Ex Parte Mann et al

Patent Trial and Appeal Board

Sep 19, 2016

12480539 (P.T.A.B. Sep. 19, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/480,539 06/08/2009 Christopher A. Mann
26389 7590 09/21/2016
CHRISTENSEN O'CONNOR JOHNSON KINDNESS PLLC
1201 THIRD A VENUE
SUITE 3600
SEATTLE, WA 98101-3029
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.
26663 3581
EXAMINER
MINSKEY, JACOB T
ART UNIT PAPER NUMBER
1741
NOTIFICATION DATE DELIVERY MODE
09/21/2016 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):
efiling@cojk.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHRISTOPHER A. MANN, DAVID G. MARSH,
ROBERT T. HAMILTON, CHARLES E. MILLER, and
HARSHADKUMAR M. SHAH1
Appeal2015-004106
Application 12/480,539
Technology Center 1700
Before CHUNG K. PAK, JEFFREY T. SMITH, and
WESLEY B. DERRICK, Administrative Patent Judges.
DERRICK, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134(a) from the
Examiner's rejection2 of claims 1-8 and 19-23. 3 We have jurisdiction
pursuant to 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 According to Appellants, the Real Party in Interest is Weyerhaeuser NR
Company. Appeal Brief filed August 13, 2014 ("App. Br."), 3.
2 Office Action entered June 25, 2014.
3 Pending claims 9-18 stand withdrawn from consideration. Office Action
entered June 25, 2014 ("Office Act."), 1.
Appeal2015-004106
Application 12/480,539
CLAIMED SUBJECT MATTER
Appellants' claimed invention is generally directed to a cellulosic
wood pulp fiber particle having a hexagonal perimeter. Spec. Abstract.
Claim 1 is illustrative:
1. A cellulosic wood pulp fiber particle having two opposed
faces and a hexagonal perimeter, a major axis length of 4 to
8 mm, a width of 2 to 5 mm and a thickness of 0.1 mm to 4 mm.
App. Br. 26 (Claims Appendix).
REJECTIONS
The Examiner maintains the following rejections in the Examiner's
Answer entered December 17, 2014 ("Ans."):
Claims 1-8 and 19-23 under 35 U.S.C. § 103(a) as obvious over Fish
et al. (US 2008/0182104 Al, published July 31, 2008) ("the Fish
application").
Claims 1-8 and 19-23 on the ground of non-statutOf'J, obviousness-
type double patenting as unpatentable over the claims of Fish et al. (US
7,838, 111 B2, issued November 23, 2010) ("the Fish patent").
DISCUSSION
Having carefully reviewed the Examiner's rejections in light of
arguments advanced by Appellants in their Appeal and Reply Briefs,4 we are
persuaded that the Examiner erred reversibly in rejecting claims 1-8 and 19-
23 for non-statutory, obviousness-type double patenting and for rejecting
claims 21-23 under 35 U.S.C. § 103(a), but are unpersuaded that the
4 Reply Brief filed February 17, 2015.
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Examiner erred reversibly in rejecting claims 1-8, 19, and 20 under 35
U.S.C. § 103(a).
It follows that we affirm the rejection of claims 1-8, 19, and 20 under
35 U.S.C. § 103(a), but reverse the obviousness-type double patenting
rejection and the rejection of claims 21-23 under 35 U.S.C. § 103(a). We
add the following.
Rejection of Claims 1-8 and 19-23 as Obvious Over the Fish Application
Claims 1-5, 7, and 8
Appellants argue claims 1-5, 7, and 8 as a group on the basis of claim
1, to which we limit our discussion. App. Br. 11-22.
The Examiner finds that the Fish application discloses a cellulose pulp
particle with two opposed faced sides having 3 to 10 sides, and having a
thickness of 0.9-1.5 mm. Ans. 3. The Examiner acknowledges that the Fish
application does not explicitly disclose the length and width of the particle,
but the Examiner finds that the Fish application discloses that the base of the
particle has an area of 8 mm2 to 35 mm2. Ans. 5. Using the area disclosed
in the Fish application, the Examiner calculates the length of major and
minor axes of hexagons of this area having equal sides, and the Examiner
determines that the calculated lengths overlap the respective ranges for the
major axis and minor axis (width) recited in claim 1. Id.
The Examiner also acknowledges that the Fish application does not
provide an explicit example that is hexagonal, but determines that the
disclosure of a cellulose pulp particle having a base with 3 to 10 sides
"provides 'sufficient specificity' that the intent of Fish is to include the
shapes of a pentagon, hexagon, and other well-known shapes that would fall
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Application 12/480,539
into the 3-10 sided description." Ans. 4. The Examiner concludes that it
would have been obvious to one of ordinary skill in the art at the time of the
invention to select a hexagon as the preferred particle shape because it was
known in the art that hexagons are the highest-sided tessellable regular
polygon, providing the most strength in a formed object "by easily fitting in
with the surrounding particles and still being able to distribute weight in
multiple directions." Ans. 4, 14.
