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In The United States Court of Appeals for The Federal Circuit
IN RE JASON ARTHUR TAYLOR, REBECCA ANN ZELTINGER, and JOHN G. COSBY, JR.,
Appeal from the United States Patent and Trademark Office, Board of Patent Appeals and Interferences.
PETITION FOR PANEL REHEARING
Rebecca A. Zeltinger Director of Operations TECHNOLOGY ADVANCEMENT LABS LLC 2710 Calgary Avenue Kensington, MD 20895 (301) 277-1909 Pro se Appellant July 30, 2012
TABLE OF CONTENTS I. INTRODUCTION .......................................................................................1 II. POINTS OF LAW OR FACT OVERLOOKED OR MISAPPREHENDED BY THE COURT........................................................1 III. ARGUMENT ............................................................................................2 III.A. Preliminary remarks.........................................................................2 III.B. Erroneous and new rationale affirming the affirmation of the rejection of claim 58 ...................................................................................4 III.C. Taylor did not rely only upon the §2111.02 MPEP citations ..........7 III.D. The Opinion must remand since it affirmed on alternate grounds 11 III.E. Libel?..............................................................................................13 IV. CONCLUSION.......................................................................................15 ADDENDUM PROOF OF SERVICE CERTIFICATE OF COMPLIANCE
I. INTRODUCTION In accordance with Fed. Cir. R. 40, the panel should rehear this case because the Opinion of the U.S. Court of Appeals for the Federal Circuit, Appeal No. 20121006 1 (hereafter, “Opinion”) has several non-harmless errors of law and fact that, if remedied, would probably reverse or alter the holdings. Some of these errors are discussed infra. Curiously, most of these errors were already addressed in the Reply Brief. However, it is possible some of the points were not made with sufficient clarity. It is hoped that this Petition supplies sufficient clarity and would allow the Panel (whose time is obviously limited) to quickly realize why their Opinion should be vacated.
II. POINTS OF LAW OR FACT OVERLOOKED OR MISAPPREHENDED BY THE COURT Below is a “Top Ten” list of erroneous sentences or fragments in the Opinion. Underlined portions herein are supplied to indicate particular sections that should be deleted in a revised Opinion or at least be reviewed upon rehearing. 1) …persons of relevant skill knew that non-disulfide bonded cross-linked polymers form… 2) Moreover, since Akkaway discloses each component of the claimed dough (i.e., the fiber and hydrocolloid), such heating would necessarily have produced the same cross-linked polymers…
Included in full as the Addendum. 1
3) But Catalina,2 and indeed all of the other decisions that Taylor cites, arose in the context of infringement litigation… 4) …Taylor chose to rely exclusively on perceived “implicit” limitations in the claims. 5) Taylor seizes on that “guidepost” as categorically determinative, arguing that Catalina compels the examiner, the Board, and ultimately this court… 6) That broader interpretive standard does not prejudice the applicant, who has the ability to correct errors in claim language and to adjust the scope of claim protection as needed during prosecution by amending the claims. 7) Here, where prosecution remains open and Taylor retains the option of amending the claim as needed, the Board correctly ... p. 6 & 8 8) …we do not perceive, nor has Taylor explained, how stating that such compositions are “for making low-calorie, palatable foods” … excludes compositions that would otherwise satisfy the recited structural requirements.” 9) Relying on that language, Taylor argues that the rejection of claim 58… 10) We have considered Taylor’s remaining arguments and find them unpersuasive. III. ARGUMENT III.A. Preliminary remarks As a first preliminary remark, this Petition asserts or reveals three main things. First, that there are at least ten non-harmless errors as well as some contradictions in the Opinion. Second, in contrast to the Opinion’s false assertions supra, each main holding in the Opinion is also actually a new grounds of rejection to which Taylor was never actually able to amend claims. Third, that the Opinion failed to remedy the Examiner’s defective prima facie anticipation rejection by revealing
This Petition uses abbreviated citations. See Opinion and the tables of authorities in the other briefs submitted to this Court for the full citations.
