13514703 (P.T.A.B. Oct. 9, 2018)

Ex Parte Tucker et al

Patent Trial and Appeal BoardOct 9, 2018

13514703 (P.T.A.B. Oct. 9, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/514,703 09/19/2012 43935 7590 10/11/2018 Shumaker, Loop & Kendrick, LLP 1000 Jackson Street Toledo, OH 43604-5573 FIRST NAMED INVENTOR Gary D. Tucker III 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. 1-17824 1553 EXAMINER PENNY, TABATHAL ART UNIT PAPER NUMBER 1712 NOTIFICATION DATE DELIVERY MODE 10/11/2018 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): tlopez@slk-law.com dmiller@slk-law.com c golupski@ slk-law. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte GARY D. TUCKER III, JAMES JOSEPH DELUCA, and TODD M. FITTS Appeal 2018-000121 Application 13/514,703 Technology Center 1700 Before GEORGE C. BEST, BRIAND. RANGE, and MERRELL C. CASHION, JR., Administrative Patent Judges. CASHION, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE This is an appeal under 35 U.S.C. Â§ 134(a) from the Examiner's Final Rejection of claims 1-29 and 39--41. We have jurisdiction under 35 U.S.C. Â§ 6(b ). We AFFIRM. The claimed invention is principally directed to a method of forming a polymerizable hybrid organometalloglass composition. App. Br. 5. Appeal 2018-000121 Application 13/514,703 Independent claim 1 is generally illustrative of the subject matter on appeal and is reproduced below: 1. A method comprising: (a) forming an aqueous, acidic colloid comprising an organic monomer, a silicon-containing compound, and an organometallic compound, wherein the organometallic compound catalyzes the formation of the aqueous, acidic colloid; (b) processing the aqueous, acidic colloid to form an aqueous, alkaline colloid; ( c) processing the aqueous, alkaline colloid to remove chloride ions from the colloid and to form an aqueous, alkaline amorphous organo/siloxy/metal hydroxide colloid; ( d) combining a peroxide-based solution with the aqueous, alkaline amorphous organo/siloxy/metal hydroxide colloid to form a suspension comprising metal peroxide; and ( e) processing the metal peroxide suspension to form a polymerizable hybrid organometalloglass composition. Appellants 1 (see generally App. Br.) request review of the following rejections from the Examiner's Final Office Action: 2 I. Claims 1, 3, 5, 8-10, 12-29, and 39 rejected under 35 U.S.C. Â§ I03(a) as unpatentable over DeLuca et al., (US 2009/0163647 Al, published June 25, 2009; hereinafter "DeLuca") and Tanaka et al., (US 5,762,913, issued June 9, 1998; hereinafter "Tanaka"). II. Claims 2, 6, and 7 rejected under 35 U.S.C. Â§ I03(a) as unpatentable over Deluca, Tanaka, and Plambeck (Introductory University Chemistry I: Solutions and Solubility, pg. 1, June 16, 2002). 1 ENVONT LLC is identified as the real party in interest. App. Br. 1. 2 We herein refer to the Final Office Action, mailed Aug. 30, 2016 ("Final Act."); Appeal Brief, filed Mar. 1, 2017 ("App. Br."); and the Examiner's Answer, mailed Jun. 28, 2017 ("Ans."). No Reply Brief has been filed. 2 Appeal 2018-000121 Application 13/514,703 III. Claim 4 rejected under 35 U.S.C. Â§ I03(a) as unpatentable over Deluca, Tanaka, and Liang Lv et al., (Removal of chloride ion from aqueous solution of ZnAl-N03 layered double hydroxides as anion-exchanger, Journal of Hazardous Materials, 161 (2009); hereinafter "Lv", pg. 1444-- 1449). IV. Claim 11 rejected under 35 U.S.C. Â§ I03(a) as unpatentable over Deluca, Tanaka, and Henning, S. et al., (Production of Silica Aerogel, Physica Scripta., Vol. 23, pg. 697-702, 1981; hereinafter "Henning"). V. Claims 40 and 41 rejected under 35 U.S.C. Â§ I03(a) as unpatentable over Deluca, Tanaka, and Zoromski et al., (US 2007 /0072978 Al, published March 29, 2007; hereinafter "Zoromski"). Appellants present arguments for claim 1 and does not argue any other claim separately. See generally App. Br. Accordingly, we select claim 1 as representative of the subject matter before us for review on appeal and decide the appeal as to all grounds of rejection based on the arguments made by Appellants in support of patentability of claim 1. OPINION The Prior Art Rejections After review of the respective positions provided by Appellants and the Examiner, we affirm the Examiner's rejection of claims 1-29 and 39--41 under 35 U.S.C. Â§ I03(a) for the reasons presented by the Examiner. We add the following for emphasis. Claim 1 Independent claim 1 is directed to a method of forming a polymerizable hybrid organometalloglass composition comprising the step of forming an aqueous, acidic colloid comprising an organic monomer, a silicon-containing compound, and an organometallic compound, wherein the 3 Appeal 2018-000121 Application 13/514,703 organometallic compound catalyzes the formation of the aqueous, acidic colloid. We refer to the Examiner's Final Action for a statement of the rejection. Final Act. 2-3. As explained in the Answer, the Examiner finds DeLuca teaches incorporation of reactive organometallic compounds, such as organofunctional silanes like tetraethoxysilane, in the initial stages of the formation of an acidic colloid. Ans. 2-3; see DeLuca ,r,r 29, 30, 34, 42. The Examiner also finds that Tanaka teaches incorporation of a silicon component at any point in the process including during the hydrolysis of the aqueous solution of the metal chloride salts. Ans. 4; Tanaka col. 4 11. 