Appellants argue that the Examiner does not provide a showing that
the advantages attributable to a hexagonal shape are superior to the
advantages offered by other shapes, or that one of ordinary skill in the art
with knowledge of basic geometry would have recognized the asserted
advantages, because the Examiner fails to describe the context in which the
advantages would occur. App. Br. 19-22.
However, as the Examiner correctly finds, the Fish application
discloses cellulose pulp fiber particles with two parallel bases (two opposed
faces) having 3 to 10 sides (inclusive of hexagons having 6 sides). Ans. 3;
Fish application iii! 12, 22, 33, 36. The Examiner reasonably explains that
because hexagons were known in the art at the time of the invention to be
the highest-sided tessellable regular polygon, hexagons were known to have
particular advantages, including providing the most strength in a formed
object by easily fitting in with the surrounding particles while distributing
weight in multiple directions, thus leading one of ordinary skill in the art to
hexagonal cellulose pulp fiber particles as recited in claim 1. Ans. 4, 14.
Appellants' arguments do not dispute that the advantages of hexagons
identified by the Examiner were known in the art at the time of the
invention, and thus do not directly contest the Examiner's basis for the
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conclusion of obviousness. App. Br. 19-22. Instead, Appellants object to
the supposed lack of context provided for the asserted advantages of
hexagons. Id. However, such arguments fail to demonstrate reversible error
in the Examiner's determination that one of ordinary skill in the art would
have been led from the disclosures of the Fish application in view of the
state of the art to the claimed hexagonal cellulosic wood pulp fiber particle.
The Examiner provides a reasonable basis-tessellability leading to
advantageous properties-that would have prompted one of ordinary skill in
the art to utilize a hexagonal cellulosic wood pulp fiber. Ans. 4, 14. The
particular context in which one of ordinary skill in the art would have been
led to utilize a hexagonal pulp fiber particle from the disclosures of the Fish
application is immaterial, so long as the requisite articulated reasoning with
a rational underpinning as to why one skilled in the art would have been led
to utilize hexagonal particles is provided, as the Examiner has done in this
case, as discussed above. Ans. 4, 14. KSR Int? v. Teleflex, Inc., 550 U.S.
398, 420 (2007) ("Under the correct analysis, any need or problem known in
the field of endeavor at the time of invention and addressed by the patent can
provide a reason for combining the elements in the manner claimed") In re
Kronig, 539 F.2d 1300, 1304 (CCPA 1976) (Prior art teachings need not be
combined for the purposes or reasons contemplated by the appellants as long
as there is some motivation or suggestion in the applied prior art references
to arrive at the claimed subject matter.); In re Kahn, 441 F.3d 977, 988 (Fed.
Cir. 2006) (requiring "some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness") (cited with
approval inKSR Int'! Co. v. Teleflex Inc., 550 U.S. at 418). Accordingly,
Appellants' arguments are unpersuasive of reversible error.
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Appellants further argue that their Specification provides evidence of
the criticality of the hexagonal shape by demonstrating that hexagonal
fibrous particles can be metered and produced faster than particles of other
shapes. App. Br. 15-16. Appellants contend that the Examiner fails to
address the evidence of faster production, and assert that the Examiner's
conclusion that the evidence of faster feeding is unpersuasive is based on
faulty reasoning. App. Br. 16-19.
The law is replete with cases in which the difference between the
claimed invention and the prior art is some range or other variable within the
claims. These cases have consistently held that in such a situation, the
applicant must show that the particular range is critical, generally by
showing that the claimed range achieves unexpected results relative to the
prior art range. In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990). In
the present case Appellants fail to meet their burden of demonstrating
unexpected results, for at least the following reasons. In re Klosak, 455 F.2d
1077, 1080 (CCPA 1972) ("the burden of showing unexpected results rests
on he who asserts them")
With respect to faster production, Appellants' Specification states that
hexagonal particles "can be produced faster than a particle with a rectangular
or square circumference," (Spec. 6, 11. 2-3), and further indicates that "[i]n
one embodiment, hexagonal particles are produced at 1.6 time the rate of
square particles." Spec. 6, 11. 4-5. Appellants do not direct us to, nor do we
discern, any additional supporting disclosure in Appellants' Specification
regarding the production rate of hexagonal particles.
