Ex Parte Keller

Patent Trial and Appeal Board

May 31, 2016

12991570 (P.T.A.B. May. 31, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/991,570 11/08/2010
22045 7590 06/02/2016
BROOKS KUSHMAN P,C
1000 TOWN CENTER
TWENTY-SECOND FLOOR
SOUTHFIELD, MI 48075
FIRST NAMED INVENTOR
Uwe Keller
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.
KURA0120PUSA 9829
EXAMINER
KOLLIAS, ALEXANDER C
ART UNIT PAPER NUMBER
1767
NOTIFICATION DATE DELIVERY MODE
06/02/2016 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):
docketing@brookskushman.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL
AND APPEAL BOARD
Ex parte UWE KELLER
Appeal2014--008026
Application 12/991,570
Technology Center 1700
Before BEYERL YA. FRANKLIN, GEORGE C. BEST, and
CHRISTOPHER L. OGDEN, Administrative Patent Judges.
FRANKLIN, Administrative Patent Judge.
DECISION ON APPEAL
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner's
decision rejecting claims 17-38. We have jurisdiction over the appeal under
35 U.S.C. § 6(b).
STATEMENT OF THE CASE
Claim 35 is illustrative of Appellant's subject matter on appeal and is
set forth below (with text in bold for emphasis):
35. A plasticizer-containing polyvinyl acetal laminating film
compnsmg:
a) a polyvinyl acetal polymer having a Tg less than 74°C
measured by differential scanning calorimetry in accordance
Appeal2014-008026
Application 12/991,570
with DIN 53765 with a heating rate of I OK/min over a
temperature range of -50°C to l 50°C, the polyvinyl acetal
having a Tg less than 74°C present in an amount of from 60 to
90% by weight based on the weight of the plasticizer-
containing polyvinyl acetal laminating film; and
b) from 10 to 40% by weight based on the weight of the
plasticizer-containing polyvinyl acetal laminating film of at
least one cyclohexane dicarboxylic acid ester plasticizer having
4 to 1 7 C atoms in the ester groups of the at least one
cyclohexane dicarboxylic acid ester plasticizer, wherein the
plasticizer-containing film is of a thickness suitable for use as a
laminating film in laminated safety glass or in photovoltaic
modules.
The Examiner relies on the following prior art references as evidence
of unpatentability:
Hayes
Noe
LeCacheur
Perez
US 2008/0185035 Al
US 2004/0054220 Al
us 5,326, 796
us 4,355,886
Pub. Aug. 7, 2008
Pub.1\1ar. 18,2004
Pat. Jul. 5, 1994
Pat. Oct. 26, 1982
Peter A. Lewis, Pigment Handbook, Properties and Economics, Vol. 1.
(1988) (hereafter "Lewis").
THE REJECTIONS 1
Claims 16, 17, 19-27, and 30-38 are rejected under 35 U.S.C. §103(a)
as being unpatentable over Hayes in view of Perez and Noe. 2
1 An Advisory Action was mailed on February 13, 2014. In this Advisory
Action, the objections to the claims made in the Final Office Action were
withdrawn, and the 35 U.S.C. § 112 first and fourth paragraph rejections
were withdrawn. Advisory Action, 2.
2 Although the rejection reads that the applied art is "Hayes in view of Perez
and Noe", the Examiner explains that Perez is a teaching reference and not
2
Appeal2014-008026
Application 12/991,570
2. Claim 18 is rejected under 35 U.S.C. §103(a) as being unpatentable
over Hayes, Perez, and Noe, as applied to claims 16-17, 19-27 and 30-38
above, and in view of LeCacheur.
3. Claims 28 and 29 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Hayes, Perez, and Noe, as applied to claims 16, 17, 19-27
and 30-38 above, and in view of Lewis.
ANALYSIS
We have reviewed the record, including the Final Office Action, the
Advisory Action, the Appeal Brief (including the Declaration cited in the
evidence appendix), the Answer, and the Reply Brief. Based upon the
preponderance of the evidence, we reverse the rejections.
The Examiner's position is set forth on pages 5---6 of the Final Office
Action. Therein, the Examiner refers to i-fi-147, 48, 64---69, 77, and 82-104 of
Hayes in making certain findings. The Examiner states that the T g of the
Hayes's plasticized poly( vinyl butyral) (PVB) polymer is not disclosed
