12620541 (P.T.A.B. Feb. 29, 2016)

Ex Parte Lytle et al

Patent Trial and Appeal BoardFeb 29, 2016

12620541 (P.T.A.B. Feb. 29, 2016)

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. 12/620,541 11/17/2009 Justin C. Lytle 99270-US2 1781 26384 7590 03/01/2016 NAVAL RESEARCH LABORATORY ASSOCIATE COUNSEL (PATENTS) CODE 1008.2 4555 OVERLOOK AVENUE, S.W. WASHINGTON, DC 20375-5320 EXAMINER ALANKO, ANITA KAREN ART UNIT PAPER NUMBER 1713 MAIL DATE DELIVERY MODE 03/01/2016 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 JUSTIN C. LYTLE, JEFFREY W. LONG, AMANDA JUNE BARROW, MATTHEW PAUL SAUNDERS, DEBRA R. ROLISON, and JENNIFER L. DYSART ____________ Appeal 2014-000540 Application 12/620,541 Technology Center 1700 ____________ Before ADRIENE LEPIANE HANLON, BEVERLY A. FRANKLIN, and KAREN M. HASTINGS, Administrative Patent Judges. FRANKLIN, Administrative Patent Judge. DECISION ON APPEAL Appellants seek our review under 35 U.S.C. § 134(a) of the Examiner’s decision rejecting claims 1–5 and 10. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). Appeal 2014-000540 Application 12/620,541 2 STATEMENT OF THE CASE Claim 1 is illustrative of Appellants’ subject matter on appeal and is set forth below (with text in bold for emphasis): 1. A method of fabricating a material comprising: plasma etching carbon paper in the presence of a gas containing O2 and H20; immersing said carbon paper in an oligomerized resorcinol-formaldehyde mixture until said carbon paper is impregnated with said mixture; placing said impregnated carbon paper between two glass slides; sealing said two slides such that the evaporation of said resorcinol-formaldehyde mixture from said carbon paper is slowed; curing said carbon paper hydrothermally at greater than one atmosphere of pressure at sea level; pyrolyzing said carbon paper to create a carbon nanofoam. App. Br. 6 (Claims Appendix). The Examiner relies on the following prior art reference in support of the § 112, first paragraph rejection: Nesco: Digital Pressure Cooker (model PC-6-25) Care/Use Guide (hereafter “Nesco User Manual”). THE REJECTION Claims 1–5 and 10 are rejected under 35 U.S.C. § 112(a) or 35 U.S.C. § 112 (pre-AIA), first paragraph, as failing to comply with the written description requirement. Appeal 2014-000540 Application 12/620,541 3 ANALYSIS We adopt the Examiner’s findings in the Answer and AFFIRM, and add the following for emphasis. We select claim 1 as representative of all the claims on appeal, based upon Appellants’ presented arguments. 37 C.F.R. § 41.37(c) (1) (iv). Appellants submit that the disclosure of a “pressure cooker” found in the original disclosure has the function of operating at an elevated pressure, and therefore written description support exists in the original disclosure for the claimed phrase “curing . . . at greater than one atmosphere of pressure at sea level”. Appeal Br. 3–4. Reply Br. 1–2. It is the Examiner’s position that the Specification specifically indicates that the use of a pressure cooker as disclosed in the original Specification is limited to the slow-cook setting mode, and thus there is no written descriptive support for operating at the claimed pressure of greater than one atmosphere (at sea level). The Examiner refers to paragraph [0051] of the Specification in this regard, which discloses that the slow cook setting is used. Final Act. 2–3. Ans. 4–5. Spec. para. [0051]. The Examiner also refers to the user manual for the Nesco Pressure Cooker that describes the slow cook setting whereby the pressure regulator knob is positioned at “VENT”. Ans. 4–5. Nesco User Manual, p. 8. As such, it is the Examiner’s position that the original disclosure lacks written description support for the aforementioned claimed phrase. In the Appeal Brief, Appellants argue that the Nesco User Manual supports the position that it is known to operate a pressure cooker at elevated temperatures, and refers to page 7 of this user manual in this regard. Appeal Br. 3–4. In the Reply Brief, Appellants reiterate that it is known that a Appeal 2014-000540 Application 12/620,541 4 pressure cooker has a function of operating at an elevated pressure. Reply Br. 2. Whether the written description requirement has been met is a question of fact, and is therefore evaluated by the preponderance of evidence. Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (“This inquiry, as we have long held, is a question of fact.”). “The purpose of the written description requirement,” the court has explained, “is to prevent an applicant from later asserting that he invented that which he did not; the applicant for a patent is therefore required to recount his invention in such detail that his future claims can be determined to be encompassed within his original creation.” Amgen Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1330 (Fed. Cir. 2003) (internal quote and citations omitted). In the instant case, while Appellants refer to the Nesco User Manual in an effort to show that one skilled in the art understands that a pressure cooker can operate in a mode that includes elevated pressure conditions, Appellants have not convinced us that there is written descriptive support in the Specification for this mode of operation, especially in view of the fact that paragraph [0051] discloses that this pressure cooker is operated in the slow cooking mode. Contrary to Appellants’ arguments, one of ordinary skill would have appreciated that the slow cooking mode means no pressure is applied (that is, the cooker in vented) as evidenced by the Nesco User manual. Also, as the Examiner points out, other disclosure indicates that the operation is in the slow cooking mode, and Appellants have not Appeal 2014-000540 Application 12/620,541 5 convincingly shown otherwise. Ans. 4. Hence, the preponderance of the evidence supports the Examiner’s decision. We thus affirm the rejection. DECISION The rejection is affirmed. TIME PERIOD 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). ORDER AFFIRMED