Ex Parte Henning et al

Board of Patent Appeals and Interferences

Jun 22, 2012

12177560 (B.P.A.I. Jun. 22, 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.
12/177,560 07/22/2008 Torsten Henning 22860 4675
23389 7590 06/22/2012
SCULLY SCOTT MURPHY & PRESSER, PC
400 GARDEN CITY PLAZA
SUITE 300
GARDEN CITY, NY 11530
EXAMINER
HUHN, RICHARD A
ART UNIT PAPER NUMBER
1764
MAIL DATE DELIVERY MODE
06/22/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte TORSTEN HENNING and PETER ALEXANDER
____________

Appeal 2011-003984
Application 12/177,560
Technology Center 1700
____________

Before ADRIENE LEPIANE HANLON, CHARLES F. WARREN and
JEFFREY T. SMITH, Administrative Patent Judges.

SMITH, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-003984
Application 12/177,560

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STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134 from a final rejection of
claims 1-7 and 16-18. We have jurisdiction under 35 U.S.C. § 6.
Appellant’s invention is directed to aqueous release agents suitable for
use in the production of polyurethane moldings. (Spec. 1). Claim 1 is
illustrative of the subject matter on appeal and is reproduced below:
1. An aqueous release agent composition comprising, as a
release-active agent, from 3 to 40 % by weight of at least one
metal soap; and from 2 to 20 % by weight of at least one
polyalkylene glycol.

The Examiner maintains and Appellants request review of the
following rejections from the final office action. (Ans. 3-5; App. Br. 4-5):
I. Claims 1-4, 6-7, and 16-18 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Fischer (U.S. Patent 4,609,511 issued Sep. 2, 1986).

II. Claims 1-4, 6-7, and 16-18 stand rejected under 35 U.S.C. § 103(a) as
obvious over Fischer.

III. Claim 5 stands rejected under 35 U.S.C. § 103(a) as obvious over
Fischer, in view of Horn (U.S. Patent 4,764,537 issued Aug. 16, 1988).

OPINION

Anticipation rejection
The dispositive issue for this rejection is: Did the Examiner err in
finding that Fischer describes a release agent composition comprising, as a
release-active agent, from 3 to 40 % by weight of at least one metal soap;
and from 2 to 20 % by weight of at least one polyalkylene glycol as required
by the subject matter of claim 1 within the meaning of §102.
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Application 12/177,560

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We answer this question in the affirmative and REVERSE.
Appellants argue that Fischer does not anticipate the claimed
invention because Fischer does not exemplify a release agent composition
that comprises at least one metal soap and at least one polyalkylene glycol as
required by the claimed invention. Appellants also argue that Example 4 of
Fischer includes sodium oleate in an amount of 8 % by weight, includes an
amount of polyalkylene glycol that is below the claimed range and provides
more teachings of using only a photochemical catalyst (App.Br. 6-7).
However, Appellants acknowledge that Fisher discloses that release agents
can comprise 0.5 to 3% by weight of at least one polyalkylene glycol and
8% by weight of sodium oleate (a metal soap), amounts which overlap with
and are encompassed by the claimed ranges for these ingredients,
respectively. (Id.; Fischer col. 6 and Example 4).
The Examiner does not adequately address Appellants’ arguments
above. While Fischer discloses the release agent compositions may
comprise polyalkylene glycol and at least one metal soap, the Examiner does
not point to a specific section of Fischer that expressly describes a release
agent composition comprising both of these components in amounts required
by the subject matter of independent claims 1 and 18. A claim is not
anticipated by a reference when such independent picking and choosing is
required to arrive at the claimed invention. See In re Arkley, 455 F.2d 586,
587 (CCPA 1972).
Under these circumstances, we cannot find that the Examiner has met
the minimum threshold of establishing anticipation under 35 U.S.C.
§ 102(b).
Appeal 2011-003984
Application 12/177,560

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The rejection of claims 1-4, 6-7, and 16-18 under 35 U.S.C. § 102(b)
as anticipated by Fischer is reversed.

