In re Gately

69 F. App'x 993
CourtCourt of Appeals for the Federal Circuit
DecidedJuly 10, 2003
DocketNo. 02-1529
StatusPublished

This text of 69 F. App'x 993 (In re Gately) is published on Counsel Stack Legal Research, covering Court of Appeals for the Federal Circuit primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
In re Gately, 69 F. App'x 993 (Fed. Cir. 2003).

Opinion

FRIEDMAN, Senior Circuit Judge.

This appeal challenges the decision of the Board of Patent Appeals and Interferences (“Board”) of the United States Patent and Trademark Office (“Office”) that affirmed a patent examiner’s rejection of a patent application as anticipated by an earlier patent. We affirm.

I

The appellant Daniel A. Gately applied for a patent covering “a method for producing” a chemical known as EBI “from an indene in good yield at moderate temperatures.” Only claims 1-6 and 8 of the 39 claims in the application are involved in this appeal. Claim 1 is the only independent claim of those seven. Gately states that the 6 other claims “stand or fall with claim 1,” and we shall not discuss them separately.

Claim 1 covers “A solution of an alkali metal alkoxide having” a specified “formula” that includes “an alkali metal” and “a hydrocarbyl group having one to ten carbon atoms in a non-interfering solvent,” which “solution contains from about 10 mol percent to about 20 mol percent of said alkali metal alkoxide.” The Board stated [994]*994that “[t]he invention relates to isomerization agents,” which “are said to be useful to convert kinetic EBI to thermodynamic EBI” and “to convert meso 3,3’ substituted EBI to a meso/rac mixture ... EBI is applicant’s abbreviation for all isomers of bis(indenyl) ethane.” (internal quotation marks omitted).

After a patent prosecution that the Board characterized as “bare bones,” in a two page “Final Office Action” the examiner rejected claims 1-8 “as being clearly anticipated by” the Drahoslav patent. The examiner’s explanation for his ruling was: “The Examples [in Drahoslav] clearly disclose solutions of K and Na aikoxides containing 10 to 20 mole % aikoxides.” Drahoslav covers a “method of purifying alkali metal aikoxides.”

In a 25 page opinion, the Board affirmed. The Board made 80 findings of fact, which, it stated, “[t]he record supports ... by at least a preponderance of the evidence.” In a series of calculations, assumptions and conclusions (Findings 35-78), the Board found that the chemical reactions specified in examples 1 and 5 of Drahoslav would produce solutions containing between 10 and 20 mole percent of the alkali metal alkoxide (either 13.1 percent or 10.4 percent in example 1 and either 13.1 percent or 11 percent in example 5, Findings 53, 55, 56, 75, 77, 78.) Illustrative of the kinds of calculation and analysis the Board made are the following findings:

51. What we feel comfortable in saying is that at least the sodium t-butoxide 52.8% yield (whether based on sodium or alcohol) must have been mixed with the tetrahydrofuran right after the almost clear solution was filtered and prior to crystallization.
52. If the yield is based on the initial amount of sodium, then the yield in mols of sodium t-butoxide would be:
1.3 moles sodium x 0.528 = 0.686 mols sodium t-butoxide
53. From the 0.686 mols figure, we can determine that the concentration of sodium t-butoxide in the almost clear solution containing at least sodium tbutoxide and tetrahydrofuran after it has been filtered and prior to crystallization is about 13.1%
0.686= 0.686 = about 13.1%
0.686 + 4.56 5.246

Since the percentage limitation was the only limitation in claim 1 of Gately’s application that was in dispute, the Board’s findings on this point led it to conclude: “The subject matter of Example 1 of Drahoslav prima facie anticipates claims 1-3 and 5-6. The subject matter of example 5 of Drahoslav prima facie anticipates claims 1-8.” (Findings 79 and 80). In this appeal, that apparently is the only limitation Gately addresses and challenges.

The Board then held that because its “basis for finding anticipation is the first articulation on the record of a fact-based rationale in support of anticipation,” and therefore a “new” “rationale” for finding anticipation,

we designate our affirmance as a new ground of rejection under 37 CFR § 1.196(b). In this respect, if there is further prosecution, the examiner may, of course, supplement our rationale with whatever was in his mind when he made the anticipation rejection. Applicant too may supplement the record, and as authorized by Spado, 911 F.2d at 708, 15 USPQ2d at 1658, applicant may argue that the inference of lack of novelty was not properly drawn, for example, if we did not correctly apply or understand Drahoslav or drew unwarranted inferences from Drahoslav---- As a result of our designation of the affirmance as a [995]*995new ground of rejection, applicant now has an option to present new evidence.

Gately did not present any new evidence. Instead, he petitioned for rehearing. He contended, among other things, that the Board was not authorized to issue a new ground of rejection, and that a number of the Board’s findings were based on speculation and were erroneous for lack of evidentiary support. In a memorandum opinion and order, the Board rejected those contentions and denied rehearing.

The Board also stated: “applicant states that anticipation must be based on an explicit or an inherent disclosure of an invention. We suggest that binding precedent provides yet another mechanism for determining whether a rejection based on prima facie anticipation is proper during ex parte prosecution of patent applications.” It further stated that under In re Best, 562 F.2d 1252,1255 (CCPA 1977),

if the claimed and prior art products are identical or substantially identical, the USPTO can require an applicant to prove that the prior art product does not necessarily or inherently possess the characteristics of the claimed product. In order to invoke the principles of In re Best, the USPTO makes factual findings on a case-by-case basis which support a conclusion that the claimed and prior art products prima facie are “identical or substantially identical.” Simply put, Best is applied when the USPTO does not have sufficient evidence upon which to base facts to determine whether a difference exists between claimed subject matter and a prior art reference .... If the facts in a case allow the USPTO to make that inference, the USPTO may properly invoke the principles of In re Best and shift the burden to applicants to come forward with evidence establishing that the respective products differ.

II

Section 102(b) of Title 35 of the United States Code bars the issuance of a patent if “the invention was patented ... more than one year prior to the date of the application for patent in the United States.” “A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.” Verdegaal Bros., Inc. v. Union Oil Co., 814 F.2d 628, 631 (Fed.Cir.1987) (citation omitted). “It is well settled that a prior art reference may anticipate when the claim limitations not expressly found in that reference are nonetheless inherent in it.

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Related

In Re William J. King
801 F.2d 1324 (Federal Circuit, 1986)
In Re Lonnie T. Spada and Joseph J. Wilczynski
911 F.2d 705 (Federal Circuit, 1990)
In Re Anthony J. Robertson and Charles L. Scripps
169 F.3d 743 (Federal Circuit, 1999)
In Re Cruciferous Sprout Litigation
301 F.3d 1343 (Federal Circuit, 2002)
In re Best
562 F.2d 1252 (Customs and Patent Appeals, 1977)

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Bluebook (online)
69 F. App'x 993, Counsel Stack Legal Research, https://law.counselstack.com/opinion/in-re-gately-cafc-2003.