Ex Parte Sterzel

Patent Trial and Appeal Board

May 25, 2016

12984735 (P.T.A.B. May. 25, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/984,735 01/05/2011
123223 7590 05/27/2016
Drinker Biddle & Reath LLP (WM)
222 Delaware A venue, Ste. 1410
Wilmington, DE 19801-1621
FIRST NAMED INVENTOR
Hans-Josef Sterzel
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.
074008-1118-US (286149) 2897
EXAMINER
STANLEY, JANEL
ART UNIT PAPER NUMBER
1767
NOTIFICATION DATE DELIVERY MODE
05/27/2016 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):
IPDocketWM@dbr.com
penelope.mongelluzzo@dbr.com
DBRIPDocket@dbr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HANS-JOSEF STERZEL 1
Appeal2014-008989
Application 12/984,735
Technology Center 1700
Before ROMULO H. DELMENDO, WESLEY B. DERRICK, and
CHRISTOPHER C. KENNEDY, Administrative Patent Judges.
KENNEDY, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1, 2, 4--8, and 19. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
BACKGROUND
The subject matter on appeal relates to compositions for the transport
and storage of heat energy. Claim 1. Claim 1 is reproduced below from
page 9 (Claims Appendix) of the Appeal Brief:
1 According to the Appellant, the Real Party in Interest is BASF SE. Br. 2.
Appeal2014-008989
Application 12/984,735
1. A composition for the transport and storage of heat energy,
which comprises alkali metal polysulfides of the formula
(Me 1 (l-x)Me2x)2Sz, where Me 1 and Me2 are selected from the
group of alkali metals consisting of lithium, sodium, potassium,
rubidium and cesium, Me 1 is different from Me2 and x is from
0.5 to 0.7 and z is from 2.4 to 2.9.
ANALYSIS
Claims 1, 2, 4--8, and 19 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Furuta et al. (US 5,037,552, issued Aug. 6, 1991). The
Appellant presents arguments for claims 1 and 4. We limit our discussion to
those claims, and the remaining claims will stand or fall with claim 1, from
which they depend. See 37 C.F.R. § 41.37(c)(l)(iv).
After review of the cited evidence in the appeal record and the
opposing positions of the Appellant and the Examiner, we determine that the
Appellant has not identified reversible error in the Examiner's rejection.
Accordingly, we sustain the rejection for reasons set forth below and by the
Examiner in the Answer. See generally Ans. 2-7.
Claim 1. The Examiner finds that Furuta teaches sulfides of the
"general formula MM'Sx, where Mis selected from alkali metal, M' is
selected from alkali metal, ammonium and hydrogen and xis a number of at
least 1." Ans. 2. The Examiner further finds that Furuta teaches that M and
M' can be different, and that "potassium and sodium are preferred." Id. at 3.
The Examiner concludes that "Furuta' s teaching of M and M' being 1: 1 is
readable over instant 'x' equal to 0.5 which renders taught instant xis from
0.5 to 0.7 (claim 1) ... and Furuta's x taught as being 2 or more and at most
6-9 is readable over and renders taught instant z is from 2.4 to 2.9 (claim
1 )." Id.; see also id. at 5-6 ("[T]he 1: 1 ratio taught by Furuta in formula
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Appeal2014-008989
Application 12/984,735
MM'Sx reads on instant values of x = 0.5 (note that x=0.5 is present in all
claims; and M:M' of 1: 1 is readable over (Mo.sM' o.s)2, such being equivalent
to MiM' 1 or MM') and as such teaches the claimed ratio of Me 1 and Me2
where x=0.5 .... ").
The Appellant first argues that "Furuta does not teach that sodium and
potassium are preferred in polysulfides," but that "Furuta discloses
monosulfides." Br. 5 (emphasis in original). Furuta teaches that
"[ r ]epresentative polysulfides are sodium polysulfide, potassium polysulfide,
ammonium polysulfide and mixtures thereof." Furuta at 3: 14--20. Thus,
Furuta plainly teaches sodium and potassium polysulfides. Even if Furuta
does not expressly describe sodium and potassium as "preferred" in
polysulfides, that does not establish reversible error in the Examiner's
rejection. See In re Fritch, 972 F.2d 1260, 1264 (Fed. Cir. 1992) ("It is well
settled that a prior art reference is relevant for all that it teaches to those of
ordinary skill in the art.").
The Appellant also argues that Furuta's formula of MM'Sx is too
broad "to teach or suggest Appellants' specific composition, represented by
a specific formula, including specific definitions of Me 1, Me2, x, and z ....
Furuta is simply too vague to render obvious Appellants [sic] invention
.... " Br. 6. We disagree. The Appellant does not dispute that at least some
species recited by claim 1 fall within the scope of Furuta's formula. See
Ans. 3, 5-6. Furuta teaches that "Mis selected from a group consisting of
alkali metal and ammonium radical, M' is selected from a group consisting
of alkali metal, ammonium radical and hydrogen and x is a number of at
least 1." Furuta at 2:48-52. It also teaches that x may be 2 and "at most 6 to
9 in many cases." Id. at 3: 14--16. Other than a conclusory assertion that
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Appeal2014-008989
Application 12/984,735
Furuta's formula is "vague," which does not appear to be true given that
Furuta expressly identifies a limited number of options for each variable, the
Appellant provides no persuasive basis to conclude that Furuta' s genus is so
large as to render individual species nonobvious.
The Appellant next argues that the specific "Examples in Furuta do
not read on Appellants' claims." Br. 6. However, "a reference is not limited
to the disclosure of specific working examples," In re Mills, 470 F.2d 649,
651 (CCP A 1972), and as stated above, the Appellant provides no persuasive
basis to conclude that Furuta's genus is so large as to render individual
species recited by claim 1 nonobvious.
We affirm the Examiner's rejection of claim 1.
Claim 4. The Appellant includes a separate section in the Appeal
Brief for claim 4, which depends from claim 1 and narrows the formula to
"(Nao.s--0.6sKo.5---0.35)2S2.4-2.s or (Nao.6Ko.4)2S2.6." The Examiner's rationale is
largely the same as that described above with respect to claim 1. See
Ans. 3, 7. The Appellant argues that "because the rejection of claim 1 over
Furuta suffers from the deficiencies noted above, the rejection of claim 4
over Furuta is equally deficient." Br. 7. The Appellant further states that,
"for the reasons presented above, Furuta clearly does not provide enough
specificity to render obvious the particular formula claimed in claim 4 .... "
Id. As above, the Appellant does not contend that species recited by claim 4
do not fall within the scope of Furuta' s genus.
Because the arguments concerning claim 4 rely on the same
arguments concerning claim 1, which are not persuasive, we likewise affirm
the Examiner's rejection of claim 4.
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Appeal2014-008989
Application 12/984,735
CONCLUSION
We AFFIRM the Examiner's rejection of claims 1, 2, 4--8, and 19.
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
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