13700622 (P.T.A.B. Feb. 22, 2017)

Ex Parte Nishiyama et al

Patent Trial and Appeal BoardFeb 22, 2017

13700622 (P.T.A.B. Feb. 22, 2017)

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. 13/700,622 02/06/2013 Yoshitaka Nishiyama P23331US00 6995 38834 7590 02/24/2017 WESTERMAN, HATTORI, DANIELS & ADRIAN, LLP 1250 CONNECTICUT AVENUE, NW SUITE 700 WASHINGTON, DC 20036 EXAMINER RODD, CHRISTOPHER M ART UNIT PAPER NUMBER 1766 NOTIFICATION DATE DELIVERY MODE 02/24/2017 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): patentmail @ whda.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte YOSHITAKA NISHIYAMA, HIROYUKI TANAKA, SATOSHI SUGIYAMA, and TAKAO MANABE Appeal 2016-003235 Application 13/700,622 Technology Center 1700 Before BEVERLY A. FRANKLIN, KAREN M. HASTINGS, and SHELDON M. McGEE, Administrative Patent Judges. HASTINGS, Administrative Patent Judge DECISION ON APPEAL Appeal 2016-003235 Application 13/700,622 Appellants appeal under 35 U.S.C. § 134 from the Examiner’s decision rejecting claims 1—8 and 10—21 under 35 U.S.C. § 102(b) as being anticipated by either one of Manabe et al., (US 2010/0099790 Al, published Apr. 22, 2010; hereinafter “Manabe ‘790”) of Manabe et al., (JP 2010- 095616, published 04-30-2010, as translated; hereinafter “Manabe ‘616”).1 We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b). We AFFIRM. Appellants do not separately argue any of the claims in each of the § 102(b) rejections, and treat both rejections similarly (App. Br. 5—9)2. Claim 1 is representative and is reproduced in the “Claims Appendix” of Appellants’ Brief {id. at 11). Upon consideration of the evidence on this record and each of Appellants’ contentions, we find that the preponderance of evidence favors the Examiner’s finding and conclusion that the subject matter of Appellants’ claims is anticipated by Manabe. Accordingly, we affirm the Examiner’s rejection of the claims on appeal for the reasons set forth in the Answer, which we incorporate herein by reference. We provide the following for emphasis only. Appellants’ principal argument is that Manabe does not describe the use of “an organopolysiloxane that contains at least two alkenyl groups in a molecule” 1 The Examiner made a new ground of rejection based on obviousness-type double patenting in the Answer that Appellants have overcome with a terminal disclaimer filed Jan. 28, 2016 (Ans. 12, 13; Reply Br. 8). 2 For each rejection, the Examiner relies upon similar disclosures in each reference. There is no dispute with the Examiner’s finding that Manabe ‘616 discloses the same list as Manabe ‘790 that is the focus of the issue on appeal (Ans. 15; App. Br., Reply Br. generally). Thus, we will collectively refer to the references as “Manabe”. 2 Appeal 2016-003235 Application 13/700,622 as recited in claim 1 clause (B) with sufficient specificity to constitute anticipation under 35 U.S.C. § 102(b) (App. Br. 5, 6; Reply Br. 1, 2). Appellants contend that “the mere mention of several specific examples of an organopolysiloxane containing an aryl group among a long list of other options” (App. Br. 9) means that Manabe does not anticipate the claims (App. Br. 3—6; Reply Br. 2, 3), and that the disclosures of the Manabe references are non-enabling for the claimed invention (App. Br. 6—9; Reply Br. 5—8). We disagree. The Examiner’s position that Manabe’s explicit listing is sufficient description to anticipate the claimed subject matter is reasonable (e.g., Ans. 15, 16). Cf. In re Gleave, 560 F.3d 1331, 1333 (Fed. Cir. 2009). (In Gleave, the Federal Circuit expressly addressed the issue of lists of large numbers of compounds, where the “list includes more than 1400 sequences.” The Court, found that “Wraight expressly lists every possible fifteen-base-long oligodeoxynucleotide sequence in IGFBP-2, and under our precedent, this list anticipates Gleave's claims.” Id. at 1338). See also Perricone v. Medicis Pharm. Corp. 432 F.3d 1368, 1376 (Fed. Cir. 2005) (“This court rejects the notion that one of [14 listed] ingredients cannot anticipate because it appears without special