Ex Parte Beyar et alDownload PDFPatent Trial and Appeal BoardJun 23, 201612377894 (P.T.A.B. Jun. 23, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/377,894 08/03/2009 21125 7590 06/27/2016 NUTTER MCCLENNEN & FISH LLP SEAPORT WEST 155 SEAPORT BOULEVARD BOSTON, MA 02210-2604 FIRST NAMED INVENTOR Mordechay Beyar 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. 101896-1049 1476 EXAMINER PEPITONE, MICHAEL F ART UNIT PAPER NUMBER 1767 NOTIFICATION DATE DELIVERY MODE 06/27/2016 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): docket@nutter.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MORDECHA Y BEY AR and OREN GLOBERMAN Appeal2014-006170 Application 12/377,894 Technology Center 1700 Before PETER F. KRATZ, CHRISTOPHER L. OGDEN, and MONTE T. SQUIRE, Administrative Patent Judges. KRATZ, Administrative Patent Judge. DECISION ON APPEAL This is a decision on an appeal under 35 U.S.C. § 134 from the Examiner's final rejection of claims 61---67, 70, and 71. We have jurisdiction pursuant to 35 U.S.C. § 6. Appellants' claimed invention is directed to a cement kit comprising a liquid component including a monomer and a powder component including polymeric beads having a functionally specified molecular weight distribution. Claim 61, the sole independent claim on appeal, is illustrative and reproduced below: Appeal2014-006170 Application 12/377 ,894 61. A cement kit, comprising: (a) a liquid component including a monomer; and (b) a powder component including polymeric beads, in which the distribution of the molecular weight of the powder component is non-normal so that it is skewed to a higher molecular weight by introduction of higher molecular weight beads, the non-normal distribution of the molecular weight of the powder component causing (a) an increase in the immediate viscosity of a mixture of the liquid and powder components and compared with a cement having a substantially normal distribution, and (b) an increase in the length of the working window period in which the viscosity of the cement does not exceed 500 Pa.s compared with a cement having a substantially normal distribution. The Examiner relies on the following prior art references as evidence in rejecting the appealed claims: Kimura US 6, 7 59 ,449 B2 July 6, 2004 The Examiner maintains the following grounds of rejection: Claims 70 and 71 stand rejected under 35 U.S.C. § 112, second paragraph as being indefinite for failing to particularly point out and distinctly claim the subject matter that Applicant regards as the invention. Claims 61 and 65-67 stand rejected under 35 U.S.C. § 102(b) as being anticipated by Kimura. Claims 62---64, 70, and 71 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Kimura. We reverse the stated rejections. Our reasoning follows. Rejection Under§ 112, Second Paragraph The Examiner considers dependent claims 70 and 71 to be indefinite because "[i]t is unclear which polymeric beads ha[ ve] an average molecular weight" as specified in dependent claims 70 and 71 (Final Office Act. 2; Ans. 3, 14). 2 Appeal2014-006170 Application 12/377 ,894 We agree with Appellants, however, that the term "the polymeric beads" as used in the rejected dependent claims refers back to the "polymeric beads" included in the "powder component" as recited in independent claim 61 from which latter claim rejected claims 70 and 71 depend (App. Br. 17). Thus, the contested claim term is reasonably definite and clear in meaning. As a consequence, we will not sustain the Examiner's rejection under the second paragraph of 35 U.S.C. § 112. Anticipation Rejection In order for the Examiner to carry the burden of establishing a prima facie case of anticipation, the Examiner must establish where each and every element of the claimed invention, arranged as required by the claim, is found in a single prior art reference, either expressly or under the principles of inherency. See generally In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997). The Examiner focuses on Example 15 of Kimura as an anticipating disclosure and finds that the applied reference does not describe "all the claimed effects or physical properties" for this applied example as required and claimed for the cement kit product of the rejected claims, including claim 61, the sole independent claim rejected. 1 The Examiner contends as follows (Final Office Act. 3; Ans. 4): [T]he reference teaches all of the claimed reagents, in the claimed ranges, was prepared under similar conditions, and the 1 The Examiner has not pointed out how Kimura otherwise describes an embodiment or another example that is sufficiently specific as regards the required limitations of claim 61 so as to furnish an anticipating disclosure. 