Ex Parte Jonas et alDownload PDFPatent Trial and Appeal BoardJun 26, 201511288703 (P.T.A.B. Jun. 26, 2015) Copy Citation 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. 11/288,703 11/29/2005 Friedrich Jonas MO6929D / LeA 34,719 5839 7590 06/26/2015 Ashley I. Pezzner Conolly Bove Lodge & Hutz LLP The Nemoure Building 1007 North Orange Street P.O. Box 2207 Wilmington, DE 19899 EXAMINER KOPEC, MARK T ART UNIT PAPER NUMBER 1761 MAIL DATE DELIVERY MODE 06/26/2015 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ________________ Ex parte FRIEDRICH JONAS1 and Stephan Kirchmeyer ________________ Appeal 2013-007268 Application 11/288,703 Technology Center 1700 ________________ Before TERRY J. OWENS, MARK NAGUMO, and MICHELLE N. ANKENBRAND, Administrative Patent Judges. NAGUMO, Administrative Patent Judge. DECISION ON APPEAL Friedrich Jonas and Stephan Kirchmeyer (“Heraeus”) timely appeal under 35 U.S.C. § 134(a) from the final rejection2 of claims 11, 13, 20, 23, 29, 30, 34–36, and 40.3, 4 Because we lack jurisdiction under 35 U.S.C. § 6, we dismiss the appeal. 1 The real party in interest is listed as Heraeus Precious Metals GmbH & Co. KG. (Appeal Brief, filed 21 November 2012 (“Br.”), 2.) 2 Office action mailed 24 April 2012 (“Final Rejection”; cited as “FR”). 3 Remaining copending claims 21 and 24–28 have been withdrawn from consideration by the Examiner (FR 1 ¶ 4a) and are not before us. Appeal 2013-007268 Application 11/288,703 2 OPINION A. Introduction5 Heraeus seeks review of the Examiner’s refusal to consider a declaration filed under 37 C.F.R. §1.131 by inventors Jonas and Kirchmeyer (the “§ 131 Declaration”).6 The declarants seek to show they reduced the invention to practice in Germany (a WTO member country) prior to the effective date of Haghighat,7 over which the Examiner has rejected claims 11, 13, 20, 23, 29, 30, 34–36, and 40, as unpatentable under 35 U.S.C. § 102(e) or under 35 U.S.C. § 103(a).8 Rule 131, as of the effective filing date of the present application, read in most relevant part: “(a) . . . Prior invention may not be established under 4 Claims 37–39 were canceled in an amendment filed 24 September 2012, under 37 C.F.R. §1.116, which was entered 22 October 2012 (Advisory Action). 5 Application 11/288,703, Novel polythiophene dispersions, filed 29 November 2005, as a division of 10/093,219, filed 7 March 2002, now U.S. Patent No. 7,008,562 B1, claiming the benefit of GERMANY 10111790.6, filed 12 March 2001. We refer to the “ʼ703 Specification,” which we cite as “Spec.” 6 Declaration by Friedrich Jonas and Stephan Kirchmeyer filed on 8 October 2007. 7 R. Ross Haghighat et al., Compositions produced by solvent exchange methods and uses thereof, U.S. Patent No. 6,692,662 B2, issued 17 February 2004, based on application 09/999,171, filed 30 November 2001, claiming the benefit of provisional applications 60/298,174, filed 13 June 2001, and of 60/269,606, filed 16 February 2001. The ʼ171 application was published as US 2003/0006401 A1 on 9 January 2003. USPTO records indicate that Haghighat expired 17 March 2008, for failure to pay maintenance fees. 8 Examiner’s Answer mailed 12 February 2013 (“Ans.”). Appeal 2013-007268 Application 11/288,703 3 this section if either: (1) The rejection is based upon a U.S. patent . . . to another or others which claims the same patentable invention as defined in § 1.601(n); or (2) The rejection is based upon a statutory bar.” (37 C.F.R. §1.131 (2001); subsequent revisions do not affect the issues presented in this appeal.) Heraeus agrees with the Examiner’s determination that the appealed claims cover substantially the same invention covered by the claims of Haghighat. (Br. 5, last paragraph.) However, Heraeus argues that because Haghighat expired (due to failure to pay maintenance fees), the exclusion in Rule 131 should not be applied, and the § 131 Declaration should be considered. Otherwise, Heraeus contends, it has no opportunity to contest the rejection, because an interference cannot be declared with an expired patent. (Id. at 7–8.) Heraeus urges further that Haghighat should be removed as prior art, and the rejection reversed. (Id. at 9.) Heraeus requests, in effect, that the Patent Trial and Appeal Board (“Board”) interpret Rule 131 as not being applicable when a prior art patent claiming substantially the same subject matter has expired. Consistently, the PTO explained in the promulgation of the Final Rule that [t]he purpose of the amendment to § 1.131(a) is to ensure that an applicant who is claiming an invention which is identical to, or obvious in view of, i.e., the same patentable invention as claimed in a domestic patent, cannot employ an affidavit under § 131 as a means for avoiding an interference with the patent. To allow an applicant to do so would result in the issuance of two patents to the same invention. (53 Fed. Reg. 237238, 23728, 3d col. (1988).) Appeal 2013-007268 Application 11/288,703 4 Thus, it might be argued that, when no interference can be declared because there is no