Ex Parte Hottovy et al

Board of Patent Appeals and Interferences

Aug 17, 2009

10849393 (B.P.A.I. Aug. 17, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JOHN D. HOTTOVY,
HARVEY D. HENSLEY,
DAVID J. PRZELOMSKI,
TEDDY H. CYMBALUK,
ROBERT K. FRANKLIN, III, and
ETHELWOLDO P. PEREZ
____________

Appeal 2008-004938
Application 10/849,393
Technology Center 1700
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Decided: August 17, 2009
____________

Before CHARLES F. WARREN, CATHERINE Q. TIMM, and
LINDA M. GAUDETTE, Administrative Patent Judges.

TIMM, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
Appellants request rehearing of our Decision mailed March 24, 2009
(Request of May, 26, 2009; Supp. Request of July 24, 2009). In that
Decision, we sustained the Examiner’s rejection of claims 6, 10, 13, 19, 30,
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and 33 under 35 U.S.C. § 112, ¶ 1 as failing to comply with the written
description requirement. We further sustained the rejection of claims 1-39
under 35 U.S.C. § 103(a) as being unpatentable over Tormaschy in view of
Hanson.
Requests for rehearing must comply with 37 C.F.R. § 41.52(a)(1)
which specifies in pertinent parts that “[t]he request for rehearing must state
with particularity the points believed to have been misapprehended or
overlooked by the Board” and that “[a]rguments not raised in the briefs
before the Board and evidence previously relied upon in the brief and any
reply brief(s) are not permitted in the request for rehearing except as
permitted by paragraphs (a)(2) and (a)(3) of this section.” Section (a)(2)
allows a new argument based upon a recent relevant decision of a Federal
Court upon a showing of good cause. Appellants’ Supplemental Request,
presents new arguments based on Agilent Tech., Inc. v. Affymetrix, Inc,
567 F.3d 1366 (Fed. Cir. 2009). Agilent was decided on June 4, 2009, a date
after Appellants’ initial Request of May 26, 2009. We, therefore, consider
the arguments presented in the Supplemental Request in addition to the
arguments in the initial Request.
Issues
The issues presented are: Have Appellants established that we
misapprehended or overlooked any point in rendering the Decision with
regard to
(1) the rejection of claim 6 as lacking written descriptive support for
adding fresh olefin feedstock “at a constant rate;”
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(2) the rejection of claim 10 (representative for claims 10, 13, 19, 30, and
33) as lacking written descriptive support for maintaining a dynamic seal
within the flash vessel; and
(3) the rejection of claim 1 (representative for claims 1-39) as obvious
based upon the teachings and suggestions of Tormaschy and Hanson?
Issue (1): Support for the Subject Matter of Claim 6
With regard to the rejection of claim 6 under 35 U.S.C. §112, ¶ 1,
Appellants contend we
overlooked the fact that the specification explicitly states that
"[d]iluent input is generally held constant, the proportional
motor valve 58 being used to control the rate of continuous
withdrawal to maintain the total reactor pressure within
designated set points." Application, page 10, lines 18-20
(emphasis added). It seems apparent that the Board overlooked
this explicit statement based on the Board's assertion that “[t]he
Specification only reasonably conveys holding diluent input
constant," when, in fact, the specification explicitly discloses
holding the diluent input constant. Decision on Appeal, page 16
(emphasis added).
(Request 2.)
We do not agree with Appellants that we overlooked the teachings of
the Specification. That we considered the Specification’s teachings with
regard to diluent input is evident from our discussion on pages 14-16 of the
Decision, particularly, FF 18-20. We did not, and do not now, disagree with
Appellants that the Specification explicitly discloses holding the diluent
input constant (see FF 19 at Decision 15). What the Specification does not
convey is holding the olefin feedstock (monomer) input constant.
Nor can we agree with Appellants that we overlooked their
arguments. Appellants argue that the Specification discloses “adding fresh
olefin feedstock to the reactor at a constant rate” (Request 2). However, we
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have considered the disclosures within the Specification and we find
differently. Appellants state that they “believe, as appreciated by those of
ordinary skill in the art, for a given desired olefin concentration in the
typical combined olefin/diluent feed stream to the reactor, the olefin
feedstock itself may be added at a constant rate where the diluent is held
constant.” (Request 2). But Appellants’ Specification does not require that
the olefin and diluent be added in a combined feedstream. Nor does the fact
that the olefin feedstock stream “may be” added at a constant rate reasonably
convey Appellants’ possession of so adding the fresh olefin. While adding
the feedstock at a constant rate may have been obvious to one of ordinary
skill in the art reading the Specification, the Specification itself must
reasonably convey the concept of doing so. We find no words in the original
written description conveying the claimed concept. Nor have Appellants
