2012-1006(Serial No. 11/429,507)

In TheUnited States Court of Appeals

for The Federal Circuit

IN RE JASON ARTHUR TAYLOR,REBECCA ANN ZELTINGER,

and JOHN G. COSBY, JR., Appellants.

Appeal from the United States Patent and Trademark Office,Board of Patent Appeals and Interferences.

PETITION FOR PANEL REHEARING

Rebecca A. ZeltingerDirector of OperationsTECHNOLOGY ADVANCEMENT LABS LLC2710 Calgary AvenueKensington, MD 20895(301) 277-1909

Pro se AppellantJuly 30, 2012

TABLE OF CONTENTS

I. INTRODUCTION .......................................................................................1

II. POINTS OF LAW OR FACT OVERLOOKED ORMISAPPREHENDED BY THE COURT........................................................1

III. ARGUMENT ............................................................................................2

III.A. Preliminary remarks.........................................................................2

III.B. Erroneous and new rationale affirming the affirmation of therejection 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

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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. 2012-

10061 (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…

1 Included in full as the Addendum.

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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

2 This Petition uses abbreviated citations. See Opinion and the tables of authorities in the other briefs submitted to this Court for the full citations.

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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 “sub-

embodiments,” 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

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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,

3 The prefix “A” refers to the Joint Appendix previously submitted to the Court.

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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:

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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% calorie-

reduced,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

4 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.

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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

5 See, e.g., Reply Brief at 23¶1 and 25¶1 and citations therein.

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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:

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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

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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

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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

6 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.

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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,

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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 ½10=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

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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, Dated: July 30, 2012

By __________________________Rebecca A. ZeltingerDirector of Operations

Officer of:TECHNOLOGY ADVANCEMENT LABS LLC2710 Calgary AvenueKensington, MD 20895Tel: (301) 277-1909Email: legal@techalabs.com

Pro se Appellant

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PROOF OF SERVICE

I hereby certify that, on the 30th 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. ChenMary L. KellyUnited States Patent and Trademark OfficeOffice of the Solicitor600 Dulany StreetMadison West Building, Room 8C43Alexandria, VA 22314

___________________________________Rebecca A. ZeltingerDirector of OperationsTECHNOLOGY ADVANCEMENT LABS LLC2710 Calgary AvenueKensington, MD 20895(301) 277-1909

Pro se Appellant

CERTIFICATE OF COMPLIANCEWith 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