UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/081,779 04/07/2011
7590 11/17/2016
Frank S, DiGiglio, Scully, Scott, Murphy & Presser
400 Garden City Plaza
Garden City, NY 11530
Brajesh Kumar Jha
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.
27332 4681
EXAMINER
MATTISON, LORI K
ART UNIT PAPER NUMBER
1619
MAILDATE DELIVERY MODE
11/17/2016 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 BRAJESH KUMAR JHA, JUERGEN MEYER, BURGHARD
GRUENING, FRANZ-ERICH BAUMANN, WOLFGANG CHRISTOPH,
HEIKE STEMMER and KRISTIANE WARNKE
Appeal2015-005561
Application 13/081,779 1
Technology Center 1600
Before JEFFREY N. FREDMAN, TIMOTHY G. MAJORS and
DAVID COTTA, Administrative Patent Judges.
COTT A, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to particles
comprising polyamide 10.10. The Examiner rejected the claims on appeal as
anticipated and/or obvious under 35 U.S.C. § 102(b) and§ 103(a).
We reverse.
1 According to Appellants, the real party in interest is Evonik Degussa
GmbH. App. Br. 2.
Appeal 2015-005561
Application 13/081,779
STATEMENT OF THE CASE
Claims 1-10 are on appeal. Claim 1 is illustrative and reads as
follows:
1. Particles comprising polyamide 10.10, wherein
said particles have a mean particle size from 1 to 50 µm,
an apparent density from 180 to 300g/l, a NH2/COOH
end group ratio from 50:50 to 95:5; and a BET surface
from 3 m2/g to 200 m2/g.
The claims stand rejected as follows:
Claims 1-7 under 35 U.S.C. § 102(b) as unpatentable over Kobo. 2
Claims 1-7, 9 and 10 under 35 U.S.C. § 103(a) as unpatentable over
the combination of Kobo, MSDS 3 and Kashimoto. 4
Claims 1-8 under 35 U.S.C. § 103(a) as unpatentable over the
combination of Kobo and Matsui. 5
REJECTION OF CLAIMS 1-7 OVER KOBO
All three of the Examiner's rejections rely primarily upon Kobo.
Appellants argue that Kobo is not prior art because it was not publicly
accessible prior to the filing of their application. App. Br. 7-13. The only
issue before us on appeal is whether there is sufficient evidence in the record
to support the Examiner's finding that Kobo is prior art. Because this issue
2 Kobo-Microspheres, Kobo Products Inc. 1-3,
http://www.koboproductsinc.com/Microspheres.html ("Kobo").
3 Material Safety Data Sheet for DAIAMID MSP-BOP ("MSDS").
4 Kashimoto, US Patent No. 6,610,278 B2, issued Aug. 26, 2003
("Kashimoto").
5 Matsui WO 2008/149755 Al, published Dec. 12, 2008 ("Matsui"). The
Examiner relied upon US Patent Publication No. 2010/0178309 Al as the
English language translation of Matsui. See, Final Act. 9.
2
Appeal 2015-005561
Application 13/081,779
is dispos1tlve with respect to all three rejections we address all three
rejections together. We find that the record, as presently constituted, is
insufficient to support the Examiner's finding that Kobo is prior art.
Kobo is a webpage listing products sold by Kobo Products Inc. A
screen capture of Kobo is reproduced below (emphasis added).
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3
Appeal 2015-005561
Application 13/081,779
Evidence Appendix 5. The Examiner relied upon the highlighted product
information from the above screen capture - i.e. the product information for
DAIAMID MSP-BIO- in finding claims 1-7 anticipated by Kobo.
As evidence that Kobo was available before Appellants' filing date, 6
the Examiner relies upon: 1) the date on which Kobo was published as
indexed by Google, and 2) the issue date of the Material Safety Data Sheet
("MSDS") for the DAIAMID MSP-BIO product. Ans. 9.
With respect to the Google index date, the Examiner generated a date
by appending "&as_qdr=y 15" to a Google search, producing the following
search result:
Kobo-Microspheres - Kobo Products Inc.
www.koboproducts!!"lc.ccm/Microspheres.html .....
