Ex Parte Humphrey et al

Patent Trial and Appeal Board

Feb 19, 2016

12672148 (P.T.A.B. Feb. 19, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/672,148 12/09/2010
157 7590 02/23/2016
Covestro LLC
1 Covestro Circle
PITTSBURGH, PA 15205
FIRST NAMED INVENTOR
William M. Humphrey
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.
P09126US 7323
EXAMINER
HUHN, RICHARD A
ART UNIT PAPER NUMBER
1764
NOTIFICATION DATE DELIVERY MODE
02/23/2016 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 BAYER MATERIALSCIENCE LLC
Appeal2014-004512
Application 12/672,148
Technology Center 1700
Before FRED E. McKEL VEY, CHUNG K. PAK, and
SALLY GARDNER LANE, Administrative Patent Judges.
McKEL VEY, Administrative Patent Judge.
DECISION ON APPEAL
37 C.F.R. § 41.50
I. Statement of the Case
1 Bayer MaterialScience LLC ("Appellant"), the real party in interest
2 (Appeal Brief ("Br."), page 1 ), seeks review under 35 U.S.C. § 134(a) of a
3 final rejection dated 26 April 2013.
4 The named inventors are: William M. Humphrey, Paul Drago,
5 Terry L. Anderson, and James R. Charron.
6 We have jurisdiction under 35 U.S.C. § 134(a).
Appeal2014-004512
Application 12/672,148
1 The application on appeal was filed in the USPTO on 9 December
2 2010. 1
3 Appellant claims priority of PCT /US2008/09541 filed 08 August
4 2008, that entered the National Stage on 8 December 2010.
5 The application on appeal has been published as U.S. Patent
6 Application Publication 2011/0077346 (31 March 2011 ).
7 The Examiner relies on the following evidence.
Humphrey et al. U.S. Patent 5,824,738 20 Oct. 1998
"Humphrey"
Masubuchi U.S. Patent Application Publication 20 Nov. 2003
2003/0216507 Al
Mavridis et al. Temperature Dependence of
"Mavridis" Polyolefin Melt Rheology, 32 1992
POLYMERENG'G& SCI. 1778-1791
8 Appellant does not contest the prior art status of the prior art relied
9 upon by the Examiner, all of which is prior art under 35 U.S.C. § 102(b).
10 II. Claims on Appeal
11 Claims 1-9 and 12-21 are on appeal. Br., page 1.
12 III. Rejections
13 A. Rejection 1
14 Claims 1, 3-9, and 12-21 stand rejected as being unpatentable under
15 35 U.S.C. § 103(a) over Masubuchi and Humphrey. Answer, page 3.
1 Because the application on appeal was filed before the enactment of the
Leahy-Smith America Invents Act ("AIA"), Pub. L. No. 112-29, 125 Stat.
284 (2011), we apply the pre-AIA version of 35 U.S.C. §§ 102 and 103.
2
Appeal2014-004512
Application 12/672,148
1 B. Rejection 2
2 Claim 2 stands rejected as being unpatentable under 35 U.S.C.
3 § 103(a) over Masubuchi, Humphrey, and Mavridis. Answer, page 3.
4 C. Rejection 3
5 Claims 1-9 and 12-21 stand provisionally rejected on the ground of
6 nonstatutory obviousness-type double patenting in view of claims 1-9 and
7 11-19 of pending Application 12/733,059. Answer, page 3. Application
8 12/733,059 is the application involved in Appeal 2014-004122, decided
9 concurrent with the appeal in this case.
10 Appellant does not contest Rejection 3 on the merits. We understand
11 that that it is Appellant's position that it will file a terminal disclaimer upon
12 receipt of an indication that the claims here on appeal are in condition for
13 allowance. See, e.g., Final Rejection, page 9, i-f 26.
14 Because prior art Rejections 1-2 are affirmed, Rejection 3 will also be
15 affirmed inasmuch as Appellant does not contest Rejection 3 on the merits.
16 IV. Analysis
17 A. Rejection 1
18 1. Claim 1
19 Claim 1 is similar in scope as claim 4 involved in Appeal 2014-
20 004122.
21 Appellant does not argue the separate patentabilty of claims 3-9 and
22 12-21 apart from claim 1. Accordingly, we decide the appeal as to claims
23 3-9 and 12-21 on the basis of claim 1. 37 C.F.R. § 41.37(c)(l)(iv).
3
Appeal2014-004512
Application 12/672,148
1 2. Discussion
2 The arguments on appeal related to Masubuchi and Humphrey are
3 similar to corresponding arguments presented in Appeal 2014-004122. We
4 do not believe extended discussion of the obviousness issues is necessary in
5 this appeal.
6 The decision of the Examiner will be affirmed for the reasons set out
7 m:
8 (1) an Office Action dated 16 October 2012 ("Office Action")
9 (pages 10-12, iTiT 26-32);
10 (2) the Final Rejection dated 26 April 2013 (page 3, iTiT 7-8 and
11 pages 5-8, iTiT 16-25);
12 (3) the Answer (page 2, third paragraph, and pages 4--7); and
13 ( 4) the relevant discussion in the Decision on Appeal in Appeal
14 2014-004122 (pages 15-18).
15 3. Decision-Rejection 1
16 Rejection 1 is affirmed.
17 B. Rejection 2
18 1. Claim 2
19 Claim 2 is similar in scope to claim 5 involved in Appeal 2014-
20 004122.
21 2. Discussion
22 The arguments on appeal related to Masubuchi, Humphrey, and
23 Marvidis are similar to corresponding arguments presented in Appeal 2014-
24 004122.
4
Appeal2014-004512
Application 12/672,148
1 The decision of the Examiner will be affirmed for the reasons set out
2 m:
3 (1) an Office Action dated 16 October 2012 ("Office Action")
4 (pages 17-18, iTiT 4 7-50);
5 (2) the Final Rejection dated 26 April 2013 (pages 3--4, iTiT 9-10
6 and pages 5-8, iTiT 16-25);
7 (3) the Answer (page 7); and
8 ( 4) the relevant discussion in the Decision on Appeal in Appeal
9 2014-004122 (pages 18-20).
10 3. Decision-Rejection 2
11 Rejection 2 is affirmed.
12 C. Rejection 3
13 Rejection 3 is affirmed for reasons given earlier in this opinion.
14 V. Decision
15 Upon consideration of the appeal, and for the reasons given herein, it
16 IS
17 ORDERED that Rejections 1-3 are affirmed.
18 FURTHER ORDERED that no time period for taking any
19 subsequent action in connection with this appeal may be extended under
20 37 C.F.R. § 1.136(a)(l)(iv).
21 AFFIRMED
22 bar
5