Ex Parte Wang et al

Patent Trial and Appeal Board

Apr 25, 2017

11562503 (P.T.A.B. Apr. 25, 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.
11/562,503 11/22/2006 Ping Wang TTC-37202/08ksm 9326
63796 7590 04/27/2017
DINSMORE & SHOHL LLP
P.O. BOX 7021
TROY, MI 48007-7021
EXAMINER
KUMAR, PREETI
ART UNIT PAPER NUMBER
1764
NOTIFICATION DATE DELIVERY MODE
04/27/2017 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):
docket@patlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PING WANG, MINJUAN ZHANG, HONGFEI JIA, ARCHANA
H. TRIVEDI, and MASAHIKO ISHII
Appeal 2015-003748
Application 11/562,5031
Technology Center 1700
Before ADRIENE LEPIANE HANLON, ROMULO H. DELMENDO, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.
DELMENDO, Administrative Patent Judge.
DECISION ON APPEAL
1 The Applicants (hereinafter “Appellants”) state that the real parties in
interest are: “Toyota Motor Engineering & Manufacturing North America,
Inc. and Toyota Motor Corporation” (Corrected Appeal Brief filed on
September 30, 2014, hereinafter “Appeal Br.,” 2).
Appeal 2015-003748
Application 11/562,503
The Appellants appeal under 35 U.S.C. § 134(a) from the Primary
Examiner’s final decision to reject claims 1—5, 7, and 11.2,3 We have
jurisdiction under 35 U.S.C. § 6(b). A hearing was held on April 20, 2017.
We affirm-in-part.
BACKGROUND
The subject matter on appeal relates to a “composition” including a
substrate and a digestive protein for decomposing a stain (e.g., bird
droppings) on a solid surface (e.g., an automobile surface) (Specification,
hereinafter “Spec.,” 1,11. 1—19; Abstract). Representative claim 1 is
reproduced from page 12 of the Appeal Brief (Claims Appendix), with key
disputed limitations highlighted in italicized text, as follows:
1. A composition for removing stains from a solid
surface comprising:
a digestive protein capable of decomposing stain forming
molecules,
a substrate applied to the solid surface, and
a linker moiety bound to an outer surface of said substrate
and an active group of said digestive protein, said linker moiety
between said protein and said substrate and covalently linking
said protein to a surface of said substrate,
said digestive protein forming a layer on a surface of said
substrate such that the digestive protein is surface exposed for
reaction with a stain.
2 Appeal Br. 2—11; Reply Brief filed on February 2, 2015, hereinafter “Reply
Br.,” 1^4; Final Office Action (notice emailed on March 31, 2014),
hereinafter “Final Act.,” 3—11; Examiner’s Answer (notice emailed on
December 22, 2013), hereinafter “Ans.,” 2—9.
3 The Appellants state, and the Examiner agrees, that claim 6 has been
canceled (Appeal Br. 3; Ans. 7). Therefore, claim 6 is not before us.
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Application 11/562,503
REJECTIONS ON APPEAL
The Examiner rejected the claims as follows:
I. Claims 1 and 5 under pre-AIA 35 U.S.C. § 112,11, as
failing to comply with the written description
requirement (Ans. 2; Final Act. 4—5);
II. Claim 5 under pre-AIA 35 U.S.C. § 112, 2, as
indefinite (Ans. 2; Final Act. 5);
III. Claims 1—5, 7, and 11 under pre-AIA 35 U.S.C. § 103(a)
as unpatentable over Dordick et al.,4 hereinafter
“Dordick” (Ans. 2—5; Final Act. 6—9); and
IV. Claims 1—5, 7, and 11 under pre-AIA 35 U.S.C. § 103(a)
as unpatentable over Powers et al.,5 hereinafter “Powers”
(Ans. 5—7; Final Act. 9—11).
DISCUSSION
Rejection I
With respect to claim 1, the Examiner finds that the recitations
“surface of said substrate,” “outer surface of said substrate,” and “digestive
protein is surface exposed” are not supported in the Appellants’ disclosure,
as originally filed (Final Act. 5; Ans. 2). With respect to claim 5, the
Examiner finds that “there is no support for [an] amide bond in the
[Specification as originally filed” (Final Act. 5; Ans. 2).
The Appellants disagree, contending that the originally-filed
descriptions corresponding to paragraphs 17, 18, and 29 and Figure 1 of the
published application (i.e., US 2008/0119381 Al, published on May 22,
4 US 6,291,582 Bl, issued on September 18, 2001.
5 US 6,342,386 Bl, issued on January 29, 2002.
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Appeal 2015-003748
Application 11/562,503
2008) support the disputed limitations recited in claim 1 (Appeal Br. 3—4).
