CP Packaging LLC v. Patent of Multivac Inc., Appeal 2018-002978
| Decision Date | 31 August 2018 |
| Docket Number | 200,Inter partes Reexamination Control 95/002,Appeal 2018-002978 |
| Parties | CP PACKAGING, LLC Appellant, Third Party Requester [1] v. Patent of MULTIVAC, INC. Respondent, Patent Owner Ex parte Reexamination Control 90/012, 374 Patent U.S. 7, 922, 614 B2 Technology Center 3900 |
| Court | United States Patent and Trademark Office. United States Patent and Trademark Office, Patent Trial and Appeal Board |
FILING DATE 06/22/2012
Before STEVEN D.A. McCARTHY, BRETT C. MARTIN and JON M. JURGOVAN Administrative Patent Judges.
NEW DECISION UNDER 37 C.F.R. § 41.77(f)
MCCARTHY, ADMINISTRATIVE PATENT JUDGE.
We specifically WITHDRAW the new grounds of rejection entered against claims 1, 21 and 23 in our Final Decision, mailed May 19, 2016 ("Prior Board Decision").
We enter NEW GROUNDS OF REJECTION against claim 21 under pre-AIA 35 U.S.C. § 112, second paragraph, for indefiniteness.
We enter NEW GROUNDS OF REJECTION against claims 1 and 21 under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over either Lovas (US 3, 303, 628, issued Feb. 24, 1967) or Hepner (US 3, 029, 007, issued Apr. 10, 1962) and Petershack (US 4, 353, 459, issued Oct. 12, 1982).
We AFFIRM the Examiner's decision not to adopt the remaining grounds of rejection proposed by the Requester in this proceeding, albeit, in some instances, for reasons other than those articulated by the Examiner.
This is an appeal in a merged reexamination proceeding combining Inter partes Reexamination Control 95/002, 200 and Ex parte Reexamination Control 90/012, 374. In the Prior Board Decision, the Board reversed the Examiner's decision favorable to the patentability of claims 1, 21 and 23; and entered new grounds of rejection against those claims under pre-AIA 35 U.S.C. § 102(e)[3] as being anticipated by Buchko '114 (US 7, 575, 114 B2, issued Aug. 18 2009).[4] In addition, the Board affirmed the Examiner's decision not to adopt proposed rejections of claims 5-7 and 24. The Board did not reach the remaining grounds of rejection proposed by the Requester against claims 1, 21 and 23.
In the wake of the Prior Board Decision, the Patent Owner filed "Patent Owner's Response to the May 19, 2016 Decision on Appeal and Request to Reopen Prosecution," dated June 8, 2016 ). The Request to Reopen sought to amend claims 1, 21 and 23 to overcome the new grounds of rejection. The Requester, in "Appellant and Third Party Requester CP Packaging, LLC's Comments on Patent Owner's Request to Reopen Prosecution," dated July 13, 2016 ), opposed the re-opening of prosecution. The amendments to claims 1, 21 and 23 were entered, and the proceeding was remanded to the Examiner, in an "Order Remanding Inter partes Reexamination to the Examiner under 37 C.F.R. § 41.77(d)," mailed April 6, 2017 ("Order Reopening Prosecution").
The Requester also proposed new grounds of rejection of amended claims 1, 21 and 23 in the Requester's Comments on the Request to Reopen. Although it does not say so expressly, 37 C.F.R. § 41.77(c) permitted the Requester to include in the comments "new evidence and arguments directed towards amended or new claims if necessitated by [P]atent [O]wner's submission under 37 CFR 41.77(b)(1)." Manual of Patent Examining Procedure § 2682 II.B.2. (Aug. 2017). Hence, 37 C.F.R. § 41.77(c) authorized the Requester to propose the new rejections.
In an "Examiner's Determination pursuant to 37 C.F.R. 41.77(d)," mailed July 5, 2017 ("Determination"), the Examiner "determine[d] that . . . amendments to claims 1, 21 and 23 on [June 8, 2016] by the Patent Owner [overcame] the PTAB's new ground of rejection as being anticipated by Buchko ['114]." (Determination 3). Having reached that determination, the Examiner did not address new grounds of rejection proposed in the Requester's Comments on the Request to Reopen. The Requester responded to the Determination with the "Appellant and Third Party Requester CP Packaging, LLC's Comments on Examiner's Determination," dated August 7, 2017 ("Req'r Comm. on Determination"). The Patent Owner responded with "Patent Owner's Reply to Third Party Requester's Comments on the Examiner's Determination," dated September 7, 2017 ("PO Reply to Req'r Comm. on Determination").
