodiment of Ushakoff s invention that
involves pickling a bated cowhide, tanning the pickled cowhide, solvent
dehydrating the hide with acetone, applying a surface coating of oleic acid
(fatliquoring or fatting agent) to the solvated hide, and removing the solvent
from the non-salt-cured, pickled, solvent dehydrated, fatliquored hide by
applying external heat to the hide. Col. 3,1. 61—col. 5,1. 43.
The Examiner finds that Ushakoff does not disclose washing,
fleshing, liming, unhairing and deliming, and the Examiner relies on
Famham’s disclosure that all hides undergo preliminary “soaking
(washing), fleshing, liming, unhairing, deliming, washing out, and rinsing
(also washing).” Ans. 3^4 (citing Famham 77). The Examiner finds that
one of ordinary skill in the art would have been led to modify Ushakoff s
method to include preliminary steps of washing, fleshing, liming, unhairing,
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and deliming in view of Famham’s disclosure that these steps are
conventional preliminary steps in hide treatment. Ans. 4.
The Examiner further determines that it would have been obvious to
one of ordinary skill in the art at the time of Appellant’s invention to modify
the order of steps in Ushakoff s method to the order recited in claim 1
because “[cjhanging the order of steps does not render a claimed process
non-obvious over the prior art, see Ex parte Rubin, 128 USPQ 440,441,442
([BPAI] 1959).” Ans. 2—3 (emphasis added).
Appellant argues that Ushakoff is directed to a process for tanning
skins, and Ushakoff discloses that a tanning agent will always be present
when a fatting agent is applied to a solvated skin. App. Br. 5—7. Appellant
contends that Ushakoff therefore does not disclose application of a fatting
agent to an untanned skin. App. Br. 8—10. Appellant asserts that Ushakoff s
disclosure that ‘“[a] solvated skin, free of any tanning agent, if similarly
treated with a fatty acid, will have the enhanced tear resistance and tensile
strength imparted by the fatty acid,’” indicates that “a tanning agent could be
applied to a skin and then thoroughly rinsed/removed from the skin prior to
applying the fatting agent, and the fatting agent may still provide the same
benefits to the tanned skin.” App. Br. 6—7 (quoting Ushakoff col. 6,11. 5—8).
Appellant further contends that the Examiner’s “piecemeal analysis” in
which the Examiner treats the method steps of fatliquoring, pickling, and
lastly drying in isolation ignores the fact that the hides recited in claim 1
remain untanned and non-salt-cured after the claimed method is performed.
App. Br. 11—12. Appellant asserts that the applied prior art “provides no
indication whatsoever that it was even contemplated to perform fatliquoring
on an untanned and non-salt-cured hide” to preserve a hide for subsequent
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tanning, and the Examiner’s rejection is therefore based on impermissible
hindsight. App. Br. 12—13.
However, Ushakoff’s disclosure that the presence of a tanning agent is
not essential to the strengthening effect of a fatty acid, and disclosure of
treating a solvated skin, free of any tanning agent, with a fatty acid,
reasonably would have suggested treating an untanned, solvated skin with a
fatty acid before application of a tanning agent. In other words, given the
limited possible alternatives for treating a solvated skin, free of any tanning
agent, with a fatty acid—such as treating the skin with the fatty acid before
application of a tanning agent, or treating with the fatty acid after complete
removal of a previously applied tanning agent—one of ordinary skill in the
art would have readily envisaged all such alternatives. Bristol-Myers Squibb
Co. v. Ben Venue Labs, Inc., 246 F.3d 1368, 1380 (Fed. Cir. 2001) (“[T]he
disclosure of a small genus may anticipate the species of that genus even if
the species are not themselves recited.”); see also In re Cleave, 560 F.3d
1331, 1337—38 (Fed. Cir. 2009); Perricone v. Medicis Pharm. Corp., 432
F.3d 1368, 1377 (Fed. Cir. 2005); In re Schaumann, 572 F.2d 312, 315
(CCPA 1978); In re Petering, 301 F.2d 676, 682 (CCPA 1962).
Accordingly, one of ordinary skill in the art seeking to impart
enhanced tear resistance and tensile strength to a skin or hide with a fatting
agent as disclosed in Ushakoff reasonably would have been led, through no
more than ordinary skill and creativity, to apply the fatting agent to the hide
before application of a tanning agent. In re Preda, 401 F.2d 825, 826
(CCPA 1968) (it is well established that in evaluating references it is proper
to take into account not only the specific teachings of the references but also
the inferences which one skilled in the art would reasonably be expected to
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Application 12/541,084
draw therefrom). Ushakoff’s disclosure of bating, pickling, tanning, solvent
dehydrating, and fatliquoring a hide, and failure to mention salt-curing, in
view of Ushakoff’s suggestion of applying a fatting agent to a hide before
application of a tanning agent, reasonably would have suggested applying a
fatting agent to a non-salt-cured, bated, pickled, solvent dehydrated hide
before application of a tanning agent to the hide, as recited in claim 1. It
follows that Appellant’s arguments are unpersuasive of reversible error in
the Examiner’s rejection.
