Ex Parte Loth et al

Patent Trial and Appeal Board

Dec 23, 2014

12092669 (P.T.A.B. Dec. 23, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte HELMUT LOTH, OLIVER SCHMIDT, JENNIFER SCHMIDT,
HORST BECK, and MARKUS SUMSER
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Appeal 2013-004551
Application 12/092,669
Technology Center 1700
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Before PETER F. KRATZ, BEVERLY A. FRANKLIN, and
N. WHITNEY WILSON, Administrative Patent Judges.

FRANKLIN, Administrative Patent Judge.

DECISION ON APPEAL

Appellants appeal under 35 U.S.C. § 134 from the Examiner's
rejection of claims 1–15. We have jurisdiction under 35 U.S.C. § 6.
STATEMENT OF THE CASE
Claim 1 is representative of the subject matter on appeal and is set
forth below (with text in bold for emphasis):
1. A silane-crosslinking adhesive, sealant or coating material prepared
from materials comprising a polymer composed of an organic backbone that
is not polyurethane and carries at least two alkoxysilyl or acyloxysilyl
groups, a tertiary amine catalyst, and of at least one filler, wherein the
filler is composed at least partly of highly disperse silica having a BET
surface area of 10 to 90 m2/g and is present in the material in an amount of
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1% to 60% by weight, based on the total weight of the adhesive, sealant or
coating material.

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Bublewitz et al. US 2005/0250871 A1 Nov. 10, 2005
(hereafter “Bublewitz”)

THE REJECTIONS
1. Claims 1–15 are rejected under 35 U.S.C. § 112, first paragraph, as
failing to comply with the written description requirement.
2. Claims 1–15 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Bublewitz.
ANALYSIS
As an initial matter, to the extent that Appellants have presented
substantive arguments for the separate patentability of any individual claims
on appeal, we will address them separately consistent with 37 C.F.R. §
41.37(c)(1)(vii).

Rejection 1
It is the Examiner’s position that claim 1 now recites a “tertiary amine
catalyst” but that there is no support for this genus in the original
Specification for the reasons set forth on pages 4, 8, and 9 of the Answer.
Appellants argue that tertiary amines are well known in the art as
curing catalysts for epoxies and epoxides. Br. 5. Appellants also state:
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There are only three possible amine catalyst families, primary,
secondary and tertiary amine catalysts. Appellants' specification
discloses linear (triethylamine) and cyclic (DBU) tertiary amine
catalysts. Appellants' specification discloses curing catalyst
for epoxides, such as tertiary amine catalysts, can be used therein.
Appellants' specification includes six (6) examples using a tertiary
amine catalyst. The Examiner admits that Appellants' specification
provides examples of tertiary amine catalysts.
The Examiner never discusses amine catalysts. The Examiner never
discusses why Appellants' disclosure of "other curing catalysts for
epoxides" does not support tertiary amine catalysts, which are well
known as curing catalysts for epoxides. The Examiner never discusses
the skilled person in this art. The Examiner never discusses
why a skilled person would not recognize the Appellants' disclosure of
tertiary amine catalysts when such tertiary amines are simple in
structure, well known and admitted by the Examiner to be disclosed in
Appellants' specification. The Examiner has not met his burden to
establish a prima facie case that a skilled person in the art would not
have recognized that Appellants' invention included tertiary amine
catalysts in view of Appellants' disclosure and knowledge in the art.
The Board should reverse the 35 U.S.C. §112 rejection for at least this
reason.
Br. 7–8.
We agree with Appellants’ stated position as presented throughout the
Brief, and note that when the original written description describes
something within the scope of the claim, the Examiner must do more than
point out the difference in scope. This is so because “that a claim may be
broader than the specific embodiment disclosed in a specification is in itself
of no moment.” In re Rasmussen, 650 F.2d 1212, 1215 (CCPA 1981).
There are instances in which a narrower disclosure can support broader
claims. Id.; see also In re Smythe, 480 F.2d 1376, 1382 (CCPA 1973).
We therefore reverse Rejection 1.
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Rejection 2
We refer to the Examiner’s stated rejection as set forth on pages 5–8
of the Answer.
Appellants argue that their claims recite a tertiary amine catalyst.
Appellants argue that Bublewitz teaches that tertiary amine catalyst should
not be used. Br. 13–14. Appellants also argue that the proposed
composition is not suitable for use as the dental material of Bublewitz for the
reasons set forth on pages 14–15 of the Brief. Appellants also argue that
there is no motivation to modify Bublewitz’s composition as proposed by
the Examiner. Br. 15–17.
In reply, the Examiner states:
The examiner disagrees. Bublewitz specifically recognizes the
suitability of tertiary amines and organotin compounds as catalysts
and notes such in numerous instances ([0002], [0006], [0010]). The
specific language of Bublewitz in addressing the tertiary amine and
organotin catalysts is "substances known heretofore for this purpose"
and thus it is clear that Bublewitz appreciates that they were known
catalysts.
Applicant also fails to provide the full quotation from Bublewitz in
[0022] and specifically omits citing the phrase "preferably no further
catalysts". The preceding sentence indicates that other catalyst were
suitable for addition in less preferred embodiments. Bublewitz merely
seeks to preferentially replace previously known and utilized catalysts
with new catalysts that reduce odor and toxicity ([0002], [0006],
[0010]); however, this is not found [to] negate the previous
established principle that tertiary amine and organotin compounds
were suitable as catalysts. Relevant to the present case, the courts
have held that "a known or obvious composition does not become
patentable simply because it has been described as somewhat inferior
to some other product for the same use." In re Gurley, 27 F.3d
551,554, 31 USPQ2d 1130, 1132 (Fed. Cir. 1994). The examiner
therefore maintains the position that tertiary amine and/or organotin
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catalysts were known to catalyze dental sealants, and would have been
obvious to use in light of Bublewitz's disclosure.
Ans. 9–10.
We agree with the Examiner’s position for the reasons expressed by
the Examiner in the record. We add that the bare identification of a
drawback is not sufficient to show that a person of ordinary skill in the art
would have been directed away. Medichem, S.A. v. Rolabo, S.L., 437 F.3d
1157, 1165 (Fed. Cir. 2006); Winner Int’l Royalty Corp. v. Wang, 202 F.3d
1340, 1349 n.8 (Fed. Cir. 2000). While we appreciate the fact that
Bublewitz identifies drawbacks to the use of tertiary amines and therefore
finds other more suitable catalysts, we agree with the Examiner that the
disclosure in Bublewitz discussed by Appellants is not found to negate the
previous established principle (as also taught by Bublewitz) that tertiary
amine and organotin compounds were suitable as catalysts. Use of the
tertiary amine in Bublewitz would not render the invention of Bublewitz
unsatisfactory for its intended purpose, but only would provide the
associated drawbacks as recognized in the art.
In view of the above, we affirm Rejection 2.

CONCLUSIONS OF LAW AND DECISION
Rejection 1 is reversed.
Rejection 2 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).

AFFIRMED
cdc