The proceeding has returned to the Board for issuance of a New Decision under 37 C.F.R. § 41.77(f). Because this merged proceeding includes an inter partes reexamination requested prior to September 16, 2012, we have jurisdiction to review the Examiner's determination, as well as the Examiner's silence regarding the proposed new grounds of rejection against claims 1, 21 and 23, as decisions favorable to the patentability of the claims. See pre-AIA 35 U.S.C. § 134(c); pre-AIA 35 U.S.C. § 315(b); Leahy-Smith America Invents Act, PL 112-29, 125 Stat. 284, §§ 6(c)(2)(A) & 7(e)(2) (uncodified). A New Decision "is deemed to incorporate the earlier decision, except for those portions specifically withdrawn." 37 C.F.R. § 41.77(f).
Claim amendments entered during the course of a reexamination are reviewed for compliance with the requirements of pre-AIA 35 U.S.C. § 112. See 37 C.F.R. § 1.552(a). The Requester proposes new grounds of rejection against claim 21 under the first paragraph of § 112 for indefiniteness; and against claims 1, 21 and 23 under the first paragraph of § 112 for lack of written description and non-enablement. . We address the proposed new grounds of rejection as the First Issue, Second Issue and Third Issue, respectively, to be discussed in this opinion. Pursuant to our authority under 37 C.F.R. § 41.77(b), we enter NEW GROUNDS OF REJECTION against claim 21 under § 112, second paragraph, for failure to particularly point out and distinctly claim the subject matter regarded as the invention. We SUSTAIN the Examiner's decision not to adopt the proposed rejections of claims 1, 21 and 23 under the first paragraph of § 112, albeit for reasons different than those of the Examiner.
We address the new grounds of rejection entered in the Prior Board Decision as the Fourth Issue to be discussed in this opinion. We adopt the findings of the Examiner on pages 3 and 4 of the Determination, including the Examiner's finding that Buchko '114 does not anticipate claims 1, 21 and 23. Based on these findings, we WITHDRAW the new grounds of rejection entered in the Prior Board Decision.
In the Prior Board Decision, we did not reach proposed rejections of claims 1, 21 and 23 under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Buchko '114 in view of either Natterer (US 4, 601, 421, issued July 22, 1986) or Hamilton (US 3, 524, 298, issued Aug. 18, 1970); alone or further in view of either Webster (US 6, 896, 125 B2, issued May 24, 2005), Petershack, Case (US 2, 971, 392, issued Feb. 14, 1961), Casgrain (US 538, 895, issued May 7, 1895) or St. Louis (US 389, 179, issued Sept. 4, 1888); once again, alone or even further in view of Weisgerber (5, 056, 773, issued Oct. 15, 1991), Frenker-Hackfort (US 4, 747, 261, issued May 31, 1988), Strickland (US 4, 082, 007, issued Apr. 4, 1978) or Wolfelsperger (US 3, 610, 501, issued Oct. 5, 1971). ( )( ). Because we now withdraw the new grounds of rejection entered against claims 1, 21 and 23 under § 102(e), we address these alternative grounds of rejection now as the Fifth Issue to be discussed. See Smith & Nephew, Inc. v. Hologic, Inc., 721 Fed.Appx. 943, 949 (Fed. Cir. 2018). We retain the jurisdiction to address these proposed grounds of rejection under pre-AIA 35 U.S.C. § 134(c); pre-AIA 35 U.S.C. § 315(b); and the Leahy-Smith America Invents Act, PL 112-29, 125 Stat. 284, §§ 6(c)(2)(A) & 7(e)(2) (uncodified). We SUSTAIN the Examiner's decision not to adopt these proposed grounds of rejection.
At the same time that the Patent Owner filed the Request to Reopen, the Requester sought rehearing of the Prior Board Decision in the "Appellant and Third Party Requester CP Packaging, LLC's Request for Rehearing," dated June 20, 2016. The Patent Owner responded in "Patent Owner's Comments in Opposition to Third Party Requester's Request for Rehearing," dated July 18, 2016. The Requester argues that the Board overlooked arguments that claims 5-7 and 24 of the '614 patent are anticipated by, or would have been obvious from, Buchko '114. We need not address these arguments separately, as they are moot in view of our finding that Buchko '114 fails to anticipate amended, parent claims 1 and 23; and our conclusion that the subject matter of amended claims 1 and 23 would not have been obvious from the combined teachings of Buchko '114 and either Natterer or Hamilton. On this basis, we DENY the Requester's request for rehearing.
The Requester proposes new grounds of rejection against claims 1 21 and 23 under § 103(a) as being unpatentable over any one of Hepner; Lovas; Hamilton; Rogiers (US 3, 653, 175, issued Apr. 4, 1972); Jezuit (US 3, 767, 349, issued Sept. 24, 1971); Buchko '611 (US 5, 170, 611, issued Dec. 15, 1992); or Canamero (US 3, 773, 235, issued Nov. 20, 1973) in view of one or more of Petershack; Wehner (US 3, 282, 121, issued Nov. 1, 1966);[5]Grevich (US 4, 336, 680, issued June 29, 1982); Buchko '114; Arnold (US 3, 868, 053, issued Feb. 25, 1975); Dove (US 4, 072, 260, issued Feb. 7, 2978);...
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