Ex Parte Weeks et al

Patent Trials and Appeals Board

Jun 28, 2018

13660704 - (D) (P.T.A.B. Jun. 28, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/660,704 10/25/2012
22928 7590 07/02/2018
CORNING INCORPORATED
SP-TI-3-1
CORNING, NY 14831
FIRST NAMED INVENTOR
Wendell P. Weeks
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.
SP12-310 9404
EXAMINER
YAGER, JAMES C
ART UNIT PAPER NUMBER
1782
NOTIFICATION DATE DELIVERY MODE
07/02/2018 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):
usdocket@corning.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WENDELL P. WEEKS,
ROBERT ANTHONY SCHADT,
STEVEN EDWARD DEMARTINO, and
JOHN STEPHEN PEANASKY
Appeal2017-000592
Application 13/660,704
Technology Center 1700
Before ADRIENE LEPIANE HANLON, DONNA M. PRAISS, and
N. WHITNEY WILSON, Administrative Patent Judges.
PRAISS, Administrative Patent Judge.
DECISION ON APPEAL 1
1 In explaining our Decision, we refer to the Specification filed Oct. 25,
2012 ("Spec."), the Final Office Action dated July 30, 2015 ("Final Act."),
the Appeal Brief filed Apr. 1, 2016 ("App. Br."), the Examiner's Answer
dated Aug. 10, 2016 ("Ans."), and the Reply Brief filed Oct. 11, 2016
("Reply Br.").
Appeal2017-000592
Application 13/660,704
STATEMENT OF THE CASE2
Appellant3 appeals under 35 U.S.C. § 134(a) from the Examiner's
decision to reject claims 50-53, 55-57, 59, 61, 62, 64, 66-84, 86-94, and
96-111 as obvious under 35 U.S.C. § 103(a) over Baak. 4, 5 App. Br. 7-17;
Final Act. 25-26.
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
The subject matter on appeal relates to a chemically and mechanically
durable pharmaceutical container that is delamination resistant and formed,
in part, of a glass composition. Spec. ,r 2. According to the Specification,
delamination is the tendency of the interior surface of a pharmaceutical
package to shed glass particulates following exposure to pharmaceutical
solutions, which often destabilizes the active pharmaceutical ingredient
present in the solution, thereby rendering it ineffective or unsuitable for
therapeutic use. Id. ,r 9. Independent claims 66, 77, and 86 are illustrative
( emphasis added to highlight disputed limitations):
2 This Appeal is related to Appeals 2017-000671 and 2017-000881
(Applications 13/660,708 and 13/660,508, respectively). App. Br. 3.
3 Applicant, Coming Incorporated, is the Appellant and is also identified in
the Appeal Brief as the real party in interest. App. Br. 3.
4 Baak et al., US 4,065,317, issued Dec. 27, 1977 ("Baak").
5 The rejections of the claims on the grounds of obviousness-type double
patenting stand withdrawn by the Examiner in view of the approved
Terminal Disclaimer dated March 4, 2016 and the abandonment of
Application No. 13/660,683. Ans. 4.
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66. A delamination resistant pharmaceutical container
comprising a pharmaceutical composition stored within the
container, wherein the pharmaceutical container comprises a
glass composition comprising:
Si02 in a concentration greater than about 7 4 mol. %;
alkaline earth oxide comprising MgO and CaO, wherein
CaO is present in an amount greater than or equal to about 0.1
mol % and less than or equal to about 1. 0 mol. % relative to the
glass composition, and a ratio (CaO (mol.%)/(CaO
(mol.%)+Mg0 (mol.%))) is less than or equal to 0.5; and
Y mol. % alkali oxide, wherein the alkali oxide comprises
Na20 in an amount greater than about 8 mol.%, wherein the
glass composition is free of boron and compounds of boron, and
wherein the pharmaceutical composition comprises one
of rituximab, bevacizumab, ranibizumab, trastuzumab, an
antibody, or an antigen binding fragment thereof, that binds
CD20, an antibody, or an antigen binding fragment thereof, that
binds vascular endothelial growth factor (VEGF), an antibody,
or an antigen binding fragment thereof, that binds vascular
endothelial growth factor - A, or an antibody, or an antigen
binding fragment thereof, that binds HER2.
