Ex Parte Cook et al

Patent Trial and Appeal Board

Apr 15, 2016

13069252 (P.T.A.B. Apr. 15, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/069,252 03/22/2011
27305 7590 04/19/2016
HOW ARD & HOW ARD ATTORNEYS PLLC
450 West Fourth Street
Royal Oak, MI 48067
FIRST NAMED INVENTOR
Julie L. Cook
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.
DC10189CNT1/071049.00175 9785
EXAMINER
STANLEY, JANEL
ART UNIT PAPER NUMBER
1767
NOTIFICATION DATE DELIVERY MODE
04/19/2016 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):
IPDocket@HowardandHoward.com
dtrost@HowardandHoward.com
tmorris@Howardandhoward.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JULIE L. COOK, JAMES L. GOUDIE, DIANE M. KOSAL,
LORI STARK-KASLEY, WAYNE J. CHATTERTON,
GANIYU JAIYEOLA, WILLIAM R. STA GI, and JAMES A. STEELE 1
Appeal2014-005299
Application 13/069,252
Technology Center 1700
Before BRADLEY R. GARRIS, BEYERL YA. FRANKLIN, and
CHRISTOPHER L. OGDEN, Administrative Patent Judges.
OGDEN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
decision2 finally rejecting claims 1-6, 9-10, 12-15, and 18-21 in the above-
identified application. We have jurisdiction pursuant to 35 U.S.C. § 6(b ).
We AFFIRM.
1 According to Appellants, the real parties in interest are Dow Coming
Corporation, Utilx Corporation, and Bank of America, N.A. Appeal Br. 3.
2 The Examiner's decision, and the grounds thereof, are set forth in the
Examiner's Answer, dated Jan. 10, 2014. The Answer contains
modifications to the Final Action resulting from an Advisory Action dated
June 12, 2013. See Answer 2.
Appeal2014-005299
Application 13/069,252
BACKGROUND
Appellants' invention relates to a fluid mixture and associated method
for "preventing aluminum corrosion in restored electrical distribution cable,"
where the mixture includes "a liquid anti-treeing agent" and "a water-
reactive compound" that may also be an anti-treeing agent. Spec. iJ 1.
Independent claim 1 is representative:
1. A fluid mixture for contacting the interior of a cable
including a central stranded conductor therein, said fluid
mixture comprising:
(A) a liquid anti-treeing agent having a boiling point
> 90°C· and
'
(B) a compound different from (A) and having a
diffusion coefficient of at least about 1x10-7 cm2/sec at
50°C in low-density polyethylene, the compound (B)
selected from a water-reactive compound or a water-
reactive anti-treeing agent;
wherein (A) is present in about 95 parts by weight and
(B) is present in about 5 parts by weight, based on 100
parts by weight of the fluid mixture, to obtain a fluid
· · t. i.. ·1· · nnor< ~ · · · · mixture witu a uozizng poznt :::: Yv \.__, ~or mmimizmg
disruption of the conductor and for minimizing corrosion
of the conductor in the cable.
Appeal Br. 23 (emphasis added). The only other independent claim is claim
9, which is directed to a related "method of contacting the interior of a cable
with a fluid mixture." Id. at 24.
The Examiner maintains the following grounds of rejection:
I. Claims 1-6 and 18 under 35 U.S.C. § 103(a) as unpatentable over
U.S. Patent No. 5,372,841 [hereinafter Kleyer] (issued Dec. 13, 1994) in
view of U.S. Patent No. 4,766,011 [hereinafter Vincent] (issued Aug. 23,
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Appeal2014-005299
Application 13/069,252
1988), citing as further evidence several material data sheets3 specifying the
boiling points of certain relevant alkoxysilane compounds. Answer 2-8.
II. Claims 9, 10, 12-15, and 19-21under35 U.S.C. § 103(a) as
unpatentable over Kleyer in view of Vincent, as evidenced by the MSDS
documents. Answer 9-15.
Appellants present arguments for both rejections as a group. See
Appeal Br. 12. Therefore, consistent with the provisions of 37 C.F.R.
§ 41.37(c)(l)(iv) (2013), we limit our discussion to claim 1. All the claims
stand or fall together.
