Ex Parte JOKINEN et al

Patent Trials and Appeals Board

May 13, 2019

13971766 - (D) (P.T.A.B. May. 13, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/971,766 08/20/2013 Mika JOKINEN
32954 7590 05/15/2019
JAMES C. LYDON
P.O. Box 1406
North Springfield, VA 22151
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
TUR-214-A 1097
EXAMINER
GULAKOWSKI, RANDY P
ART UNIT PAPER NUMBER
1766
NOTIFICATION DATE DELIVERY MODE
05/15/2019 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):
jclydon@starpower.net
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MIKA JOKINEN, HARRY JALONEN,
ARI-PEKKA FORSBACK, and MIKA KOSKINEN
Appeal2018-006038
Application 13/971,766
Technology Center 1700
Before KAREN M. HASTINGS, MERRELL C. CASHION, JR.,
and SHELDON M. MCGEE, Administrative Patent Judges.
CASHION, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 26-31. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appeal2018-006038
Application 13/971,766
The claimed invention is directed to a kit for injection of a flowing
silica composition into a human or animal. Claim 26 illustrates the claimed
subject matter and is reproduced below (formatting added):
26. A kit for injection of a flowing silica composition
into a human or animal, said kit comprising
i) a flowing silica composition having a solids content of
3.1 wt-% or less, and having been prepared by a method
compnsmg
and
a) performing a sol-gel transfer and
b) performing a redispersion comprising
adding liquid into the gel formed by said
sol-gel transfer within a sufficiently short time
period after reaching said gel point, said time
period depending on temperature and the recipe of
the sol-gel transfer,
mixing said gel and said liquid to produce
said flowing silica composition, which is and
remains injectable as such, or by short stirring< 30
s, through a thin 22G needle, such that a 400 µl
aliquot of the sample can at RT be injected with a
1. 0 ml syringe, using standard injection
procedures with one steady pressing of the syringe
plunger, without phase separation or blockage of
the needles occurring during the injection,
wherein the steps of adding liquid and
mixing are carried out within :S 5 min after
reaching gel point of said sol-gel transfer,
ii) a re gelling agent capable of inducing regelling of the
silica into a gel.
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Appeal2018-006038
Application 13/971,766
Appellant1 (App. Br. 4) requests review of the Examiner's decision to
finally reject claims 26-31 under U.S.C. § 112, first paragraph,2 as failing to
comply with the written description requirement. App. Br. 5; Final Act. 2.
Appellant does not argue any claim separate from the other. See
generally App. Br. Accordingly, we limit our discussion to independent
claim 26 and the dependent claims stand or fall with claim 26.
OPINION
After review of the respective positions provided by Appellant and the
Examiner, we AFFIRM the Examiner's rejection of claims 26-31 under 35
U.S.C. § 112, first paragraph, for the reasons presented by the Examiner and
add the following.
The Examiner finds that the claims directed to a "kit" are not
adequately described in the Specification, as originally filed, so as to
reasonably convey to one skilled in the art that the inventors had possession
of the claimed invention at the time the application was filed. Final Act. 3;
Ans. 3. As the Examiner explains in the Answer,
[o]ur reviewing court stated in In re Kaslow, 707 F.2d 1366, 1375
(Fed. Cir. 1983):
The test for determining compliance with the written
description requirement is whether the disclosure of the
application as originally filed reasonably conveys to the artisan
1 DelSiTech Oy is the Applicant/ Appellant and is identified as the real party
in interest. App. Br. 1.
2 We cite to the pre-AIA versions of 35 U.S.C. § 112 because the effective
filing date for the application from which this appeal is taken, based on the
foreign priority, is before the effective date of the AIA legislation of March
16, 2013.
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Appeal2018-006038
Application 13/971,766
that the inventor had possession at that time of the later claimed
subject matter, rather than the presence or absence of literal
support in the specification for the claim language.
See also Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351
(Fed. Cir. 2010). "This inquiry ... is a question of fact. ... [T]he level of
detail required [in the Specification as originally filed] to satisfy the written
description requirement varies depending on the nature and scope of the
claims and on the complexity and predictability of the relevant technology."
Id. Whether the written description requirement is complied with is a
question of fact, judged from the perspective of one of ordinary skill in the
art as of the relevant filing date. See Vas-Cath Inc. v. Mahurkar, 935 F.2d
1555, 1563-64 (Fed. Cir. 1991).
The claimed subject matter need not be described in haec verba in the
Specification in order for that Specification to satisfy the description
requirement. In re Smith, 481 F .2d 910, 914 (CCP A 1973). That is, it is
enough that one of ordinary skill in the art would recognize that the inventor