emphasis in a longer list.”). It is well settled that prior art under 35 U.S.C. § 102(b) must be “enabling”, i.e., it “must sufficiently describe the claimed invention to have placed the public in possession of it.” In re Donohue, 766 F.2d 531, 533 (Fed. Cir. 1985). “Such possession is effected if one of ordinary skill in the art could have combined the publication's description of the invention with his own knowledge to make the claimed invention.” Id. A reference is presumed to be enabling and therefore, once the examiner establishes that 3 Appeal 2016-003235 Application 13/700,622 the reference teaches each and every limitation of the claimed invention, the burden shifts to the applicants to prove the reference is not enabling. Enablement is a question of law based on underlying factual findings. In re Antor Media Corp., 689 F.3d 1282, 1287 (Fed.Cir.2012). “[A] prior art printed publication cited by an examiner is presumptively enabling barring any showing to the contrary by a patent applicant or patentee.” Id. at 1288. When the applicant challenges enablement, however, the Board must “thoroughly revie[w]” all evidence and applicant argument to determine if the prior art reference is enabling. Id. at 1292. “In order to anticipate, a prior art disclosure must also be enabling, such that one of ordinary skill in the art could practice the invention without undue experimentation. The standard for enablement of a prior art reference for purposes of anticipation under section 102 differs from the enablement standard under 35 U.S.C. § 112.” Novo Nordisk Pharms., Inc. v. Bio-Tech. Gen. Corp., 424 F.3d 1347, 1355 (Fed. Cir. 2005) (internal citations omitted). While section 112 states that the specification must enable one skilled in the art to ‘use’ the invention, “section 102 makes no such requirement as to an anticipatory disclosure .... Rather, anticipation only requires that those suggestions be enabled to one of skill in the art.” “Whether a prior art reference is enabling is a question of law based upon [the] underlying factual findings.” Id. (internal citations omitted.) It has also been held that “proof of efficacy is not required for a prior art reference to be enabling for purposes of anticipation.” Impax Labs. Inc. v. Aventis Pharms. Inc., 468 F.3d 1366, 1383 (Fed. Cir. 2006). “Rather, the proper issue is whether the . . . patent is enabling in the sense that it 4 Appeal 2016-003235 Application 13/700,622 describes the claimed invention sufficiently to enable a person of ordinary skill in the art to carry out the invention.” Id. at 1383. In light of these guiding principles, we have reviewed Appellants’ argument regarding enablement of Manabe (App. Br. 6—9, Reply Br. 5—8). We conclude that a preponderance of the evidence supports the Examiner’s detailed position that Manabe has an enabling disclosure, contrary to Appellants’ position (see Ans. 17—29 for the Examiner’s thorough analysis in support of enablement). Cf. In reMorsa, 713 F.3d 104, 109 (Fed. Cir. 2013). On this record, Appellants do not provide any factual evidence to support their arguments that Manabe is non-enabling (Briefs, generally). An attorney’s arguments in a brief cannot take the place of evidence. In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974). Furthermore, an artisan must be presumed to know something about the art apart from what the reference discloses. Cf. In rePreda, 401 F. 2d 825, 826 (CCPA 1968) (In determining whether a reference anticipates the subject matter recited in a claim, “it is proper to take into account not only specific teachings of the reference but also the inferences which one skilled in the art would reasonably be expected to draw therefrom.”). After all, “[a] person of ordinary skill is also a person of ordinary creativity, not an automaton.” KSR Int’l. Co. v. Teleflex Inc., 550 U.S. 398,421 (2007). Accordingly, the preponderance of the evidence supports the Examiner’s § 102(b) rejections. 5 Appeal 2016-003235 Application 13/700,622 TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). ORDER AFFIRMED 6