Ex Parte Freese et al

Patent Trials and Appeals Board

Feb 25, 2019

13669208 - (D) (P.T.A.B. Feb. 25, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/669,208 11/05/2012 Yvette Freese
20311 7590 02/27/2019
LUCAS & MERCANTI, LLP
30 BROAD STREET
21st FLOOR
NEW YORK, NY 10004
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.
ST-39-CON 9795
EXAMINER
RODD, CHRISTOPHER M
ART UNIT PAPER NUMBER
1766
NOTIFICATION DATE DELIVERY MODE
02/27/2019 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):
info@lmiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL
AND APPEAL BOARD
Ex parte YVETTE FREESE, INGRID REUTTER and
HEINRICH SCHNORRER
Appeal2018-002027
Application 13/669,208
Technology Center 1700
Before ROMULO H. DELMENDO, JEFFREY T. SMITH, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.
COLAIANNI, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2018-002027
Application 13/669,208
Appellant1 appeals under 35 U.S.C. § 134 the final rejection2 of
claims 1-16. Claim 17 is withdrawn from consideration by the Examiner.
The rejection of the claims in the parent U.S. Patent Application 11/373,252
of the present application was the basis for Appeal No. 2011-004335, in
which the Board affirmed the Examiner's rejection. We have jurisdiction
over the appeal pursuant to 35 U.S.C. § 6(b ).
We AFFIRM.
The invention is directed to an oven-bake modeling material and an
object formed from the material. (claims 1 and 16; Spec. 2).
Claim 1 is illustrative:
1. A modeling material comprising:
a binder in the form of a plastisol, wherein the plastisol
comprises PVC (polyvinyl chloride) and at least one phthalate-free
plasticizer, whereby the material is formulated to be hand
moldable at ambient temperature and is hardenable at temperatures
from 100-130°C so as to be gelled after hardening to form a form-stable
mass, wherein the modeling material is free from phthalate
plasticizers, comprising 15% by weight to 24% by weight of the at
least one phthalate-free plasticizer.
1 According to the Appeal Brief, the real party in interest is listed as "J.S.
Staedtler GmbH & Co." (Appeal Br. 2).
2 We cite to the Non-Final Action dated November 18, 2015 throughout this
decision because the Examiner refers to the Non-Final Action for the
statement of the rejections (Final Act. 2).
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Appeal2018-002027
Application 13/669,208
Appellant appeals the following rejections:
1. Claims 1-16 are rejected under 35 U.S.C. § I03(a) as unpatentable
over Giessler (US 3,627,707 issued December 14, 1971), Zawadzki
(US 3,700,616, issued October 24, 1972), Swietzer (US 4,273,820,
issued June 16, 1981), Billings (US 4,278,718, issued July 14, 1981),
Wesch (US 6,559,213 B2, issued May 6, 2003), or Sanchez (US
2005/0113471 Al, published May 26, 2005) in view of Gosse (US
7,297,738 B2, issued November 20, 2007) or Koch (US
2004/0138358 Al, published July 15, 2004).
2. Claims 1--4, and 10-16 are rejected under 35 U.S.C. § I03(a) as
unpatentable over EN7I-5 (Sicherheit von Speilzeug, Safety of toys:
Part 5: Chemical toys (sets) other than experimental sets, AFNOR,
Polyform Products Company, May 1993, pgs. 1-20) in view of
Trouble in Toyland (Lindsey Johnson, Trouble in Toyland, The 19th
Annual Survey of Toy Safety, National Association of State PIRGs,
November 2004, pgs. 1--49) as evidenced by Wesch.
Appellant's arguments focus only on the subject matter of modeling
material claim 1 (Appeal Br. 5-24).
FINDINGS OF FACT & ANALYSIS
REJECTION (1)
The Examiner's findings and conclusions regarding Giessler,
Zawadzki, Switzer, Billings, Wesch, or Sanchez with either Gosse or Koch
are located on pages 5 to 13 of the Non-Final Action. The Examiner finds
generally that each of the references discloses a material having the required
plastisol with a plasticizer that may be non-phthalate (Appeal Br. 5 to 13).
