Ex Parte Fritz et al

Patent Trial and Appeal Board

Jan 16, 2019

13509325 (P.T.A.B. Jan. 16, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/509,325
109973 7590
Bejin Bieneman PLC
2000 Town Center
Suite 800
Southfield, MI 48075
07/17/2012
01/18/2019
FIRST NAMED INVENTOR
Hans-Georg Fritz
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
66835-0148 1005
EXAMINER
NILAND, PATRICK DENNIS
ART UNIT PAPER NUMBER
1762
NOTIFICATION DATE DELIVERY MODE
01/18/2019 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
docket@b2iplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HANS-GEORG FRITZ, MARCUS KLEINER, MICHAEL
ZABEL, BENJAMIN WOHR, and GEORG M. SOMMER1
Appeal2018-002326
Application 13/509,325
Technology Center 1700
Before BRADLEY R. GARRIS, JEFFREY T. SMITH, and
MERRELL C. CASHION, JR., Administrative Patent Judges.
GARRIS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134 from the Examiner's
decision rejecting claims 11 and 13-15. We have jurisdiction under
35 U.S.C. § 6.
We AFFIRM.
Appellants claim a composition comprising an unhardened multi-
component paint system and a blocking agent that is present from a dosage
of 10-30% "by volume" of the composition (sole independent claim 11).
1 Duerr Systems GmbH is identified as the real party in interest (App. Br. 3).
Appeal2018-002326
Application 13/509,325
A copy of representative claim 11, taken from the Claims Appendix of
the Appeal Brief, appears below.
11. A composition, comprising an unhardened multi-
component paint system and a blocking agent, where said
blocking agent is present from a dosage of 10-30% by volume
of the composition in order to at least delay hardening of the
multi-component paint system, wherein the multi-component
paint system includes at least one paint component and at least
one hardener component.
Under 35 U.S.C. § 112(a) or§ 112 (pre-AIA), 1st paragraph, the
Examiner rejects claims 11 and 13-15 as failing to comply with the written
description requirement (Final Action 6-7). The Examiner determines that
the originally filed disclosure does not provide written description support
for the amended claim 11 requirement defining the percentage of blocking
agent as being "by volume" and that the amended claim 11 term "dosage"
does not require the percentage to be "by volume" (id.). As support for this
latter determination, the Examiner states that "LD50 is given in weight of
toxin per unit weight of the subject to which the toxin is administered" (id. at
7).
We sustain the Examiner's rejection for the reasons given in the Final
Office Action and the Answer with the following comments added for
emphasis and completeness.
Appellants correctly point out that their Specification discloses
blocking agent percentages in terms of a "dosage" (App. Br. 6 (citing Spec.
,r,r 97-98)) and argue that "dosage ... in painting means volume" (id.). As
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Appeal2018-002326
Application 13/509,325
support for this argument, Appellants in their Reply Brief present the
following quoted statement from the 37 C.F.R. § 1.132 Fritz Declaration of
record:
Nothing in the application suggests anything other than
volumetric measurements. This is made clear by the fact that
the patent [application] describes pumps, which are well known
to be positive displacement or volumetric pumps and the patent
[application] describes the percentages in terms of "dosages"
which means by volume.
(Reply Br. 5 ( quoting from Deel. ,r 5) ). 2
In both the Final Action and the Answer, the Examiner responds to
Appellants' argument and the above quoted Declaration statement by
observing that "[ n Jo evidence is provided to show that 'dosage' means 'by
volume' [ as claimed]" and that "[ w ]hile pumps displace volumes, they also
displace weights" (Final Action 13-14, Ans. 20).
We agree with the Examiner. In the record before us, Appellants
proffer no convincing evidence that their original disclosure, including their
disclosure of "dosage" and pumps, reasonably conveys to those skilled in the
paint system art that Appellants had possession of the claimed "by volume"
subject matter as of the application filing date. See ARIAD Pharm., Inc. v.
Eli Lilly and Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) en bane ("[T]he test
for [ written description] sufficiency is whether the disclosure of the
2 This is the only portion of the Fritz Declaration that Appellants specifically
reference in their Appeal Brief and Reply Brief arguments contesting the
Examiner's rejection.
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Appeal2018-002326
Application 13/509,325
application relied upon reasonably conveys to those skilled in the art that the
inventor had possession of the claimed subject matter as of the filing date.").
The decision of the Examiner is affirmed.
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.I36(a)(l).
AFFIRMED
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