Ex Parte Hoover et al

Patent Trials and Appeals Board

Sep 24, 2013

11413459 - (D) (P.T.A.B. Sep. 24, 2013)

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.
11/413,459 04/28/2006 Kelly L. Hoover PA-0001061-US(06-185) 1378
52237 7590 09/24/2013
BACHMAN & LAPOINTE, P.C.
c/o CPA Global
P.O. Box 52050
Minneapolis, MN 55402
EXAMINER
NAKARANI, DHIRAJLAL S
ART UNIT PAPER NUMBER
1787
MAIL DATE DELIVERY MODE
09/24/2013 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 KELLY L. HOOVER, CHARLES R. WATSON,
JOHN W. PUTNAM, ROBERT C. DOLAN,
BRET B. BONARRIGO, and
MICHAEL A. WEISSE
____________

Appeal 2012-000194
Application 11/413,459
Technology Center 1700
____________

Before CHARLES F. WARREN, PETER F. KRATZ, and
JEFFREY T. SMITH, Administrative Patent Judges.

SMITH, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134 from a non-final rejection of
claims 9, 10, 12-18, 20, 21, and 23. We have jurisdiction under 35 U.S.C.
§ 6.
Claim 9 is illustrative of the subject matter on appeal:
9. A coated article, comprising:
Appeal 2012-000194
Application 11/413,459

2
an article having at least one surface which is exposed to icing
conditions; and

an anti-icing coating exhibiting an ice shear strength of about
19kPa to about SOkPa deposited on said at least one surface,

wherein said anti-icing composition coating is composed solely
of at least one polysiloxane free of additives selected from the group
consisting of at least one solid additive, at least one liquid additive,
and mixtures thereof.

Appellants (App. Br. 4) request review of the following obviousness
rejections from the Examiner’s Final Office action:1
Claims 9, 10, 12 - 18, 20, 21, and 23 are rejected under 35 U.S.C. §
112, first paragraph, as failing to comply with the written description
requirement.
Claims 9, 10, and 12-16 are rejected under 35 U.S.C. § 102(b) as
unpatentable over Yorkgitis, (EP 0 384 597 A1).
Claims 17, 18, 20, 21, and 23 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Yorkgitis.
Claims 9, 10, and 12-14 are rejected under 35 U.S.C. § 102(b) as
unpatentable over Lewis, (US Application 2002/0150771 A1).

OPINION
After consideration of the Examiner’s rejections and Appellants’
responses we affirm the Examiner’s decision to reject claims 9, 10, 12-18,
20, 21, and 23 over Yorkgitis. However, we reverse the Examiner’s

1 The Examiner in the Answer (pp. 4-5) indicated that claim 13 was
inadvertently rejected as anticipated under § 102(b). The Examiner
indicated that claim 13 is rejected as obvious under § 103(a).
Appeal 2012-000194
Application 11/413,459

3
decision to reject claims 9, 10, 12-18, 20, 21, and 23 under35 U.S.C. § 112,
first paragraph, and claims 9, 10, and 12-14 over Lewis. Our reasons
follow.
The rejection under § 112, first paragraph.
In rejecting claims 9, 10, 12-18, 20, 21, and 23 under the first
paragraph of 35 U.S.C. § 112, the Examiner asserts the Specification as
originally filed, does not provide support for the invention as is now
claimed. In order for a claim to satisfy the written description requirement,
the original application must reasonably convey to those skilled in the
relevant art that the applicants, as of the filing date of the application, had
possession of the claimed invention. In re Alton, 76 F.3d 1168, 1172 (Fed.
Cir. 1996); In re Kaslow, 707 F.2d 1366, 1375 (Fed. Cir. 1983)). However,
the written description requirement does not require the applicants to
describe exactly the subject matter claimed in the original application.
Instead, the description must clearly allow persons of ordinary skill in the art
to recognize that the applicants invented what is claimed. In re Gosteli, 872
F.2d 1008, 1012 (Fed. Cir. 1989).
The subject matter of claims 9 and 17 specifies in part, “said anti-
icing composition coating is composed solely of at least one polysiloxane
free of additives selected from the group consisting of at least one solid
additive, at least one liquid additive, and mixtures thereof.”
The claim language does not specify that the least one solid additive
and the at least one liquid additive. According to the Specification ¶ 0018,
“[t]he term ‘additive’ means any solid and/or liquid filler that may be added
to the exemplary anti-icing coating composition and resultant anti-icing
coating described herein.” The Specification describes NuSil® R-2180 as
Appeal 2012-000194
Application 11/413,459

4
an exemplary anti-icing coating composition. Specifically the Specification
states the “anti-icing coating composition described herein is commercially
available as NuSil® R-2180 from NuSil Technology, LLC.” (¶ 0020).
NuSil® R-2180 is an Addition-Cure High Tear Silicone Dispersion
comprising two-parts, (Part A and Part B), silicone elastomer dispersion in
xylene and has platinum cure system. (See Material Safety Data Sheet
(MSDS) for NuSil® R-2180). Accordingly, based on the descriptions
appearing in the Specification anti-icing compositions of the claimed
invention are free of solid fillers and liquid fillers. However, the claimed
invention does not exclude the presence of curing systems for silicone
elastomers.
Rather than carry his initial burden of establishing a prima facie case,
the Examiner has inappropriately leaped to the conclusion that the
Specification as originally filed, does not provide support for the invention
as is now claimed. Consequently, the Examiner has failed to adequately
explain why the claimed invention fails to meet the requirements of § 112,
first paragraph.

