Ex Parte Williams et al

Board of Patent Appeals and Interferences

Jun 18, 2012

10103080 (B.P.A.I. Jun. 18, 2012)

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.
10/103,080 03/21/2002 David Neil Williams 13877/34401 9626
26646 7590 06/18/2012
KENYON & KENYON LLP
ONE BROADWAY
NEW YORK, NY 10004
EXAMINER
FUBARA, BLESSING M
ART UNIT PAPER NUMBER
1613
MAIL DATE DELIVERY MODE
06/18/2012 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 DAVID NEIL WILLIAMS,
NIGEL IVOR EDWARD SHEWRING, and ADRIAN JAMES LEE
____________

Appeal 2011-004618
Application 10/103,080
Technology Center 1600
____________

Before TONI R. SCHEINER, DONALD E. ADAMS, and
MELANIE L. McCOLLUM, Administrative Patent Judges.

ADAMS, Administrative Patent Judge.

DECISION ON APPEAL

This appeal under 35 U.S.C. § 134 involves claims 1, 3-5, 8-10, 14-
18, and 20-27 (App. Br. 2; Ans. 2). We have jurisdiction under 35 U.S.C.
§ 6(b).
STATEMENT OF THE CASE
The claims are directed to a method of inhibiting fouling of a substrate
in an aquatic environment (claims 1, 3-5, 8-10, 25, and 26) and an anti-
fouling composition (claims 14-18, 20-24, and 27). Claims 1 and 14 are
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representative and are reproduced in the “CLAIMS APPENDIX” of
Appellants’ Brief.
Claims 1, 3-5, 8, 14-18, 20, 21, and 24-27 stand rejected under 35
U.S.C. § 102(b) as being anticipated by Bigner.
1

Claims 1, 8-10, and 23 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Bigner and either Simendinger
2
or
Masuoka.
3

Claims 14-18, 20-23, and 27 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over the combination of Murray
4
and Meurer.
5

Claims 1, 4, 5, 8-10, and 26 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over the combination of Murray, Meurer, and Federici.
6

We reverse the rejections over Bigner alone or in combination with
either Simendinger or Masuoka. We affirm all other grounds of rejection.

Bigner alone or in combination with either Simendinger or Masuoka:
ISSUE
Does Bigner alone or in combination with Simendinger or Masuoka
teach or suggest a fluid fluorinated alkyl- or alkoxy-containing polymer or
oligomer as required by Appellants’ claimed invention?

1
Bigner, US 4,895,881, issued January 23, 1990.
2
Simendinger, III, US 6,313,193 B1, issued November 6, 2001.
3
Masuoka et al., US 4,898,895, issued February 6, 1990.

4
Murray, US 5,439,673, issued August 8, 1995.
5
Meurer et al., US 5,434,198, issued July 18, 1995.

6
Federici et al., US 4,851,475, issued July 25, 1989.

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FACTUAL FINDINGS (FF)
FF 1. Appellants define a fluid material
in conformity with ASTM (1996) D4359-90: Standard Test
Method for Determining Whether a Material Is a Liquid or a
Solid. In this test method the material under test is held in a
tightly closed can at 38°C. The lid is removed and the can
inverted. The flow of the material from the can is observed to
determine whether it is a solid or a liquid. A material that flows
for a total of 50 mm or less within 3 min is considered a solid.
Otherwise it is considered a liquid.

(Spec. 3: 13-19.)
FF 2. Examiner finds that Bigner discloses the fluorocarbon polymer –
polytetrafluoroethylene (Ans. 4).
FF 3. Polytetrafluoroethylene has a “melting point . . . [of] 280-330° C.,
particularly approximately 300° C.” and a “softening point . . . between 240
and 280° C., for instance approximately 265° C.” (Bigner, col. 1, ll. 51-60).
FF 4. Examiner finds that Bigner discloses that the “fluorocarbon polymer
is dispersed in a solvent” and that Bigner’s “fluorinated polymer needs to be
dispersed in a solvent or dispersion media that is a fluid component” (Ans.
10).
FF 5. Examiner finds that Bigner does not suggest polydimethylsiloxane, a
requirement for some of Appellants’ dependent claims, and relies upon
either Simendinger or Matsuoka to make up for this deficiency in Bigner
(Ans. 5).
ANALYSIS
Appellants’ claimed invention places three constraints on the
fluorinated alkyl- or alkyoxy-containing polymer or oligomer, specifically it:
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(1) has an average-weight molecular weight of 400-40,000; (2) comprises a
repeating unit of a defined general formula; and (3) is fluid (Claim 1).
Appellants’ Specification defines a fluid material (FF 1; App. Br. 5;
Reply Br. 2). Bigner’s polytetrafluoroethylene is not “fluid” as defined by
Appellants (see FF 2-3; Cf. FF 1; App. Br. 5; Reply Br. 2).
We recognize Examiner’s assertion that when Bigner’s
polytetrafluoroethylene is dispersed in a solvent it is a fluid (FF 4). While
this may be true, as Appellants point out, Bigner’s “fluorinated polymer is
clearly not a fluid component in its own right” (App. Br. 5). Examiner failed
to explain how a polytetrafluoroethylene dispersed in a solvent anticipates or
makes obvious a fluid fluorinated alkyl- or alkoxy-containing polymer as
required by Appellants’ claimed invention.
Examiner failed to establish that Simendinger or Matsuoka make up
for this deficiency in Bigner (see FF 5).
CONCLUSION OF LAW
The preponderance of evidence on this record fails to support
Examiner’s finding and conclusion that Bigner alone or in combination with
Simendinger or Masuoka teaches or suggests a fluid fluorinated alkyl- or
alkoxy-containing polymer or oligomer as required by Appellants’ claimed
invention.
The rejection of claims 1, 3-5, 8, 14-18, 20, 21, and 24-27 under 35
U.S.C. § 102(b) as being anticipated by Bigner is reversed.
The rejection of claims 1, 8-10, and 23 under 35 U.S.C. § 103(a) as
unpatentable over the combination of Bigner and either Simendinger or
Masuoka is reversed.