Dec 6, 2009 - Koba Products: the Pigments and Powders
Sgecialist ... NY.lon-6. 20. 141. 1.53. 3.5. Specs · fv1SDS.
DA!AMID MSP-810. Nylon-10/10 ...
Evidence Appendix 8. The above search result reflects a screen capture
provided by the Examiner to the Appellants purportedly identifying
December 6, 2009 as the publication date of Kobo. Id. at 1. As evidence
that this search technique provides the publication date of Kobo, the
Examiner cited lifehacker.com, which states:
Ans. 12.
To make sure you know when a page was published
before you visit the site, just add the following to the end
of the URL of your search results: &as_qdr=y15 ...
When you're searching for something and the date is
important. .. you can quickly identify newer web pages.
The operator you add to the end of the URL returns web
pages indexed by Google over the past 15 years ...
6 Appellants' U.S. Patent Application was filed on April 7, 2011, claiming
priority from a European Patent Application filed April 7, 2010.
4
Appeal 2015-005561
Application 13/081,779
We are not persuaded that we can rely on the December 6, 2009 date
generated by appending "&as_qdr=y 15" to a Google search as the date the
relevant portion ofKobo -the portion relating to DAIAMID MSP-BIO-
was published. Here, it appears that Kobo Products Inc., may update its
webpage periodically to reflect changes in its microsphere product line.
This is evidenced by the "new" notation beside several of the products listed
on the website, including DAIAMID MSP-BIO. See, Evidence Appendix
4--7.
The record does not include persuasive evidence explaining how a
"&as_qdr=y 15" Google search dates webpages that periodically undergo
revision. Does the search identify the date on which the first iteration of the
webpage (potentially not including the relevant information) was published,
or the date on which the current version of the webpage was last edited?
The record does not provide an answer. The importance of this information
is highlighted by the fact that the Examiner's screen capture of Kobo - dated
August 9, 2013 -identifies DAIAMID MSP-BIO as "NEW." Absent
information on the manner in which a "&as_qdr=y 15" Google search dates
webpages that are subject to revisions, we are not persuaded that we can rely
upon on December 6, 2009 as the date the relevant content of Kobo was
published.
The Examiner also relied on the issue date of the MSDS as evidence
that Kobo constitutes prior art. As an initial matter, we note that in rejecting
the claims at issue, the Examiner relied on information contained in Kobo
that is not in the MSDS, namely information regarding particle size and
density. See, Final Act. 3--4; see also, Evidence Appendix 2-7. Because the
MSDS itself does not include all of the information relied upon by the
5
Appeal 2015-005561
Application 13/081,779
Examiner in finding the relevant claims to be anticipated, the publication
date of the MSDS is not, by itself, dispositive. Rather, the publication date
of the MSDS is relevant only to the extent it informs us about the
publication date of the Kobo website. 7
In this case, the MSDS appears to be a document with an existence
independent of the website, as evidenced by the statement that it was
prepared "[a]ccording to Regulation EC No. 1907/2006." See, Evidence
Appendix 2. Because the MSDS exists independent of the website, the
hyperlink to the MSDS on the Kobo webpage could have been generated at
any point subsequent to the creation of the MSDS. The date of the MSDS
thus does not establish a prior art date for Kobo.
Accordingly we reverse the Examiner's rejection of claims 1-7 under
35 U.S.C. § 102(b) as unpatentable over Kobo, the Examiner's rejection of
claims 1-7, 9 and 10 under 35 U.S.C. § 103(a) as unpatentable over the
combination of Kobo, MSDS and Kashimoto, and the Examiner's rejection
of claims 1-8 under 35 U.S.C. § 103(a) as unpatentable over the
combination of Kobo and Matsui.
SUMMARY
For these reasons and those set forth in the Examiner's Answer, the
Examiner's final decision to reject claims 1-10 is reversed.
REVERSED
7 The MSDS may also have relevance as to when - if at all - Kobo Products
Inc. began selling DAIAMID MSP-BIO in the United States. We need not
address this issue as it is not presented here.
6
