10503093 (B.P.A.I. May. 17, 2012)

Ex Parte Frandsen et al

Board of Patent Appeals and InterferencesMay 17, 2012

10503093 (B.P.A.I. May. 17, 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. 10/503,093 10/04/2004 Mikkel Vestergaard Frandsen PATRADE 3866 7590 05/17/2012 James C Wray Suite 300 1493 Chain Bridge Road McLean, VA 22101 EXAMINER KASHNIKOW, ERIK ART UNIT PAPER NUMBER 1782 MAIL DATE DELIVERY MODE 05/17/2012 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 MIKKEL VESTERGAARD FRANDSEN and OLE SKOVAMD ____________ Appeal 2010-012058 Application 10/503,093 Technology Center 1700 ____________ Before ROMULO H. DELMENDO, BEVERLY A. FRANKLIN, and GRACE KARAFFA OBERMANN, Administrative Patent Judges. DELMENDO, Administrative Patent Judge. DECISION ON APPEAL Mikkel Vestergaard Frandsen and Ole Skovamd, the Appellants,1 seek our review under 35 U.S.C. § 134(a) of a final rejection of claims 1-16.2 We have jurisdiction under 35 U.S.C. § 6(b). 1 The Appellants identify the real party in interest as Vestergaard Frandsen SA. Amendment to Appeal Brief filed January 26, 2010 at 2. App App “mor is ex and 2 illus Figu wher wall with agen 1, inf migr degr UV r 28. 2 Ap mail eal 2010-0 lication 10 We REV The inve e suitable posed to p , ll. 6-8 (S trative of t re 1a abov ein the dis element 2 a second s t that is ca ra. Accor atory UV adation of adiation a peal Brief ed April 2 12058 /503,093 ERSE. ST ntion relat for applic rimarily h pec. 1:5-6 he inventio e depicts a penser 1 h with a firs urface 5, pable of m ding to th protecting the pestici t the first s filed Janu 8, 2010 (“A ATEMEN es to a lam ation in ou igh level U ; 2:6-8). F n and is r dispenser as a first o t surface 3 and an inn igrating to e Appellan agent for dal agent urface of ary 20, 20 ns.”); Fin 2 T OF TH inated ins tdoor envi V radiatio igure 1a o eproduced 1 in acco uter solid , an optio er layer 6 w the first s ts, the firs reducing U when the p the first ou 10 (“App. al Office E CASE ecticide d ronments n.” Speci f the subj below: rdance wit , non-poro nal second ith at lea urface. S t outer wa V radiatio esticidal a ter wall el Br.”) at 5; Action ma ispenser, w where the fication, 1 ect applica h the inve us polyme outer wal st one pest pec. 17:19 ll element n-induced gent is ex ement. Sp Examiner iled July 2 hich is dispenser , ll. 5-6 tion is ntion, ric sheet o l element icidal -25; claim contains a posed to ec. 2:12- ’s Answer 0, 2009. r 4 Appeal 2010-012058 Application 10/503,093 3 Claim 1, the only independent claim on appeal, reads as follows (with the disputed limitations in italics): 1. A laminated insecticide dispenser comprising - a first outer solid, non porous polymeric wall element with one side facing the environment of said dispenser and constituting a first surface of said dispenser, - optionally a second outer wall element with one side facing the environment of said dispenser and constituting a second surface of said dispenser, - at least one inner layer between said first and second outer wall element or at least one inner layer or at least one inner layer surrounded by the first layer, - said inner layer comprising at least one pesticidal agent being capable of migration through said first outer wall element, - said first outer wall element containing a UV protecting agent, where said UV protecting agent reduces the UV radiation induced degradation of said pesticidal agent when said pesticidal agent is exposed to UV radiation wherein said UV protecting agent is capable of migrating through said first outer wall element for reaching said first surface and wherein the migration speed of the UV protecting agent is fast enough to ensure UV protection on the first surface. The Examiner rejected claims 1-16 as follows: I. Claims 1-5, 7-9, 14, and 16 under 35 U.S.C. § 102(b) as anticipated by Von Kohorn3 (with Wedel4 cited as evidence of inherency); 3 U.S. Patent 4,666,767 issued May 19, 1987. 