where exactly within Akkaway there might be the embodiment that requires any hydrocolloids, something, by contrast, all of Taylor’s rejected claims require. A second preliminary remark regards intended uses. All of the Opinion’s holdings rely directly, collaterally, or indirectly on intended use arguments. Ironically, as will be shown herein, almost all of the discussion about intended uses is dicta. (Only that regarding claim 58 is not.) To know whether or not something is an intended use one has to explicitly or implicitly do a “capability test.” The Opinion ignores this test. The Examiner’s interpretation was correct: intended uses cannot structurally limit anything. Moreover, if a phrase given patentable weight resembles an intended use but that restricts otherwise potential “subembodiments,” it cannot be an intended use. The third preliminary remark is that the Opinion trumpets a difference between litigation and prosecution. Therefore, it is once again ironic that it fails miserably at adhering to a key corollary to this difference: the treatment of de novo findings and sua sponte holdings. Only in prosecution do novel de novo findings (i.e., affirmance of claim invalidation on alternate grounds) necessitate a remand. Yet no such remand was done here. The Opinion must be altered or denominated as precedential because it is in blatant conflict with binding precedent regarding due process (e.g., SEC v. Chenery Corp., 318 U.S. 80 (1943) (holding that a reviewing court may uphold an agency’s action only on the grounds upon which the agency 3
relied when it acted)) and compact prosecution (e.g., 37 C.F.R. §41.50(b), In re Aoyama, 2010-1552 (Fed. Cir. 2011), etc.).
III.B. Erroneous and new rationale affirming the affirmation of the rejection of claim 58 As mentioned supra, Claim 58 is noteworthy because it is the only claim discussed in a holding of the Opinion that also discusses intended uses (even though most of the rest of the Opinion discussed them as well). Regarding claim 58, the Opinion (at 9) states …microwave cooking was well known in the art such that persons of relevant skill knew that non-disulfide bonded cross-linked polymers form in dough upon heating. As discussed in the Reply Brief (at 18¶1), this is a flagrantly fictional and new statement. Of course, the opposite is actually true, as it is well known in the art that disulfide bonds indeed supply the strength of bread. (A8; A730; A9;
Technology of Biscuits, Crackers and Cookies Third Edition by Duncan Manley, pp. 101-102 of the IDS; http://en.wikipedia.org/wiki/Glutenin, etc.) 3 It is
speculation as to why this error and other errors were carried into the Opinion even though they were already pointed out by the Reply Brief, but, as one might expect, fixing the “non” error (removing the negative prefix “non”) reverses the meaning,
The prefix “A” refers to the Joint Appendix previously submitted to the Court. 4
the holding, and the notion that Akkaway could have with necessity strength from non-disulfide-bonded cross-linked polymers. The Opinion (at 9-10) also falsely states, Moreover, since Akkaway discloses each component of the claimed dough (i.e., the fiber and hydrocolloid), such heating would necessarily have produced the same cross-linked polymers… Even if, miraculously, it somehow would have been obvious to have combined Akkaway with an effective amount of “water loving” hydrocolloids to bind the “water fearing” hydrophobically-coated cellulose with water whilst maintaining a sufficient amount of coated cellulose, because Akkaway’s cellulose is specially coated, and coatings by definition prevent interactions between the previously exposed surfaces, it seems unlikely that non-disulfide bonds would “necessarily” be produced between molecular surfaces that are not even exposed in Akkaway, which, incidentally, also requires gluten. (Reply Brief at 9 and 17¶2) Intended uses can only be non-limiting if the structural product is first capable of being used as such. (Blue Brief at 25-26, 29-31) Therefore, the non-disulfide bonds intended use capability test fails, and this claim element is not merely limiting here, but also further defines over Akkaway, in contrast to the Opinion which is incorrect. The following quote from the Decision (at 9¶1) is representative of how the Opinion skips this test and further obfuscated and altered the Examiner’s correct logic:
We further note that the "upon appropriate exposure language" is an intended use recitation, so the claim does not actually require heating the composition in a microwave oven, only the inherent result if the composition were so heated. (emphasis supplied) The Opinion removed the emphasized text, which correctly implies that for the Board’s intended use argument to work, the capability test must first be performed. A revised Opinion must perform this test and encompass this possibility that gluten and coating (required only in Akkaway) affects bonds. Thus, construction compatible with In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997) and other cases requires Taylor’s claims to structurally exclude any otherwise potential embodiment that cannot be “for making 50% caloriereduced,4 palatable food or food components,” or that could not be able “to help bind said mix to water,” or that cannot “upon x form y that z.” But, per the Opinion’s logic, it mattered little what these phrases or what x, y, and z were. They could indeed have been “for making airplanes.” (Reply Brief at 31) The Opinion’s logic would still apply, because it unjustly expunged these three phrases from the claims as if they never had been there and avoids the capacity test through circular
Probably because the Examiner correctly recognized the dually limitative nature of the phrases that appear similar to intended uses, the Examiner needed to (and, indeed, at great length did) argue that “low-calorie” of Taylor’s claims should be construed as “reduced-calorie.” However, for readability and because the Opinion and Board used it (even whilst claiming there were no new grounds of rejection), here this disputed phrase has simply been replaced with the actual definition from Taylor’s specification.