The Rejections over Yorkgitis2
Claim 9
Utilizing the above claim interpretation, we agree with the Examiner
that the subject matter of claim 9 is anticipated by Yorkgitis.

2 Appellants did not provide substantive arguments addressing claims 10,
12-16, 18, 20, 21, and 23 which all depend upon either independent claim 9
or 17. Accordingly, we select claims 9 and 17 as representative of these
claims.
Appeal 2012-000194
Application 11/413,459

5
Appellants argue that Yorkgitis does not anticipate the subject matter
of claim 9 because “[t]he anti-icing compositions in Yorkgitis et al. contain
other materials, such as platinum- or other metal-containing hydrosilation
catalysts, which are excluded by the language of claim 9.” (App. Br. 12). As
set forth above, the claimed invention excludes additive fillers; however, the
invention does not exclude the presence of curing systems for silicone
elastomers.
Claims 173
Appellants argue that Yorkgitis does not disclose that the coating
described therein has the claimed ice shear strength of about 19kPa to about
50kPa. The Examiner provides no reason as to why one of ordinary skill in
the art would modify Yorkgitis coating to have the claimed ice shear
strength.
“[A] prior art reference may anticipate when the claim limitations not
expressly found in that reference are nonetheless inherent in it. Under the
principles of inherency, if the prior art necessarily functions in accordance
with, or includes, the claimed limitations, it anticipates.” In re Cruciferous
Sprout Litig., 301 F.3d 1343, 1349 (Fed. Cir. 2002). Where the Examiner
establishes a reasonable assertion of inherency under 35 U.S.C. § 102 and
thereby evinces that a claimed process appears to be identical to a process
disclosed by the prior art and/or that the products claimed by the applicant
and disclosed in the prior art appear to be the same, the burden is properly
shifted to the applicant to show that they are not. See In re Spada, 911 F.2d
705, 708 (Fed. Cir. 1990); In re Best, 562 F.2d 1252, 1254-56 (CCPA 1977).

3 Appellants also argue that claim 17 is allowable for the same reasons that
were presented in addressing claim 9.
Appeal 2012-000194
Application 11/413,459

6
An applicant can rebut a “reasonable assertion of inherency” by proving that
the product or process of the prior art does not necessarily or inherently
possess characteristics attributed to the claimed product or process. See In
re Best, 562 F. 2d 1254-56.
We determine that the Examiner has established a "reasonable
assertion of inherency" by finding that Yorkgitis describes the treatment of
the surface of an article such as signal transmission lines and aircrafts with a
silane primer coat and an anti-icing coating comprising a platinum cured
vinyl terminated polydimethyl siloxane. (Ans. 7). The Examiner found that
Yorkgitis describes and exemplifies anti-icing compositions comprise
platinum cured vinyl terminated polydimethyl siloxane as well as other
silane compositions described in the present specification. (Ans. 7).
Appellants have failed to direct us to the evidence to rebut the Examiner's
position.
For the foregoing reasons, the Examiner's rejection of claims 9, 10,
and 12-16 under 35 U.S.C. § 102(b) and claims 17, 18, 20, 21, and 23 under
35 U.S.C. § 103 are affirmed.
The Rejections over Lewis 4
We agree with Appellants that the Examiner has not provided an
adequate basis - based on evidence or scientific reasoning to support as
finding that the compositions disclosed by Lewis inherently possess the
claimed ice shear strength. (App. Br. 9-10).
Lewis describes addition curable organopolysiloxane coatings that
cure rapidly at low temperature. These coatings are applied to a variety of
substrates including paper and foil. There is no disclosure in Lewis that

4 We limit our discussion to independent claim 9.
Appeal 2012-000194
Application 11/413,459

7
these compositions possess any anti-icing properties. The Examiner has not
directed us to specific examples that would lead us to reasonably believe that
the compositions of Lewis possess anti-icing properties.
For the foregoing reasons, the Examiner’s rejection of claims 9, 10,
and 12-14 is reversed.
ORDER
The rejection of claims 9, 10, and 12-16 under 35 U.S.C. § 102(b) as
unpatentable over Yorkgitis is affirmed.
The rejection of claims 17, 18, 20, 21, and 23 under 35 U.S.C.
§ 103(a) as unpatentable over Yorkgitis is affirmed.
The rejection of claims 9, 10, 12-18, 20, 21, and 23 under 35 U.S.C. §
112, first paragraph is reversed.
The rejection of claims 9, 10, and 12-14 are rejected under 35 U.S.C.
§ 102(b) as unpatentable over Lewis is reversed.
TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136.
AFFIRMED

cam