With respect to faster metering, Appellants' Specification similarly
states that hexagonal particles "can be metered faster than a particle with a
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rectangular or square circumference." Spec. 6, 11. 2--4. The Specification
further describes an experiment in which the metering rate of a hexagonal
particle was compared to that of square particles of two different sizes.
Spec. 6, 11. 6-16. Specifically, hexagonal particles having a 6.14 mm major
axis and a 3.36 minor axis, and square particles having lengths of either 2.38
mm or 3 .18 mm were metered through both twin and single screw feeders.
Spec. 6, 11. 7-10. For the twin screw feeder, 1.61 pounds/hour/rpm of
hexagonal particles were fed through the feeder, while 1.16
pounds/hour/rpm of the 2.38 mm square particles, and 0.905
pounds/hour/rpm of the 3 .18 mm square particles, were fed through the
feeder. Spec. 6, 11. 12-14. For the single screw feeder, 1.73
pounds/hour/rpm of the hexagonal particles were fed through the feeder,
while 0.45 pounds/hour/rpm of the 2.38 mm square particles, and 0.65
pounds/hour/rpm of the 3 .18 mm square particles, were fed through the
feeder. Spec. 6, 11. 14-16.
Having carefully considered the record, we find Appellants have
failed to establish that this narrow showing in the Specification provides
unexpected results across the entire scope of the cellulosic wood pulp fiber
particles recited in claim 1. App. Br. 13-19. With respect to faster
production, Appellants' Specification does not state the dimensions-length,
weight, or thickness-of the hexagonal particles said to be produced at 1.6
times the rate of square particles (Spec. 6, 11. 4-5), and the Specification,
thus, provides no indication that these hexagonal particles are even within
the scope of claim 1, much less demonstrates that the described production
rate was achieved for particles representative of hexagonal particles having
the length, width, and thickness recited in claim 1.
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With respect to faster metering, Appellants do not adequately explain
why the limited showing of hexagonal particles of a single size ( 6.14 mm
major axis and 3.36 mm minor axis), and indeterminate thickness that were
tested for metering rate provide any unexpected result reasonably
commensurate with the scope of the claims, which are not limited to
hexagons of the tested size and have a specified thickness. App. Br. 13-19.
In re Harris, 409 F.3d 1339, 1344 (Fed. Cir. 2005) ("Even assuming that the
results were unexpected, Harris needed to show results covering the scope of
the claimed range. Alternatively Harris needed to narrow the claims."); In
re Greenfield, 571F.2d1185, 1189 (CCPA 1978) ("Establishing that one (or
a small number of) species gives unexpected results is inadequate proof, for
'it is the view of this court that objective evidence of non-obviousness must
be commensurate in scope with the claims which the evidence is offered to
support.'") (quoting In re Tiffin, 448 F.2d 791, 792 (CCPA 1971)).
Moreover, Appellants do not direct us to any statement in the
Specification attesting to the unexpected nature of the production rate
provided in the Specification of a hexagonal particle relative to that of a
square particle, or to any statement in the Specification attesting to the
unexpected nature of the metering rate provided in the Specification of a
hexagonal particle relative to the two much smaller square particles that
were tested. App. Br. 13-19. Nor do Appellants direct us to any other
persuasive evidence or averment evincing that these results would have been
unexpected by one of ordinary skill in the art at the time of the invention,
other than providing unsupported attorney arguments that this would have
been the case. Id. See, e.g., In re Geisler, 116 F.3d 1465, 1471 (Fed. Cir.
1997) ("Geisler made no such assertion [that results were unexpected] in his
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application. Nor did Geisler submit any such statement through other
evidentiary submissions, such as an affidavit or declaration under Rule 132
... Instead, the only reference to unexpected results was a statement by
Geisler's counsel ... that Geisler's results were 'surprising."').
Therefore, Appellants do not meet their burden of demonstrating that
the claimed invention imparts unexpected results sufficient to rebut the
Examiner's prima facie case of obviousness. Accordingly, we sustain the
Examiner's rejection of claims 1-5, 7, and 8 under § 103 (a).
Claims 6, 19, and 20
The Examiner finds that the Fish application discloses that the
cellulose pulp fiber particle has a basis weight of 600-1000 g/m2,
overlapping the ranges recited in each of claims 6, 19, and 20, thus rendering
the subject matter of these claims prima facie obvious. Ans. 6, 16. In re
Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003) ("In cases involving
overlapping ranges, we and our predecessor court have consistently held that
even a slight overlap in range establishes a prima facie case of
obviousness."). The reasons underlying Appellants' assertion of the separate
patentability of claims 6, 19, and 20 are not clear from the Appeal Brief
because Appellants argue claims 6 and 19-23 as a group, and in so doing
dispute the Examiner's rationale for rejecting claims 21-23, rather than
disputing the Examiner's basis for rejecting claims 6, 19, and 20. App. Br.