reasoning—namely, that they seem like they could be intended uses, which are not limiting. Therefore, they are not limiting: The bulk of Taylor’s arguments against the rejections based on Akkaway presume patentable weight for the terms “palatable” and “low-calorie” in the preambles of claims 1 and 58. As discussed, those terms are not limiting, and we therefore need not address those arguments here. (which implies that Taylor did explain that 9.7% cannot be used as something that is 50%) yet also says, [W]e do not perceive, nor has Taylor explained, how stating that such compositions are “for making low-calorie, palatable foods” … excludes compositions that would otherwise satisfy the recited structural requirements.” In other words, there are actually arguments showing something is limiting,5 but because there are no arguments showing this, we do not need to consider them. Therefore, since they are not limiting, they merely state an intended use. A revised Opinion should remove this contradictory and/or circular reasoning.
III.C. Taylor did not rely only upon the §2111.02 MPEP citations The Decision also states, But Catalina, and indeed all of the other decisions that Taylor cites, arose in the context of infringement litigation… Taylor actually cited In re Stencel, In re Bulloch, etc., all regarding preambles
See, e.g., Reply Brief at 23¶1 and 25¶1 and citations therein. 7
during prosecution. These cases were absent or removed from the seemingly complete list in the Decision’s footnote. The Opinion similarly asserts …Taylor chose to rely exclusively on perceived “implicit” limitations in the claims. (Opinion at 9), but then contradicts itself by asserting, We have considered Taylor’s remaining arguments … If there were actually additional arguments, how it is possible that Taylor’s exclusive argument concerned preambles? One solution to this puzzle is that Taylor’s arguments were not actually known to the Opinion author upon writing the “exclusively” text. In that case, they might not have actually been considered. A likely candidate for any such unconsidered arguments is that no embodiment of Akkaway necessarily has any hydrocolloids. The Reply Brief asserts that the chance is only 0-13%. A reference that fails to necessarily have each claim element as arranged in the claim is not a valid anticipatory reference under 35 U.S.C. 102(b). Curiously, the Opinion never directly asserts that any Akkaway embodiment actually has both the required amounts of hydrocolloids and cellulose. Instead, it merely notes the Board’s findings. But, as Taylor repeatedly pointed out, the PTO never showed Akkaway to have these elements within its four corners, and, despite Taylor’s requests, they refused to discharge their burden to reveal the secret of “whether, how, and why” within Akkaway one might find them. (Reply Brief at 8
11; Blue Brief at 13¶1, 57¶1, 30¶2, & 47¶1; A760¶2) Is the embodiment with cellulose and hydrocolloids Example 1? No, because it has no hydrocolloids. Is it Example 3? No again. Is it perhaps an intended use of an Akkaway example? If so, which one? By not saying, the Opinion clashes with Gechter and Arkley. Was claim 1 actually rejected as being obvious? The Examiner’s Answer would imply it was. And would not such a modification dilute the coated cellulose? No, a modified Example 3 cannot be the mysterious anticipatory embodiment, since it is 3% shy of coated cellulose… No, the Opinion merely says the Board found that “Akkaway’s cellulose compositions can be mixed with 10% or more hydrocolloid bulking agents…” Setting aside the other Arkley deficits, “can” is not the same as “was,” “must,” or even “is.” It is just a potentiality. A potential intended use. The sentence
containing the laundry list of possible bulking agents (only 13% of which were deemed hydrocolloids) has nothing to do with any embodiments of the invention. They are just possible future applications of the embodiments. The tense of the actual examples is past tense in accordance with an actual reduction to practice. “Cellulose acetate … was dissolved.” But the tense of this section is future (i.e., “can be”). This is because that section is entirely devoted to asserting the potential utility and uses of the invention:
Coated cellulose of the invention is especially useful as a starch replacement …It is an advantage of the invention that coated cellulose is essentially nondigestible… The low calorie carbohydrate ingredient of the invention can be employed with other low calorie ingredients such a artificial sweeteners… Coated cellulose of the invention, for example, can be employed in compositions with natural or artificial sweeteners, or mixtures thereof….If an artificial sweetener is used…In this case, at least 10% by weight of a bulking agent is typically included in inventive composition… Thus, tense also shows there is no embodiment of Akkaway having any hydrocolloids. Even further confirmation of this is the phrase supra “is typically included in inventive composition,” which