(Final Act. 6), so the Examiner relies upon Perez, and takes the position that
the PVB of Hayes (as evidenced by Perez) inherently has the claimed Tg of
less than 74°C. Final Act. 5-7. Essentially, it is the Examiner's position
that because Perez discloses a similar PVB polymer to that of Hayes, then
Hayes' PVB polymer would have the same associated T g value as that
disclosed in Perez (which is within the range claimed by Appellant), and
therefore, Hayes' s T g value inherently falls within Appellant's claimed T g
range. Id. The Examiner then relies upon Noe for teaching use of
used to modify Hayes. Ans. 2-3. Appellant acknowledges this on page 2 of
the Reply Brief.
3
Appeal2014-008026
Application 12/991,570
cyclohexane dicarboxylic acid ester plasticizers and concludes it would have
been obvious to utilize such plasticizers in Hayes' s PVB films. Final Act. 7.
Appellants dispute the inherency position taken by the Examiner for
the reasons stated on pages 8-12 of the Appeal Brief, and on pages 1-3 of
the Reply Brief, which we do not repeat herein.
In response, on page 16 of the Answer, the Examiner states that the
inherency position is based upon the fact that Hayes discloses polyvinyl
acetals identical to the acetyls claimed. In making this statement, however,
the Examiner does not direct us to sufficient evidence in the record to
support the position that Hayes discloses polyvinyl acetals identical to the
acetyls claimed such that the polymer of Hayes inherently has a T g of less
than 74°C as claimed in Appellant's claim 35. See generally Final Act.;
Ans. Appellant suggests this point at the bottom of page 9 and at the top of
page 10 of the Appeal Brief. Appellant reiterates, beginning at the bottom of
page 1 of the Reply Brief, that the Examiner has not the burden of inherency
regarding Hayes. We add that i-fi-134--45 of Appellant's Specification
describe the polyvinyl acetals and the PVBs according to Appellant's
invention.3 Because the Examiner has not adequately explained how
Hayes' s acetals/PVBs are similar, the Examiner has not met the burden
required. "In relying upon the theory of inherency, the examiner must
provide a basis in fact and/or technical reasoning to reasonably support the
3 The Examiner does not adequately explain how Hayes' acetals or PVBs are
similar. The Examiner discusses certain examples on pages 17-19 of the
Answer, but discusses these examples as they relate to Perez and not to
Hayes. The Examiner makes it clear, on pages 2-3 of the Answer, that
Perez is not used to modify Hayes, but is used as a teaching reference. It is
the acetals and PVBs of Hayes that need be shown are the same or similar to
support the inherency position regarding the claimed Tg value.
4
Appeal2014-008026
Application 12/991,570
determination that the allegedly inherent characteristic necessarily flows
from the teachings of the applied prior art." Ex parte Levy, 17 USPQ2d
1461, 1464 (Bd. Pat. App. & Inter. 1990). The applied art in the case before
us is Hayes in connection with the inherency theory (the Examiner explained
that Perez is a teaching reference). It is Hayes's polymer that must be shown
to be the same or similar to the claimed polyvinyl acetal polymer as it
pertains to the inherency position.4 It appears the Examiner's focus on Perez
is misdirected and therefore the inherency theory is inadequate.
In view of the above, we reverse Rejection 1. Because the Examiner
does not rely upon the other applied references of Rejections 2 and 3 to cure
the stated deficiencies discussed, supra, with regard to Rejection 1, we also
reverse Rejections 2 and 3.
DECISION
Each rejection is reversed.
ORDER
REVERSED
4 Where the claimed and prior art products are identical or substantially
identical in structure or composition, or are produced by identical or
substantially identical processes, a prima facie case of either anticipation or
obviousness has been established. In re Best, 562 F.2d 1252, 1255 (CCPA
1977).
5