App. Br. 23-24 (Claims App'x).
77. A delamination resistant pharmaceutical container
comprising a pharmaceutical composition stored within the
container, wherein the pharmaceutical container comprises a
glass composition comprising:
from about 7 4 mol. % to about 78 mol. % Si02;
from about 4 mol. % to about 8 mol. % alkaline earth
oxide, wherein the alkaline earth oxide comprises both MgO
and CaO and a ratio (CaO (mol.%)/(CaO (mol.%)+Mg0
(mol.%))) is less than or equal to 0.5;
X mol. % Ah03, wherein X is greater than or equal to
about 2 mol.% and less than or equal to about 10 mol.%; and
Y mol. % alkali oxide, wherein the alkali oxide comprises
Na20 in an amount greater than or equal to about 9 mol.% and
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Application 13/660,704
less than or equal to about 15 mol. %, a ratio of Y:X is greater
than 1, and the glass composition is free of boron and
compounds of boron, and
wherein the pharmaceutical composition comprises one
of rituximab, bevacizumab, ranibizumab, trastuzumab, an
antibody, or an antigen binding fragment thereof, that binds
CD20, an antibody, or an antigen binding fragment thereof, that
binds vascular endothelial growth factor (VEGF), an antibody,
or an antigen binding fragment thereof, that binds vascular
endothelial growth factor - A, or an antibody, or an antigen
binding fragment thereof, that binds HER2.
App. Br. 25 (Claims App 'x).
86. A delamination resistant pharmaceutical container
comprising a pharmaceutical composition stored within the
container, wherein the pharmaceutical container comprises a
glass composition comprising:
from about 7 4 mol. % to about 78 mol. % Si02;
alkaline earth oxide comprising both CaO and MgO,
wherein the alkaline earth oxide comprises CaO in an amount
greater than or equal to about 0.1 mol.% and less than or equal
to about 1. 0 mol. % relative to the glass composition, and a ratio
(CaO (mol. % )/(CaO (mol.%)+Mg0 (mol.%))) is less than or
equal to 0.5;
X mol. % Ah03, wherein X is greater than or equal to
about 2 mol. % and less than or equal to about 10 mol. %; and
Y mol. % alkali oxide, wherein the alkali oxide comprises
from about 0.01 mol.% to about 1.0 mol.%K20 and a ratio of
Y:X is greater than 1, and the glass composition is free of boron
and compounds of boron, and
wherein the pharmaceutical composition comprises one
of rituximab, bevacizumab, ranibizumab, trastuzumab, an
antibody, or an antigen binding fragment thereof, that binds
CD20, an antibody, or an antigen binding fragment thereof, that
binds vascular endothelial growth factor (VEGF), an antibody,
or an antigen binding fragment thereof, that binds vascular
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Application 13/660,704
endothelial growth factor - A, or an antibody, or an antigen
binding fragment thereof, that binds HER2.
App. Br. 26-27 (Claims App'x).
OPINION
The Examiner concludes that claims 50-53, 55-57, 59, 61, 62, 64,
66-84, 86-94, and 96-111 would have been obvious to one of ordinary skill
in the art at the time of the invention for the reasons stated on pages 25-26
of the Final Action.
Appellant does not separately argue the patentability of the dependent
claims. App. Br. 7-17. In accordance with 37 C.F.R. § 4I.37(c)(l)(iv),
each dependent claim will stand or fall together with the independent claim
from which it depends.
Claim 66
Appellant argues that the rejection is inconsistent with the
examination of six other applications in which the claimed glass
compositions were allowable over the teachings of Baak. App. Br. 8.
