Ex Parte Hottovy et alDownload PDFBoard of Patent Appeals and InterferencesAug 17, 200910849393 (B.P.A.I. Aug. 17, 2009) Copy Citation 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 ____________ 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, Appeal 2008-004938 Application 10/849,393 2 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;” Appeal 2008-004938 Application 10/849,393 3 (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 Appeal 2008-004938 Application 10/849,393 4 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, Appeal 2008-004938 Application 10/849,393 5 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 Appeal 2008-004938 Application 10/849,393 6 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. Appeal 2008-004938 Application 10/849,393 7 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 Appeal 2008-004938 Application 10/849,393 8 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. Appeal 2008-004938 Application 10/849,393 9 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 Appeal 2008-004938 Application 10/849,393 10 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 Copy with citationCopy as parenthetical citation