established that constant input of the fresh olefin would inherently occur in
the process described by the Specification. Where support must be based on
an inherent disclosure, it is not sufficient that a person following the
disclosure might obtain the result; it must inevitably happen. Dreyfus v.
Sternau, 357 F.2d 411, 415 (CCPA 1966); see also Pingree v. Hull,
518 F.2d 624, 627-28 (CCPA 1975).
In the Supplemental Request, Appellants further contend that the
interpretation of claim 6 should be revisited in view of the recently decided
case Agilent Tech., Inc. v. Affymetrix, Inc., 567 F.3d 1366 (Fed. Cir. 2009)
(Supp. Request 2-3). Appellants assert that we did not interpret the claim
language, “at a constant rate,” in accordance with the precedent set forth in
Agilent (Request 2). Appellants state that, as in Agilent, they have attempted
to provoke an interference by copying claims directly from an issued patent,
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namely, claim 7 of U.S. Patent No. 6,566,460, issued to Salmon. According
to Appellants, we did not interpret the claim language in view of Salmon’s
specification before considering whether the claim language is supported by
the present application as required by Agilent (Supp. Request 2). Appellants
state that they “believe that there is a suggested correlation between a
constant rate of diluent and adding olefin feed stock at a constant rate,”
citing to column 2, lines 12-16 and column 4, line 26 to column 5, line 6 of
Salmon in support (Supp. Request 2).
In deciding the question of which specification to consult when
construing a claim whose written description is challenged in an
interference, the court in Agilent examined two prior art cases, In re Spina,
975 F.2d 854 (Fed. Cir. 1992) and Rowe v. Dror, 112 F.3d 473 (Fed. Cir.
1997). Agilent, 567 F.3d at 1374. Because under the facts of Agilent, the
question was one of written descriptive support, the court applied what it
called the “Spina rule” to interpret the copied claim. According to the
“Spina rule” one looks to the originating specification, i.e., the specification
of the patent from which the claim is copied, to construe the claim.
In the present case, there is no real question as to the meaning of “at a
constant rate” as that phrase is used in either the present application or in
Salmon. Whether one looks to the Specification of Salmon or that of
Appellants, the meaning is the same: the feedstock enters at a velocity that
is the same over time. What Appellants really are attempting to do is to rely
upon a disclosure within Salmon to provide written descriptive support.
While it may be appropriate to look to Salmon to interpret the words of the
claim, particularly, when a copied claim is ambiguous as to its meaning, it is
not appropriate to look to Salmon for establishing written descriptive
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support. See DeGeorge v. Bernier, 768 F.2d 1318, 1322 (Fed. Cir. 1985)
(Where claim language is ambiguous “resort must be had to the specification
of the patent from which the copied claim came.”); see also Spina, 975 F.2d
at 858; and Cultor Corp. v. A.E. Staley Mfg., 224 F.3d 1328, 1332 (Fed. Cir.
2000) (“When a claim is copied from another patent for interference
purposes, it must be supported by the specification of the copier.”).
Appellants have not established that we misapprehended or
overlooked any point in rendering the Decision with regard to the rejection
of claim 6 as lacking written descriptive support for adding fresh olefin
feedstock “at a constant rate.”
Issue (2): Support for the Subject Matter of Representative Claim 10
With regard to the rejection of claims 10, 13, 19, 30, and 33 under
35 U.S.C. § 112, ¶ 1, Appellants contend we overlooked what is disclosed in
the Specification (Request 3-4). Specifically, Appellants contend we
overlooked the disclosure that a “[h]eated diluent vapor provided via conduit
123 is passed into the flash chamber 120 and through the distributor plate
122 in such a fashion as to cause a fluidized bed of polymer solids to occur
in the flash chamber” found at page 19, lines 4-6 of the Specification
(Request 3). Appellants contend that this disclosure provides support for
“removing a portion of the polymer particles via an outlet at the bottom of
the flash vessel while retaining an amount of particles sufficient to maintain
a dynamic seal between the inlet and the outlet of the vessel” as required by
the claims.
Appellants do not contest our selection of claim 10 as representative
for deciding this issue on appeal (Request 3-4; Decision 18). Therefore, we
confine our discussion to claim 10.
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As evidenced by our FF 24 (Decision 19), which quotes page 19, lines
4-6 of the Specification, we did not overlook the portion of the Specification
cited by Appellants in their Request. Moreover, as we further found, and as
undisputed by Appellants, the Specification contains no disclosure of the
rates at which polymer solids are added or removed from the flash chamber,
no disclosure of whether the fluidized bed continuously remains within the
vessel, nor any disclosure of maintaining the volume of solids within the