unexpired patent claiming the same invention, and thus no holder of a property right who would be harmed by the ex parte determination, a § 131 declaration should be considered. On the other hand, it might be argued that, upon expiration of the prior art patent, the public was free to practice the invention covered by that patent, and that it should not now be denied that right. Such considerations illustrate the scope of the tensions involved in the resolution of this issue, and the need for review at the appropriate level by the appropriate authority. The Board does not have jurisdiction over the interpretation of this rule. Even in Contested Cases, in which the Board has the authority under 37 C.F.R. § 41.104(b) to waive or suspend rules under that part, the Board does not have the general authority to waive or suspend Rules of Practice in Patent Cases. That authority resides in the Director. 37 C.F.R. § 1.183. More specifically, the Director has delegated responsibilities for review of declarations under § 131 as set out in the Manual of Patent Examining Procedure (“MPEP”): The question of sufficiency of affidavits or declarations under 37 CFR 1.131(a) should be reviewed and decided by a primary examiner. Review of an examiner’s decision with regard to questions of formal sufficiency and propriety of an affidavit or declaration under 37 CFR 1.131(a) is by a petition filed under 37 CFR 1.181. Such petitions are answered by the Technology Center Directors (MPEP § 1002.02(c)). Review of an examiner’s determination on the merits of a 37 CFR 1.131(a) affidavit or declaration is by appeal to the Patent Trial and Appeal Board. Appeal 2013-007268 Application 11/288,703 5 (MPEP 715.08, 9th ed., March 2014.)9 Thus, the proper venue for review in the first instance of the Primary Examiner’s refusal to consider the § 131 Declaration is the Technology Center Director. Further review of that decision may be had by way of petition under 37 C.F.R. §§ 1.181–1.183. Heraeus’s arguments concerning the “unfairness” of the current regulations, which do not permit Heraeus to present arguments based on a prior patentee’s failure to maintain a patent, must be directed to the proper reviewing officials who have the authority to interpret the rule, and the authority, if they see fit, to suspend or waive the requirements of the rule. In this case, where the existence of patentably indistinct claims is not at issue, if a determination is made that the § 131 Declaration should be considered on the merits, our review would be available should Heraeus appeal from an adverse decision by the Primary Examiner as to the sufficiency of the evidence proffered in support of the declaration. We therefore DISMISS the appeal, as we do not have jurisdiction over the question presented. In view of the number of pending appeals and applications, and in view of the extended prosecution history of this application, we have provided in the Appendix some observations regarding the § 131 Declaration and the evidence provided in support of that Declaration. 9 http://www.uspto.gov/web/offices/pac/mpep/s715.html#d0e91930 (substantially unchanged, except for minor differences in wording, since the subject application was filed). Appeal 2013-007268 Application 11/288,703 6 C. Order It is ORDERED that the appeal is DISMISSED. DISMISSED cdc Appeal 2013-007268 Application 11/288,703 7 Appendix: Remarks concerning the § 131 Declaration and evidence The following observations and remarks are intended to provide guidance regarding the issues that must be addressed and the nature of the factual showings required under § 131(b). All statements of “findings of fact” below should be regarded as provisional and non-binding, in that both the Examiner and Heraeus may correct or modify such “findings” by pointing to contrary evidence of record, or by expanding the evidentiary record in an appropriate proceeding. Our observations and comments do not require a separate review of the claimed subject matter. The original parent of the ʼ703 Specification was filed 7 March 2002. The earliest priority date accordable to the subject application is 12 March 2001, the filing date of the German priority document. Haghighat was filed 30 November 2001, claiming the benefit of two provisional applications. Provisional application 60/298,174 was filed 13 June 2001; Provisional application 60/269,606, was filed 16 February 2001. Assuming, without deciding, that the earliest filed ’606 Provisional Application provides a complete and enabled description of the invention covered by the “interfering” claims of the Haghighat patent, Heraeus cannot rely on its priority document to antedate Haghighat.10 10 Neither the priority document nor a certified translation have been filed. We assume, without deciding, that Heraeus’s priority document provides a complete and enabling description of the appealed claims. Appeal 2013-007268 Application 11/288,703 8 Declarants Jonas and Kirchmeyer (collectively, “Jonas”) testify that the claimed invention was reduced