Appellant further argues that Ex parte Rubin, 128 USPQ 440 (BPAI
1959), cited by the Examiner to support the proposition that “merely
reordering method steps is obvious,” is not relevant to the present claims.
App. Br. 14. Appellant argues that regardless of whether fatliquoring or
pickling is performed first on an untanned and non-salt-cured hide, the
claimed method would still be patentably distinct from applying a fatting
agent to a solvated skin as part of the tanning process, as disclosed in
Ushakoff. App. Br. 14—15. Appellant contends that Ex parte Rubin
“therefore supports a finding that the present claims are nonobvious and
patentable over the cited art.” Id.
However, as discussed above, Ushakoff s disclosures as a whole
would have suggested applying a fatting agent to a non-salt-cured, bated,
pickled, solvent dehydrated hide before applying a tanning agent to the hide,
as recited in claim 1. It follows that Appellant’s arguments are unpersuasive
of reversible error.
Appellant further argues that Ushakoff discloses applying a fatting
agent to skins after they have been dried through a solvent drying process,
and Ushakoff thus discloses drying the skins before fatliquoring, contrary to
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Application 12/541,084
claim 1, which requires drying to be lastly performed after fatliquoring and
pickling. Appeal Br. 11; Reply Br. 3—5. Appellant contends that his
Specification defines “drying” as reducing the moisture content to a desired
level, and the Specification indicates that solvent drying is a conventional
drying method in which a hide is treated with an organic solvent to drive out
water. Reply Br. 3 (citing Spec. 7,11. 11—12, 23—25).
Appellant’s Specification states that “‘drying’” “means reducing the
moisture content to a desired level. The moisture level of the dried hides is
typically up to about 25 weight %. Preferred moisture levels are in the range
of 5 to 25 weight %, more preferably 10 to 15 weight %.” Spec. 7,11. 24—27.
Appellant’s Specification describes several ways that drying can be carried
out, which include solvent drying “in which a hide is treated with an organic
solvent that drives out the water” and toggle drying “in which hides are
stretched on a rack with toggles at their edges and passed through a heating
chamber.” Spec. 8,11. 8—12.
Accordingly, under a broadest reasonable interpretation consistent
with Appellant’s Specification as it would be interpreted by one of ordinary
skill in the art, the term “drying” used in claim 1 refers to reducing the
moisture content of a hide to any desired level, which may be carried out by
solvent drying or passing the hide through a heating chamber. In re ICON
Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007) (During
prosecution of patent applications, “the PTO must give claims their broadest
reasonable construction consistent with the specification. . . . Therefore, we
look to the specification to see if it provides a definition for claim terms, but
otherwise apply a broad interpretation.”).
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As discussed above, Ushakoff discloses a process of applying a fatting
agent to a skin or hide that involves “substantially” dehydrating the skin by
contacting it with an organic solvent to extract water present in the skin,
applying a surface coating of a fatting agent to the solvated skin, and
applying external heat to the skin to dry the skin of the organic solvent and
distribute the fatting agent throughout the skin. Col. 1,11. 15—20, 60-61; col.
2.11. 22—34; col. 3,11. 52—58. Ushakoff discloses that a suitable apparatus
for applying heat to a skin to dry the skin of the organic solvent consists of a
heated platen filled with holes, and an overlying diaphragm. Col. 5,11. 25—
34. Ushakoff discloses using the apparatus by placing a solvated skin
supported on a porous tray between the heated platen and the diaphragm,
and inflating the diaphragm with steam so that it contacts the skin, “thereby
subjecting the skin to rapid heating from its top and bottom surfaces.” Col.
5.11. 25-39.