Appellant contends that the Examiner erred in rejecting claim 66 over Baak
because "Baak teaches innumerable possible glass compositions based on
vast ranges of recited elements, without any identification that their presence
in certain amounts or ratios is critical." App. Br. 10. Appellant asserts that
the exemplary claimed composition taught by Baak, listed below, includes
broader ranges for components than the pending claims and also teaches that
some of the claimed components may or may not be present since the ranges
extend down to "O." Id. at 10-11.
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Baak
Si02: 70-82 mol. %
Zr02: 2-8 mol. %
AbQ3: 0-5 mol.%
Na20: 0-10 mol.%
K20: 0-10 mol. %
CaO: 0-15 mol.%
SrO: 0-15 mol.%
BaO: 0-15 mol.%
MgO: 0-15 mol.%
(Na20 + K20): 3-10 mol.%
(CaO+SrO+BaO+Mg0):2-15 mol. %
CaO/(CaO+MgO): >0.5 up to 1
Appellant's Claim 66
Si02: greater than about 74 mol.%
Na20: greater than about 8 mol.%
CaO: 0.1-1.0 mol.%
CaO/(CaO+MgO): :S0.5
Regarding evidence of criticality of the claimed ranges, Appellant
identifies Example 1 in the Specification as showing compositions having a
Si02 content of 74--78 mol.%, which is within the claimed range, as well as
compositions with less than 74 mol.% Si02. Id. at 12. According to
Appellant, this demonstrates "criticality and improved properties resulting
from the claimed range of SiOi'' because the high Si02 content "resulted in
improved hydrolytic resistance" compared to the lower Si02 content. Id.
( emphasis omitted).
Appellant also argues that Example 3 of the Specification
demonstrates that the MgO and CaO content, specifically the ratio of
CaO/(CaO+MgO) of less than or equal to 0.5, is critical in achieving suitable
diffusivity because the data in Table 9 and Figures 4 and 5 show glasses
with higher diffusivities can be produced by minimizing the ratio of
CaO/(CaO+MgO). Id. at 13-14. Appellant further contends that the data in
Table 10 shows decreasing the ratio to less than 0.5 decreases the ion
exchange process times needed to achieve a given compressive stress and
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Application 13/660,704
depth of layer and that decreasing the ratio by increasing the MgO
concentration generally improves the resistance of the glass to hydrolytic
degradation. Id. ( citing Spec. ,r,r 196-97). Id. Appellant argues that Baak
teaches away from this critical claimed ratio because its broad ranges allow
for ratios greater than 0.5 and as high as 1. Id. at 14.
Appellant additionally argues that Baak fails to acknowledge or
appreciate the existence of delamination and asserts that delamination and
Appellant's method of testing for de lamination differ from leaching and
Baak' s method of determining chemical resistance or susceptibility to
leaching. Id. at 14--16.
The Examiner responds that each application is reviewed individually
and that the cited art discloses overlapping ranges with the constituents of
the pending claims. 6 Ans. 4. Regarding claim 66, the Examiner finds that it
broadly recites ranges for Si02, alkaline earth oxide comprising MgO and
CaO as well as the ratio ofCaO to CaO and MgO, and Na02, however, the
data presented is neither commensurate in scope with the claim nor a proper
side by side comparison. Id. at 5-6. The Examiner explains that it is not
clear from compositions A-Fin Example 1 whether the amount of Si02 or
the amounts of the multiple other components in the composition that vary
between compositions A-Fare causing the change in results. Id. at 6. The
Examiner also finds that the ranges of components in Example 3 are not
commensurate with the scope of the claim. Id. at 7-8. Regarding Baak
teaching leaching but not delamination, the Examiner responds that there is
6 Cf Fessenden v. Coe, 99 F.2d 426, 432 (D.C. Cir. 1938) (upholding
rejection of claims which were identical with claims allowed over same prior
art in patent to another inventor, stating in doing so that "[t]wo wrongs
cannot make a right").
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no evidence in the record that the container of Baak is not delamination
resistant. Id. at 9.