23-24. Therefore, we sustain the Examiner's rejection of claims 6, 19, and
20 under§ 103(a).
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Claims 21-23
Claims 21-23 recite particles having a basis weight that is less than
500g/m2, thus excluding the particles having a basis weight greater than
500g/m2 included in claims 6, 19, and 20. The Examiner finds that because
paragraph 58 of the Fish application discloses that "the basis weight of the
pulp sheet will vary based on the type of pulp used and the method of
manufacturing," the basis weight of the pulp a result-effective variable.
Ans. 6 (citations omitted). However, we are persuaded by Appellants'
argument that the Examiner has failed to establish that there is a recognition
in the Fish application that the basis weight of the pulp is a variable that
affects a property or a result. App. Br. 23-24. In other words, the disclosure
in the Fish application that the basis weight of the pulp sheet varies with the
pulp type and method of manufacture does not establish that changing the
basis weight of the pulp sheet (the supposed variable) will affect some other
property or result, and thus does not establish that the basis weight of the
pulp is a result-effective variable. In re Applied Materials, Inc., 692 F.3d
1289, 1297 (Fed. Cir. 2012) ("A recognition in the prior art that a property
[or a result] is affected by the variable is sufficient to find the variable result-
effective.").
Accordingly, we do not sustain the Examiner's rejection of claims 21-
23 under§ 103(a).
Rejection of Claims 1-8 and 19-23 for Obviousness-type Double Patenting
The Examiner determines that claims 1-8 and 19-23 of the instant
application are not patentably distinct from the claims of the Fish patent in
view of the disclosures of the abstract and paragraphs 36, and 46 of the Fish
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patent. Ans. 7-10. However, we agree with Appellants that the Examiner
has failed to establish that instant claims 1-8 and 19-23 are not patentably
distinct from the claims of the Fish patent. 5 App. Br. 10-11.
The key question in any obviousness-type double patenting analysis
1s: "Does any claim in the application define merely an obvious variation of
an invention claimed in the patent asserted as supporting double patenting?"
General Foods Corp. v. Studiengesellschaft Kahle mbH, 972 F.2d 1272,
1278 (Fed. Cir. 1992) (discussing Jn re Vogel, 422 F.2d438 (CCPA 1970)).
An analysis analogous to an obviousness analysis under 35 U.S.C. § 103(a)
comes into play during the step of determining the obviousness of the
"difference" between the claimed invention and a patented invention. See
Studiengesellschaft Kahle mbH v. N. Petrochemical Co., 784 F.2d 351, 355
(Fed. Cir. 1986); In re Langi, 759 F.2d 887, 892-93 (Fed. Cir. 1985). The
Examiner may use the patent's Specification as a dictionary to determine the
meaning of terms in the patent's claim (In re Vogel, 422 F.2d at 441), but the
Examiner cannot use the patent's Specification as though it were prior art.
General Foods Corp., 972 F.2d at 1281.
In rendering the obviousness-type double patenting rejection, the
Examiner makes no mention whatsoever of the claims of the Fish patent, and
5 In addition to the substantive deficiencies of the obviousness-type double
patenting rejection argued by Appellants in the Appeal Brief, Appellants
argue other formal deficiencies in the obviousness-type double patenting
rejection render the rejection improper. App. Br. 8-10. However, we do not
address the formal deficiencies identified by Appellants because they are
reviewable by petition under 3 7 C.F .R. § 1.181, and are, therefore, not
within the jurisdiction of the Board. Ex Parte Frye, 94 USPQ2d 1072, 1078
(BP AI 2010) (precedential).
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instead relies solely on disclosures in the Fish patent's Specification. Ans.
7-10. Accordingly, the Examiner does not compare the claims of the Fish
patent to the instant claims to determine the differences between the claimed
invention and the invention claimed in the Fish patent, but instead uses the
Fish patent's Specification as though it were prior art, which is
impermissible. General Foods Corp., 972 F.2d at 1281. Thus, the
Examiner has failed to establish that instant 1-8 and 19-23 claims are not
patentably distinct from the claims of the Fish patent. Therefore, we do not
sustain the Examiner's non-statutory, obviousness-type double patenting
rejection of claims 1-8and19-23 under§ 103(a).
DECISION
In view of the foregoing, the Examiner's rejection of claims 1-8, 19,
and 20 under 35 U.S.C. § 103(a) is AFFIRMED.
The Examiner's rejection of claims 21-23 under 35 U.S.C. § 103(a) is
REVERSED, and the Examiner's rejection of claims 1-8 and 19-23 for non-
statutory, obviousness-type double patenting is REVERSED.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l.136(a)(l).
AFFIRMED-IN-PART
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