speaks generally to how calories are be reduced in the industry but, more importantly, shows with certainly that the inventive composition does not encompass the bulking agents, which are merely intended uses, and which fail the requirement outlined in, e.g., Arkley. Thus, as previously mentioned, though only one of the holdings of the Opinion directly involves intended uses, all indirectly pertain to them. The Decision also states, Taylor seizes on that “guidepost” as categorically determinative, arguing that Catalina compels the examiner, the Board, and ultimately this court to construe the disputed preamble terms as limiting because he sought to distinguish Akkaway before the examiner based in part on those terms. As discussed in the Reply Brief at 22¶2, this statement also is incorrect. The potential falseness of these statements is hinted at by the fact that the first and only cite to Catalina in the Reply Brief is buried near the end on page 24, one page
before moving to non-anticipatory rejections! Most of Taylor’s briefs actually discussed different rationales, such as the fact that something that is 9% cannot be used as 50%, that the PTO refused to reveal which embodiment of Akkaway allegedly has as an intended use of mixing with the hydrocolloids that Taylor’s claims undisputedly require, etc. III.D. The Opinion must remand since it affirmed on alternate grounds The Opinion (at 5 and 7) erred to have alleged, That broader interpretive standard does not prejudice the applicant, who has the ability to correct errors in claim language and to adjust the scope of claim protection as needed during prosecution by amending the claims. In re Yamamoto, 740 F.2d 1569§, 1571–72 (Fed. Cir. 1984)….Here, where prosecution remains open and Taylor retains the option of amending the claim as needed, the Board correctly…[underlining supplied] This implies that prosecution was still open even when the CAFC affirmed the Board on a new grounds of rejection. The Opinion failed to address the new grounds of rejection issue raised by Taylor after the Solicitor made this new argument and failed to remand the case on such a new grounds of rejection. This new rationale was previously only in the Board’s dicta and was nowhere in the Examiner’s Answer or rejections. In the examination process specific reasons for rejecting an application should be revealed to the applicant in the non-final rejection. This way, applicants can
freely amend their claims in response to a rejection. This Court has actually deemed that time to be somewhat later. Namely, when the examiner’s answer is submitted during an appeal to the PTO’s Board. In re Jung, 637 F.3d 1356 (Fed. Cir. 2011). If after that date rejected claims are affirmed on alternate grounds prosecution must be reopened. In re Stepan Co., 2010-1261 (Fed. Cir. 2011). (“Because Stepan did not have prior notice of the Board’s … new findings of fact … and … failed to identify this rejection as a new ground, Stepan’s notice rights were violated. … We vacate … and remand…”) Here, the Examiner and Board relied only upon an intended use argument to arrive at the conclusion that the preambles carry no patentable weight In particular, the Board held that the terms “low-calorie” and “palatable” found in the preambles of independent claims 1 and 58 are non-limiting because they merely reflect intended uses or purposes without imposing any structural limitation on the claimed compositions. (emphasis supplied) But this Court instead affirmed on alternate grounds: that if there is ever a dispute with an examiner about what the broadest reasonable claim construction is, the only reliable and non-arbitrary recourse for the applicant is via examiner amendments. The holding had little or nothing to do with preambles or intended uses and actually converted the Board’s “Zletz” dictum into holding (A22) and the Examiner’s intended use arguments into dicta.6 The rationales are indeed different It is unclear why there was any intended use discussion, but perhaps the Court wanted to retain a shred of the Examiner’s Answer in the Opinion. 12
enough to trigger 37 C.F.R. §41.50(b), because the triggering threshold has been established previously by this Court in, e.g., In re Leithem, 661 F.3d 1316 (Fed. Cir. 2011). (There, “may be fluffed” was different enough from “was fluffed” to force the prior equivalent to 37 C.F.R. §41.50(b).) Since no new arguments are permitted as a matter of right for review before the appellate court and the Board refused to denominate its Decision as containing a new ground of rejection under 37 C.F.R. §41.50(b), Taylor never had a fair opportunity to respond to the Board’s new rejection. The Court’s affirmance without remand therefore implies that what examiners do is arbitrary and even irrelevant, as the Board can create a new ground of rejection without denominating them as such and, moreover, that these decisions are not necessarily subject to applicant commentary. (See footnote 32 of Request for Rehearing at 30.)
