10847063 (B.P.A.I. Feb. 3, 2009)

Ex Parte Kloosterboer et al

Board of Patent Appeals and InterferencesFeb 3, 2009

10847063 (B.P.A.I. Feb. 3, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte JOHAN G. KLOOSTERBOER, FREDERICUS J. TOUWSLAGER, and EMILE J. K. VERSTEGEN ____________ Appeal 2009-0204 Application 10/847,063 Technology Center 1700 ____________ Decided: February 3, 2009 ____________ Before EDWARD C. KIMLIN, PETER F. KRATZ, and CATHERINE Q. TIMM, Administrative Patent Judges. KIMLIN, Administrative Patent Judge. DECISION ON APPEAL This is an appeal from the final rejection of claims 6-22. Claim 6 is illustrative: 6. A replica comprising: a substrate; and Appeal 2009-0204 Application 10/847,063 a resin bonded to the substrate; wherein said resin includes at least two cationically polymerizable cyclic ether groups having two rings, said resin having a characteristic of starting to exhibit gelation when at least 50% conversion is achieved under curing conditions using UV light-initiated cationic polymerization, if necessary in the presence of a reactive diluent. The Examiner relies upon the following reference in the rejection of the appealed claims: Harasta US 4,426,431 Jan. 17, 1984 Appellants' claimed invention is directed to a replica comprising a resin bonded to a substrate wherein the resin includes at least two cationically polymerizable cyclic ether groups having two rings. The resin exhibits gelation when at least 50% conversion is achieved upon UV curing. Appealed claims 6-11 and 13-22 stand rejected under 35 U.S.C. Â§ 102(b) as being anticipated by Harasta. Claim 12 stands rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over Harasta. In addition, claims 6-22 stand rejected under 35 U.S.C. Â§ 112, first paragraph, description requirement. Appellants do not set forth an argument that is reasonably specific to any particular claim on appeal. Accordingly, the groups of claims separately rejected by the Examiner stand or fall together. Appellants' separate arguments for claims 10 and 18 appearing only in the Reply Brief will not be considered because they are untimely. All arguments not raised in the principal Brief are considered waived. We have thoroughly reviewed each of Appellants' arguments for patentability. However, we find that the Examiner's rejections are well founded and in accord with current patent jurisprudence. Accordingly, we 2 Appeal 2009-0204 Application 10/847,063 will sustain the Examiner's rejections for essentially those reasons expressed in the Answer. We consider first the Examiner's rejection of claims 6-22 under Â§ 112, first paragraph, description requirement. The Examiner has found that the claim recitation "having two rings" describing the resin bonded to the substrate does not have original descriptive support in the Specification and, therefore, is new matter. We are not persuaded of reversible error in the Examinerâ€™s rejection by Appellants' argument that the original Specification, at page 3, lines 15-20, shows a chemical compound having two rings, and that page 3 of the Specification, at lines 19-20, recites "the resin composition used being a compound comprising at least two cationically polymerizable cyclic ether groups." We concur with the Examiner that the original Specification discloses only a single species (compounds according to the specific formula shown at page 3 of the Specification) of a broadly claimed genus of resins having two rings. Consequently, we agree with the Examiner that Appellants have not demonstrated by their arguments that the broadly claimed genus of resins finds original descriptive support in the Specification as filed, i.e., that the original Specification, as argued, conveys to one of ordinary skill in the art that Appellants had in their possession as of the filing date of the present application the broad genus of resins presently claimed (App. Br. 9). We now turn to the Â§ 102 rejection of claims 6-11 and 13-22. Appellants do not dispute the Examiner's factual determination that Harasta, like Appellants, discloses a replica comprising a substrate and a resin bonded to the substrate upon curing by radiation wherein the resin includes at least two cationically polymerizable cyclic ether groups having two rings. 3 Appeal 2009-0204 Application 10/847,063 Appellants contend, however, that there is simply no teaching or suggestion of any compound in Harasta that "exhibits gelation when at least 50% conversion is achieved" (Principal Br. 11, second para.). Appellants maintain that "such a characteristic is not inherent from the compounds disclosed in Harasta" (id.). Appellants submit that merely because Harasta discloses compounds that undergo little or no shrinkage upon curing does not mean that the reference compounds necessarily or inherently exhibit the recited gelation. It is well settled that when a claimed product reasonably appears to be substantially the same as a product disclosed by the prior art it is incumbent upon an applicant to demonstrate with objective evidence that the prior art product does not necessarily or inherently possess characteristics attributed to the claimed product. In re Best, 562 F.2d 1252, 1255 (CCPA 1977). In the present case, the Examiner has set forth a compelling rationale why it is reasonable to conclude that the resin of Harasta exhibits the claimed gelation property. The Examiner finds that the resin composition disclosed in Harasta (col. 5, ll. 25-54 and col. 16, ll. 5-15) "is made up of materials that are the same as that of the resin disclosed in Appellants' present application (see claims 11 and 19, and page 4, lines 1-7 of Appellants' disclosure)" (Ans. 9, second para.). The Examiner also finds that the resin disclosed in Harasta is cured by UV radiation and "exhibits little or no shrinkage upon curing (col. 12, lines 59-63), which is the same as that of the resin disclosed in Appellants' present application" (id.). Significantly, the Examiner notes that Appellants' Specification, at page 2, lines 23-25, expressly discloses that "the final product will be free of shrinkage stresses owing to the late gelation and comparatively small shrinkage." Consequently, the Examiner has 4 Appeal 2009-0204 Application 10/847,063 provided the requisite factual basis for the conclusion that the resins disclosed by Harasta reasonably appear to exhibit the claimed gelation characteristic. Appellants, on the other hand, have not advanced an argument that refutes the Examiner's rationale, let alone proffer objective evidence which establishes that the resins of Harasta do not possess the claimed gelling characteristic. As a result, the Examiner's reasoning stands unrebutted. Appellants, as noted by the Examiner, have not argued the Examiner's Â§ 103 rejection of claim 12. Accordingly, we will summarily affirm this rejection. In conclusion, based on the foregoing and the reasons well stated by the Examiner, the Examiner's decision rejecting the appealed claims is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(1)(iv)(effective Sept. 13, 2004). AFFIRMED cam PHILIPS INTELLECTUAL PROPERTY & STANDARDS P O BOX 3001 BRIARCLIFF MANOR NY 10510 5