Ex Parte Utterodt et al

Patent Trial and Appeal Board

Mar 25, 2015

12614560 (P.T.A.B. Mar. 25, 2015)

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.
12/614,560 11/09/2009 Andreas Utterodt 115882-5 (100727-158) 8822
27386 7590 03/25/2015
GERSTENZANG, WILLIAM C.
NORRIS MCLAUGHLIN & MARCUS, PA
875 THIRD AVE, 8TH FLOOR
NEW YORK, NY 10022
EXAMINER
YOON, TAE H
ART UNIT PAPER NUMBER
1762
MAIL DATE DELIVERY MODE
03/25/2015 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 ANDREAS UTTERODT, KLAUS RUPPERT,
MATTHIAS SCHAUB, CHRISTINE DIEFENBACH, KURT REISCHL,
ALFRED HOHMANN, MICHAEL ECK, and NELLI SCHÖNHOF
____________

Appeal 2013-004638
Application 12/614,560
1

Technology Center 1700
____________

Before BRADLEY R. GARRIS, TERRY J. OWENS, and
JEFFREY W. ABRAHAM, Administrative Patent Judges.

GARRIS, Administrative Patent Judge.

DECISION ON APPEAL

Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision rejecting claims 1–3. We have jurisdiction under 35 U.S.C. § 6.
We affirm.
Appellants claim a dental composition comprising a cross-linking
agent comprised of the acrylate TCD-DI-HEA wherein the cytotoxicity of
the cured composite is assessed into the category “no cytotoxic potential”
(sole independent claim 1).

1
According to Appellants, the real party in interest is Heraeus Kulzer
GmbH. Br. 1.
Appeal 2013-004638
Application 12/614,560

2
A copy of representative claim 1, taken from the Claims Appendix of
the Appeal Brief, appears below.
1. Dental composition comprising
monomers,
crosslinking agent,
fillers,
initiators, wherein
the crosslinking agent is comprised of more than 50% by
weight of the acrylate monomer 2-Propenoic acid, (octahydro-
4,7-methano-1H-indene-5,?-diyl )
bis(methyleneiminocarbonyloxy-2, 1-ethanediyl )ester (TCD-
DI-HEA), and wherein the cyctotoxicity [sic] of the cured
composite as determined according to the standard
requirements of ISO 10993-5 and DIN EN ISO 7405 is
assessed into the category “no cytotoxic potential”.
The Examiner rejects:
claims 1 and 3 under 35 U.S.C. § 102(b) as anticipated by, or under
35 U.S.C. § 103(a) as unpatentable over, Reiners (EP 0254185 published
Sept. 19, 1990 as translated via and with citations to US Pat. 4,952,614) or
Ruppert (US 2006/0252845 A1 published Nov. 9, 2006); and
claims 1–3 under 35 U.S.C. § 103(a) as unpatentable over Reiners or
Ruppert in view of Klettke (DE 10001228 published Jan. 4, 2007, as
translated via US Pat. 6,779,656 B2) or Jin (US 2007/0173558 A1 published
July 26, 2007).
Appellants do not present separate arguments specifically directed to
dependent claims 2–3 (Br. 3–6). Therefore, the dependent claims will stand
or fall with independent claim 1.
Appeal 2013-004638
Application 12/614,560

3
We will sustain the above rejections for the reasons given in the Final
Action, the Answer, and below.
Concerning the § 102/§ 103 rejections of claims 1 and 3, Appellants
do not dispute the Examiner’s findings that the compositions of Reiners or
Ruppert comprise the acrylate TCD-DI-HEA wherein the cytotoxicity of the
cured composite inherently would possess “no cytotoxic potential” as
required by independent claim 1 (Final Action 3–4, Ans. 2–4). Rather,
Appellants contest each of these rejections by arguing that “[s]urprisingly,
the compositions of the present invention are well under dangerous
cytotoxicity levels” (Br. 4 and 5). Specifically regarding the rejection based
on Ruppert, Appellants further argue that “[t]hose skilled in the art would
have expected a higher cytotoxicity for the acrylate TCD-di-HEA and would
have preferred the methacrylate TCD-di-HEMA” (id. at 4).
As previously indicated by the Examiner (Advisory Action (mailed
June 14, 2012) 2), these arguments are not persuasive because they are not
relevant to rejections based on anticipation. See, e.g., Schering Corp. v.
Geneva Pharms., Inc., 339 F.3d 1373, 1377 (Fed. Cir. 2003) (inherent
anticipation does not require that a person of ordinary skill in the art would
have recognized the inherent disclosure).
For these reasons, we sustain the § 102 rejections of claims 1 and 3 as
anticipated by Reiners or Ruppert.
The alternative § 103 rejections of claims 1 and 3 over Reiners or
Ruppert likewise are sustained based on the legal principle that anticipation
is the epitome or ultimate of obviousness. See In re Fracalossi, 681 F.2d
792, 794 (CCPA 1982). Additionally with respect to the § 103 rejection
over Ruppert specifically, even if an artisan would have preferred the
Appeal 2013-004638
Application 12/614,560

4
methacrylate as argued by Appellants, such preference would not render
selection of Ruppert’s TCD-DI-HEA acrylate nonobvious, and Appellants
do not contend otherwise.
Finally, we sustain the § 103 rejection of claims 1–3 because
Appellants to not challenge the Examiner’s proposed combination of prior
art teachings but instead merely rely on the above discussed arguments
directed to Reiners and Ruppert (Br. 6). We emphasize that the concept of
inherency is applicable to this obviousness rejection because the “no
cytotoxic potential” limitation is the natural result of combining the applied
prior art. See PAR Pharm., Inc. v. TWI Pharms., Inc., 773 F.3d 1186, 1195-
96 (Fed. Cir. 2014).
The decision of the Examiner is affirmed.
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
bar