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The combination of Murray and Meurer:
ISSUE
Does the preponderance of evidence on this record support a
conclusion of obviousness?
FACTUAL FINDINGS (FF)
FF 6. Murray suggests a hair care composition comprising
perfluoropolyether (e.g., FOMBLIN and DEMNAM) and silicone (Ans. 7).
FF 7. Murray suggests three FOMBLIN formulations having average
molecular weights of 1500, 3200, and 6600 (id. at 6-7).
FF 8. Murray suggests four DEMNAM formulations having average
molecular weights of 2,500, 4,500, 5,600, and 8,400 (id. at 7).
FF 9. Murray suggests the same polysiloxanes set forth in Appellants’
claims 20-23 (id.).
FF 10. Examiner finds that “Murray is silent on the fact that the
polysiloxanes are cured or cross-linked or curable” (id.).
FF 11. Examiner relies on Meurer to establish that “moisture induces the
curing of siloxane polymer” (id.; see also id. (“Since moisture induces the
curing of siloxane polymer as evidenced by Meurer . . ., it flows that
moisture in the atmosphere or moisture in the composition itself would
induce curing”); id. at 16 and 17).
ANALYSIS
The claims were not separately argued and therefore stand or fall
together. 37 C.F.R. § 41.37(c)(1)(vii). Claim 14 is representative.
Based on the combination of Murray and Meurer Examiner concludes
that, at the time of Appellants’ claimed invention, a person of ordinary skill
in this art would have found it prima facie obvious to reasonably expect
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“that the polysiloxane polymer in the composition of Murray would be cured
on exposure to moisture according to the teaching of Meurer” (Ans. 7). In
addition, Examiner concludes that “Murray’s composition would be capable
of the intended use as an antifouling composition” (id.).
We recognize Appellants’ contention that Murray fails to suggest anti-
fouling properties (App. Br. 10). While this may be true, Appellants fail to
establish an evidentiary basis on this record to support a conclusion that
Murray’s composition would not intrinsically have anti-fouling properties.
Accordingly, we are not persuaded by Appellants’ contention regarding
Murray’s failure to suggest an anti-fouling property for the composition or
Appellants’ contention that Murray is “non-analogous art to anti-fouling
coating compositions” (id.).
Because claim 14 does not require any particular amount of the
various ingredients in the composition, we are not persuaded by Appellants’
contentions regarding the amounts of ingredients in Murray’s composition
(id. at 11).
CONCLUSION OF LAW
The preponderance of evidence on this record supports a conclusion
of obviousness. The rejection of claim 14 under 35 U.S.C. § 103(a) as
unpatentable over the combination of Murray and Meurer is affirmed.
Claims 15-18, 20-23, and 27 are not separately argued and fall together with
claim 14. 37 C.F.R. § 41.37(c)(1)(vii).

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The combination of Murray, Meurer, and Federici:
ISSUE
Does the preponderance of evidence on this record support a
conclusion of obviousness?
FACTUAL FINDINGS (FF)
FF 12. Examiner relies on the combination of Murray and Meurer as set
forth above (Ans. 8; see FF 6-11).
FF 13. Examiner finds that the combination of Murray and Meurer fails to
suggest the use of the composition to inhibit fouling (id.).
FF 14. Examiner relies on Federici to suggest that compositions comprising
FOMBLIN are known in the art as anti-fouling compositions for hulls of
boats and ships (id.).
ANALYSIS
The claims were not separately argued and therefore stand or fall
together. 37 C.F.R. § 41.37(c)(1)(vii). Claim 1 is representative.
Based on the combination of Murray, Meurer, and Federici Examiner
concludes that, at the time of Appellants’ claimed invention, a person of
ordinary skill in this art would have found it prima facie obvious to
reasonably expect “that the composition of Murray in view of Meurer when
applied to boat or shop [sic] hulls would effectively inhibit corrosion and
fouling” (Ans. 8).
Having found no deficiency in the combination of Murray and
Meurer, we are not persuaded by Appellants’ contention that Federici “fails
to rectify the deficiencies in the teachings of Murray and Meurer” (App. Br.
12).
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We are also not persuaded by Appellants’ contention that Examiner
relied upon impermissible hindsight (id.). To the contrary, Examiner
properly found that Murray suggests a composition within the scope of
Appellants’ claimed invention and that Meurer and Federici suggest that
such compositions are known to be useful in methods of inhibiting fouling
of a substrate in an aquatic environment (FF 12-14). This is not hindsight,
but is instead nothing more than the recognition of the properties and utility
of the composition suggested by Murray. “The combination of familiar
elements according to known methods is likely to be obvious when it does
no more than yield predictable results.” KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398, 416 (2007).
CONCLUSION OF LAW
The preponderance of evidence on this record supports a conclusion
of obviousness. The rejection of claim 1 under 35 U.S.C. § 103(a) as
unpatentable over the combination of Murray, Meurer, and Federici is
affirmed. Claims 4, 5, 8-10, and 26 are not separately argued and fall
together with claim 1. 37 C.F.R. § 41.37(c)(1)(vii).

TIME PERIOD FOR RESPONSE
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-IN-PART

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