4 U.S. Patent 4,318,253 issued March 9, 1982. Appeal 2010-012058 Application 10/503,093 4 II. Claim 6 under 35 U.S.C. § 103(a) as unpatentable over the combined teachings of Von Kohorn (with Wedel cited as evidence of inherency) and Tamura;5 and III. Claims 10-13 and 15 under 35 U.S.C. § 103(a) as unpatentable over Von Kohorn (with Wedel cited as evidence of inherency). Ans. 3-7. ISSUE The Examiner found that Von Kohorn describes a structure including a first solid non-porous polymeric wall element, an optional second outer wall element, and, disposed between the first and second wall elements, at least one inner layer containing an agent (e.g., a pesticidal agent) capable of migration. Ans. 3. The Examiner further found that Von Kohorn teaches that at least one of the layers may contain a UV screening agent to protect the active agents from premature degradation. Id. at 4. While acknowledging that Von Kohorn does not explicitly teach that the UV screening agent migrates, the Examiner relied on the teachings of Wedel to assert that the UV screening agent would inherently possess the migratory characteristics recited in claim 1. Id. at 4-5. The Appellants contend, inter alia, that the Examiner’s rejections are flawed because “[o]n the background of Wedel or in general, the assumption that all UV screening agents would migrate in the Von Kohorn dispenser is in error.” App. Br. 15. Thus, a dispositive issue central to all three rejections is: 5 U.S. Patent 6,096,814 issued August 1, 2000. Appeal 2010-012058 Application 10/503,093 5 Did the Examiner offer sufficient evidence to demonstrate that Von Kohorn’s UV protecting agent would inherently or necessarily be “capable of migrating through said first outer wall element for reaching said first surface and wherein the migration speed of the UV protecting agent is fast enough to ensure UV protection on the first surface,” as recited in claim 1? We answer in the negative. DISCUSSION The Examiner is correct that Von Kohorn teaches that a UV protecting or screening agent may be included in at least one of the layers constituting the laminated article. Von Kohorn’s claim 17; col. 13, ll. 49-56. According to Von Kohorn, the solid, non-porous polymeric materials through which the pesticidal and other active agents can migrate include, among others, polyvinyl chloride. Col. 21, ll. 40-48. Von Kohorn, however, is silent as to the migratory characteristics of the UV protecting agent and lacks any detail as to the identity of the UV protecting agent. Wedel’s disclosure “relates to apparatus and methods for spacing polyvinyl chloride materials or other synthetic plastic materials to prevent accelerated deterioration due to exposure to solar radiant energy and the like.” Col. 1, ll. 7-11. Specifically, Wedel discloses a framework for an enclosure for covering a pool or defining a building, wherein the framework is formed from a plurality of interfitting rigid members formed from a material such as polyvinyl chloride pipe. Col. 2, ll. 55-63. According to Wedel, the pipe members are joined together to support a flexible plastic sheet which overlies the supporting framework and is held in place near the base of the framework by conventional means. Col. 2, ll. 64-67. Wedel teaches that prolonged exposure to UV radiation and heat causes the Appeal 2010-012058 Application 10/503,093 6 plasticizer materials and UV inhibitors in the flexible plastic sheet (e.g., polyvinyl chloride) to migrate from the material, which is undesirable. Col. 3, ll. 6-27. But Wedel has not been shown to say that all UV inhibitors would migrate through polyvinyl chloride, let alone migrate at a speed sufficient to inhibit degradation of insecticides at the surface of the flexible sheet. As pointed out by the Appellants, App. Br. 15, the migratory or diffusion characteristic depends on the size of the molecule of the UV protecting agent as well as the material in which it is contained. Spec. 14- 15. The Examiner did not adequately account for this fact. That Wedel’s UV inhibitors migrate through polyvinyl chloride under certain conditions does not necessarily mean that Von Kohorn’s unspecified UV protecting agent would also migrate in the disclosed laminated insecticide dispenser. At most, it is possible that Von Kohorn’s UV protecting agent may migrate depending on the UV protecting agent and layer material selected. Because inherency cannot be established by mere possibilities or probabilities, we cannot affirm any of the stated rejections. In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999). We need not address Tamura because it has not been applied to cure the deficiency in the Examiner’s inherency theory, which is common to all three rejections. Appeal 2010-012058 Application 10/503,093 7 ORDER The Examiner’s rejections of claims 1-16 are reversed. REVERSED cam