Thursday, March 21, 2013

Appellant loses in Ex parte ALARY. An unconvincing declaration.

from within Ex parte Alary.

A claim at issue is to a "proppant" -

A high strength sintered rod-shaped proppant for fracturing
subterranean formations comprising at least about 80% by weight
alumina and between about 0.2% by weight and about 4% by weight
aluminum titanate, wherein the proppant has a permeability of at least
300 Darcies after 50 hours at 250°F and 5,000 psi, wherein the
alumina is contributed by at least one of bauxitic and non-bauxitic
sources, and wherein the at least one of bauxitic and non-bauxitic
sources contains a TiO2 content of between about 0.15% and about
3.5% by weight.

Of claimed ranges overlapping ranges in the prior art:

When a range recited in a claim overlaps a range disclosed in the prior art, a prima facie case of obviousness
typically exists and the burden of proof is shifted to the applicant to show
that the invention would not have been obvious. In re Peterson, 315 F.3d
1325, 1329-30 (Fed. Cir. 2003). “[W]hen, as here, the claimed ranges are
completely encompassed by the prior art, the conclusion is even more
compelling than in cases of mere overlap.” Id. at 1330.

The Board deflected one argument:

Appellants argue that Cooke “teaches away from rod-shaped
proppants” but, by way of support, rely on Cooke’s stated preference for
spheres over other shapes. App. Br. 29 (citing Cooke 3:36-41). Appellants
also argue that Cooke’s preference for spheres is “more credible” than
Graham’s teachings because Cooke is a more recent reference. Reply Br. 5;
see App. Br. 16. However, the rod shape patented by Graham does not
become patentable again by virtue of Cooke’s stated preference for spheres
over other shapes. See In re Gurley, 27 F.3d 551, 554 (Fed. Cir. 1994).
Moreover, “[t]he mere age of the references is not persuasive of the
unobviousness of the combination of their teachings, absent evidence that,
notwithstanding knowledge of the references, the art tried and failed to solve
the problem.” In re Wright, 569 F.2d 1124, 1127 (CCPA 1977).

Of shifting burdens:

As a practical matter, “the Patent Office is not equipped to
manufacture products by the myriad of processes put before it and then
obtain prior art products and make physical comparisons therewith.” In re
Brown, 459 F.2d 531, 535 (CCPA 1972). Appellants challenge the burden
shift, but come forward with no persuasive argument or evidence sufficient
to rebut the factual basis for that finding. App. Br. 26-27.

Unexpected results don't always win:

Like the Examiner, we have thoroughly considered the evidence in the
Parias Declaration, but in view of significant shortcomings therein, which
we discuss below, that evidence is insufficient to overcome the strong prima
facie showing of obviousness made out by the Examiner in this case. See
Sud-Chemie, Inc. v. Multisorb Techs., Inc., 554 F.3d 1001, 1009 (Fed. Cir.
2009) (“evidence of unexpected results and other secondary considerations
will not necessarily overcome a strong prima facie showing of

For example, regarding the criticality of the range of TiO2 content
specified in claim 1, Appellants’ evidence is unconvincing because it
consists of the uncorroborated opinion of a named inventor. See In re Am.
Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004) (citations
omitted) (explaining that the Board is entitled to weigh the declarations and
conclude the lack of factual corroboration warrants discounting the opinions
expressed in the declarations). (...)

Appellants’ evidence is
unconvincing because it consists of hearsay statements and contains no
indication that those trying to solve the need were familiar with the relevant
prior art. See In re Bulina, 362 F.2d 555, 559 (CCPA 1966) (“[A]n affidavit
by an applicant or co-applicant as to the advantages of his invention is less
persuasive than one made by a disinterested person.”); In re Allen, 324 F.2d
993, 997 (CCPA 1963) (citing Toledo Pressed Steel Co. v. Standard Parts,
Inc., 307 U.S. 350, 356 (1939)) (an allegation that there was an unsolved
problem in the art is not evidence of unobviousness unless it is shown that
the widespread efforts of skilled workers having knowledge of the prior art
had failed to find a solution to the problem).


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