Ex Parte ShepherdDownload PDFPatent Trial and Appeal BoardOct 30, 201412244550 (P.T.A.B. Oct. 30, 2014) Copy Citation 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. 12/244,550 10/02/2008 David E. Shepherd 0378-0002 2195 7590 10/30/2014 David E. Shepherd P.O. Box 1337 Munford, TN 38058 EXAMINER LU, JIPING ART UNIT PAPER NUMBER 3743 MAIL DATE DELIVERY MODE 10/30/2014 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 DAVID E. SHEPHERD ____________ Appeal 2012-009527 Application 12/244,5501 Technology Center 3700 ____________ Before JENNIFER D. BAHR, THOMAS F. SMEGAL and TIMOTHY J. GOODSON, Administrative Patent Judges. SMEGAL, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE David E. Shepherd (Appellant) seeks our review under 35 U.S.C. § 134 of the Examiner’s final rejection of claims 1−8 under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. We have jurisdiction under 35 U.S.C. § 6 (b). We AFFIRM. 1 According to Appellant, the real party in interest is Shepherd Systems, Inc. Br. 1. Appeal 2012-009527 Application 12/244,550 2 CLAIMED SUBJECT MATTER An understanding of the invention can be derived from a reading of independent claim 1, which is reproduced below. 1. A process for drying and cooling product having a starting temperature higher than ambient air temperature and a starting moisture content higher than a final moisture content, comprising: continuously feeding product in a first direction through a series of hopper sections including at least one drying section and at least one cooling section; moving air through product in a second direction generally opposite said first direction; and recirculating at least a portion of said air through said product in said at least one drying section, wherein said product comprises animal feed, said starting temperature is between about 160° F and about 205° F, and said starting moisture content is between about 15% and about 23%; wherein said portion of said air that is recirculated is introduced into said at least one cooling section, below said at least one drying section, and then flows through said at least one drying section; wherein an air flow through said cooling section is sufficiently low enough to cause an air temperature in said cooling section to be close to a product temperature in said drying section; and wherein an exhaust air temperature is at least about 35 °F higher than an exhaust dew point. Clms. App, Br. 18. ANALYSIS Rejection of claims 1−8 under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. We are not persuaded that the Examiner erred in finding that the original patent application, filed October 2, 2008, fails to provide the Appeal 2012-009527 Application 12/244,550 3 required written description support for recitation of “said starting moisture content is between about 15% and about 23%” and “an exhaust air temperature is at least about 35°F higher than an exhaust dew point,” as set forth in claim 12. Answer 6 (emphasis added). The purpose of the written description requirement in 35 U.S.C. § 112, first paragraph, is to “‘clearly allow persons of ordinary skill in the art to recognize that [the inventor] invented what is claimed.’” Ariad Pharm., Inc. v. Eli Lilly and Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc) (citing Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 156263 (Fed. Cir. 1991)). “[T]he test for sufficiency 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.” Id. (citations omitted). This test “requires an objective inquiry into the four corners of the specification from the perspective of a person of ordinary skill in the art.” Id. “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. This inquiry “is a question of fact.” Id. (citing Ralston Purina Co. v. Far-Mar-Co, 772 F.2d 1570, 1575 (Fed. Cir. 1985)). Appellant first argues that paragraph 14 of the Specification states, inter alia, that “[t]ypical pelleted products . . . may have a starting moisture content of between about 15% and about 18%” and that “[t]ypical extruded 2 The italicized language was added to claim 1 in the Amendment filed July 28, 2011. Appeal 2012-009527 Application 12/244,550 4 products . . . may have a moisture content of between about 19% and about 23%.” Br. 7. However, the Examiner points out “the newly added limitations . . . leave[s] a gap of 18% to 19% moisture content not accounted for. Nowhere in the specification does the appellant provide any description of the moisture contents fall within the gap of 18% to 19%” and “the newly added limitation of ‘said starting moisture content is between about 15% and about 23%’ constitutes new matter not supported by the original filed specification” Answer 6. We agree and further note that the 2 ranges referenced by Appellant are for different products, i.e., pelleted and extruded. Appellant argues, as support for the exhaust air temperature being “at least about 35°F higher than an exhaust dew point,” that paragraph 96 of the Specification states “relative humidity may be about 40%” and that “air may be raised to about 160 ͦ F,” further asserting that “[f]rom these humidity and air temperature values, one of ordinary skill in the art easily would be able to calculate the dew point and compare the difference between the dew point and the exhaust air temperature,” by employing a dew point calculator available on line, but not disclosed in the Specification. Br. 7. However, the test is not whether “one of ordinary skill in the art easily would be able to calculate the dew point” but whether there is adequate written support in the original disclosure for the limitation “an exhaust air temperature is at least about 35°F higher than an exhaust dew point.” Appellant does not identify the required written description support in the Specification in an effort to show Examiner error. In addition, we agree with the Examiner’s findings of fact at page 7 of the Answer where, inter Appeal 2012-009527 Application 12/244,550 5 alia, the Examiner also points out that the limitation “contains no upper limit”. Thus, even if a skilled artisan were to calculate dew point and exhaust air temperature from the disclosed values for relative humidity and air temperature, Appellant does not persuasively explain how the results would support the entire claimed range of “at least about 35°F higher.” Accordingly, we sustain the Examiner’s rejection of claims 1–8 under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. DECISION We AFFIRM the rejection of claims 18. 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)(1)(iv). AFFIRMED llw Copy with citationCopy as parenthetical citation