13799395 (P.T.A.B. Oct. 25, 2016)

Ex Parte Chirino et al

Patent Trial and Appeal BoardOct 25, 2016

13799395 (P.T.A.B. Oct. 25, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 131799,395 03/13/2013 157 7590 10/27/2016 Covestro LLC 1 Covestro Circle PITTSBURGH, PA 15205 FIRST NAMED INVENTOR Jose L. Chirino 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. BMS132012/MD10-12 3038 EXAMINER RODD, CHRISTOPHER M ART UNIT PAPER NUMBER 1766 NOTIFICATION DATE DELIVERY MODE 10/27/2016 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): veronica. thompson@covestro.com US-IPR@covestro.com laura.finnell@covestro.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JOSE L. CHIRINO, JAMES P. MASON, BRUCE L. HAGER, and MARINA ROGUNOV A Appeal2015-007055 Application 13/799,395 Technology Center 1700 Before ADRIENE LEPIANE HANLON, KAREN M. HASTINGS, and LILAN REN, Administrative Patent Judges. PERCURIAM DECISION ON APPEAL Appellants appeal under 35 U.S.C. Â§ 134 from the Examiner's rejection of claims 1-18 under 35 U.S.C. Â§ 103(a) as unpatentable over Seidel et al. (US 6,762,228 B2, issued July 13, 2004) ("Seidel") with Hashimoto et al. (US 6,780,917 B2, issued Aug. 24, 2004) ("Hashimoto"). We have jurisdiction over the appeal pursuant to 35 U.S.C. Â§ 6(b). Upon consideration of the evidence on this record and each of Appellants' contentions, we find that the preponderance of evidence on this record supports the Examiner's conclusion that the subject matter of Appellants' claims is unpatentable over the applied prior art. We sustain the above rejections based on the findings of fact, conclusions of law, and rebuttals to arguments expressed by the Examiner in the Answer. Appeal2015-007055 Application 13/799,395 We add the following for emphasis. The burden of showing unexpected results rests on the person who asserts them by establishing that the difference between the claimed invention and the closest prior art was an unexpected difference. See In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972). Further, it is well established that the showing of unexpected results must be commensurate in scope with the claims. See In re Peterson, 315 F.3d 1325, 1330-331 (Fed. Cir. 2003). As the Examiner explains, Appellants' mere conclusion that they "have unexpectedly found all three recited fillers at the claimed concentration are needed to achieve a UL 94- 5V A rating" (Br. 6) is not sufficient to satisfy their burden (Ans. 4). The Examiner further discusses the Specification examples, pointing out that they do not compare the claimed invention to the closest prior art and do not exemplify compositions that are commensurate in scope with the claims (see, e.g., Ans. 4--8; no reply brief has been filed). Thus, the Examiner's position that the Specification examples fail to evince unexpected results from the recited combination of components is supported by a preponderance of the evidence. 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. Â§ 1.136(a). AFFIRMED 2