Ex Parte KarmakerDownload PDFPatent Trial and Appeal BoardMay 6, 201613209826 (P.T.A.B. May. 6, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/209,826 08/15/2011 83571 7590 05/10/2016 Wood, Herron & Evans, LLP (Sybron) 441 Vine Street 2700 Carew Tower Cincinnati, OH 45202 FIRST NAMED INVENTOR Ajit Karmaker 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. PENKMC-005CO 1953 EXAMINER LEWIS, RALPH A ART UNIT PAPER NUMBER 3732 NOTIFICATION DATE DELIVERY MODE 05/10/2016 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): usptodock@whe-law.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte AJIT KARMAKER Appeal2014-003748 Application 13/209,826 Technology Center 3700 Before NEALE. ABRAMS, JILL D. HILL, and MARK A. GEIER, Administrative Patent Judges. HILL, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Ajit Karmaker (Appellant) appeals under 35 U.S.C. § 134 from the Examiner's final decision rejecting claims 1-7 and 10-18. We have jurisdiction under 35 U.S.C. § 6(b ). We AFFIRM-IN-PART. Appeal2014-003748 Application 13/209,826 CLAIMED SUBJECT MATTER Independent claims 1 and 11 are pending. Claim 11 illustrates the claimed subject matter and is reproduced below, with the key disputed limitation highlighted. 11. A fiber-reinforced composite post comprising: an inner core comprising fiber-reinforced composite having an interior portion of a first plurality of fibers impregnated in a resin matrix; an intermediate layer comprising an exterior portion of the first plurality of fibers and an interior portion of a second plurality of fibers intermixed with the exterior portion of the first plurality of fibers in the resin matrix; and an outer sheath comprising an exterior portion of the second plurality of fibers free of resin, wherein the second plurality of fibers are arranged in a mesh. 1 Appeal Br. 9, Claims App. REJECTIONS I. Claims 10-18 stand rejected under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. Final Act. 2. II. Claims 11-18 stand rejected under 35 U.S.C. § 112, second paragraph, as indefinite. Final Act. 3. 1 Claim 1 is similar to claim 11 but, rather than reciting an "intermediate layer comprising ... an interior portion of a second plurality of fibers intermixed with the exterior portion of the first plurality of fibers," claim 1 recites "an interface layer comprising ... the interior surface portion of the [outer fiber] mesh embedded in the resin matrix of the inner core with the first plurality of fibers." Appeal Br. 8, Claims App. (emphasis added). 2 Appeal2014-003748 Application 13/209,826 Ill. Claims 1-11 and 11-17 stand rejected under 35 U.S.C. § 102(e) as anticipated by Vallittu (US 7,235,290 B2, iss. June 26, 2007). Final Act. 4. IV. Claims 10-18 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Vallittu. Final Act. 5. OPINION Rejection I Different Materials Dependent claims 10 and 18 recite "the first plurality and second plurality of fibers compris[ ing] different materials." The Examiner finds that Appellant's originally-filed Specification2 provides no basis for this limitation. Final Act. 2. Appellant argues that the original claims of the parent application provide a written description of this limitation, because claim l recited a first plurality of fibers and a second plurality of fibers, and claim 5 "further limited claim 1 by reciting that the first plurality and the second plurality of fibers comprise the same materials." Appeal Br. 3. Appellant also notes that paragraph 13 of the Specification discloses multiple options for fiber materials, but does not require that they be the same. Reply Br. 2. According to Appellant, under the principle of claim differentiation, (1) claim 5 must further limit claim 1, (2) claim 1 must therefore be broader 2 Any mention of the Specification in this Decision refers to the original Specification, filed April 26, 2013. 3 Appeal2014-003748 Application 13/209,826 than claim 5, and (3) claim 1 must therefore cover both the same material and different material. Appeal Br. 3; Reply Br. 2. The Examiner responds that "the absence of limitations in originally filed claims cannot reasonably be used as a basis for later positively setting forth distinct structural limitations on the claimed device that were never disclosed." Ans. 7. According to the Examiner, "allowing an applicant to positively claim structures and properties that were never set forth based on an argument that broader claims allow for it would open the door to uncertainty, unpredictability and confusion." Id. We agree with the Examiner that using claim differentiation as a basis for reciting alternatives that were not originally disclosed would open the door to uncertainty, unpredictability, and confusion. The fact that a broad claim encompasses a more specific embodiment does not necessarily indicate that the specific embodiment is described in sufficient detail to satisfy the written description requirement. We sustain the rejection of claims 10 and 18. Intermixed Dependent claim 11 recites that "an interior portion of a second plurality of fibers [is] intermixed with the exterior portion of the first plurality of fibers." Appeal Br. 9, Claims App. The Examiner finds that Appellant's originally-filed Specification provides no basis for this "intermixed" limitation. Final Act. 2. Appellant argues that paragraphs 26 and 27 of the originally-filed Specification provide inherent disclosure, by describing that the interior portion of the sheath fibers are pressed into (and thus embedded within) the 4 Appeal2014-003748 Application 13/209,826 exterior portion of the core, which inherently intermixes the fibers of the sheath with the fibers of the core. Appeal Br. 4; Reply Br. 3. The Examiner responds that paragraph 26 indicates that the outer sheath fibers are pressed down over the core fibers to encircle and overlapp the core, but does not disclose the outer core fibers intermixing with the inner core fibers, such that the originally-filed Specification fails to convey to an ordinarily skilled artisan that Appellant was in possession of such intermixing. Ans. 7-8. Paragraph 27 of the Specification further recites fusing the interface between the core and the sheath, rather than intermixing. We agree with the Examiner that Appellant's