In the Reply Brief, Appellant reiterates that six other examiners
determined the claimed containers were nonobvious over the teachings of
Baak and that Baak does not address the issue of delamination or provide
guidance on how to solve the problem. Reply Br. 2--4. Appellant also
argues that the ranges disclosed by Baak are so broad that they do not
provide a starting point nor is it a matter of optimization to develop the
claimed composition, but, rather, the situation is analogous to the
nonobviousness of a species over the prior art disclosure of a broad genus
and Baak fails to disclose a recognizable class of species with common
properties. Id. at 5-7 (citing In re Baird, 16 F.3d 380, 382 (Fed. Cir. 1994);
In re Jones, 958 F.2d 347, 350 (Fed. Cir. 1992); Stratojlex, Inc. v. Aeroquip
Corp., 713 F.2d 1530, 1537 (Fed. Cir. 1983); In re Ruschig, 343 F.2d 965,
974 (CCPA 1965)).
Appellant further contends that of the 61 example glass compositions
disclosed in Baak's Tables I-IV, none contain between 0.1 mol.% and 1.0
mol.% CaO, more than half do not include any MgO and/or CaO, half of
those that do contain CaO and MgO do not include a ratio less than or equal
to 0.5, and none include at least 8 mol.% ofNa20, but, rather, 5 mol.% or
less ofNa20. Id. at 8. Appellant also asserts that the data presented are
commensurate in scope with the claims and that the Examples are evidence
of the criticality of the claimed ranges, including a CaO/(CaO+MgO) ratio
of less than 0.5 to achieve suitable diffusivity. Id. at 11-12.
We review the appealed rejections for error based upon the issues
identified by Appellant and in light of the arguments and evidence produced
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thereon. Cf Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)
(precedential) (cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed.
Cir. 2011) ("it has long been the Board's practice to require an applicant to
identify the alleged error in the examiner's rejections")). Essentially for the
reasons stated in the Final Action and the Answer, we are not persuaded by
Appellant that the Examiner reversibly erred in rejecting claim 66 over
Baak. We add the following primarily for emphasis.
Appellant does not dispute that Baak discloses a glass container for
pharmaceuticals composed of various ingredients within specific ranges as
itemized on page 10 of the Appeal Brief. Nor does Appellant dispute that
the claimed ranges of components are encompassed by the ranges disclosed
for Baak's exemplary glass container. Regarding the claimed ratio,
Appellant concedes that some of the examples in Baak include a ratio of
CaO/(CaO+MgO) that is less than or equal to 0.5 as required by claim 66.
Reply Br. 8 ("Additionally, of those compositions in Baak that do comprise
MgO and/or CaO, at least half do not include a ratio (CaO (mol. %)/(CaO
(mol. %)+Mg0 (mol. %))) less than or equal to 0.5, as required by pending
claim 66.). In addition, Appellant also does not argue that the
pharmaceutical compositions recited in claim 66 distinguish over Baak.
Appellant's arguments focus on distinguishing Baak' s glass container
composition on the basis that ( 1) Baak does not disclose the narrower ranges
recited in Appellant's claim 66 or the delamination problem that Appellant's
composition allegedly solved and that (2) Appellant's claimed ranges are
critical to achieving improved properties. App. Br. 10-17. We are not
persuaded by Appellant's arguments because Appellant's evidence does not
adequately demonstrate criticality of the claimed ranges for the components
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and ratios of components that are encompassed by Baak's disclosure
Therefore, the preponderance of the evidence supports the Examiner's
underlying findings and determination that the claims would have been
obvious over the teachings of Baak.
Appellant does not dispute the Examiner's finding that Baak discloses
a glass container composition comprising Si02, CaO, Na02, and MgO in
ranges that overlap the claimed ranges that is suitable for holding
pharmaceutical compositions (Final Act. 25-26). Therefore, having
identified the pertinent disclosures of Baak and determining that it would
have been obvious to use the containers of Baak to hold a known
pharmaceutical composition is nothing more than using a known article for
its intended use in a known environment to accomplish an entirely expected
result, the Examiner has established a prima facie case of obviousness of
claim 66 over Baak. In re Petersen, 315 F.3d 1325, 1329 (Fed. Cir. 2003)
("A prima facie case of obviousness typically exists where the ranges of a
claimed composition overlap the ranges disclosed in the prior art."); In re
Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992) ("[T]he examiner bears the
initial burden, on review of the prior art or on any other ground, of
presenting a prim a facie case of unpatentability. "). Once a prima facie case
of unpatentability has been established, the burden then shifts to Appellant
to overcome the prima facie case with argument and/or evidence.