DISCUSSION
1. Prima Facie Case
Referring to compounds (A) and (B) of claim 1, the Examiner finds
that Kleyer teaches a "typical" weight percent ratio (A):(B) ranging from
10:90 to 90:10, see Answer 4, 17-18, which "is very close to the claimed 95
parts by weight (A) and about 5 parts by weight (B) such that one of
ordinary skill in the art would have expected similar properties," id. at 18.
The Examiner finds that "Kleyer opens itself to modification by establishing
3 Sigma-Aldrich Pty, Ltd., Phenyltrimethoxysilane (material safety data
sheet v. 1.2) (Mar. 12, 2004); Power Chemical Corp.,
Diphenyldimethoxysilane (Donor B), SiSiB® Silanes,
http://www.powerchemical.net/silanes/8221.html (last visited June 23,
201 O); Si bond, Phenylmethyldiethoxysilane (material safety data sheet)
(201 O); Power Chemical Corp., Phenylmethyldimethoxysilane, SiSiB®
Silanes, http://www.powerchemical.net/silanes/86 l l .html (last visited June
23, 2010); Gelest, Inc., Trimethylmethoxysilane (material safety data sheet)
(Feb. 5, 1999); ScienceLab.com, Inc., Dimethyldimethoxysilane (material
safety data sheet) (last updated Nov. 6, 2008). Collectively, these are
referred to herein as "the MSDS documents."
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Appeal2014-005299
Application 13/069,252
a sufficiently broad 'typical' range of (A) to (B) very close to that claimed,
by teach[ing] use of the least amount of (B) necessary, and by stating that
suitable amounts are readily determinable by routine experimentation." Id.
The Examiner also finds that the amounts of (A) and (B) are result-
effective variables that can be optimized based on various considerations
known in the art. Id. at 5. In particular, the Examiner finds that the
mixture's boiling point (or alternatively, vapor pressure at operating
conditions) was a "known issue[] of concern" related to the (A):(B) ratio.
Id. at 26; see also id. at 5-6. The Examiner also finds that Vincent provides
a motivation for one of ordinary skill in the art to modify the ratio of
components in a related mixture "to control the rate of increase in the
viscosity of the mixture of silanes, [and] to obtain the fastest absorption of
the anti-treeing silanes while still providing a mobile gel which slows the
exudation rate of the tree retardant." Id. at 5 (citations to Vincent 3 :42--44,
56-62 omitted).
Appellants argue that "the Examiner has failed to show that the
instantly claimed amounts of (A) and (B) relate in any way to viscosity,"
Appeal Br. 14, and argue that the ratio of 95:5 "would not be derived from
optimizing (A):(B) for purposes of viscosity." Reply Br. 4. According to
Appellants, the Specification discloses that the reason for the (A):(B) ratio
required in the claims "relates to boiling point and corrosion, which is not
described, considered, or even contemplated" in Kleyer or Vincent. Id. at
14-15. Moreover, Appellants argue, "the Examiner has no reason to even
believe that optimizing for viscosity would necessarily also optimize boiling
point temperature." Id. at 16. Appellants also argue that "an optimized ratio
of (A):(B) for purposes of viscosity is mutually exclusive with an optimized
ratio of (A):(B) for purposes of corrosion." Reply Br. 3--4.
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Appeal2014-005299
Application 13/069,252
We find no reversible error in the Examiner's determination that a
prima facie case of obviousness exists, based on the (A):(B) ratio range
disclosed by Kleyer. The upper value of this "typical" range is 90: 10, which
is close enough to the ratio of 95:5 required by claim 1 that one would
expect the compositions to have substantially the same properties. See In re
Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003) ("[A]primafacie case of
obviousness exists when the claimed range and the prior art range do not
overlap but are close enough such that one skilled in the art would have
expected them to have the same properties."). Moreover, as the Examiner
correctly finds, see Answer 18, the range disclosed by Kleyer is not
exclusive, and Kleyer teaches that the value of B should be as low as
possible, consistent with the objective to "reduce the asymmetric penetration
front of the antitreeing agent (A)." Kleyer 6:36-38.
In addition, we find no reversible error in the Examiner's
determination that the (A) and (B) proportions are result-effective variables.