Obviousness rejections1
After thorough review of the respective positions provided by
Appellants and the Examiner, we AFFIRM for the reasons presented by the
Examiner and add the following for emphasis.
The dispositive issue is: Did the Examiner err in determining that
Fischer would have led one of ordinary skill in the art to a release
composition that includes a metal soap and polyalkylene glycol in amounts
required by the subject matter of claim 1?
We answer this question in the negative and, therefore, we AFFIRM.
The act of picking, choosing and combining various disclosures in a
reference, while improper in a § 102 rejection, may be entirely proper in a
§ 103 rejection. In re Arkley, 455 F.2d at 587.
Appellants argue that the claimed invention is patentable over Fischer
because Fischer’s Example 4 leads one skilled in the art to a release
composition that includes a metal soap and a low content (1 weight %) of
polyalkylene glycol. (App. Br. 7).
We are unpersuaded by Appellants’ argument and agree with the
Examiner’s reasoning that it would have been obvious to one of ordinary
skill in the art to arrive at a release composition comprising a metal soap and
polyalkylene glycol in amounts within the ranges required by the subject

1 Appellants have not presented substantive arguments addressing each of
the rejected claims 1-4, 6-7, and 16-17. We select claim 1 as representative
of these claims. We will also separately address claim 18.
Appeal 2011-003984
Application 12/177,560

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matter of independent claim 1 based on the disclosure of Fischer. A prima
facie case of obviousness typically exists when the ranges of a claimed
composition overlap the ranges disclosed in the prior art. See e.g., In re
Geisler, 116 F.3d 1465, 1469 (Fed. Cir. 1997); In re Woodruff, 919 F.2d
1575, 1578 (Fed. Cir. 1990); In re Malagari, 499 F.2d 1297, 1303 (CCPA
1974). Such is the case here. As set forth above, Appellants acknowledge
that Fisher discloses the release agents can comprise 0.5 to 3% by weight of
at least one polyalkylene glycol and 8% by weight of sodium oleate,
amounts which overlap and are encompassed by, respectively, the claimed
amounts.
Appellants argue that the Examples in the Specification allegedly
comprising “an amount of metal soap and an amount of polyalkylene glycol
as claimed exhibit a good mold release effect, without leaving behind
polyurea build-up on the mold surfaces.” (App. Br. 12).
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). The unexpected results must be
established by factual evidence, and attorney statements are insufficient to
establish unexpected results. See In re Geisler, 116 F.3d at 1470-71.
Appellants have not explained why these results are unexpected. Moreover,
the Specification also does not describe why the evidence presented in the
Examples is considered unexpected.
In addition to the arguments presented for claim 1, in addressing the
subject matter of claim 18 Appellants argue that Fischer's Example 4
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includes a wax or microwax as a required component which is excluded by
the claim language “consisting essentially of” (App. Br. 8-9).
Appellants’ argument is not persuasive. Appellants have not
demonstrated that Fischer's additional wax or microwax materially affects
the basic and novel characteristics of the claimed release agent. See In re De
Lajarte, 337 F.2d 870, 874 (CCPA 1964) (Applicants have the burden of
showing that a component in a reference would materially affect the basic
and novel characteristics of a claimed composition).
Consequently, we sustain the Examiner’s rejection of claims 1-4, 6-7,
and 16-18 under 35 U.S.C. § 103(a).

Regarding the rejection of claim 5 under 35 U.S.C. § 103(a) over the
combination of Fischer and Horn, we also affirm this rejection for the
reasons advanced by the Examiner. Appellants have only reiterated the
arguments presented in addressing independent claim 1 (rejections discussed
above) and have not otherwise presented separate substantive arguments on
the merits for the rejections of claim 5. (App. Br. 13-15). In this regard,
Appellants do not assert non-obviousness based on the additional limitations
set forth claim 5 subject to this rejection by explaining how the Horn
reference, additionally relied upon by the Examiner, fails to establish the
obviousness of the additional features recited in this separately rejected
dependent claim. Because we do not find Appellants’ arguments persuasive
as to independent claim 1, it follows that these arguments are unpersuasive
as to claim 5.
Accordingly, we also sustain the Examiner’s § 103(a) of claim 5.
Appeal 2011-003984
Application 12/177,560

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ORDER
The rejections of claims 1-7 and 16-18 are affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136.

AFFIRMED

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