Obviousness is then determined on the basis of the evidence as a whole and
the relative persuasiveness of the arguments. Oetiker, 977 F.2d at 1445.
We are not persuaded by Appellant's argument that Baak provides no
direction for a glass composition for containing a pharmaceutical having
Si 02, CaO, MgO, and Na20 in the claimed ranges (App. Br. 1 O; Reply Br.
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7). The Examiner's finding that Baak discloses glass compositions having
ranges for the components Si02, CaO, MgO, and Na20 that encompass the
claimed ranges and are suitable for holding pharmaceutical compositions
due to their properties of high chemical resistance and low thermal
coefficient of expansion is supported by the record and suggests
optimization within the ranges disclosed by Baak. Final Act. 25-26 ( citing
Baak 1: 14--30); see also Baak 5:47---6:3 (providing examples of glass
compositions that "exhibit excellent chemical durability and good working
characteristics" for use in pharmaceutical packaging.). "Selecting a narrow
range from within a somewhat broader range disclosed in a prior art
reference is no less obvious than identifying a range that simply overlaps a
disclosed range." Peterson, 315 F.3d at 1329-30 (holding claim to a
superalloy composition prima facie obvious over prior art reference having
overlapping ranges even through narrower ranges recited for two of the
components claimed). Accordingly, we are not persuaded that the Examiner
erred in rejecting the claims on the basis that the claimed ranges are
narrower than those taught by Baak.
Appellant's argument that none of the 61 examples of glass container
compositions disclosed in Baak contain the specific ranges of CaO and Na20
required by claim 66 (Reply Br. 8), also is not persuasive of error. A
reference may be relied upon for all that it would have reasonably suggested
to one having ordinary skill in the art. Merck & Co. v. Biocraft Labs., 874
F.2d 804, 807 (Fed. Cir. 1989). Moreover, Baak's broader teachings to
include Si02, CaO, and Na20 in a glass container composition are not
limited to the specific compositions of the 61 examples shown in Baak's
Tables I-VI because "a reference is not limited to the disclosure of specific
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working examples." In re Mills, 470 F.2d 649,651 (CCPA 1972) (citation
omitted).
Whether an invention has produced unexpected results is a question of
fact. In re Mayne, 104 F.3d 1339, 1343 (Fed. Cir. 1997). "[T]here is no
hard-and-fast rule for determining whether evidence of unexpected results is
sufficient to rebut a primafacie case of obviousness." Kao Corp. v.
Unilever U.S., Inc., 441 F.3d 963, 970 (Fed. Cir. 2006); see also In re
Dillon, 919 F.2d 688, 692-93 (Fed. Cir. 1990) ("[e]ach situation must be
considered on its own facts."). However, a party asserting unexpected
results as evidence of nonobviousness has the burden of proving that the
results are unexpected. In re Geisler, 116 F.3d 1465, 1469-70 (Fed. Cir.
1997). "[I]t is not enough to show that results are obtained which differ
from those obtained in the prior art: that difference must be shown to be an
unexpected difference." In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972).
Moreover, "when an inventor tries to distinguish his claims from the prior
art by introducing evidence of unexpected 'synergistic' properties, the
evidence should at least demonstrate 'an effect greater than the sum of the
several effects taken separately."' Merck & Co., 874 F.2d at 808; see also In
re Kollman, 595 F.2d 48, 55 n.6 (CCPA 1979) ("Synergism, in and of itself,
is not conclusive of unobviousness in that synergism might be expected.").