Kleyer teaches that the composition will affect the mixture's vapor pressure
at the operating temperature of the conductor, "which can be as high as
130° C." Id. at 5: 11: 12. Thus, one of ordinary skill in the art would have
had reason to optimize the (A):(B) ratio with the expectation that it would
predictably affect the vapor pressure. We also find no reversible error in the
Examiner's finding, see Answer 5, that viscosity would have been a factor of
concern relating to the (A):(B) ratio, based on Vincent, which teaches that a
"mixture of silanes can range from 100 wt% trialkoxysilanes to 100 wt %
dialkoxysilanes" in order to control "the rate of increase of viscosity."
Vincent 3 :42--48. Although Appellants argue that "the claimed ratio of
(A):(B) would not be derived from optimizing (A):(B) for purposes of
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Appeal2014-005299
Application 13/069,252
viscosity," Reply Br. 4, Appellants have produced no factually supported
evidence to that effect.
Moreover, we have carefully considered Appellants' argument that
corrosion resistance was not known at the time of filing to be a concern
related to the (A):(B) ratio; however, the reasons for one of ordinary skill to
optimize the (A):(B) ratio need not be the same reasons that appear in
Appellants' Specification. Cf KSR Int'l. Co. v. Teleflex Inc., 550 U.S. 398,
420 (2007) ("[A ]ny need or problem known in the field of endeavor at the
time of invention and addressed by the patent can provide a reason for
combining [prior art] elements in the manner claimed.").
For the above reasons, we are not persuaded that the Examiner has
failed to establish a prima facie case of obviousness.
2. Unexpected Results
Appellants argue that "the instantly claimed fluid mixture
unexpectedly provides ... substantially better corrosion resistance, which is
connected to the boiling point temperature of the fluid mixture." Reply Br.
8. Appellants point to Table 4 of the Specification, which indicates that in
Aluminum corrosion testing at 70°C, Comparative Example C 1-2 has a
significantly higher rate of corrosion than Example 1-2. Appeal Br. 19. The
composition of Comparative Example C 1-2 has an (A):(B) ratio of 70:30,
which is the preferred ratio ofKleyer, whereas Example 1-2 has an (A):(B)
ratio of about 95:5. See id. Appellants also note that the composition of
Comparative Example C 1-1 has a boiling point of only 7 5 °C, whereas
Example 1-1 has a boiling point of 134 °C ("2: 90°C," as required by claim
1). Reply Br. 6. The boiling points for Comparative Example Cl-2 and
Example 1-2 are 62 °C and 7 6 °C, respectively, see Spec. 10, because of the
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Appeal2014-005299
Application 13/069,252
addition of a corrosion agent designed to simulate long-term corrosion,
Appeal Br. 21; Reply Br. 8-9.
The Examiner determines that the evidence presented by Appellants
fails to show unexpected results. Answer 24, 26-27. We find no reversible
error in the Examiner's determination. In particular, the Examiner correctly
finds that the Specification demonstrates that at least one mixture, with an
(A):(B) ratio at the upper end of the broad range taught by Kleyer, would
have a boiling point "2: 90°C" as required by claim 1. Answer 25. In
particular, the composition of Example 1-3 is a mixture with an (A):(B) ratio
of 90: 10 and a boiling point of 108 °C. Spec. 8-10 tbls. 1, 3. According to
Table 4 of the Specification, the mixture of Example 1-4 (corresponding to
Example 1-3, but containing the corrosion agent) has an average rate of
corrosion essentially the same as Example 1-2, where the (A):(B) ratio is
approximately 95:5. See id. at 11.
Furthermore, claim 1 encompasses a broad class of anti-treeing agents
and water-reactive compounds, yet Appellants have only directed our
attention to corrosion tests relating to mixtures of one particular set of (A)
and (B) components, phenylmethyldimethoxysilane and
trimethylmethoxysilane. Spec. 8-11. Appellants have not pointed to
evidence sufficient for us to conclude that "the great number and variety of
compositions included by the claims would behave in the same manner as
the [single] tested composition." In re Lindner, 457 F.2d 506 (Fed. Cir.
1972). Thus, Appellants have not met their burden to show unexpected
results commensurate with the scope of claim 1.
Because Appellants have failed to rebut the Examiner's prima facie
case of obviousness, we find no reversible error in the Examiner's rejection
of claims 1-6, 9-10, 12-15, and 18-21.
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Appeal2014-005299
Application 13/069,252
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. § l .136(a)(l )(iv).
AFFIRMED
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