Similarly, with respect to claim 5, the Appellants contend that the amide
bond is depicted in Figure 1 {id. at 4—5).
It is well-settled that “the test for sufficiency [of written description]
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 Pharm., Inc. v. Eli Lilly & Co.,
598 F.3d 1336, 1351 (Fed. Cir. 2010) (enbanc). To show possession, “the
specification must describe an invention understandable to [the] skilled
artisan and show that the inventor actually invented the invention claimed.”
Id. at 1351. Nevertheless, “the description requirement does not demand
any particular form of disclosure ... or that the specification recite the
claimed invention in haec verba . . . .” Id. at 1352 (internal citations
omitted).
Applying this test, we agree with the Appellants that the Examiner’s
rejection of claim 1 is not well-founded. Regarding claim 1, the
Specification describes the invention as relating to “a composition
comprising a substrate, a digestive protein capable of decomposing a stain
molecule, and a linker moiety” (Spec. 5,11. 17—19; published application,
129). The Specification further describes a preferred embodiment in which
a polymer layer having active groups is used as a substrate onto which a
suspension including digestive protein is spin coated to form covalent bonds
between the proteins and the polymer layer {id. at 4,11. 7—11; published
application, 118). According to the Specification (original claim 12;
Abstract), the substrate is bound to a surface to effect “self-cleaning.” These
disclosures reasonably convey to one skilled in the relevant art that the
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Application 11/562,503
inventors invented what is now claimed, including the disputed limitations
recited in claim 1.
As for claim 5, we also agree with the Appellants (Appeal Br. 8) that
Figure 1 describes an amide bond between a surface active group on the
substrate and the digestive protein. In this regard, the Specification plainly
describes that the covalent bonds between the digestive protein and the
substrate may be between free amine groups and an active group such as
carboxylic acid (Spec. 6,1. 19—7,1. 1; published application, 133).
For these reasons, we do not sustain Rejection I.
Rejection II
The Examiner states that, with respect to “amide” recited in claim 5,
“[tjhere is insufficient antecedent basis for this limitation in the claim”
(Final Act. 5; Ans. 2). The Appellants do not dispute the rejection on the
substantive merits (Appeal Br. 5). Rather, they request cancellation of claim
5 (id.).
Because the Examiner does not indicate that claim 5 has been
canceled (but instead states in the Answer at page 2 that the claim stands
rejected), we summarily affirm without reviewing the substantive merits.
Hyatt v. Dudas, 551 F.3d 1307, 1313-14 (Fed. Cir. 2008).
Rejections III & IV
The Appellants’ principal contention against the Examiner’s
rejections is that neither Dordick nor Powers teaches digestive protein
applied onto a substrate, which is applied to a solid surface to be treated
(Appeal Br. 6; Reply Br. 2—3). The Examiner responds that Dordick’s
Examples VII and VIII and Powers’s Examples 10 and 11 describe the
claimed structure (Ans. 8—9).
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Application 11/562,503
We agree with the Appellants. Both references are directed to
incorporating proteins into a plastic matrix—not providing proteins on a
substrate to be applied to a solid surface to be treated (Dordick, col. 17,11.
50-57, and col. 20,11. 32—34; Powers, col. 11,11. 49—52, and col. 12,11. 35—
39). Although the Appellants’ Specification discloses alternative
embodiments in which the digestive proteins may be entrapped in a coating
substrate (Spec. 4,11. 13—15; original claim 8, now canceled), claim 1 does
not encompass such alternative embodiments because claim 1 requires “the
digestive protein [to be] surface exposed for reaction with a stain.”
For these reasons, we cannot uphold Rejections III and IV.
SUMMARY
Rejections I, III, and IV are reversed. Rejection II is affirmed.
Therefore, the Examiner’s final decision to reject claims 1—5, 7, and 11 is
affirmed as to claim 5 but reversed as to claims 1—4, 7, and 11.
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-IN-PART
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