Ex Parte Rue et al

Patent Trial and Appeal Board

Jul 26, 2018

13030173 (P.T.A.B. Jul. 26, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/030, 173 02/18/2011
42419 7590 07/30/2018
PAULEY ERICKSON & KOTTIS
2800 WEST HIGGINS ROAD
SUITE 365
HOFFMAN ESTATES, IL 60169
FIRST NAMED INVENTOR
DavidM. Rue
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.
GTI-1804 2135
EXAMINER
SZEWCZYK, CYNTHIA
ART UNIT PAPER NUMBER
1741
NOTIFICATION DATE DELIVERY MODE
07/30/2018 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):
mswanson@ppelaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID M. RUE, V. WALTER KUNC,
JOHN CHARLES WAGNER and CHUN W. CHOI
Appeal2017-009846
Application 13/030, 173 1
Technology Center 1700
Before JEFFREY T. SMITH, MICHAEL P. COLAIANNI, and
MERRELL C. CASHION, JR., Administrative Patent Judges.
SMITH, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134 from the non-final rejection
of claims 1, 3, 5, 6, 8, 23, 26, 32, 34, and 37. 2 We have jurisdiction under
35 U.S.C. § 6.
Appellants' invention relates generally to a method for removing
gaseous inclusions from a viscous liquid such as molten glass. (Spec. Jr 2).
1 Gas Technology Institute is the real party in interest. (See Appeal Br. 2).
2 The Examiner has indicated claims 4 and 33 have allowable subject matter.
These claims have been objected to because they depend from the rejected
base claim. (Non-Final Act. 3).
Appeal2017-009846
Application 13/030, 173
Independent claim 1 is representative of the appealed subject matter and is
reproduced below:
1. A method for removing gaseous inclusions from a
viscous liquid comprising the steps of:
introducing a viscous liquid stream having gaseous inclusions
into a refining chamber, resulting in a flowing viscous liquid
layer;
from below said viscous liquid layer introducing upstream heat
from a heating means into a bottom portion of said viscous
liquid layer to heat said bottom portion of said viscous liquid
layer to a temperature in a range of about 100°F to about 300°F
higher than an average bulk viscous liquid temperature in a first
refining zone in said refining chamber, said refining chamber
having a floor and said introducing heat into said bottom
portion of said viscous liquid layer comprises heating of
refractory metal or layered refractory metal surfaces on the
refining chamber floor with the heating means being completely
below the refining chamber floor, said heat introduction
reducing a viscosity of said bottom portion of said viscous
liquid layer compared with a top portion of said viscous liquid
layer in said first refining zone; and producing an upwardly
mobile reduced viscosity portion of said viscous liquid layer;
introducing downstream heat into said viscous liquid layer from
above said viscous liquid layer in a second refining zone in said
refining chamber downstream of said first refining zone,
reducing said gaseous inclusions in said viscous liquid; and
discharging said viscous liquid layer from said refining
chamber.
(Appeal Br. 14 (Claims App'x)).
Appellants (see generally Appeal Br.) request review of the rejection
claims 1, 3, 5, 6, 8, 23, 26, 32, 34, and 37 under 35 U.S.C. § 112, first
paragraph, as failing to comply with the enablement requirement. The
2
Appeal2017-009846
Application 13/030, 173
complete statement of the rejection on appeal appears in the Non-Final
Office Action. (Non-Final Act. 2).
OPINION
Rejection under 35 USC§ 112,first paragraph (enablement requirement)
We REVERSE.
A specification complies with the 35 U.S.C. § 112, first paragraph,
enablement requirement if it allows those of ordinary skill in the art to make
and use the claimed invention without undue experimentation. See In re
Wright, 999 F.2d 1557, 1561 (Fed. Cir. 1993); Atlas Powder Co. v. E.I. du
Pont De Nemours & Co., 750 F.2d 1569, 1576 (Fed. Cir. 1984). Factors to
be considered in determining whether a disclosure would require undue
experimentation "include (1) the quantity of experimentation necessary,
(2) the amount of direction or guidance presented, (3) the presence or
absence of working examples, ( 4) the nature of the invention, ( 5) the state of
the prior art, ( 6) the relative skill of those in the art, (7) the predictability or
unpredictability of the art, and (8) the breadth of the claims." In re Wands,
858 F.2d 731, 737 (Fed. Cir. 1988).
The Examiner, in support of the rejection, asserts the Specification
does not reasonably provide enablement for the broad category of materials
covered by "viscous liquid". The Examiner specifically states:
[T]he specification does not enable any person skilled in the art
to which it pertains, or with which it is most nearly connected,
to use the invention commensurate in scope with these claims.
The originally filed specifications only includes embodiments
of removing gaseous inclusions from a molten glass, however
the term "viscous liquid" covers a broad category of materials
which are not supported by the specification.
(Non-Final Act. 2).
3
Appeal2017-009846
Application 13/030, 173
The Examiner, for the first time in the Answer, identifies two court
decisions: 1) In re Goodman 3 and 2) Glaxo Well come, Inc. v. lmpax
Laboratories, Inc. 4 to support the rejection. (Ans. 2). However, the
Examiner does not direct us to specificportions of the decisions cited or
provide adequate analysis as to the relevance of these decisions.
During examination, the Examiner bears the initial burden of
establishing a prima facie case of unpatentability whether the rejection is
based on prior art or any other ground. See In re Oetiker, 977 F.2d 1443,
1444 (Fed. Cir. 1992), citing In re Piasecki, 745 F.2d 1468, 1472 (Fed. Cir.
1984).
We agree with Appellants that the Examiner's citation and reliance on
the noted court decisions without further explanation and analysis is
insufficient evidence and does not properly support consideration by the
Examiner of the factors outlined in In re Wands such as the nature of the
invention; the state of the prior art; the level of one of ordinary skill; and the
level of predictability in the art. (Reply Br. 5). The Examiner has not
adequately explained why a person of ordinary skill in the art would not
understand the parameters or scope of the phrase "viscous liquid". Thus, the
Examiner has not provided an adequate explanation why this disclosure of
the Specification does not enable one skilled in the art to make or use the
invention.
Accordingly, we reverse the rejection under 35 U.S.C. § 112, first
paragraph, for the reasons presented by Appellants and given above.
3 11 F.3d 1046 (Fed.Cir. 1993)
4 356 F.3d 1348 (Fed. Cir. 2004)
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Appeal2017-009846
Application 13/030, 173
ORDER
The rejection of claims 1, 3, 5, 6, 8, 23, 26, 32, 34, and 37 under 35
U.S.C. § 112, first paragraph, is reversed.
REVERSED
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