Ex Parte Wohlfromm et alDownload PDFPatent Trial and Appeal BoardJan 12, 201512373439 (P.T.A.B. Jan. 12, 2015) Copy Citation UNITED STATES PATENT AND TRADEMARKOFFICE 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 12/373,439 01/12/2009 Hans Wohlfromm 12810-00837-US 1484 30678 7590 01/12/2015 NOVAK DRUCE CONNOLLY BOVE + QUIGG LLP (DC OFFICE) 1875 EYE STREET, N.W. SUITE 1100 WASHINGTON, DC 20006 EXAMINER ZHU, WEIPING ART UNIT PAPER NUMBER 1733 MAIL DATE DELIVERY MODE 01/12/2015 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte HANS WOHLFROMM, JENS ASSMANN, JOHAN HERMAN HENDRIK TER MAAT, and MARTIN BLOMACHER ____________ Appeal 2013-001238 Application 12/373,439 Technology Center 1700 ____________ Before BRADLEY R. GARRIS, PETER F. KRATZ, and N. WHITNEY WILSON, Administrative Patent Judges. WILSON, Administrative Patent Judge. DECISION ON APPEAL Appellants1 appeal under 35 U.S.C. § 134 from the December 7, 2011, decision of the Examiner finally rejecting claims 4–6, 8, 12, 15, and 16. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We affirm. 1 The real party in interest is BASF SE. (Appeal Br. 2). Appeal 2013-001238 Application 12/373,439 2 CLAIMED SUBJECT MATTER Appellants’ invention is directed to a thermoplastic composition for producing shaped metallic bodies comprising three components, one of which contains three subcomponents. Claim 4 is representative of the claims on appeal and is reproduced below from the Claims Appendix to the Brief (key claim limitations in italics): 4. A thermoplastic composition for producing shaped metallic bodies, which comprises A) from 40 to 70% by volume of a sinterable pulverulent metal or a sinterable pulverulent metal alloy or mixtures thereof, B) from 30 to 60% by volume of a mixture of B1) from 50 to 96% by weight of one or more polyoxymethylene homopolymers or copolymers; B2) from 2 to 35% by weight of one or more polyolefins; B3) from 2 to 40% by weight of poly-1,3-dioxepane or poly-l,3- dioxolane or mixtures thereof as binder, where the proportions by weight of the components B1, B2 and B3 add up to 100%, and C) from 0 to 5% by volume of a dispersant. Appeal 2013-001238 Application 12/373,439 3 REJECTIONS (1) Claims 4–6, 8, 12, 15, and 16 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Ebenhoech.2 (2) Claims 4–6, 8, 12, 15, and 16 are rejected on the grounds of nonstatutory obviousness-type double patenting as being unpatentable over claims 1–3 of Ebenhoech. Appellants do not make independent arguments in favor of any of the claims, or separate arguments pertinent to Rejection (2) (Appeal Br. 4–7). Accordingly, we limit our discussion to the rejection of claim 4 (the only independent claim on appeal) under 35 U.S.C. § 103(a) as being obvious over Ebenhoech. DISCUSSION Ebenhoech discloses a composition that contains components which are described in almost identical terms to the components of the claimed composition (compare Ebenhoech Abstract with appealed claim 4). The difference3 is that Ebenhoech does not explicitly describe the presence of “poly-1,3-dioxepane” or “poly-1,3-dioxolane” in its composition. The Examiner finds that Ebenhoech discloses the use of a copolymer of oxymethylene and 1,3-dioxolane (Ans. 3, citing Ebenhoech, col. 3, ll. 19– 2 Ebenhoech et al., U.S. Patent No. 5,362,791, issued November 8, 1994. 3 There are differences in some of the recited amounts of the components in the claimed composition versus Ebenhoech’s composition, which is why the rejection was made under §103 and not § 102 (Ans. 4), but Appellants do not argue that these differences are a reason for reversing the rejection (see Appeal Br. 4–7). Appeal 2013-001238 Application 12/373,439 4 50) and that such a copolymer would meet the claimed requirement of a “poly-1,3-dioxolane” (id. at 3–4). Appellants argue that the claim terms “poly-1,3-dioxepane” or “poly- 1,3-dioxolane” should be interpreted to include only homopolymers of 1,3- dioxepane and 1,3-dioxolane, and to exclude copolymers containing those monomers, such as those disclosed in Ebenhoech (Appeal Br. 5). The dispositive issue for this appeal, therefore, is whether the Examiner properly construed the claim term “poly-1,3-dioxolane” to include copolymers containing 1,3-dioxolane units so that it reads on the 1,3- dioxolane/oxymethylene copolymer disclosed by Ebenhoech.4 It is well established that “the PTO must give claims their broadest reasonable construction consistent with the specification . . . Therefore, we look to the specification to see if it provides a definition for claim terms, but otherwise apply a broad interpretation.” In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007). “[A]s applicants may amend claims to narrow their scope, a broad construction during prosecution creates no unfairness to the applicant or patentee.” Id. To the extent possible, claim terms are given their ordinary and customary meaning, as they would be understood by one of ordinary skill in the art in question at the time of the invention. Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc). In this instance, the Examiner has determined that the term “polymer” can include either a homopolymer made up of a single type of repeating unit or a copolymer comprising a mixture of repeating units, so that the claimed 4 The same analysis applies as to whether the claim term “poly-1,3- dioxepane” reads on the dioxepane/oxymethylene copolymer of Ebenhoech. Appeal 2013-001238 Application 12/373,439 5 “poly-1,3-dioxolane” would include copolymers containing units derived from monomers other than 1,3-dioxolane (such as oxymethylene, as disclosed by Ebenhoech) (Ans. 6). In support of this construction, the Examiner cites to Namba,5 which discloses that the term “polydioxolane” includes both homopolymers and copolymers (id., citing Namba, col. 12, ll. 6–9). Appellants argue that a person of skill in the art would “unambiguously identify poly-1,3-dioxolane or poly-1,3-dioxdepane [sic] as homopolymers,” citing the abstracts of two journal articles, one relating to poly-1,3-dioxepane and one relating to poly-1,3-dioxolane, where the terms were used in connection with homopolymers (Appeal Br. 5, citing to Exhibits A and B appended to the Appeal Brief). Appellants also rely on the Specification, arguing “that the present application when intending to refer to both homopolymers and copolymers, explicitly states such,” and that “if [it] were intended to include copolymers of 1,3-dioxepane or 1,3-dioxolane, the specification would have . . . explicitly stated copolymers” (id. at 6). Appellants also argue that the evidence from Namba relied on by the Examiner should be disregarded because “Namba does not clearly and unambiguously define polydioxalane to include copolymers” and “[a]ny casual or careless definition cannot serve as proof of what a person skilled in the art would normally and regularly understand as the meaning of the prefix ‘poly’ as used in the present invention” (Reply Br. 2). Appellants’ arguments are not persuasive. Appellants have not provided any specific evidence (for example by means of a Rule 132 Declaration or a definition from a technical dictionary) that a person of skill 5 Namba et al., U.S. Patent No. 5,747,602, issued May 5, 1998. Appeal 2013-001238 Application 12/373,439 6 in the art would exclude copolymers from a definition of “polymers.” To the extent that the journal articles proffered by Appellants support their position, they are counterbalanced by the evidence from the Namba reference relied on by the Examiner. The passages cited by Appellants from their Specification as allegedly showing that “the present application when intending to refer to both homopolymers and copolymers, explicitly states such”6 (Appeal Br. 6) are, at most, ambiguous, and arguably support the Examiner’s position. For example, the Specification recites “one or more polyoxymethylene homopolymers or copolymers” (Spec. 6). This suggests that the “poly-” prefix is being used to describe both homopolymers and copolymers, as determined by the Examiner. Appellants also suggest that the holding in Ex parte Parks, 30 USPQ2d 1234 (BPAI 1994) supports their argument that “if [the present specification] were intended to include copolymers of 1,3-dioxepane or 1,3- dioxolane, the specification would have . . . explicitly stated copolymers” (Appeal Br. 6). Appellants do not make clear why the decision in Parks would support the proposition that a construction of “poly-” to include copolymers would require an explicit statement in the Specification to this effect. However, to the extent that Appellants are arguing that the Parks decision would support amending their claims to specifically recite “homopolymer,” this issue is not before us, as Appellants amended their claims to delete the term “homopolymer” before the appeal came before us (id.). 6 Appellants refer to the following sections of the Specification: 1, l. 28; 2, ll. 19–20, 37, and 41; 3, l. 9; 4, ll. 16, 25 and 34; and 6, ll. 1–2. Appeal 2013-001238 Application 12/373,439 7 On balance, and given all of the evidence which has been presented, we determine that Appellants have not shown error in the Examiner’s construction of the claim terms poly-1,3-dioxolane or poly-1,3-dioxepane to include copolymers of 1,3-dioxolane and 1,3-dioxepane whereby the poly- 1,3-dioxolane requirement of claim 4 is satisfied by the copolymer of 1,3- dioxolane disclosed by Ebenhoech. Accordingly, we affirm both the rejection under § 103(a) and the obviousness-type double patenting rejection. CONCLUSION We AFFIRM the rejection of claims 4–6, 8, 12, 15, and 16 under 35 U.S.C. § 103(a) as being unpatentable over Ebenhoech. We AFFIRM the rejection of claims 4–6, 8, 12, 15, and 16 on the grounds of nonstatutory obviousness-type double patenting as being unpatentable over claims 1–3 of Ebenhoech. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED bar Copy with citationCopy as parenthetical citation