11978917 (B.P.A.I. May. 9, 2012)

Ex Parte Gertzmann et al

Board of Patent Appeals and InterferencesMay 9, 2012

11978917 (B.P.A.I. May. 9, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE 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. 11/978,917 10/30/2007 Rolf Gertzmann 14069-00206-US 6780 23416 7590 05/09/2012 CONNOLLY BOVE LODGE & HUTZ, LLP P O BOX 2207 WILMINGTON, DE 19899 EXAMINER LEONARD, MICHAEL L ART UNIT PAPER NUMBER 1763 MAIL DATE DELIVERY MODE 05/09/2012 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 ____________________ BOARD OF PATENT APPEALS AND INTERFERENCES ____________________ Ex parte ROLF GERTZMANN, BEATE BAUMBACH, REINHARD HALPAAP and WOLFRAM KUETTNER ____________________ Appeal 2011-007194 Application 11/978,917 Technology Center 1700 ____________________ Before: FRED E. McKELVEY, SALLY GARDNER LANE and JEFFREY B. ROBERTSON, Administrative Patent Judges. McKELVEY, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-007194 Application 11/978,917 2 Statement of the case Bayer MaterialScience AG, the real party in interest (Brief, page 1), seeks 1 review under 35 U.S.C. § 134(a) of a final rejection dated 25 March 2010. 2 Claims 1-12 are on appeal. 3 The Examiner rejected claims 1-4 and 6-12 as being unpatentable under 4 35 U.S.C. § 103(a) over Saotome (Japanese Patent Application 2005-120134, 5 published 12 May 2005) and Nishizawa (U.S. Patent 4,447,589, issued 8 May 6 1984). 7 The Examiner rejected claim 5 as being unpatentable under 35 U.S.C. 8 § 103(a) over Saotome, Nishizawa and Blum (U.S. Patent 6,586,523 B1, issued 9 1 July 2003). 10 Analysis 11 Bayer presents only two arguments in support of its appeal. 12 Argument 1 13 Bayer argues that Saotome and Nishizawa are non-analogous prior art. 14 Bayer’s position is based on Saotome relating to aqueous-based systems 15 whereas Nishizawa is related to solvent-based systems. Brief, page 4. 16 Bayer continues that Nishizawa is not pertinent to the particular problem of 17 concern to Bayer. Id. 18 The argument presented by Bayer does not address the reason the Examiner 19 “combined” the teachings of Nishizawa with those of Saotome. 20 The Examiner found that Nishizawa describes a means for controlling the 21 molecular weight of NCO blocked resins containing polyimide structures. Final 22 Appeal 2011-007194 Application 11/978,917 3 Rejection, page 3. In the Answer, the Examiner elaborated on molecular weight 1 control as a means of improving storage and decreasing costs. Answer, page 4. 2 The Brief does not respond to the point made by the Examiner in the Final 3 Rejection. Bayer did not file a Reply Brief responding to the points raised by the 4 Examiner in the Answer. 5 The fact that Saotome involves aqueous-based systems and Nishizawa 6 involves solvent-based systems does not address the Examiner’s rationale. Nor 7 does this fact defeat the Examiner’s basis for rejection. The prior art may be 8 combined on the basis of a purpose different from that of the applicant. Bayer has 9 not addressed the purpose for combining upon which the Examiner has relied. 10 Argument 2 11 Bayer maintains that the claimed method results in products having 12 unpredictable properties—said to be superior solvent resistance and flexibility. 13 Brief, pages 4-5. According to Bayer, data based on experimental work reported in 14 the Specification supports its views. 15 In the Final Rejection, the Examiner observed that the properties on which 16 Bayer relies are nowhere to be found in the claims. Final Rejection, page 4. 17 In the Answer, the Examiner found that the data in the Specification is not 18 commensurate in scope with the breadth of the claims. Answer, page 7. The 19 Examiner further found that solvent resistance and flexibility of a comparative 20 example were not determined. The Examiner still further found that Nishizawa’s 21 use of a blocking agent results in coated films having good flexibility. Answer, 22 page 8. 23 Appeal 2011-007194 Application 11/978,917 4 The Brief does not address the points made by the Examiner in the Final 1 Rejection. There is no Reply Brief responding to the additional points made by the 2 Examiner in the Answer. 3 Observations on both arguments 4 This appears to be a case where an applicant has not directly responded to 5 technical points raised by the Examiner. It is not the Board’s job to take on the 6 role of advocate for the applicant and attempt to come up with a rationale that 7 might respond to the Examiner’s points. Rather, it is up to the applicant to address 8 the Examiner’s points so that the Board can determine whether any error occurred. 9 When an applicant does not challenge the Examiner’s points, particularly 10 when those points involve art-related technology, the Board is not in a good 11 position to analyze in the first instance whether the art of record might justify a 12 rationale undermining the Examiner’s findings. 13 While Bayer has presented argument in the Brief, the argument does not 14 address the Examiner’s rationale. On this record, we decline to re-examine the 15 application on appeal in the first instance. Based on the arguments presented for 16 our consideration, we are unable to find that the Examiner erred in making the 17 rejections. 18 Bayer makes not additional arguments beyond the two discussed above with 19 respect to the rejection of Claim 5. Brief, pages 5-6. Accordingly, Claim 5 falls 20 with Claims 1-4 and 6-12. 21 Decision 22 Upon consideration of the appeal, and for the reasons given herein, it is 23 Appeal 2011-007194 Application 11/978,917 5 ORDERED that the decision on the Examiner rejecting Claims 1-12 1 over the prior art is affirmed. 2 FURTHER ORDERED that no time period for taking any subsequent 3 action in connection with this appeal may be extended under 37 CFR 4 § 1.136(a)(1)(iv). 5 AFFIRMED 6