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Application 13/669,208
The Examiner finds that Giessler, Zawadzki, Sweitzer, Billings, Wesch, or
Sanchez teaches plasticizer amounts and gelling temperatures that overlap
with those recited in the claim (Non-Final Act. 7). The Examiner finds that
Gosse and Koch each teach using non-phthalate plasticizers (Non-Final Act.
7). The Examiner finds that Giessler, Zawadzki, Sweitzer, Billings, Wesch,
or Sanchez each teach the equivalency of using phthalate or non-phthalate
plasticizers (Non-Final Act. 8). The Examiner finds that Wesch teaches the
desirability of replacing phthalate plasticizers with non-phthalate plasticizers
(Non-Final Act. 8). The Examiner concludes that it would have been
obvious to use non-phthalate plasticizers in the material of Giessler,
Zawadzki, Switzer, Billings, Wesch, or Sanchez "for the advantage of using
plasticizers in PVC plastisol compositions which are not possibly harmful to
health and may also have better viscosity when working the formulations
and less of an increase in viscosity over time ( after storage) .... " (Non-Final
Act. 9).
Regarding Wesch, Zawadzki, Sanchez, Gosse and Koch, Appellant
contends that even though non-phthalate plasticizers are known, there is no
reason to substitute them for phthalate plasticizers (Appeal Br. 12, 14, 16,
17-18). Appellant argues that the Examiner's modification of the prior art
to use phthalate-free plasticizers is based upon impermissible hindsight
(Appeal Br. 18). Appellant contends that the prior art teaches a flexible,
elastic product and not a hardenable material (Appeal Br. 19).
Contrary to Appellant's arguments the Examiner makes specific
findings regarding where each of Zawadzki, Wesch, or Sanchez in
combination with Gosse or Koch teaches using non-phthalate plasticizers
and the Examiner provides reasoning why using such non-phthalate
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Application 13/669,208
plasticizers would have been desirable (i.e., due to dangers associated with
phthalate plasticizers and to control viscosity) (Non-Final Act. 6-10). The
Examiner finds that the primary references teach using non-phthalate
plasticizers (Non-Final 6-7). The Examiner finds specifically that Wesch
uses benzoates as plasticizers, Zawadzki uses a polymeric plasticizer, and
Sanchez uses a primary polymeric plasticizer (Non-Final Act. 6-7). The
Examiner finds that the prior art references teach that phthalate and non-
phthalate plasticizers are functional equivalents (Non-Final Act. 8). The
Examiner finds that each of the references teaches plasticizer amounts that
overlap with the claimed plasticizer range (i.e., 15 wt.% to 24 wt.%) (Non-
Final Act. 7). The Examiner relies on Gosse or Koch to teach that plastisols
with phthalate plasticizers suffer from an unacceptable viscosity rise during
processing (Non-Final Act. 8-9). The Examiner finds that Koch teaches that
non-phthalate plasticizers such as benzoate mixtures have fast gelling
properties and are viscosity reducers (Non-Final Act. 9-10). Based on
Koch's teachings the Examiner concludes that it would have been obvious to
substitute Koch's benzoate mixtures of PVC plasticizers as the non-phthalate
plasticizers in Zawadzki, Wesch, or Sanchez to achieve the advantages
taught by Koch (e.g., lower viscosity rise and fast gelling) (Non-Final Act.
10). Appellant's argument does not address or otherwise show reversible
error with these findings of the Examiner.
The Examiner's findings and conclusions are not based upon
impermissible hindsight, but rather the teaching of the references.
Regarding Appellant's argument that the prior art does not teach a
hardenable material, the Examiner finds that Zawadzki, Wesch or Sanchez
in combination with Gosse and Koch teach that the final product is a form
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Application 13/669,208
stable ( cured) mass which is hand moldable prior to heating to the gelling
temperature (i.e., 100° to 130°C) (Non-Final Act. 10). The Examiner treats
the gelling temperature limitation as a product-by-process limitation that is
given weight to the extent it affects the final product (Non-Final Act. 10). In
other words, the Examiner finds that the molding material of Zawadski,
Wesch or Sanchez is capable of forming a product that is form stable ( cured)
after shaping. Although Appellant contends that elastic material is not
hardened, Appellant does not direct us to a definition of hardenable that
excludes such an end product. In other words, the molding material of
Zawadzki, Wesch or Sanchez is hardenable within the meaning of claims.