One of ordinary skill in the art would have understood that a
“substantially” dehydrated skin as disclosed in Ushakoff would contain
some amount of moisture, by virtue of the fact that it is substantially—rather
than completely—dehydrated. One of ordinary skill in the art would have
further understood that heating a substantially dehydrated skin by contacting
it with a steam-inflated diaphragm as disclosed in Ushakoff would heat the
skin to a temperature approaching that of steam (100-C), which would drive
off moisture present in the skin, along with the solvent. Accordingly,
Ushakoff s disclosure of drying a skin that has been “substantially”
dehydrated with an organic solvent by contacting the skin with a steam-
inflated diaphragm, reasonably would have suggested that the level of
moisture present in the skin would be reduced by at least some extent during
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this process, corresponding to “drying” the skin as recited in claim 1 as we
have interpreted it. Therefore, contrary to Appellant’s arguments, because
Ushakoff discloses performing this drying process as the last step in
Ushakoff s method, Ushakoff would have suggested “lastly drying” a hide
as recited in claim 1. Consequently, Appellant’s arguments are unpersuasive
of reversible error in the Examiner’s rejection.
Appellant argues that the combined disclosures of Famham and
Ushakoff would have led one of ordinary skill in the art to cure skins with
salt, and then use the tanning techniques disclosed in Ushakoff on the salt-
cured skins, because “Famham discloses only salt curing as a manner for
preserving hides for later tanning.” App. Br. 9—10.
However, Appellant’s arguments do not address the basis for the
Examiner’s reliance on Famham, and the arguments are therefore
unpersuasive of reversible error in the actual rejection presented by the
Examiner. As discussed above, the Examiner relies on Famham’s disclosure
that all hides undergo preliminary “soaking (washing), fleshing, liming,
unhairing, deliming, washing out, and rinsing (also washing).” Ans. 3^4
(citing Famham 77). The combined disclosures of Ushakoff and Famham,
therefore, would have suggested incorporating the preliminary steps of
washing, fleshing, liming, unhairing, and deliming as disclosed in Famham
into the method suggested by Ushakoff (discussed above).
Appellant argues that his invention addresses a long-felt need because
it allows an untanned hide to be preserved without salt curing. App. Br. 15.
Appellant contends that employing fatliquoring to preserve untanned hides
in accordance with his invention preserves the untanned hides for at least six
months, whereas Munch addresses the disadvantages of salt curing by
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applying sodium chlorite with an additional hydrotropic compound, which
only preserves hides for 2—3 weeks. App. Br. 15 (citing Spec. 1372, Munch
col. 3,11. 35—40).
However, Appellant does not provide sufficient evidence to
demonstrate that there was a long-felt need that was solved by his invention.
App. Br. 15; In re Mixon, 470 F.2d 1374, 1377 (CCPA 1973). Appellant
does not show that the solution to the problem of developing a method for
preserving an untanned hide without salt curing would not have been
apparent to one of ordinary skill in the art from the teachings of the applied
prior art. App. Br. 15; In re Gershon, 372 F.2d 535, 538—39 (CCPA 1967)
(Establishing long-felt need requires objective evidence showing existence
of a persistent problem recognized by those of ordinary skill in the art for
which a solution was not known.). In fact, as Appellant points out, Munch
discloses preserving hides without salt curing for 2—3 weeks. App. Br. 15.
In addition, as discussed above, Ushakoff would have suggested fatliquoring
a non-salt cured, untanned, bated, pickled, solvent dehydrated, dried hide, as
recited in claim 1. Newell Cos., Inc. v. Kenney Mfg. Co., 864 F.2d 757, 768
(Fed. Cir. 1988) (The long-felt need must not have been satisfied by another
before the invention by applicant.).
Therefore, considering the totality of the evidence relied upon in this
appeal, we find that a preponderance of the evidence supports the
Examiner’s conclusion of obviousness. We accordingly sustain the
Examiner’s rejections of claims 1—23 and 26 under 35 U.S.C. § 103(a).
2 Paragraph 37 of Appellant’s Specification as published corresponds to
page 12, lines 8—14 of the Specification as originally filed.
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Rejection IX
Appellant does not contest the Examiner’s provisional rejection of
claims 1—23 on the ground of non-statutory obviousness-type double
patenting over claims 1—20 of copending patent application number
12/523,240. See generally App. Br. Therefore, we summarily sustain this
rejection without comment. 37 C.F.R. § 41.37(c)(l)(iv); see also Manual of
Patent Examining Procedure (MPEP) § 1205.02 (9th ed. Mar. 2014) (“If a
ground of rejection stated by the examiner is not addressed in the appellant’s
brief, appellant has waived any challenge to that ground of rejection and the
Board may summarily sustain it, unless the examiner subsequently withdrew
the rejection in the examiner’s answer.”).
DECISION
We affirm the rejections of claims 1—23 and 26 under 35 U.S.C. §
103(a), and provisional rejection of claims 1—23 for non-statutory
obviousness-type double patenting. We reverse the rejection of claims 1—23
and 26 under 35 U.S.C. § 112, second paragraph.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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