We are not persuaded that Appellant has demonstrated unexpected
results with data (Example 1 of the Specification) that shows a trend
between lower Si02 content and improved hydrolytic resistance and data
(Example 3 of the Specification) that shows a trend between a lower ratio of
CaO/(CaO+MgO) and higher diffusivities. App. Br. 12-14. That Appellant
has identified trends in the properties of glass compositions that were not
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appreciated by the prior art does not render the claimed compositions
unexpected and nonobvious. See Peterson, 315 F .3d at 1330 ("In general,
an applicant may overcome a prima facie case of obviousness by
establishing 'that the [ claimed] range is critical, generally by showing that
the claimed range achieves unexpected results relative to the prior art range.'
That same standard applies when, as here, the applicant seeks to optimize
certain variables by selecting narrow ranges from broader ranges disclosed
in the prior art. Moreover, the applicant's showing of unexpected results
must be commensurate in scope with the claimed range.").
Moreover, Appellant does not persuasively rebut the Examiner's
finding that the evidence presented is not commensurate in scope with the
claims (Ans. 3--4). While Appellant's evidence may be relevant to the
benefits associated with the ranges claimed for specific components, they do
not establish criticality across the range claimed nor do they show that those
benefits were unexpected. At most, Appellant's evidence shows "improved
hydrolytic resistance" (App. Br. 12) at Si02 content ranging from 74.8 mol%
to 77.4 mol% compared to compositions 70.8 mol% and 72.8 mol%.
Similarly, Appellant's assertion that Example 3 demonstrates criticality of
the MgO and CaO content at most shows that compositions meeting the
claimed range of CaO/(CaO+MgO) ratio result in "suitable diffusivity"
(App. Br. 14) which does not evidence criticality over the claimed range
compared to the prior art.
In addition, Appellant does not adequately rebut the Examiner's
finding (Ans. 6) that the evidence presented does not properly compare
compositions such that criticality of a single component, for example Si 02,
can be determined because multiple other components vary in the
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compositions that are compared. See In re Dunn, 349 F.2d 433, 439 (CCPA
1965) ( cause and effect sought to be proven is lost in the welter of unfixed
variables). Moreover, the Specification itself reflects that the data is not
conclusive when it states that "[b ]ased on these test results, it is believed that
the acid resistance of the glass samples improves with increased Si02
content." Spec. ,r 185. Argument alone asserting criticality of the claimed
ranges (Reply Br. 11) is insufficient to rebut the Examiner's findings. It is
well settled that arguments of counsel cannot take the place of factually
supported objective evidence. See, e.g., In re Huang, 100 F.3d 135, 139--40
(Fed. Cir. 1996); In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984).
Appellant's assertion that because Baak teaches broader ranges than
those claimed, it teaches away from the claimed glass composition is not
persuasive because Baak has not been shown to criticize, discredit, or
otherwise discourage the claimed ranges as those ranges are encompassed by
Baak's disclosure. See, e.g., In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir.
2004) (explaining "[t]he prior art's mere disclosure of more than one
alternative does not constitute a teaching away from any of these alternatives
because such disclosure does not criticize, discredit, or otherwise discourage
the solution claimed").
Appellant's assertion that delamination is distinguishable from
leaching or chemical degradation disclosed by Baak (App. Br. 16-17) is not
persuasive of error. Appellant does not assert that delamination resistance is
an unexpected result of the claimed composition nor does Appellant assert
that Baak's glass composition lacks this property. Instead, Appellant asserts
that "one skilled in the art would not look to the teachings of Baak, directed
to compositions designed to minimize or prevent leaching of tramp particles,
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in an effort to design glass compositions which minimize or prevent
delamination of substantial glass flakes." (App. Br. 17; Reply Br. 13-14).
The problem with Appellant's argument is that both Baak and Appellant's
Specification concern pharmaceutical containers and thus would have been
expected to have similar properties. Baak 1: 14--30; Spec. ,r 2.
On balance, the evidence of record weighs in favor of the Examiner's
conclusion that the glass container composition recited in claim 66 would
have been obvious to one of ordinary skill in the art to use to hold a known
pharmaceutical composition in view of the teachings of Baak.
