Ex Parte Aleksandrovic-Bondzic et alDownload PDFPatent Trial and Appeal BoardJan 11, 201813700406 (P.T.A.B. Jan. 11, 2018) Copy Citation 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. 13/700,406 04/19/2013 Vesna Aleksandrovic-Bondzic 3321-P50029 6746 13897 7590 Abel Law Group, LLP 8911 N. Capital of Texas Hwy Bldg 4, Suite 4200 Austin, TX 78759 01/16/2018 EXAMINER REDDY, KARUNA P ART UNIT PAPER NUMBER 1764 NOTIFICATION DATE DELIVERY MODE 01/16/2018 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): mail @ Abel-IP.com hmuensterer @ abel-ip. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte VESNA ALEKSANDROVIC-BONDZIC, SASCHA MERTENS, and STEPHAN FOERSTER Appeal 2016-008334 Application 13/700,406 Technology Center 1700 Before N. WHITNEY WILSON, AVELYN M. ROSS, and MERRELL C. CASHION, JR. Administrative Patent Judges. ROSS, Administrative Patent Judge. DECISION ON REHEARING This Decision on Rehearing relates to Appellants’ October 24, 2017, Request for Rehearing (hereinafter “Req. Reh’g”) of our Decision on Appeal mailed September 29, 2017 (hereinafter “Decision”). In that Decision, we affirmed the Examiner’s decision to reject: (1) claims 14—16, 20—26, 28—32, and 34—36 under 35 U.S.C. § 102(b) as anticipated by, or in the alternative under 35 U.S.C. § 103(a) as obvious over, Tamareselvy1 and (2) claim 18 under 35 U.S.C. § 103(a) as obvious over Tamareselvy. See generally Decision 3—7. 1 Tamareselvy et al., US 2003/0202953 Al, published October 30, 2003 (“Tamareselvy”). Appeal 2016-008334 Application 13/700,406 A request for rehearing must state with particularity the points believed to have been misapprehended or overlooked by the Board. Arguments not raised in briefs before the Board and evidence not previously relied on in the briefs are not considered by the Board in a request for rehearing, except as permitted by 37 C.F.R. §§ 41.52(a)(2) through (a)(4). We review the points of the Decision contested by Appellants and determine whether we erred in fact finding or applying the law, and further determine whether any such error changes the outcome of the Decision when viewing all the evidence and arguments anew in light of the preponderance of the evidence standard. See In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992) (“patentability is determined on the totality of the record, by a preponderance of evidence with due consideration to persuasiveness of argument”); Gardner v. TEC Sys., Inc., 725 F.2d 1338, 1345 (Fed. Cir. 1984) (any error concerning nonessential facts is harmless and not a basis for reversal). For the reasons set forth below, the Request is DENIED. I. On rehearing, Appellants contend that the Board misapprehended the arguments presented. Req. Reh’g 2. In particular, Appellants explain that they “never have alleged that due to the difference in dosing times during the preparation of the claimed polymers on the one hand and during the preparation of the polymers of Tamareselvy on the other hand, the claimed polymers will necessarily have a lower (or higher) tan 8 than the polymers of Tamareselvy.” Id. According to Appellants, the tan 8 were utilized to illustrate that the dosing times influence the properties of the resulting polymer. Id. Appellants’ argument is misplaced. In our Decision, we recognized Appellants’ use of tan 8 values to illustrate that the claimed polymers were 2 Appeal 2016-008334 Application 13/700,406 structurally different from the polymers of Tamareselvy. Decision 5; see also id. at 4 (noting Appellants’ explanation that Table 5 “provides clear evidence that the product-by-process elements recited in the instant claims do indeed influence the structure and properties.”). But, as we also stated in our Decision, Appellants did not meet their burden of showing the claimed polymers are in fact structurally different that the prior art polymers. As a general rule, “the patentability of a product does not depend on its method of production. [And,] [i]f the product in a product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 111 F.2d 695, 697 (Fed. Cir. 1985). If, however, the process steps of the product-by-process claim result in a product that is structurally or functionally different from that disclosed in the prior art, then the claims are not unpatentable. Greenliant Systems, Inc. v. Xiocor LLC, 692 F.3d 1261, 1268 (Fed. Cir. 2012). But, “the burden is upon the applicants to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product.” In re Marosi, 710 F.2d 799, 803 (Fed. Cir. 1983). Thus, the patentability of a claim to a product does not necessarily rest on the method of making that product. Rather, it must be shown that the product itself is new and nonob vious. Appellants identified the difference in reported tan 8 values of polymers having dosing periods of less than 40 minutes as evidence that the instantly claimed polymers are structurally or functionally different than those of Tamareselvy. But, Appellants provide only two examples (Table 5) of the numerous (hundreds) of polymers covered by the breadth of Appellants claims. As we stated in our Decision, Appellants failed to show that this purported difference in identified tan 8 values—illustrated by two isolated examples—is necessarily a 3 Appeal 2016-008334 Application 13/700,406 result of dosing time. See e.g., Decision 5. This is especially so when the Examples of the Specification (see Table 4) show that the tan 8 value (the distinguishing factor identified by Appellants) is highly dependent on polymer composition. Spec. 17—18. Said another way, Appellants did not show that a dosing time of less than 40 minutes alone yields a change in tan 8 value (i.e., a structurally different polymer) over the breadth of Appellants’ claims. Thus, Appellants failed to establish that the product of the instant claims is different than the product of Tamareselvy. On appeal, Appellants failed to satisfy their burden; and on rehearing, Appellants failed to direct us to any error in our findings and conclusions. II. Appellants have not sustained their burden of showing that we misapprehended or overlooked relevant points of fact or law in arriving at our Decision. We therefore decline to modify our Decision. The Request for Rehearing is granted to the extent we have considered Appellants’ arguments, but denied in that the Decision will not be modified. This Decision on the Request for Rehearing incorporates our Decision, mailed September 29, 2017, and is final for the purposes of judicial review. See 37 C.F.R. §41.52(a)(1). No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). DENIED 4 Copy with citationCopy as parenthetical citation