11994937 (B.P.A.I. Jan. 20, 2012)

Ex Parte Eipper et al

Board of Patent Appeals and InterferencesJan 20, 2012

11994937 (B.P.A.I. Jan. 20, 2012)

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. 11/994,937 01/07/2008 Andreas Eipper 12810-00611-US 2620 30678 7590 01/20/2012 CONNOLLY BOVE LODGE & HUTZ LLP 1875 EYE STREET, N.W. SUITE 1100 WASHINGTON, DC 20006 EXAMINER HUHN, RICHARD A ART UNIT PAPER NUMBER 1764 MAIL DATE DELIVERY MODE 01/20/2012 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 BOARD OF PATENT APPEALS AND INTERFERENCES ________________ Ex parte ANDREAS EIPPER, MARTIN WEBER, and CARSTEN WEISS ________________ Appeal 2010-012483 Application 11/994,937 Technology Center 1700 ________________ Before BRADLEY R. GARRIS, MARK NAGUMO, and MICHAEL P. COLAIANNI, Administrative Patent Judges. COLAIANNI, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-012483 Application 11/994,937 2 This is a decision on an appeal under 35 U.S.C. § 134 from the Examiner’s final rejection of claims 1 through 8. We have jurisdiction pursuant to 35 U.S.C. § 6. We AFFIRM. STATEMENT OF THE CASE The subject matter on appeal is directed to a headlamp part for automobile applications. Claim 1 is illustrative: 1. A headlamp part for automobile applications composed of thermoplastic molding compositions, comprising A) from 10 to 99.9% by weight of at least one thermoplastic polyester, B) from 0.1 to 50% by weight of at least one terpolymer, obtainable from bl) at least one vinylaromatic monomer, b2) at least one C1-C4-alkyl (meth)acrylate or (meth)acrylonitrile, and b3) from 0.1 to 10% by weight, based on the total weight of components bl) to b3), of at least one monomer which comprises an α,ß-unsaturated anhydride, and C) from 0 to 60% by weight of other additives, where the total of the percentages by weight of components A) to C) is 100%. The Examiner maintains the rejection of claims 1-8 under 35 U.S.C. § 103(a) as unpatentable over Weber (WO 2004/055107 A1, published July 1, 2004) and Hegemann (US 5,916,649, issued June 29, 1999). Appellants’ arguments focus on claim 1. Accordingly, we address Appellants’ arguments with respect to this claim only. Appeal 2010-012483 Application 11/994,937 3 ISSUE Did Appellants establish that the Examiner reversibly erred in determining that the combined teachings of Weber and Hegemann would have rendered obvious a headlamp part as required by claim 1 within the meaning of § 103(a)? We decide this issue in the negative. ANALYSIS AND CONCLUSION Appellants argue that Weber’s compatibilizers do not inherently possess the low-fogging properties of a headlamp part as required by claim 1. (App. Br. 4). Appellants also argue that Weber’s molding articles are not suitable as headlamp covers because they are not transparent. Id. at 6. Appellants also argue that Weber does not teach the claimed composition because Weber’s composition includes at least one additional compound having at least two isocyanate groups. Id. at 5. Appellants further argue that Weber’s additional compound having at least two isocyanate groups cannot reasonably be considered to correspond to the claimed component (A) or (C) as required by claim 1. Id. at 5 and 6. Appellants also argue1 that Hegemann does not suggest a composition having a thermoplastic polymer as required by the claim as Hegemann teaches a composition having thermosetting polymers. (App. Br. 7). 1 Appellants for the first time in the Reply Brief present arguments that there would have been no reasonable expectation of successfully making a headlamp part as taught by Hegemann using Weber’s composition. (Reply Br. 2). Appellants, however, have not presented an explanation establishing a showing of good cause why these new arguments were not presented in the Appeal Brief. Any new argument not timely presented in the Appeal Brief will not be considered when filed in a Reply Brief, absent a showing of good Appeal 2010-012483 Application 11/994,937 4 In an attempt to rebut the Examiner’s prima facie case of obviousness, Appellants argue that the table at page 20 of the Specification shows unexpected results. Id. In that regard, Appellants refer to Examples 2 and 4, which show that fogging is reduced by 50 and 100%, respectively. Id. We are in agreement with the Examiner that the combined teachings of Weber and Hegemann would have rendered the claimed invention obvious to one of ordinary skill in the art within the meaning of § 103. We further agree with the Examiner’s determination on pages 8-9 of Answer that the evidence of unexpected results does not outweigh the evidence of obviousness because the evidence is not commensurate in scope with the claimed invention and the claims do not require the argued property. Accordingly, we sustain the Examiner’s § 103 rejection for the reasons set forth on pages 4-10 of the Answer, and we add the following for emphasis only. With respect to Appellants’ arguments (Br. at 4 and 6) directed to the claimed low-fogging and transparent properties of a headlamp part and a headlamp cover, we note that Appellants’ arguments are without persuasive merit because the features argued by Appellants (i.e., low-fogging and transparent properties and a headlamp cover) are not limitations in the claim. See In re Self, 671 F.2d 1344, 1348 (CCPA 1982) (stating that “[m]any of appellant’s arguments fail from the outset because . . . they are not based on limitations appearing in the claims.”). Contrary to Appellants’ argument, the plain meaning of the claimed “headlamp part” feature does not restrict the particular part of the headlamp cause explaining why the argument could not have been presented in the Appeal Brief. See Ex parte Borden, 93 USPQ2d 1473, 1474-77 (BPAI 2010)(informative). Appeal 2010-012483 Application 11/994,937 5 to be a cover. Phillips v. AWH Corp., 415 F.3d 1303, 1314 (Fed. Cir. 2005) (stating that “the claims themselves provide substantial guidance as to the meaning of particular claim terms.”). Nor does the supporting specification define the term “headlamp part” in such a limited manner. Accordingly, we sustain the Examiner’s rejection. ORDER The Examiner’s decision is affirmed. TIME PERIOD No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1). AFFIRMED bar