Claims 77 and 86
In addition to the arguments discussed above in connection with claim
66, Appellant argues that Example 2 demonstrates the criticality of a Y:X
ratio of at least 1.0 where X is Ah03 and Y is alkali oxide as required by
claims 77 (specifying that the alkali oxide comprises 9-15 mol% Na20) and
86 (specifying that the alkali oxide comprises 0.01-1.0 mol% K20). App.
Br. 13. According to Appellant, the data in Table 9 evidences the influence
of the alkali to alumina ratio on melting behavior, hydrolytic resistance, and
compressive stress obtainable through ion exchange strengthening, and that
the ratio of Y:X should be greater than or equal to 0.9 or 1 to obtain a glass
that is readily meltable and formable. Id. at 12-13. Appellant argues that
because Baak allows for glass compositions having a Y:X ratio of less than
1.0, it teaches away from the critical claimed ratio. Id. at 13.
The Examiner responds that the data presented is not commensurate
with the scope of the claims and that no comparative data is provided as the
compositions in Table 9 all have a Y:X ratio over 0.90. Ans. 6-7.
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In the Reply Brief, Appellant contends that of the 61 example glass
compositions disclosed in Baak's Tables I-IV, none contain between 0.1
mol.% and 1.0 mol.% CaO and more than half do not include any MgO
and/or CaO, none include Na20 in the range of 9-15 mol% required by
claim 77, but, rather, 5 mol.% or less ofNa20, none include 0.01-1.0 mol%
K20 as required by claim 86, but, rather, greater than 1.0 mol% K20, and
nearly a third do not include any Ah03 as required by claims 77 and 86.
Reply Br. 8-10. Appellant also asserts that the data presented are
commensurate in scope with the claims and that the Examples are evidence
of the criticality of the claimed ranges, including CaO/(CaO+MgO) ratio of
less than 0.5 to achieve suitable diffusivity and a Y:X ratio of at least 1.0 to
achieve "good melt behavior, superior ion exchange performance, and
superior hydrolytic resistance." Id. at 11-12.
For the reasons stated in the Final Action and the Answer, we are not
persuaded of reversible error in any of the Examiner's findings as to Baak
and the Examiner's determination that claims 77 and 86 would have been
obvious to one of ordinary skill in the art over the cited prior art. We add
the following primarily for emphasis.
We note that Appellant does not dispute that Baak discloses ranges
that encompass both the components and ratios recited in claims 77 and 86.
Appellant's arguments distinguishing claims 77 and 86 over the individual
61 examples disclosed in Baak are not persuasive of reversible error because
"a reference is not limited to the disclosure of specific working examples."
In re Mills, 4 7 0 F .2d at 651. Regarding Appellant's evidence of unexpected
results due to the Y:X ratio required by claims 77 and 86, Appellant does not
rebut the Examiner's finding (Ans. 7) that the data in Table 9 lacks
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comparative data from which criticality can be assessed because all have an
Y:X ratio over 0.90. Arguments of counsel asserting criticality based on
insufficient data cannot take the place of factually supported objective
evidence sufficient to establish the alleged criticality of the claimed ranges.
See, e.g., In re Huang, 100 F.3d at 139--40; In re De Blauwe, 736 F.2d at
705.
Regarding Appellant's teaching away argument based on Baak's
disclosure of broader ranges for the Y :X ratio than those claimed,
Appellant's argument is not persuasive because Baak's disclosure of
additional ratios has not been shown to criticize, discredit, or otherwise
discourage those claimed. See, e.g., In re Fulton, 391 F.3d at 1201.
On balance, the evidence of record weighs in favor of the Examiner's
conclusion that claims 77 and 86 are unpatentable over Baak.
CONCLUSION
We affirm the Examiner's rejection of claims 50-53, 55-57, 59, 61,
62, 64, 66-84, 86-94, and 96-111 as obvious under 35 U.S.C. § 103(a).
DECISION
The Examiner's decision 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)(l).
AFFIRMED
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