15--42, col. 5 11. 1-22. Thus, the Examiner concludes one skilled in the art would have a reasonable expectation of arriving at the claimed invention by modifying DeLuca's method in view of Tanaka's teachings. Ans. 4. Appellants present numerous arguments, all of which are based on the premise that DeLuca discloses that the organometallic compound (step 104), the metal salt and acid (step 102) are neutralized with a base (step 106) and form an amorphous metal hydroxide, which is washed and filtered (step 108) to remove ions ( e.g., chloride ions), then dispersed in water to form a colloidal suspension (step 110). App. Br. 9-18; DeLuca ,r 36 and Figure 1. In support of these arguments, Appellants rely on a Declaration under 3 7 C.F.R. Â§ 1.132 by co-inventor Gary D. Tucker, III (Declaration or Deel.). 3, 4 3 The Declaration was submitted on May 23, 2016 and entered into the record by the Examiner in the Final Action dated August 30, 2016. 4 The Declaration presents the co-inventor's name as Gary D. Tucker, II. We take this to be an unintended error given that the co-inventor's name, as it appears in the Combined Declaration and Power of Attorney, is Gary D. Tucker, III. 4 Appeal 2018-000121 Application 13/514,703 According to Appellants and Declarant, DeLuca's process does not form a colloidal suspension until after the aqueous mixture of metal salt and acid (step 102) is neutralized (step 106), ions removed (step 108), where then additives (step 112) can be added to the colloidal suspension (step 110). App. Br. 9, 12; Deel. ,r,r 9-10 5. Appellants also contend that additives (e.g., organofunctional silane and organic compound additives) included in the aqueous mixture of metal salt and acid (step 102) would experience a wholly different environment ( acidic mixture) than in step 110 ( slightly basic and expressly a colloidal suspension). Id. Appellants additionally assert that the addition of the silicon compound at such varied points may be fine with respect to the photochromic compound oxide cosmetic in Tanaka, but there is no indication or suggestion that additives included in step 102 or 106 versus step 112/110 would form the same products in DeLuca's process given that Tanaka's photochromic compound oxide cosmetics have different functions and goals than DeLuca's hybrid metal oxides. Id. We are unpersuaded by these arguments for the reasons presented by the Examiner. Ans. 3--4. As the Examiner explains, Appellants point to no portion of DeLuca or other objective evidence that support their contention that DeLuca's washing would necessarily remove organosilane additives. Ans. 7 ( discussing the Declaration). Moreover, in addressing the addition of organometallic compounds in general, DeLuca discloses that "[i]n some cases, PMHNC compositions are used to chemically bind other organometallic compounds (for example, in a 5 Appellants erroneously cite to non-existent paragraphs 36-37 of the Declaration. App. Br. 9. The correct portion of the Declaration relied upon by Appellants appears to be paragraphs 9--10. 5 Appeal 2018-000121 Application 13/514,703 monomeric/oligomeric/polymeric network or matrix), providing an inorganic vehicle system that allows inclusion of organometallic compounds." DeLuca ,r 33. This disclosure, together with DeLuca's disclosure of using reactive organofunctional silane compounds in the acidic aqueous mixture (Ans. 2-3; see DeLuca ,r,r 29, 30, 34, 42), would suggest to one of ordinary skilled in the art that DeLuca is forming acidic colloids in the acidic aqueous mixture. Thus, contrary to Appellants' arguments (App. Br. 9, 11-12), DeLuca's initial addition of organofunctional silanes does not necessarily lead one skilled in the art to conclude that these organofunctional silane additives are washed away at a later step or that DeLuca's colloids are only formed after neutralization of the acidic mixture. We have considered the Declaration but agree with the Examiner that the Declaration lacks adequate objective evidence to support Declarant's statements. Ans. 7. Appellants and Declarant, at most, have provided mere attorney arguments and such arguments of counsel cannot take the place of evidence. See In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984); In re Payne, 606 F.2d 303, 315 (CCPA 1979). We also note that, because Appellants did not file a Reply Brief, they do not provide further arguments contesting the Examiner's finding that DeLuca discloses the addition of reactive organofunctional silanes to the initial acidic mixture. Accordingly, we affirm the Examiner's rejections of claims 1-29 and 39-41 under 35 U.S.C. Â§ 103(a) for the reasons given by the Examiner and presented above. 6 Appeal 2018-000121 Application 13/514,703 DECISION The Examiner's prior art rejections of claims 1-29 and 39-41 are affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l )(iv). AFFIRMED 7