Appellant provides a claim chart in the Evidence Appendix of the
Appeal Brief. The Examiner correctly finds that the listing of the claim
limitations and Appellant's allegation of how the prior art maps to the claim
does not address the Examiner's rejection based on the combination of the
references; the obviousness of the claimed invention (Ans. 18). Appellant
has not shown reversible error with the Examiner's§ 103 rejection over
Zawadzki, Wesch, or Sanchez in view of Gosse or Koch.
Regarding the Examiner's§ 103 rejection over Geissler or Sweitzer,
Appellant argues that Giessler or Sweitzer do not teach a hand moldable
composition ( Appeal Br. 12-13, 15). Appellant contends that Giessler' s
composition is poured onto a surface at room temperature, which would not
be formable by hand (Appeal Br. 12). We are persuaded by Appellant's
arguments. The Specification describes "modelling materials" as "clays or
polymer clays in the case of polymer-containing materials" (Spec. 2). The
Specification discloses that oven-bake modelling material is used for
shaping and sculpting objects (Spec. 2). In other words, the Specification
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Application 13/669,208
describes that the modelling material within the meaning of the claims
includes clays or polymer clays, which is known to have a viscosity that
permits the object being formed to be self-supporting. Geissler's pourable
gasket material or Sweitzer' s vinyl flooring layer that is coated on the
flooring so as to form the layer would not constitute modelling material
within the meaning of the claims. We reverse the Examiner's§ 103
rejection over Geissler or Sweitzer in view of Gosse or Koch.
REJECTION (2)
Appellant argues that there is no reason to substitute non-phthalate
plasticizers for phthalate plasticizers because there is no indication that non-
phthalate plasticizers would provide the modeling material with the required
properties of being moldable at room temperature and hardenable at
temperatures of 100 to 130°C (Appeal Br. 23). Appellant acknowledges that
EN 71-5 and Trouble in Toyland teach phthalate and non-phthalate
plasticizers (Appeal Br. 23). Appellant contends that Trouble in Toyland's
teaching that phthalates may be dangerous does not teach that phthalate-free
plasticizers could be easily substituted for phthalate plasticizers (Appeal Br.
24).
Contrary to Appellant's arguments, the Examiner finds that EN71-5
teaches to use phthalate and non-phthalate plasticizers (Non-Final Act. 13).
The Examiner finds that Trouble in Toyland teaches that phthalates may
expose children to dangerous levels of phthalates (Non-Final Act. 13). The
Examiner finds that EN71-5 teaches to use plasticizer amounts that are less
than 30% which encompasses the range of plasticizers in claim 1 (i.e., 15 to
24%) (Non-Final Act. 14). The Examiner finds that EN71-5 teaches
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Application 13/669,208
hardening and gelation limitations (Non-Final Act. 14). The Examiner
concludes that it would have been obvious to choose the non-phthalate
plasticizers taught in Table 2 of EN71-5 for the PVC modeling clay to avoid
the health conditions cause by using phthalates (Non-Final Act. 13).
In other words, the Examiner's rejection is based upon the teachings
of the references which would have suggested using non-phthalate
plasticizers to avoid health concerns caused by using phthalate plasticizers.
The Examiner finds that EN71-5 teaches the claimed hardening and gelation
limitations. Because EN71-5 teaches to use both phthalate and non-
phthalate plasticizers, there is a reasonable expectation that either plasticizer
would have been suitable for achieving a modeling material having the
recited hardening temperature.
On this record, we affirm the Examiner's § 103 rejection over EN71-5
in view of Trouble in Toy land.
DECISION
The Examiner's decision is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. §
1.136(a)(l )(iv).
ORDER
AFFIRMED
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