Ex Parte Ritchie

Patent Trial and Appeal Board

Apr 23, 2018

13966286 (P.T.A.B. Apr. 23, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/966,286 08/14/2013
11658 7590 04/25/2018
Seattle Patent Group
4020 148th Ave NE, Suite D
Redmond, WA 98052
FIRST NAMED INVENTOR
Anthony Ritchie
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
2011.0009.008 1047
EXAMINER
MORGAN, EMILY M
ART UNIT PAPER NUMBER
3677
NOTIFICATION DATE DELIVERY MODE
04/25/2018 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):
jlthaugen@seattlepatentgroup.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANTHONY RITCHIE
Appeal2017-006377
Application 13/966,286
Technology Center 3600
Before STEVEN D.A. McCARTHY, CHARLES N. GREENHUT, and
PAUL J. KORNICZKY, Administrative Patent Judges.
GREENHUT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from a rejection of claims
1-7. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
CLAIMED SUBJECT MATTER
The claims are directed to an SiC gemstone displaying a hearts and
arrows pattern. Claim 1, reproduced below, is illustrative of the claimed
subject matter:
1. An SiC gemstone displaying a hearts and arrows pattern,
compnsmg:
a crown portion, comprising:
a table cut perpendicular to a C-axis of the gemstone;
a plurality of crown main facets cut at an angle of between
31.81 and 32.01 degrees;
a plurality of crown girdle facets cut at an angle between
3 8.90 and 39 .10 degrees;
a plurality of star facets cut at an angle of between 21.3 6
and 21.56 degrees;
a pavilion portion, comprising:
a plurality of pavilion main facets cut at an angle of
between 40.60 and 40.80 degrees;
a plurality of pavilion girdle facets cut at an angle of
between 41.74 and 41.94; and
a girdle portion abutting the crown portion and extending
along a predetermined plane.
REJECTION
Claims 1-7 are rejected under 35 U.S.C. 103 as being unpatentable
over Heartsandarrows.com, in view of Nassau (Kurt Nassau et al, "Synthetic
Moissanite: A New Diamond Substitute," Gems & Gemology, pp. 260-275,
Winter 1997) and Weingarten (US 2012/0180525 Al, July 19, 2012).
OPINION
The Examiner has provided sufficient evidence and articulated
sufficient reasoning to demonstrate obviousness. We adopt the Examiner's
fact findings and reasoning in this regard (Non-final Act. 3-5) as our own.
2
See, e.g., In re Paulsen, 30 F. 3d 1475, 1478 n. 6 (Fed. Cir. 1994), accord In
re Cree, No. 2015-1365 n. 2 (Fed. Cir. Mar. 21, 2016). We also adopt as our
own the Examiner's analysis (Ans. 2, 5) concerning Appellant's incorrect
arguments that the Examiner did not articulate a reason or motivation to
produce the known pattern in a substitute diamond, and that there was no art
recognized problem of doing so (see App. Br 10-11).
Appellant's main argument against the case for obviousness set forth
by the Examiner involves the specific angle ranges recited for the various
facets in transparent silicon carbide ("SiC") gemstones. Rebuttal arguments
of this nature are discussed in MPEP § 2144.05(III) (emphasis added):
The law is replete with cases in which the difference between
the claimed invention and the prior art is some range or other
variable within the claims .... In such a situation, the applicant
must show that the particular range is critical, generally by
showing that the claimed range achieves unexpected results
relative to the prior art range. In re Woodruff, 919 F.2d 1575,
1578 (Fed. Cir.1990).
Although the PTO retains the ultimate burden of proving patentability vel
non (see, e.g., In re Oetiker, 977 F. 2d 1443, 1446 (Fed. Cir. 1992)), in these
situations, the applicant bears the burden of producing evidence to establish
any facts upon which the applicant relies to inform our judgement. In re
Scher!, 156 F.2d 72, 74--75 (CCPA 1946) (cited in MPEP § 2144.05); see
also MPEP § 716.02(b ). This is because the applicant, and not the PTO, is in
the best position to provide supporting evidence of any additional facts
relevant to the ultimate question of obviousness.
Here, Appellant has improperly attempted to substitute attorney
argument for such evidence. See MPEP § 716.0l(c). For example, Appellant
alleges unexpected results and skepticism of experts: "in this case, it was not
known that it was even possible to produce a hearts and arrows pattern in
3
SiC." App. Br. 9. If this were true, Appellant is in the best position to enter
evidence to establish that fact. See MPEP §§ 716.02, 716.05. This has not
been done. Appellant further alleges, "[t]hese are not measurements that are
easily found, even by one of ordinary skill in the art. It took Appellant
[substantial] experimenting." App. Br. 10, 11. Again, while if true, the
skepticism and failure of others skilled in the art is evidence of non-
obviousness (MPEP §§ 716.04, 716.05), there is no such evidence before us
to establish this. There is also no evidence to demonstrate the extensiveness
of Appellant's experiments. Ans. 4. Further, while such evidence, if present,
might establish both that the Appellant was a person of ordinary skill in the
art, and the Appellant toiled and experimented extensively, it must be
remembered that the obviousness inquiry under§ 103(a) is an objective,
rather than subjective one, viewed in light of the capabilities of a
hypothetical person of ordinary skill in the art, not necessarily the inventors
or applicants themselves. Thus, the specific amount of experimentation in
which Appellant engaged, without more, may be of little probative value.
CFMT, Inc. v. Yieldup Intern. Corp., 349 F. 3d 1333, 1340 (quoting
35 U.S.C. § 103 Revision Notes and Legislative Reports, 1952 Notes ("[I]t
is immaterial whether [the invention] resulted from long toil and
experimentation or from a flash of genius.") also quoting Life Techs., Inc. v.
Clontech Labs., Inc., 224 F.3d 1320, 1325 (Fed.Cir.2000) ("the path that
leads an inventor to the invention is expressly made irrelevant to
patentability by statute")).
Based on the totality of the record presently before us, which lacks
any evidence of the facts asserted by Appellant in the briefs, we conclude
that the Examiner's case for obviousness outweighs the case against
obviousness. Accordingly, we sustain the Examiner's rejection.
4
DECISION
The Examiner's rejection is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l.136(a). See 37 C.F.R.
§ l.136(a)(l )(iv).
AFFIRMED
5