Ex Parte Eckhardt et al

Patent Trial and Appeal Board

Oct 15, 2012

10257760 (P.T.A.B. Oct. 15, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
10/257,760 12/12/2002 Gunther Eckhardt 0475-0211P 1283
26813 7590 10/15/2012
MUETING, RAASCH & GEBHARDT, P.A.
P.O. BOX 581336
MINNEAPOLIS, MN 55458-1336
EXAMINER
FELTON, AILEEN BAKER
ART UNIT PAPER NUMBER
1734
MAIL DATE DELIVERY MODE
10/15/2012 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 PATENT TRIAL
AND APPEAL BOARD
____________

Ex parte GUNTHER ECKHARDT,
ERICH WANEK, and BERND KUPPERMANN
____________

Appeal 2011-009019
Application 10/257,760
Technology Center 1700
___________

Before CATHERINE Q. TIMM, HUBERT C. LORIN, and
KAREN M. HASTINGS, Administrative Patent Judges.

HASTINGS, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-009019
Application 10/257,760

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Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s
final decision rejecting claims 1-7 and 21-26. We have jurisdiction over the
appeal under 35 U.S.C. § 6(b).
We REVERSE.
Claim 1 is illustrative of the subject matter on appeal:
1. A catalyst component for a cationically curable
composition comprising:
(A) at least one Brönsted acid selected from the group
consisting of hexafluoroantimonic acid, hexafluorophosphoric
acid, tetrafluoroboric acid, sulfonic acids, phosphonic acids,
polymeric acids, saturated carboxylic acids, unsaturated
carboxylic acids, and reaction products of polyvalent alcohols
and acid anhydrides,
(B) water,
(C) at least one antacid-acting compound which is an
oxide, hydroxide, carbonate, or carboxylate of an element of
aluminum, chromium, copper, germanium, manganese, lead,
antimony, tellurium, titanium, or zinc,
(D) at least one inert diluent, and
(E) at least one modifier.
Independent claims 4, 5, and 21 similarly recite a catalyst component
for a cationically curable composition that comprises similar components.
Appellants appeal the following rejections:
1) Claims 1-7 and 21-26 under 35 U.S.C. § 112, second
paragraph as indefinite;
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Application 10/257,760

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2) Claims 1-3, 5, 6, 23, and 25 under 35 U.S.C. § 103(a) as
unpatentable over Lin1;
3) Claims 4, 7, 21, 22, 24, and 26 under 35 U.S.C. § 103(a) as
unpatentable over the combined prior art of Lin and Oberth2.
The § 112 Second Paragraph Rejection
The test for definiteness is whether one skilled in the art
would understand the bounds of the claim when read in light of
the specification. If the claims read in light of the specification
reasonably apprise those skilled in the art of the scope of the
invention, § 112 demands no more.
Miles Labs., Inc. v. Shandon, Inc., 997 F.2d 870, 875 (Fed. Cir. 1993)
(citation omitted).
The Examiner concluded that the term “inert diluent” was indefinite
as inconsistent with the standard meaning of “inert” because “the claimed
and disclosed components are reactive” (Ans. 4; see also id. at 3, 5-6).
However, the Examiner does not provide any explanation or direct us to any
evidence in the record to support her conclusion that the claimed “inert
diluent” is reactive with the other components of the claimed catalyst
component composition.
Appellants provide a detailed explanation with evidence of how one
of ordinary skill would understand the scope of the term “inert diluent” as
meaning a diluent which is not reactive with the other components of the
composition to which it is added (Br. 5-6).
Accordingly, we agree with Appellants that upon review of the claim
language read in light of the Specification, a preponderance of the evidence

1 US 5,234,964 issued Aug. 10, 1993.
2 US 4,038,113 issued July 26, 1977.
Appeal 2011-009019
Application 10/257,760

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supports Appellants’ position that the aforementioned language of claim 1,
as well as independent claims 4, 5, and 21, is definite (id.).
Accordingly, we reverse the Examiner’s rejection of the claims under
35 U.S.C. § 112, second paragraph.

The § 103 Rejections
Upon review of the record before us, a preponderance of the evidence
supports Appellants’ position that the Examiner has failed to provide
“articulated, credible reasoning . . . to support the obviousness rejection[s]”
(Br. 7; see also Br. 8-12). Accordingly, we reverse the Examiner’s
rejections for the reasons set out by Appellants in their brief, and we add the
following primarily for emphasis.
Although it is well established that claims directed to an apparatus
must be distinguished from the prior art in terms of structure rather than
function, see, e.g., In re Schreiber, 128 F.3d 1473, 1477-78 (Fed. Cir. 1997),
in order to satisfy the functional limitations in an apparatus claim, however,
the prior art apparatus must be capable of performing the claimed function.
Id. at 1478. Likewise, with respect to the composition claims before us, the
Examiner must establish that the prior art composition is capable of
performing the function of a catalyst in a cationically curable composition.
Appellants’ main argument is that the prior art does not teach or suggest the
claimed invention, in part because contrary to the Examiner’s position, Lin’s
disclosure at col.5, l. 8 does not teach or suggest a Brönsted acid because it
expressly discloses the use of the salt of the acid as an emulsifier (Br. 9).
The Examiner does not direct our attention to any persuasive technical
reasoning or evidence that the aforementioned emulsifier or surface active
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agents discussed in Lin would have been capable of functioning as a catalyst
composition as claimed (generally Ans.).
The Examiner does not rely upon Oberth to correct the deficiencies of
Lin, and has thus has not directed us to sufficient factual underpinnings to
support the obviousness rejections before us.
Accordingly, we are constrained to reverse the § 103 rejections of the
claims on appeal.
DECISION
The decision of the Examiner is reversed.

REVERSED
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