Ex Parte Eger et al

Patent Trial and Appeal Board

Nov 25, 2014

11662618 (P.T.A.B. Nov. 25, 2014)

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.
11/662,618 08/17/2009 Christian Eger GLAWE-14330 8289
72960 7590 11/25/2014
Casimir Jones, S.C.
2275 DEMING WAY, SUITE 310
MIDDLETON, WI 53562
EXAMINER
VALDEZ, DEVE E
ART UNIT PAPER NUMBER
1765
MAIL DATE DELIVERY MODE
11/25/2014 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 CHRISTIAN EGER and STEPHAN SPRENGER
____________

Appeal 2013-003307
Application 11/662,618
Technology Center 1700
____________

Before PETER F. KRATZ, ROMULO H. DELMENDO, and
KAREN M. HASTINGS, Administrative Patent Judges.

HASTINGS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s
decision rejecting claims 1, 2, and 19–50. We have jurisdiction over the
appeal under 35 U.S.C. § 6(b).
We AFFIRM.
Claim 1, the sole independent claim, is illustrative of the claimed
subject matter (emphasis added):
Appeal 2013-003307
Application 11/662,618

2
1. A polymeric composition comprising:
a) at least one resin selected from the group consisting of
vinyl ester resins, unsaturated polyester resins, acrylates and
methacrylates,
b) at least one copolymer having resin-reactive groups
and a glass transition temperature Tg of -20°C or less,
c) nanoparticles having an average particle size dmax as
measured by means of small-angle neutron scattering (SANS)
of 5 to 150 nm.
The Examiner maintains, and Appellants appeal, the following
rejections under 35 U.S.C. § 103(a):
1) claims 1, 2, and 19–50 as being unpatentable over the applied prior
art of Partridge (GB 2347677 A published Sept. 13, 2000) in view of Adam
(US Publication No. 2004/0147029 A1 published July 29, 2004); and
2) claims 1, 2, 19–22, and 31–50 as being unpatentable over the
applied prior art of La Fleur (US Publication No. 2003/0050397 A1
published Mar. 13, 2003) in view of Adam.
Appellants’ argument focuses on independent claim 1 for each ground
of rejection (Br. 7–16). Appellants rely upon these arguments for all the
claims in each ground of rejection and do not present any separate
arguments for any of the remaining dependent claims (id. at 9).

ANALYSIS
We have thoroughly reviewed each of Appellants’ arguments for
patentability. However, we are in agreement with the Examiner that the
claimed subject matter of representative claim 1 is unpatentable under
§ 103(a) in view of the applied prior art. Accordingly, we will sustain the
Appeal 2013-003307
Application 11/662,618

3
Examiner’s prior art rejections, and we add the following primarily for
emphasis.
In assessing whether a claim to a combination of prior art elements
would have been obvious, the question to be asked is whether the
improvement of the claim is more than the predictable use of prior art
elements or steps according to their established functions. KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 417 (2007). “[T]he analysis need not seek out
precise teachings directed to the specific subject matter of the challenged
claim, for a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ.” Id. at 418.
Appellants do not dispute the Examiner’s findings that each of
Partridge and La Fleur discloses or would have suggested polymer
compositions that contain each of components (a) and (b) as recited in claim
1, nor do they dispute the Examiner’s finding that Adams exemplifies
nanoparticle fillers as recited in component (c) of claim 1. Rather,
Appellants’ main argument for each ground of rejection is that there is no
reason to add the “specific particle dispersion” (that is, nanoparticle filler) of
Adam to the “specific polymer compositions” of Partridge (Br. 11) or La
Fleur (Br. 16). This argument is not persuasive. It is also well established
that in evaluating references it is proper to take into account not only the
specific teachings of the references but also the inferences which one skilled
in the art would reasonably be expected to draw therefrom. In re Preda, 401
F.2d 825, 826 (CCPA 1968). As pointed out by the Examiner, one of
ordinary skill in the art would have, using no more than ordinary creativity,
predictably used a known nanoparticle filler for its known function of
enhancing mechanical properties in polymer materials as exemplified in
Appeal 2013-003307
Application 11/662,618

4
Adam (see, e.g., abstract) for the polymeric compositions exemplified in
Partridge or La Fleur (e.g., Final Action 3–5; generally Br.). See KSR, 550
U.S. at 421 (“A person of ordinary skill is also a person of ordinary
creativity, not an automaton.”).
Appellants’ argument that La Fleur is drawn to a single phase
composition whereas the claims under examination are not directed to single
phase compositions (Br. 15) is also not persuasive since Appellants have not
directed us to any persuasive reasoning or evidence that claim 1 is so
limited. Limitations not appearing in the claims cannot be relied upon for
patentability. In re Self, 671 F.2d 1344, 1348 (CCPA 1982).
Lastly, Appellants’ argument that their Specification exemplifies
unexpected results for the claimed compositions (Br. 13, 14) is also not
persuasive of error in the Examiner’s rejections. The evidence relied on by
Appellants is unpersuasive of patentability. The burden of showing
unexpected results rests on the person who asserts them by establishing that
the difference between the claimed invention and the closest prior art was an
unexpected difference. See In re Baxter Travenol Labs., 952 F.2d 388, 392
(Fed. Cir. 1991); In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972). The
unexpected results must be established by factual evidence, and attorney
statements are insufficient to establish unexpected results. See In re Geisler,
116 F.3d 1465, 1470–71 (Fed. Cir. 1997). Further, a showing of unexpected
result supported by factual evidence must be reasonably commensurate in
scope with the degree of protection sought by the claims on appeal. In re
Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983); In re Clemens, 622 F.2d
1029, 1035 (CCPA 1980).
Appeal 2013-003307
Application 11/662,618

5
Appellants have not shown how their two inventive examples and one
comparative example are directed to a comparison with the closet prior art,
nor have they shown why this limited showing of two examples is in any
way commensurate in scope with the breadth of claim 1 which encompasses
many different polymeric compositions having only a minimal amount of
nanoparticle filler therein.
Therefore, we affirm the Examiner’s § 103 rejections of the claims on
appeal.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136.

ORDER
AFFIRMED

bar