Moreover, Yamamoto is a case with two remands from the Board which obviously allowed the applicant to amend claims. This Opinion, therefore, is in legal conflict with binding precedent and Dickinson v. Zurko, 527 U.S. 150, 154 (1999) (stating that the PTO is an agency subject to review and cannot be arbitrary) more specifically. III.E. Libel? This Petition is prejudiced to comply with the use of the words “overlooked” and “misapprehended” of Fed. Cir. R. 40(a)(4) as much as is possible. However, 13
most of the erroneous statements quoted supra in this Petition were revealed to the Court in Taylor’s Reply Brief. Nor could poor oral arguments have been a cause, as this case was supposedly decided only “on the briefs” (without oral argument). All ten of the errors portray Taylor in negative light, ignorant of law, wanting to waste this Court’s time in order to fight Yamamoto, etc. The probably of a random distribution is only ½ 10=0.2%. Therefore, the possibility that the Court libeled Taylor cannot be avoided. Also, the Opinion clearly would be in tension with other precedential cases were it published. This is the reason the Opinion should have been denominated as precedential. Making it both unpublished while introducing these insidious errors might merely ensure that attorneys stumbling upon the case only get a cursory and therefore fictitious view, thus hiding the actual travesty of justice this Court has for some inexplicable reason unjustly apparently singled out Taylor to receive. In contrast to the Opinion, Taylor’s first non-disclaimed exposure to Yamamoto was this Court’s Opinion. Taylor actually appealed the rejections utilizing
rationales such as “it is inherent the food is a low calorie food”; “any reduction in calories also encompasses greater than 50% reduction”; “it is inherent that it will help bind water”; something 9.7% can have “an intended use” of something that is 50%; all things edible are palatable; and if any holding of one authority is also in the dicta of another, it is not binding precedent, etc. In order to partially mitigate 14
the harm to Taylor a revised Opinion without the ten errors should be issued. IV. CONCLUSION To fix the errors and/or to allow Taylor to respond to the new grounds of rejection the Panel should rehear this case in order to issue a revised Opinion that, if not reverses, at least is consistent with 37 C.F.R. §41.50(b) via remanding to the Board to indeed allow Taylor to have “the ability to correct errors in claim language and to adjust the scope of claim protection as needed during prosecution by amending the claims” and to address the new grounds of rejection that this Opinion has made. Respectfully submitted, By Dated: July 30, 2012 __________________________ Rebecca A. Zeltinger Director of Operations
Officer of: TECHNOLOGY ADVANCEMENT LABS LLC 2710 Calgary Avenue Kensington, MD 20895 Tel: (301) 277-1909 Email: email@example.com Pro se Appellant
PROOF OF SERVICE I hereby certify that, on the 30 th day of July, 2012, I hand delivered the original and eighteen copies of the foregoing Petition for Panel Rehearing to the Clerk, UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT, 717 Madison, N.W., Washington, D.C. 20439. I further certify that two copies were deposited with FedEx for ground delivery to Counsel for Appellee as follows: Raymond T. Chen Mary L. Kelly United States Patent and Trademark Office Office of the Solicitor 600 Dulany Street Madison West Building, Room 8C43 Alexandria, VA 22314 ___________________________________ Rebecca A. Zeltinger Director of Operations TECHNOLOGY ADVANCEMENT LABS LLC 2710 Calgary Avenue Kensington, MD 20895 (301) 277-1909 Pro se Appellant
CERTIFICATE OF COMPLIANCE With Length Limitation, Typeface Requirements, And Type Style Requirements 1. The petition complies with the length limitation of Fed. R. App. P. 40(b) because: this petition consists of 15 pages, excluding the parts of the petition exempted by Fed. Cir. R. 40(c). 2. This petition complies with the typeface requirements of Fed. R. App. P. 32(a)(5) and the type style requirements of Fed. R. App. P. 32(a)(6) because: this petition has been prepared in a proportionally spaced typeface using Microsoft Word in 14 Point Times Roman. ______________________ Rebecca A. Zeltinger July 30, 2012
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