Ex Parte Sophiea et al

Board of Patent Appeals and Interferences

Nov 29, 2010

11138541 (B.P.A.I. Nov. 29, 2010)

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.
11/138,541 05/26/2005 Daniel P. Sophiea DWNS.63809 8977
53394 7590 11/29/2010
THE DOW CHEMICAL COMPANY
REISING, ETHINGTON, BARNES, KISSELLE, LEARMAN &
LEARMAN & MCCULLOCH
P.O. BOX 4390
TROY, MI 48099-4390
EXAMINER
EASHOO, MARK
ART UNIT PAPER NUMBER
1767
MAIL DATE DELIVERY MODE
11/29/2010 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DANIEL P. SOPHIEA and GENG LIN
____________

Appeal 2009-011347
Application 11/138,541
Technology Center 1700
____________

Before BEVERLY A. FRANKLIN, LINDA M. GAUDETTE, and
MARK NAGUMO, Administrative Patent Judges.

FRANKLIN, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING1

Appellants request rehearing of our Decision of August 27, 2010
under 37 C.F.R. § 41.52 (2007). In that Decision, we sustained the
rejections of record.

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

Appeal 2009-011347
Application 11/138,541

2
We have reconsidered our decision of August 27, 2010 in light of
Appellants’ comments in the Request for Rehearing, and Appellants have
not convinced us of error therein.
Appellants argue that the Board “summarily dismissed Appellant’s
arguments.” Req. for Reh. 2. To the contrary, we considered the record in
its entirety in making our determinations therein. Apparently, in making our
statement in the paragraph bridging pages 5-6 of the Decision that arguments
of counsel cannot take the place of factually supported objective evidence,
Appellants incorrectly concluded that we dismissed their arguments. This is
not the case, as we fully appreciate that after evidence or argument is
submitted by the Applicant in response, patentability is determined on the
totality of the record, by a preponderance of evidence (that it is more likely
than not), with due consideration to persuasiveness of argument. In re
Caveney, 761 F.2d 671, 674 (Fed. Cir. 1985); In re Johnson, 747 F.2d 1456,
1460 (Fed. Cir. 1984). Our point in the paragraph bridging pages 6-7 of our
Decision is that the persuasive force of an argument depends on the quality
of the evidence offered in support. Appellants argue (Br. 5-6), for example,
that the adhesive material in Grieves “might find” preferred use wherein
heating the adhesive post-application “may be” undesirable or impractical.
In the absence of credible supporting evidence, we declined to accord that
argument significant weight. We are, therefore, not convinced of error
regarding our weighing of Appellants’ arguments.
Appellants then argue that our Decision failed to properly construe the
term “a one-component composition adapted for use as a sealer.” Req. for
Reh. 3. Appellants state:
Appeal 2009-011347
Application 11/138,541

3
The Board's Decision failed to properly construct the term "a
one-component composition adapted for use as a sealer" as set
forth in both of Applicant's independent claims 1 and 25.
Applicant's specification including numerous examples all of
which disclose and utilize a latent catalyst which is capable of
forming a sealer upon application of heat and in the absence of
another catalyst such as mercaptan used by two-component
resin systems that require the mixing of two catalysts in order to
cure the composition into a sealer. A person of ordinary skill in
the art would understand that a "one-component composition
adapted for use as a sealer" to mean a composition that is cured
by the activation of a latent curing agent through application of
heat or other energy.
We do not agree with Appellants’ claim interpretation as set forth
above. Appellants desire a more limited interpretation of the claim.
However, during examination, claim terms must be given their broadest
reasonable construction consistent with the Specification. In re ICON
Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007). The Federal
Circuit has
expressly rejected the contention that if a patent describes only
a single embodiment, the claims of the patent must be construed
as being limited to that embodiment. That is not just because
section 112 of the Patent Act requires that the claims
themselves set forth the limits of the patent grant, but also
because persons of ordinary skill in the art rarely would confine
their definitions of terms to the exact representations depicted
in the embodiments.

Phillips v. AWH Corp., 415 F.3d 1303, 1323 (Fed. Cir. 2005) (internal
citation omitted). See also, Howmedica Osteonics Corp. v. Wright Med.
Tech., Inc., 540 F.3d 1337, 1345 (Fed. Cir. 2008) (citing Phillips, 415 F.3d
at 1323).
Appeal 2009-011347
Application 11/138,541

4
This approach is not unfair to applicants, because “before a patent is
granted the claims are readily amended as part of the examination process,”
Burlington Indus., Inc. v. Quigg, 822 F.2d 1581, 1583 (Fed. Cir. 1987). It
also “serves the public interest by reducing the possibility that claims, finally
allowed, will be given broader scope than is justified.” In re Yamamoto, 740
F.2d 1569, 1571-72 (Fed. Cir. 1984). Hence, we are not convinced of error
regarding our agreement with the Examiner’s claim interpretation as
explained in our Decision.
Appellants then, for the first time, based upon their erroneous claim
interpretation, argue how Grieves differs from their claim interpretation.
Req. for Reh. 3-4. Appellants also argue, for the first time, how the
substitution of the latent catalyst of Nakayama into Grieves ‘would not give
rise to any expectation of success,” and that the Examiner has failed to
establish sufficient equivalency. Req. for Reh. 4. However, we cannot have
misapprehended or overlooked arguments that were not raised in the
principal brief on appeal. Except under circumstances not relevant here,
arguments not raised in the Briefs before the Board and evidence not
previously relied upon in the Brief and any Reply Briefs are not permitted in
a Request for Rehearing. 37 C.F.R. § 41.52(a)(1)(2008).
In conclusion, based on the foregoing, Appellants’ Request is granted
to the extent that we have reconsidered our Decision, but is denied with
respect to making any change therein.

DENIED

Appeal 2009-011347
Application 11/138,541

5

cam

THE DOW CHEMICAL COMPANY
REISING, ETHINGTON, BARNES, KISSELLE,
LEARMAN & LEARMAN & MCCULLOCH
P O BOX 4390
TROY, MI 48099-4390