to practice “[o]n a date prior to June 28, 2000.” (§ 131 Decl. 1 ¶ 2.) As evidence of reduction to practice, Jonas offers the German original and an English translation of an Invention Report dated prior to 28 June 2000; and the German original and an English translation of a “Patent Draft” dated prior to 28 June 2000. (Id. at 1 ¶ 3.) In accordance with standard practice, actual dates have been redacted from these documents. Jonas also provides a datasheet for the commercial product BAYTRON® P, available from H.C. Starck GmbH, indicating that the material is an aqueous dispersion of poly(3,4-ethylenedioxythiophene)- poly(styrenesulfonate). (Id. at ¶ 5, through 2 ¶ 6.) Jonas submits further that Example 1 of the Patent Draft meets all the limits of claim 11, in that (id. at 3 ¶ 7): BAYTRON® P meets the limitations of formula (I) in claim 11; dimethylacetamide is the organic solvent; the solution has a water content of 3.9 %. Jonas also submits that the limitations of claim 1211 (requiring an inorganic salt content less than 40% of the amount originally employed for the preparation of the An−polythiophene+) are supported by Example 1 in the Patent Draft. Jonas urges that, although not expressed, the inorganic salt content of the solutions is “inherently” less than about 40%, [of the amount 11 Claim 12 has been canceled and incorporated as the final paragraph of claim 11. (Amendment filed 17 August 2011, pp. 3 & 7.) Appeal 2013-007268 Application 11/288,703 9 originally employed for the preparation of the An−polythiophene+, as required by claim 11. (Id. at 3 ¶ 8.) Rule 131(b) reads: The showing of facts for an oath or declaration under paragraph (a) of this section shall be such, in character and weight, as to establish reduction to practice prior to the effective date of the reference, or conception of the invention prior to the effective date of the reference coupled with due diligence from prior to said date to a subsequent reduction to practice or to the filing of the application. Original exhibits of drawings or records, or photocopies thereof, must accompany and form part of the affidavit or declaration or their absence must be satisfactorily explained. 37 C.F.R. §1.131(b)(2014) (substantially unchanged at all times relevant to the subject application). We observe first that the § 131 Declaration does not cite specific passages in the Invention Report as support for the reduction to practice. Therefore, we would not rely on the Invention Report. We observe further that Example 1 of the Patent Draft is presented in a mixture of present and past tenses, unlike corresponding Example 2 of the ’703 Specification, which is presented entirely in the past tense. Moreover, the § 131 Declaration does not present original data, such as copies of laboratory notebook pages reporting the actual conduct of the experiments, images or direct characterizations of the films, and the initial data analysis. Particularly problematic is the absence of a clear explanation why the inorganic salt content is “inherently” “less than about 40% of the amount originally employed for the preparation of the An−polythiophene+” as required by claim 11. Appeal 2013-007268 Application 11/288,703 10 We observe further that the precise relation between the proffered Patent Draft and the subject application is not apparent from the text of the Patent Draft, and that the § 131 Declaration does not state that the Patent Draft is, for example, the relevant substance of the German Priority document. Moreover, the § 131 Declaration does not account for the period between the time before 28 June 2000, when the Patent Draft was prepared, and 12 March 2001, when the German Priority Document was filed. Our first provisional conclusion is that the proffered evidence would not be sufficient to establish an actual reduction to practice.12 Rather, the evidence at best supports conception prior to the critical date. Our second provisional conclusion is that the proffered evidence would not be sufficient to establish due diligence from the date of conception to the date of filing of the German Priority Document. There is no account of the activities of the inventors and those responsible for the preparation of the priority application. Nor, as noted, is there a clear statement of the relation of the Patent Draft to the Priority Document. For these reasons, the § 131 Declaration appears to be inadequate to establish either actual “reduction to practice prior to the effective date of the reference, or conception . . . coupled with due diligence from prior to said date to a subsequent reduction to practice or to the filing of the application,” as required by § 131. We conclude that the § 131 Declaration would not be persuasive. 12 A valid specification need not present an actual report of experiments or working examples to provide an enabling description of the claimed invention. Indeed, for many inventions no working examples or experimental details are required. Copy with citationCopy as parenthetical citation