chamber so as to create a dynamic seal (FF 26). The presence of a dynamic
seal would depend on all those factors. As we stated in the Decision, there is
no evidence in support of Appellants’ position that they were in possession
of maintaining a dynamic seal (Decision 19).
Appellants contend that establishing a “bed” of polymer solids would
be considered by one of ordinary skill in the art to be sufficient to maintain a
dynamic seal in the flash vessel (Request 4). However, the “bed” as
disclosed in the Specification is a fluidized bed, i.e., solid particles
suspended or floating within a stream of gas. Appellants provide no
convincing evidence that the ordinary artisan would consider such a “bed” to
provide a dynamic seal.
Appellants have not established that we misapprehended or
overlooked any point in rendering the Decision with regard to the rejection
of claim 10 as lacking written descriptive support for maintaining a dynamic
seal within the flash vessel.
Issue (3): Obviousness of Representative Claim 1
With regard to the rejection of claims 1-39 under 35 U.S.C. § 103(a)
over Tormaschy in view of Hanson, Appellants contend that we did not
“sufficiently address the recitation of ‘continuously conveying an amount of
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the polymer particles from the reactor first through a discharge means
located below a horizontal midline of a cross-section of the reactor pipe,’ as
recited in claims 1, 17, 19, 39 (Request 4). Appellants further contend we
did not sufficiently address the recitation of "continuously conveying an
amount of the polymer particles from the reactor first through a discharge
means located on a bottom portion of a horizontal segment of the loop
reactor pipe" or "continuously conveying an amount of the polymer
particles from the reactor first through a discharge means located below a
horizontal midline of a cross-section of a horizontal segment of the reactor
pipe," as recited in claims 20 and 37, respectively (Request 5). Appellants,
however, do not elaborate. Moreover, in their Briefs, Appellants did not
argue these limitations in their entirety. Instead, Appellants contended that
Tormaschy failed to teach or suggest continuous withdrawal of slurry from
the loop reactor (Br. 40; Reply Br. 12-13). To the extent Appellants are
presenting a new argument in their Request, this argument has been waived
and we will not address it here.
Appellants further contend that we made a new rejection based on
Tormaschy by relying upon Miller, a reference incorporated by reference by
Tormaschy (Request 5). Appellants do not request that we designate the
rejection as a new ground, but rather they present arguments as to why
Miller does not provide evidence of obviousness (Request 5). We will
address these arguments.
Appellants do not contest our selection of claim 1 as representative for
deciding this issue on appeal (Request 4-7; Decision 24). Therefore, we
confine our discussion to claim 1.
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Appellants contend that “Miller appears to rely on gravitational
settling in a conduit 19 that extends from the reactor 11, and not a
continuous withdrawal from the reactor as would be understood based on the
present disclosure,” citing to Miller, Figure 1 (Request 5). According to
Appellants, while the term “continuous” is used in Miller, “it appears to be
directed to some manner of maintained flow through a typical settling leg
configuration.” (Request 5.)
Whether or not Miller uses a typical settling leg, Miller discloses
continuously conveying . . . through a discharge means” as claimed. As we
found in our Decision, the discharging means may be a drain or vertical leg
(FF 32 at Decision 25-26). Appellants point to no particular corresponding
structure in the Specification that would distinguish such a drain or vertical
leg from the claimed “discharge means.” Therefore, Appellants’ claim
language does not distinguish over the continuous withdrawal of Miller.
Appellants further contend that Tormaschy is not enabled with regard
to the “continuously conveying” limitation (Request 6-7). Appellants do not
provide any evidence or reasoned argument in support. A reference is
presumed to be enabling and therefore, the burden is on the applicants to
prove the reference is not enabling. Chester v. Miller, 906 F.2d 1574, 1578
(Fed. Cir. 1990); In re Sasse, 629 F.2d 675, 681 (CCPA 1980). Appellants
have not met that burden.
Lastly, Appellants contend that it is improper for us to assert that the
present claims are obvious over Tormaschy in view of Hanson because
Tormaschy and Hanson are listed on the face of the Salmon patent, the
patent from which Appellants have copied claims (Request 7). This
argument is unconvincing because the determination of patentability must be
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made anew under the facts of the present case and we do not consider the
patentability of an issued patent not before us.
The subject Request has been granted to the extent that the Decision
has been reconsidered, but is denied with respect to making any changes
therein.

DENIED

cam

MICHAEL G. FLETCHER
FLETCHER YODER
P O BOX 692289
HOUSTON TX 77269-2289