12420112 (P.T.A.B. Mar. 25, 2016)

Ex Parte Bushmire et al

Patent Trial and Appeal BoardMar 25, 2016

12420112 (P.T.A.B. Mar. 25, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/420,112 04/08/2009 123223 7590 03/29/2016 Drinker Biddle & Reath LLP (WM) 222 Delaware A venue, Ste. 1410 Wilmington, DE 19801-1621 FIRST NAMED INVENTOR Alan D. B ushmire 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. 074065-0006-US (287675) 1875 EXAMINER YANG,JIE ART UNIT PAPER NUMBER 1733 NOTIFICATION DATE DELIVERY MODE 03/29/2016 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): IPDocketWM@dbr.com penelope.mongelluzzo@dbr.com DBRIPDocket@dbr.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ALAND. BUSHMIRE, JAN L. CLATTY, MICHAEL J. DVORCHAK, CHARLES A. GAMBINO, and CHRISTINE MEBANE Appeal2014-004497 Application 12/420, 112 Technology Center 1700 Before ADRIENE LEPIANE HANLON, CATHERINE Q. TIMM, and JAMES C. HOUSEL, Administrative Patent Judges. PERCURIAM. DECISION ON APPEAL Appellants 1 seek review of the Examiner's decision to reject claims 1- 6 and 9-132 under 35 U.S.C. Â§ 103(a) as unpatentable over Bulluck3 over Bach,4 and the Examiner's decision to reject claims 7 and 8 under 35 U.S.C. 1 Appellants identify the real party in interest as Bayer MaterialScience LLC. Br. 1. 2 Claims 14--25 have been withdrawn from consideration and are not before us on appeal. 3 Bulluck et al., US 7,144,544 B2, issued Dec. 5, 2006 ("Bulluck"). 4 Bach et al., US 7,268,172 B2, issued Sept. 11, 2007 ("Bach"). Appeal2014-004497 Application 12/420, 112 Â§ 103(a) as unpatentable over Bulluck and Bach and further in view of Khudyakov. 5 We have jurisdiction under 35 U.S.C. Â§Â§ 6(b) and 134(a). For the reasons provided in the Answer, we AFFIRM. Appellants do not argue any claim apart from the others. Therefore, we select claim 1 as representative for deciding the issues on appeal, and we rely upon the copy of the claim as reproduced in the Claims Appendix of the Appeal Brief filed November 19, 2013 (Br. 5). The Examiner presents well supported findings of fact and reasons for combining the teachings of the references in the Non-Final Office Action6 dated October 11, 2012 (Non-Final Act.) and in the Answer dated December 26, 2013 (Ans.). In particular, the Examiner finds Bulluck discloses the recitations of claim 1 except the curing time recited in claim 1. Non-Final Act. 2-3. The Examiner finds Bach discloses a UV-curable composition, including a resin similar to that of Bulluck, which is cured within 10 minutes and concludes it would have been obvious to use a cure time of less than 10 minutes in the process of Bulluck. Non-Final Act. 3--4. Appellants contend one of ordinary skill in the art would have lacked a reasonable expectation of success to modify the process of Bulluck in view of Bach because Appellants' invention relates to a repair process in which several inches of resin must be cured within 10 minutes, while the process of Bach cures compositions having a thickness of approximately 2 mils. Br. 3. Appellants further argue Khudyakov provides no additional information or expectation of success for curing thick composite materials. Br. 4. 5 Khudyakov et al., US 6,621,970 B2, issued Sept. 16, 2003 ("Khudyakov"). 6 The Final Office Action mailed Feb. 21, 2013 refers to the rejections set forth in the Non-Final Office Action mailed Oct. 11, 2012. 2 Appeal2014-004497 Application 12/420, 112 As stated by the Examiner, the claims do not include limitations for resin thickness. Ans. 4. In re Self, 671F.2d1344, 1348 (CCPA 1982) ("Many of appellant's arguments fail from the outset because ... they are not based on limitations appearing in the claims.") Therefore, Appellants' arguments are not commensurate with the scope of the claims. Appellants have not responded to the Examiner's determinations in the Answer. Accordingly, Appellants have not shown reversible error in the Examiner's rejections. DECISION The Examiner's decision is affirmed. TIME PERIOD FOR RESPONSE 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)(l). AFFIRMED 3