11330513 (P.T.A.B. Dec. 31, 2014)

Ex Parte Rosenhahn et al

Patent Trial and Appeal BoardDec 31, 2014

11330513 (P.T.A.B. Dec. 31, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte CARSTEN ROSENHAHN, UDO KRAUTER, and RALF-GERHARD KONIG ____________________ Appeal 2013-001512 Application 11/330,513 Technology Center 1700 ____________________ Before PETER F. KRATZ, JEFFREY T. SMITH, and KAREN M. HASTINGS, Administrative Patent Judges. Opinion for the Board filed by SMITH, Administrative Patent Judge. Opinion Dissenting filed by Administrative Patent Judge KRATZ. DECISION ON APPEAL STATEMENT OF CASE Appellants appeal under 35 U.S.C. § 134 from the Examiner’s decision to reject claims 1–5, 8–11, and 26. We have jurisdiction under 35 U.S.C. § 6(b). Appeal 2013-001512 Application 11/330,513 2 Claims 1 and 26 illustrate the subject matter on appeal and are reproduced below: 1. A zinc ferrite pigment having an iron oxide (Fe2O3) content ≤66.4% by weight and a lithium content of at least 0.08% by weight. 26. A zinc ferrite pigment having an iron oxide (Fe2O3) content 63% by weight and a lithium content of at least 0.08% by weight. Appellants (Br. 7) request review of the following rejection from the Examiner’s Final Office Action: Claims 1–5, 8–11, and 26 rejected under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. OPINION We AFFIRM. The test for compliance with the written description requirement is “whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.” Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). “[T]he test requires an objective inquiry into the four corners of the specification from the perspective of a person of ordinary skill in the art. Based on that inquiry, the specification must describe an invention understandable to that skilled artisan and show that the inventor actually invented the invention claimed.” Id. “When no such description can be found in the specification, the only thing the PTO can reasonably be expected to do is to point out its Appeal 2013-001512 Application 11/330,513 3 nonexistence.” Hyatt v. Dudas, 492 F.3d 1365, 1370 (Fed. Cir. 2007) (citing In re Alton, 76 F.3d 1168, 1175 (Fed. Cir. 1996)). After the Examiner identified what was missing from the written description, the burden properly shifted to Appellants. Id. at 1371. Appellants have not met that burden. The Examiner found that the Specification, as originally filed, does not provide written description for the language in independent claims 1 and 26 specifying “iron oxide content”. Final Act. 2–3. The Examiner specifically stated in the December 16, 2010, Non-Final Action: The specification or claims as originally filed do not provide support for “iron oxide content”; in fact, the specification clearly recites “iron content” and no where there is found a recitation of “iron oxide content”. Example 1, in page 7, lines 22, clearly recites “an iron content of 63.8%” and an not iron oxide content. The Appellants, Br. 8, argue that “iron content” of the zinc ferrite pigments as used in the originally filed application refers to the amount of iron oxide content of the zinc ferrite pigments. And that this latter meaning is clearly understood by one skilled in the art in consideration of the standard stoichiometric calculations in comparison with the Appellants’ recited amounts or “iron content”. In support of this argument Appellants cited US Patent 2,904,395 (’395 patent) as demonstrating that what is meant by the Appellants’ use of “iron content,” is iron oxide content. Appellants argue the ’395 patent describes a reaction of Fe2O3 and ZnO leads to zinc ferrite and provides a measured iron oxide content (Fe2O3) of 66.8% for a zinc ferrite produced by the reaction (col. 3, line 28), wherein a 0.4% to 0.6% by weight excess of Appeal 2013-001512 Application 11/330,513 4 Fe2O3 over the stoichiometric amount is used (col. 2, lines 12–16). (Id. 8– 9). Appellants argue the description in the Specification appearing after the discussion of the ’395 patent is clear that when Appellants' mention an iron content of 66.6% by weight in their Application after discussing the ’395 patent, what is meant is iron oxide content. It being further understood that where Appellants then discuss the use of a substoichiometric amount of iron of less then 66%, the same cannot mean elemental iron in the zinc ferrite pigment per the standard reaction, since such a substoichiometric would have to be much less than 66% by weight. (Id. at 10). Thus, Appellants’ position is this evidence would convey to one with ordinary skill in the art that Appellants had possession on the application filing date of the claimed invention defined by the phrase “iron content” wherein the artisan would understand the phrase to mean “iron oxide content”. We do not agree. Even if one of ordinary skill in the art would have known that the ‘395 patent discloses the reaction of Fe2O3 and ZnO leads to zinc ferrite and to achieve a measured iron oxide content (Fe2O3) of 66.8% for a zinc ferrite produced by the reaction, wherein a 0.4% to 0.6% by weight excess of Fe2O3 over the stoichiometric amount is used, that does not indicate that the Appellants’ original disclosure shows possession of the description of iron oxide content. The Specification 2–3 provides the description of various recognized techniques for forming zinc ferrite pigments. Appellants have not directed us to evidence that only the technique disclose by the ‘395 patent could have been use to form zinc ferrite thus providing the specified iron content discussed in the Specification. Appeal 2013-001512 Application 11/330,513 5 For this reason, we agree with the Examiner that the appealed claims violate the written description requirement because the original disclosure would not convey to an artisan that Appellants on the application filing date had possession of the claim subject matter wherein the claim phrase “iron content” is considered to mean “iron oxide content” in accordance with Appellants’ argument. Hence, we are not persuaded of reversible error in the rejection under 35 U.S.C. § 112, first paragraph. Accordingly, we affirm the Examiner’s rejection of claims 1–5, 8–11, and 26 under 35 U.S.C. § 112, first paragraph, for the reasons presented above and in the Final Action and the Answer. ORDER The Examiner’s rejection of claims 1–5, 8–11, and 26 under 35 U.S.C. § 112, first paragraph as not complying with the written description requirement 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)(1). AFFIRMED lp UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte CARSTEN ROSENHAHN, UDO KRAUTER, and RALF-GERHARD KONIG ____________________ Appeal 2013-001512 Application 11/330,513 Technology Center 1700 ____________________ Before PETER F. KRATZ, JEFFREY T. SMITH, and KAREN M. HASTINGS, Administrative Patent Judges. KRATZ, Administrative Patent Judge, Dissenting I respectfully dissent from the Decision of the Majority to affirm the Examiner’s rejection. For reasons argued by Appellants, the Examiner has not established that the Specification, as filed, fails to reasonably convey to those skilled in the art that Appellants were in possession of the claimed subject matter pursuant to the written description requirement of 35 U.S.C. § 112, first paragraph (App. Br. 8–12). In particular, the Examiner has not carried the burden to establish how the Specification disclosures and Examples support the Examiner’s theory that the “iron content” values referred to in the Specification disclosures and Examples convey to an ordinarily skilled artisan that the iron content present in the zinc ferrite Appeal 2013-001512 Application 11/330,513 2 pigment is being reported as elemental iron weight percent as opposed to iron oxide weight percent. On the other hand, Appellants have substantiated their argument with the analyzed and referenced Specification citations and Examples and the citations to the corresponding disclosures of Downs concerning prior art zinc ferrite pigment iron oxide contents to evince how the iron content values being reported and claimed at in Appellants’ Specification would have conveyed to one of ordinary skill in the art that these iron content values associated with the zinc ferrite pigment were consonant with iron content values being reported as percent, by weight, iron oxide. The written description inquiry is a question of fact. Here, the Examiner has not carried the burden to establish how the evidence, taken as a whole, supports the Examiner’s lack of written description assertion. Accordingly, I do not join the Majority’s Decision affirming the Examiner’s rejection.