3 Appeal2014-006170 Application 12/377 ,894 original specification does not specify that the properties arise from a specific ingredient or process step and therefore appears to be the mere result of the mixture and/or process. Therefore, the claimed effects and physical properties, i.e. the non-normal distribution of the molecular weight of the powdered component causing (a) an increase in the immediate viscosity of a mixture of the liquid and powdered components, and (b) an increase in the length of the working window period in which the viscosity of the cement does not exceed 500 Pa. s {compared to a cement with a normal distribution}, would inherently be achieved by a composition with all the claimed ingredients. As essentially argued by Appellants, however, the Examiner has not established a sufficient factual predicate for the inherency assertion (App. Br. 2, 5). According to Appellants, the Examiner has not established that the Example 15 preparation of Kimura has substantially identical components and was made by the same procedures as any of Appellants' exemplary embodiments that are disclosed by Appellants as having a skewed molecular \veight distribution and that are relied upon and disclosed by i\.ppellants as possessing the claimed viscosity characteristics; hence, the Examiner fails to establish that a corresponding disclosure exists in Kimura that would serve as a sufficient factual basis for the Examiner's inherency assertion (App. Br. 5-11; Reply Br. 1-6; Spec. 16-18, 20-21). Moreover, as argued by Appellants, Kimura fails to indicate that an increased working time for the applied Example 15 adhesive composition would naturally flow from the mixture of fillers used therein as compared with a cement having a substantially normal distribution of molecular weight of the powder component (polymer beads) as required by claim 61; rather, Kimura's "experimental data appears to show that the inclusion of higher molecular weight filler does not necessarily increase working time for the 4 Appeal2014-006170 Application 12/377 ,894 cement" (App. Br. 11; Spec., Table 1 ). In this regard, Kimura discloses that "there are no restrictions to a weight average molecular weight of the non- crosslinking polyethyl methacrylate constituting the PEMA spherical filler because it does not significantly influence a working time" (col. 14, 11. 22- 25). Consequently, the Examiner has not provided the requisite factual basis to support the Examiner's inherency argument. "Inherency ... may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient." In re Oelrich, 666 F.2d 578, 581(CCPA1981) (quoting Hansgirg v. Kemmer, 102 F.2d 212, 214 (CCPA 1939)). After all, when an examiner relies upon a theory of inherency, "the examiner must provide a basis in fact and/or technical reasoning to reasonably support the determination that the allegedly inherent characteristic necessarily flows from the teachings of the applied prior art." Ex parte Levy, 17 USPQ2d 1461, 1464 (Bd. Pat. App. & Int. 1990) (citation omitted). Here, the Examiner has not provided the requisite factual basis and/or technical reasoning which support the Examiner's inherency argument. It follows that we shall reverse the Examiner's anticipation rejection. Obvious Rejection The dependent claims subject to the obviousness rejection over Kimura maintained by the Examiner include the features of independent claim 61. In the stated obviousness rejection, the Examiner addresses the additional feature required by the dependent claims without further 5 Appeal2014-006170 Application 12/377 ,894 specifying how Kimura would have suggested, other than by an inherency theory, the above-discussed features of independent claim 61, which are included in the dependent claims by virtue of their dependency on claim 61 (Ans. 6-7). Therefore, the Examiner's separate obviousness rejection of the dependent claims falls short because the Examiner has not articulated how the obviousness position advocated for the additional features added by the these claims overcome the deficiencies in the base anticipation rejection upon which the obvious rejection is predicated. Accordingly, we reverse the Examiner's obviousness rejection. CONCLUSION The Examiner's decision to reject the appealed claims is reversed. REVERSED 6 Copy with citationCopy as parenthetical citation