Ex Parte Smith et al

Board of Patent Appeals and Interferences

Jun 18, 2009

10033457 (B.P.A.I. Jun. 18, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DENNIS E. SMITH,
TEH-MING KUNG,
THOMAS M. LANEY, and
JOHN L. MUEHLBAUER
____________

Appeal 2008-4702
Application 10/033,457
Technology Center 1700
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Decided:1 June 18, 2009
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Before BRADLEY R. GARRIS, PETER F. KRATZ and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

COLAIANNI, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the Decided Date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

Appeal 2008-004702
Application 10/033,457

This is in response to a Request, filed May 8, 2009, for rehearing of
our decision, decided March 10, 2009, wherein we sustained the § 102 and
§ 103 rejections on appeal. Particularly of relevance, we sustained a § 102
rejection of claims 1, 2, 5, 7, 9-17, 21, 22, 24-26, 28-36, and 39 over Maier,
and a § 103 rejection of claims 18, 19, 37, and 38 over Maier.
Appellants argue that the Board misapprehended Appellants’
argument on page 13 of the Brief (Request 1). Specifically, Appellants
contend that they argued not that the 95/5 methylmethacrylate/divinyl-
benzene composition itself would not have such a low Δb* value, but rather
that the claimed properties are not inherent because the Δb* value may or
may not be less than 0.2 for various compositions that fall within the broad
description of suitable materials described in Maier (Request 1-2).
Appellants further contend that the Board’s position that the Δb*
value can be inferred from Maier’s disclosure is inconsistent with its
treatment of Appellants’ reliance on trends in Maier’s data to show that
Maier does not teach the claimed thermal stability (Request 2).
Contrary to Appellants’ arguments, we did not misapprehend
Appellants’ argument or take inconsistent positions. Rather, we posit that
since Maier’s disclosure of a 95/5 methylmethacrylate/divinylbenzene
composition is the same as Appellants’ claimed composition, Maier’s
composition would inherently have the same Δb* value claimed by
Appellants. Our position is supported by In re Best, 562 F.2d 1252 (CCPA
1977), where the court held that where the claimed and prior art products are
substantially identical, the Patent Office can require an applicant to prove
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Appeal 2008-004702
Application 10/033,457

that the prior art products do not necessarily or inherently possess the
characteristics of the claimed product. Best, 562 F.2d at 1255.
Therefore, we are not extrapolating a Δb* value based on a trend in
the data as Appellants have done in an attempt to establish that Maier’s
composition does not possess the thermal stability property. Instead, we
rely on the similarity of the compositions as providing a basis for finding
that the claimed properties are inherently part of the composition such that
Appellants have the burden of establishing that Maier’s 95/5 methylmeth-
acrylate/divinylbenzene composition does not possess the claimed
characteristics. However, Appellants’ data only provides data for 70/30
and 90/10 methylmethacrylate/divinylbenzene compositions. Appellants
have not satisfied their burden of establishing that Maier’s 95/5
methylmethacrylate/divinylbenzene composition does not possess the
claimed non-yellowing and thermal stability properties.
With regard to the § 103 rejection of claims 18, 19, 37, and 38,
Appellants further argue that the Board overlooked the added requirement
that the second polymer is derived from monomers comprising more than
20 wt% of crosslinking monomer (Request 3). Appellants contend that the
Examiner and Appellants noted that Maier fails to teach such requirement
on page 15 of the Appeal Brief (Request 3).
Our review of page 15 of the Appeal Brief reveals that Appellants
merely reiterated the Examiner’s statement of the rejection on that page.
Appellants’ arguments regarding dependent claims 18, 19, 37, and 38 do
not begin until page 17 of the Appeal Brief, where Appellants argue the
previously argued features of independent claims 1 and 21 from which
claims 18 and 19, and claims 37 and 38 depend, respectively.
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Appeal 2008-004702
Application 10/033,457

Therefore, Appellants argue for the first time in this appeal the “20
wt% crosslinking monomer” feature of the dependent claims 18, 19, 37, and
38. In accordance with 37 C.F.R. § 41.52 because such a new argument is
not made regarding a “recent relevant decision of the Board or a Federal
Court” or in response to a new grounds of rejection under § 41.50(b),
Appellants’ newly advanced argument has not been considered.
Appellants contend that the Board misapprehended or overlooked
Appellants’ arguments that the secondary references are directed towards
different fields (Request 4). Appellants quote from their Appeal Brief where
they contend that Saito does not teach the features that Examiner finds Maier
to disclose (Request 4), as evincing an argument that Saito is from a
different field. However, this apparent non-analogous art argument is raised
for the first time in this Request. In accordance with 37 C.F.R. § 41.52
because such a new argument is not made regarding a “recent relevant
decision of the Board or a Federal Court” or in response to a new grounds of
rejection under § 41.50(b), Appellants’ newly advanced argument has not
been considered.
Moreover, Appellants’ arguments that the secondary references, like
Saito, fail to teach the various features of the independent claims were
considered. Because we found that Maier was not deficient with regard to
any of the features in the independent claims, we determined that
Appellants’ arguments regarding these secondary references to be without
persuasive merit.
Appellants argue that the Board overlooked that Maier’s
disclosure regarding the thermal and chemical stability of the
synthetic paper was based on alleged properties, not actual data
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Appeal 2008-004702
Application 10/033,457

(Request 4). However, Maier’s statements plainly indicate that
Maier’s disclosed invention provides superior thermal and chemical
stability properties. Appellants have not provided any evidence that
Maier’s 95/5 methylmethacrylate/divinylbenzene composition would
not have the claimed properties. Appellants’ evidence regarding the
yellowing property and thermal stability are limited to 70/30
methylmethacrylate/divinylbenzene compositions of Maier. We have
thoroughly reviewed Appellants’ submitted evidence and find it
insufficient to rebut the Examiner’s prima facie cases of obviousness
for the reasons given on page 17 of the Decision.
For the above stated reasons, we adhere to our determination
that claims 1, 2, 5, 7, 9-17, 21, 22, 24-26, 28-36, and 39 are
anticipated by Maier under § 102(b), and that claims 18, 19, 37, and
38 over Maier, claims 8 and 27 over Maier in view of Saito, claim 40
over Maier in view of Hart, and claims 42 and 43 over Maier in view
of Harrison would have been obvious under § 103.
The Request for Rehearing is denied.
DENIED

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PAUL A. LEIPOLD
PATENT LEGAL STAFF
EASTMAN KODAK COMPANY
343 STATE STREET
ROCHESTER, NY 14650-2201
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