originally-filed Specification discloses embedding of layers, but not intermixing of fibers. While added claim limitations can be supported in the Specification through express, implicit, or inherent disclosure, inherency of disclosure requires that the limitation is necessary and inevitable. See Kennecott Corp. v. Kyocera Int'!, Inc., 835 F.2d 1419 (Fed. Cir. 1987). We are not persuaded that Appellant's claimed intermixing of fibers is a necessary and inevitable result of the outer sheath fibers being pressed down over the core . We therefore sustain the rejection of claims 11, and claims 12-18 that depend therefrom. Rejection II The Examiner argues that dependent claim 11 is indefinite, and that the "intermediate layer" limitation should be rewritten to recite "an intermediate layer comprising an exterior portion of the first plurality of fibers and an interior portion of a second plurality of fibers, wherein the interior portion of the second plurality of fibers is intermixed with the exterior portion of the first plurality of fibers in the resin matrix." Final Act. 3. 5 Appeal2014-003748 Application 13/209,826 Appellant argues that the Examiner did not identify two different meanings that would render the claim unclear. Appeal Br. 4. The Examiner responds that it is unclear whether "intermixed" refers to the "intermediate layer" or to the "second plurality of fibers." Ans. 8. We disagree with the Examiner. It would not have been unclear to one skilled in the art that "intermixed" refers to the "second plurality of fibers" rather than the "intermediate layer." We therefore do not sustain Rejection II. Rejection III Regarding independent claim 1, from which claims 2-7 and 10 depend, the Examiner finds that Vallittu teaches the limitations of claim 1, and that Appellant's argument that V allittu' s fibers 3 are not embedded in the inner core matrix at an interface "would provide for a non-usable device wherein the outer mesh 3 simply slides off the inner core 2," such that one skilled in the art "would not reasonably interpret the Vallittu et al. reference in such a manner." Final Act. 4--5; Ans. 8-9. Appellant argues that V allittu' s outer fibers 3 are not embedded in the resin matrix with the core fibers 2. Appeal Br. 4. According to Appellant, the bonding between V allittu' s outer sheath and its core "is achieved by curing and interlocking of the two resin matrices," such that the interface between the outer sheath and the core comprises interlocked resin matrices, rather than embedding of outer sheath fibers 3 in a resin with the core fibers 2. Id. at 5. According to Appellant, because pressure is not applied in Vallittu (e.g., there is no die or roller applied as in Appellant's process), one skilled in the art would not understand that the outer sheath fibers become embedded in the core resin matrix. Id. 6 Appeal2014-003748 Application 13/209,826 Because Vallittu does not explicitly disclose embedding, the Examiner's rejection must therefore be based on inherency. The fact that a certain result or characteristic may occur or be present in the prior art is not sufficient to establish the inherency of that result or characteristic. In re Rijckaert, 9 F.3d 1531, 1534 (Fed. Cir. 1993); In re Oelrich, 666 F.2d 578, 581-82 (CCPA 1981). "In relying upon the theory ofinherency, the examiner must provide a basis in fact and/ or technical reasoning to reasonably support the determination that the allegedly inherent characteristic necessarily flows from the teachings of the applied prior art." Ex parte Levy, 17 USPQ2d 1461, 1464 (Bd. Pat. App. & Inter. 1990). The Examiner has not provided a sufficient basis in fact or technical reasoning to support the determination embedding of the outer mesh in the resin matrix of the inner core necessarily flows from the teachings of Vallittu. In addition, regarding independent claim 11, from which claims 12- 18 depend, the Examiner makes no finding that Vallittu teaches an intermediate layer comprising "an interior portion of a second plurality of fibers intermixed with the exterior portion of the first plurality of fibers in the resin matrix." We therefore do not sustain Rejection III. Rejection IV Regarding claim 10, which recites embedding by virtue of its dependency on claim 1, the Examiner reasons that if V allittu does not inherently disclose an inner portion of its outer surface fibers being embedded in the core fiber resin matrix, then one skilled in the art would have found it obvious to have constructed Vallittu's prepreg with such embedding, so that the outer surface fibers "would not slide off of the core 7 Appeal2014-003748 Application 13/209,826 fibers 2, and so that the prepreg is in one complete solid piece such that it provides strength and stability to the dental restoration." Final Act. 5---6. Appellant argues that the Examiner's reasoning is flawed, because there is no reason to believe that Vallittu' s sheath would slide off its core, or that Vallittu's device is not already "one complete solid piece by virtue of applying a continuous resin matrix after the fibers are placed adjacent each other." Appeal Br. 6-7. We agree with Appellant. We find no evidence or suggestion in Vallittu that an additional step such as the claimed embedding is needed to make its prepreg a complete solid piece. Indeed, Vallittu refers only to curing its matrix to obtain a finished and usable product. See, e.g., Vallittu, col. 3, ll 51---62; col. 5, 11. 55---60; col. 6, 11. 11-12. Independent claim 11, and therefore dependent claims 12-18, recite intermixing of fibers, rather than embedding. The Examiner makes no finding regarding an intermixing of fibers. We therefore do not sustain Rejection IV. DECISION We AFFIRM the rejection of claims 10-18 under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. We REVERSE the rejection of claims 11-18 under 35 U.S.C. § 112, second paragraph, as indefinite. We REVERSE the rejection of claims 1-11 and 11-17 under 35 U.S.C. § 102(e) as anticipated by Vallittu. 8 Appeal2014-003748 Application 13/209,826 We REVERSE the rejection of claims 10-18 under 35 U.S.C. § 103(a) as unpatentable over Vallittu. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(l )(iv). AFFIRMED-IN-PART 9 Copy with citationCopy as parenthetical citation