invented what is claimed without a claim using the same words as the
Specification. Union Oil Co. of Cal. v. Atlantic Ric/1jield Co., 208 F.3d 989,
997 (Fed. Cir. 2000). However, our reviewing court has also explained that,
when relying on extrinsic evidence "[t]o establish inherency, the extrinsic
evidence must make clear that the missing descriptive matter is necessarily
present in the thing described in the reference." In re Robertson, 169 F.3d
743, 745 (Fed. Cir. 1999; internal quotation and citation omitted).
Appellant acknowledges that the Specification does not provide in
haec verba support for the disputed term. App. Br. 7. However, Appellant
argues that support for the disputed term in inherent based on the high level
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Appeal2018-006038
Application 13/971,766
of skill in the art. Id. at 8-9. According to Appellant, a person of ordinary
skill in the sol-gel derived silica art is one that typically has earned an
advanced degree in biochemistry, chemistry, chemical engineering or
materials science, and has several years of experience in industry or
academia researching sol-gel derived silica. Id. at 8. Appellant points to the
background of co-inventors Mika Jokinen and Mika Koskinen as examples
of persons having a high level of skill in the art. Id. at 8-9.
Appellant's arguments do not point to reversible error in the
Examiner's determination for the reasons the Examiner presents. Ans. 8-9.
Moreover, Appellant's arguments merely establishes the level of skill of the
inventors without explaining adequately how such skill relates to one of
ordinary skill in the art. App. Br. 8-9. Absent further explanation or other
objective evidence, Appellant, at most, has provided mere attorney
arguments and such arguments of counsel cannot take the place of evidence.
Ans. 9; see In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984); In re
Payne, 606 F.2d 303,315 (CCPA 1979).
Appellant additionally argues that original "use" claims 17 and 20-22,
the disclosure on pages 55-56 of the Specification, and Example 15 in the
Specification provide inherent support for the disputed term. App. Br. 9-11.
Specifically, Appellant contends that original claims 17 and 20-21 provide
descriptive support for the disputed term because the claims disclose that the
silica composition may be re gelled in combination with injection of the
flowing silica composition and that induction of re gelling is carried out prior
to injection. Id. at 9. In addition, Appellant asserts that pages 55-56 of the
Specification provide the requisite written descriptive support because the
disclosure recognizes that premature re gelling is undesirable. Id. at 10.
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Appeal2018-006038
Application 13/971,766
Lastly, Appellant argues that Example 15 is also evidence of written
descriptive support for the disputed term because it addresses long term
storage of the flowing silica composition following addition of a regelling
agent and, according to Appellant, had the regelling agent been added to the
redispersed silica composition at the beginning of the test, regellation would
necessarily and inevitably have occurred within 4--13 minutes. Id. at 10-11.
The arguments do not persuade us of reversible error in the
Examiner's determination that the disputed term lacks adequate written
descriptive support for the reasons the Examiner presents. Ans. 10-11.
Moreover, Appellant's arguments do not explain adequately why or how one
skilled in the art would conclude that there is written descriptive support for
the disputed term from the noted disclosures. For example, the "use" claims,
at best, recite what amounts to steps of combining components that are more
akin to a method than a kit. App. Br. 9. The disclosures on pages 55-56 of
the Specification and Example 15 describe observations concerning the
storage of regelling compositions for evaluation purposes without suggesting
or inferring a kit. Appellant's contention with respect to Example 15 that
regellation would necessarily and inevitably have occurred within 4--13
minutes had the regelling agent been added to the redispersed silica
composition at the beginning of the test is an argument unsupported by
objective evidence. Missing from all these arguments is an adequate
explanation that the noted disclosures inherently "make clear that the
missing descriptive matter is necessarily present in the thing described in the
[Specification]." Robertson, 169 F.3d at 745.
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Appeal2018-006038
Application 13/971,766
Therefore, on this record, the Specification, as originally filed, does
not show that Appellant was in possession of the scope of the subject matter
described in claims 26-31.
Accordingly, we affirm the Examiner's rejection of claims 26-31
under 35 U.S.C. § 112, first paragraph, for the reasons the Examiner presents
and the reasons we provide above.
ORDER
The Examiner's rejection under 35 U.S.C. § 112, first paragraph, is
affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l).
AFFIRMED
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