2020004238 (P.T.A.B. Dec. 27, 2021)

Titan Wood Limited

Patent Trials and Appeals BoardDec 27, 2021

2020004238 (P.T.A.B. Dec. 27, 2021)

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. 14/376,818 08/05/2014 Bernardus Jozef Maria Pol VER1-PAU07NS 5847 97066 7590 12/27/2021 Innovation Capital Law Group, LLP 19800 MacArthur Blvd. Suite 280 Irvine, CA 92612 EXAMINER WIECZOREK, MICHAEL P ART UNIT PAPER NUMBER 1712 NOTIFICATION DATE DELIVERY MODE 12/27/2021 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): eofficeaction@appcoll.com processing@icaplaw.com vlin@icaplaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte BERNARDUS JOZEF MARIA POL, JONATHAN PHILIP ALEXANDER, and HENDRIKUS PETRUS MARIA BONGERS Appeal 2020-004238 Application 14/376,818 Technology Center 1700 Before LINDA M. GAUDETTE, JULIA HEANEY, and JENNIFER R. GUPTA, Administrative Patent Judges. HEANEY, Administrative Patent Judge. DECISION ON REHEARING STATEMENT OF THE CASE Appellant1 submitted a timely request for rehearing (“Request”) of the original Decision in this Appeal (“Decision”) in which we affirmed the Examiner’s decision to reject claims 1, 3, 5–11, and 16–18. We have jurisdiction under 35 U.S.C. § 6(b). 1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real parties in interest as Accsys Technologies PLC and Titan Wood Limited. Appeal Br. 4. Appeal 2020-004238 Application 14/376,818 2 In the Request, Appellant contends (1) we misapprehended paragraph 22 of Girotra as it relates to preferred moisture content percent by weight; (2) our misapprehension of Girotra ¶ 22 led us to misapprehend Appellant’s showing as to criticality of moisture content; and (3) a person of ordinary skill in the art would not have been motivated to combine Hirano2 with Girotra. Request 11–13. We have reviewed the Request and considered Appellant’s arguments. For the reasons discussed below, we deny Appellant’s request to modify our Decision. OPINION A request for rehearing must state with particularity the points believed to have been misapprehended or overlooked by the Board. Arguments not raised in the Briefs before the Board and evidence not previously relied on in the Briefs are not permitted in a request for rehearing except as provided in 37 C.F.R. § 41.52(a)(2) through (a)(4). 37 C.F.R. § 41.52(a)(1)(2016). Girotra’s Teaching of Moisture Content in Step(a) Appellant argues that our finding that Girotra teaches moisture content is “desirably less than 8% by weight” and therefore overlaps the moisture content in step (a) of appealed claim 1 is based on a misapprehension of Girotra. Request 11–12 (citing Girotra ¶ 22). Specifically, Appellant argues Girotra’s teaching of preferred values “desirably less than 8% by weight” in paragraph 22 is limited by the range 2 The Request refers to “Hirotra” (Request 13), although it appears Appellant intended to refer to Hirano. Appeal 2020-004238 Application 14/376,818 3 of “moisture content of 6% to 20% by weight” disclosed in Girotra ¶ 16, because Girotra ¶ 22 refers back to Girotra ¶ 16. Id. Thus, Appellant argues, Girotra ¶ 22’s range of “desirably less than 8% by weight” “implies a range of 6% to less than 8%.” Id. at 12. Appellant’s argument does not persuade us that we misapprehended Girotra ¶ 22’s teaching of preferred moisture content by weight. Appellant’s argument that the preferred values in ¶ 22 must also comply with the range in ¶ 16 because “[a]ny other reading would not make sense” (Request 12) is unsupported by evidence. In the Decision, we considered the teaching of Girotra ¶ 22 within the context of step (a) (as recited in Girotra ¶ 16) and found that Girotra does not specifically limit the moisture content in step (a) to 6 to 20% by weight. Dec. 6. Girotra supports our finding, and Appellant does not point to anything supporting its contention that the only reasonable interpretation of Girotra ¶ 22’s range would be to limit it the range of 6% to less than 8%. Girotra is relevant for all it discloses to a person of ordinary skill in the art, including the disclosures of both ¶ 16 and ¶ 22. Criticality Appellant argues, based on its contention that Girotra’s moisture content “cannot extend to values below 6%” (Request 13), that with respect to comparing the results from the single result at 2.8% moisture content in the Specification, “the claims[’] range of 1%–4% is so clearly set apart from the disclosed range of 6%–8% that the comparison as made is most likely representative for a comparison of said two ranges.” Id. Appellant’s argument is not persuasive because, as discussed above, we do not agree that Girotra’s disclosure of moisture content is limited to values of 6% or greater. Further, even if it were, our determination in the Appeal 2020-004238 Application 14/376,818 4 Decision that Appellant did not demonstrate criticality was based on additional findings, such as Appellant’s Example 1 describing a single process having a specific temperature, pressure, and time duration and none of the other temperature, pressure, and time conditions within the ranges recited in claim 1. See Dec. 8. Accordingly, we do not agree that we misapprehended or overlooked material evidence related to criticality of moisture content. Hirano Appellant argues Hirano “is not relevant at all” because it discloses a different acetylation process than claim 1 and Girotra (i.e., Hirano employs gaseous acetylation fluid, rather than inert circulating fluid), and does not teach that its low moisture content provides for higher acetyl content of the final product. Request 13. Appellant further argues that Hirano’s teaching of moisture content of “3% or less and preferably 1% or less” teaches toward lower moisture content than appealed claim 1. Appellant’s arguments essentially are the same as those that Appellant presented in the Appeal Brief and Reply Brief. We do not find these repeated arguments persuasive for the reasons discussed in the Decision. As we explained in the Decision, it is not necessary that the prior art suggests the same advantage or result discovered by Appellant. See, e.g., In re Kahn, 441 F.3d 977, 987 (Fed. Cir. 2006) (discussing that motivation arises in the context of the general problem confronting the inventor rather than the specific problem solved by the invention). Further, to the extent Appellant is arguing that a person of ordinary skill would not have combined Hirano’s acetylation process with Girotra because Hirano does not employ an inert circulating fluid, Appellant’s argument is not supported by evidence. Appeal 2020-004238 Application 14/376,818 5 Finally, Appellant’s argument that Hirano teaches away from the range of moisture content recited in claim 1 is not persuasive because Appellant has not shown that Hirano criticizes or discourages investigation into the claimed range of moisture content. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (prior art does not teach away from claimed subject matter merely by disclosing a different solution to a similar problem unless the prior art also criticizes, discredits, or otherwise discourages the solution claimed). CONCLUSION Appellant’s Request for Rehearing is denied, and the Decision is not modified in any respect. This Decision on the Request for Rehearing incorporates our Decision, mailed July 29, 2021, and is final for the purposes of judicial review. See 37 C.F.R. § 41.52(a)(1). DECISION SUMMARY Outcome of Decision on Rehearing: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Denied Granted 1, 3, 5, 7– 11, 16–18 103 Girotra, Hirano 1, 3, 5, 7– 11, 16–18 6 103 Girotra, Hirano, Mykytka 6 Overall Outcome 1, 3, 5–11, 16–18 Appeal 2020-004238 Application 14/376,818 6 Final Outcome of Appeal after Rehearing: DECISION SUMMARY Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 3, 5, 7– 11, 16–18 103 Girotra, Hirano 1, 3, 5, 7– 11, 16–18 6 103 Girotra, Hirano, Mykytka 6 Overall Outcome 1, 3, 5–11, 16–18 DENIED