Ex Parte Rodewald et al

Patent Trial and Appeal Board

Sep 12, 2017

14330688 (P.T.A.B. Sep. 12, 2017)

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.
14/330,688 07/14/2014 Use RODEWALD 101769-706 7075
27384 7590 12/06/2017
Briscoe, Kurt G.
Norris McLaughlin & Marcus, PA
875 Third Avenue, 8th Floor
New York, NY 10022
EXAMINER
DESAI, ANISH P
ART UNIT PAPER NUMBER
1788
MAIL DATE DELIVERY MODE
12/06/2017 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 PATENT TRIAL AND APPEAL BOARD
Ex parte ILSE RODEWALD, BERNHARD MUSSIG,
and UWE MICHEL
Appeal 2017-001491
Application 14/330,688
Technology Center 1700
Before ADRIENE LEPIANE HANLON, CATHERINE Q. TIMM, and
AVELYN M. ROSS, Administrative Patent Judges.
ROSS, Administrative Patent Judge.
DECISION ON REHEARING
This Decision on Rehearing relates to Appellants’ October 30, 2017,
Request for Rehearing (hereinafter “Req. Reh’g”) of our Decision on Appeal
mailed September 13, 2017 (hereinafter “Decision”). In that Decision, we
affirmed the Examiner’s decision to reject: (1) claims 1—3, 5—8, 11, and 12 under
35 U.S.C. § 103(a) as unpatentable over the combination of Josephy1 and Kumar2
and (2) claim 4 under 35 U.S.C. § 103(a) as unpatentable over the combination of
1 Karl Josephy, US 6,210,524 Bl, issued April 3, 2001 (“Josephy”).
2 Kumar et al., US 6,541,109 Bl, issued April 1, 2003 (“Kumar”).
Appeal 2017-001491
Application 14/330,688
Josephy, Kumar, and Moseley.3 See generally Decision 3—6; see also Req. Reh’g
1.
A request for rehearing must state with particularity the points believed to
have been misapprehended or overlooked by the Board. Arguments not raised in
briefs before the Board and evidence not previously relied on in the briefs are not
permitted in a request for rehearing, except as permitted by 37 C.F.R. §§
41.52(a)(2) through (a)(4). We review the points of the Decision contested by
Appellants and determine whether we erred in fact finding or applying the law, and
further determine whether any such error changes the outcome of the Decision
when viewing all the evidence and arguments anew in light of the preponderance
of the evidence standard. See In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992)
(“patentability is determined on the totality of the record, by a preponderance of
evidence with due consideration to persuasiveness of argument”); Gardner v. TEC
Sys., Inc., 725 F.2d 1338, 1345 (Fed. Cir. 1984) (any error concerning nonessential
facts is harmless and not a basis for reversal).
I.
On rehearing, Appellants contend that error lies in the Examiner’s
understanding that the Dow paper4 is specific to a particular silicone elastomer.
Req. Reh’g 4. Rather, Appellants explain that the Dow paper discusses “silicone
elastomers in general, and specifically teaches that silicone elastomers retain their
3 Ben P.P. Moseley, III, US 6,228,316 Bl, issued May 8, 2001 (“Moseley”)
4 Withstand Temperature Extremes: Resist searing heat and freezing cold, Dow
Corning, https://www.dowcoming.com/content/jtbd/jtbd_temp_extreme.aspx (last
visited April 7, 2016 (“Dow paper”).
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Appeal 2017-001491
Application 14/330,688
natural flexibility and continue to perform at low temperatures that would cause
most organic elastomers to become brittle.” Id.
Appellants’ argument is misplaced. The issue is not whether the Dow paper
refers to brand name silicone elastomers or generally discusses the wide range of
operating temperatures of silicone elastomers. Instead, the issue is whether,
Appellants have made a requisite showing that the release coatings of Kumar—
including both a silicone vinyl copolymer and a second polymer—are substantially
identical to those disclosed in the Dow paper such that the skilled artisan would
have understood including the release coating of Kumar would destroy the purpose
of Josephy. See Decision 4; Ans. 11 (“The aforementioned information sheet does
not factually prove appellant’s assertion that if one of ordinary skill in the art were
to apply the silicone release coating of Kumar to the facestock of Josephy, then
such a combination would be expected to decrease the stiffness of Josephy’s
facestock.”); Advisory Action, mailed April 14, 2016, 3 (“the release coating of
Kumar is not chemically identical to a generic silicone elastomer described in the
information sheet.”). This is especially so given the teachings of Kumar that the
amount of silicone vinyl copolymer and the second polymer used in the release
coating can be varied based on the desired characteristics and intended use of the
release coating. See Kumar col. 14,11. 4—23; see also id. at 11. 53—56 (“Because the
level of release can be easily tailored over a wide range, release coatings of the
present invention can be used in a correspondingly wide variety of different
applications.”); Decision 4—5, n.6. Therefore, Appellants have failed to show that
the Board misapprehended or overlooked any point demonstrating that the
combination of Josephy and Kumar would destroy the purpose of Josephy.
Appellants’ remaining arguments (Req. Reh’g 4—5) refer to additional
evidence regarding the flexibility of silicone-based release layers and the purpose
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Appeal 2017-001491
Application 14/330,688
of Appellants’ invention as compared to that of Josephy that were raised for the
first time by Appellants in Reply. See generally Reply Br.; Decision 5. Appellants
have presented no evidence or argument that we misapprehended or overlooked
facts or misapplied the law in declining to reach these issues in our Decision.
Therefore, we will not revisit these untimely arguments on rehearing.
II.
Appellants have not sustained their burden of showing that we
misapprehended or overlooked relevant points of fact or law in arriving at our
Decision. We therefore decline to modify our Decision. The Request for
Rehearing is granted to the extent we have considered Appellants’ arguments, but
denied in that the Decision will not be modified.
DENIED
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