Ex Parte Klockmann et alDownload PDFPatent Trial and Appeal BoardFeb 9, 201613196232 (P.T.A.B. Feb. 9, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/196,232 08/02/2011 441 7590 02/11/2016 SMITH, GAMBRELL & RUSSELL, LLP 1055 Thomas Jefferson Street Suite 400 WASHINGTON, DC 20007 FIRST NAMED INVENTOR Oliver Klockmann 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. 032301.442DIV1 3426 EXAMINER KEYS,ROSALYNDANN ART UNIT PAPER NUMBER 1671 NOTIFICATION DATE DELIVERY MODE 02/11/2016 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): dcdocketing@sgrlaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte OLIVER KLOCKMANN, PHILIPP ALBERT, ANDRE HASSE, KARSTEN KORTH, and RELMUND PIETER1 Appeal2013-005264 Application 13/196,232 Technology Center 1600 Before DEMETRA J. MILLS, JOHN G. NEW, and ROBERT A. POLLOCK, Administrative Patent Judges. POLLOCK, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) from the final rejection of claims 21--41. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. STATEMENT OF THE CASE Appellants' invention relates to mercaptosilane compounds useful in rubber mixtures used to make automobile tire treads, hoses, and conveyer 1 Appellants identify the Real Party in Interest as EVONIK DEGUSSA GMBH. App. Br. 2. Appeal2013-005264 Application 13/196,232 belts. Spec. 32:3-5; 33:7-12; 37:18-23. Representative claim 21, reproduced in the Claims Appendix of Appellants' Brief, recites I part: 21. A composition comprising a mixture of mercaptosilanes of the formula I, wherein R1 is an alkyl polyether group--O-(R5-0)m-R6, where ... mis on average 3 to 10, and R6 comprises at least 11 C atoms and ... wherein one R 2 is an ethoxy group .... Claims 21, 22, 25, 28, and 30-41 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Deschler. 2 Claims 21-23, 25-27, and 33--40 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Hirata. 3 ANALYSIS We have reviewed Appellants' argument in the Briefs, the Examiner's rejection, the Examiner's response to Appellants' arguments, and have also considered Appellants' oral arguments before the Board on February 2, 2016. For the reasons set forth on pages 5-13 of the Examiner's Answer, we conclude that the Examiner has established a prima facie case of obviousness based on the asserted references. 2 Deschler et al., US 6,849,754 B2, issued Feb. 1, 2005. 3 Hirata and Kin, JP62-181346, published Aug. 8, 1987 (Jan. 2005 translation). 2 Appeal2013-005264 Application 13/196,232 We consider below whether Appellants' evidence of secondary considerations is sufficient to rebut the Examiner's prima facie case. In re Eli Lilly & Co., 902 F.2d 943, 945 (Fed. Cir. 1990) ("After aprimafacie case of obviousness has been made and rebuttal evidence submitted, all the evidence must be considered anew.") (citing In re Piasecki, 745 F.2d 1468, 1472 (Fed. Cir. 1984)). For the reason set forth below, we find that it does not. It is well established that "ranges which overlap or lie inside ranges disclosed by the prior art may be patentable if the applicant can show criticality in the claimed range by evidence of unexpected results." In re Wertheim, 541F.2d257, 267 (CCPA 1976). In the present case, Appellants contend that "[t]he combination of elements (a) m = 3-10 and (b) at least one R2 = ethoxy and (c) R6 2: 11 C atoms is critical to obtaining a composition having excellent balance of ALL the following properties: ML(l +4), t5, 300%/100%, elongation at break, DIN abrasion, Ball rebound, M300, E*60°C, and Dmax-Dmin." App. Br. 6; Reply Br. 2 (emphases in original). Appellants rely on Table A, at page 9 of the Appeal Brief, as providing evidence of the criticality of these three ranges in combination. In considering Table A, we presume that "m = 3-1 O," corresponds to the claim term "mis on average 3 to 1 O," recited in representative claim 21. As with any patentability analysis, we begin with the claim language. See Amazon.com, Inc. v. Barnesandnoble.com, Inc., 239 F.3d 1343, 1351 (Fed. Cir. 2001) ("Only when a claim is properly understood can a determination be made ... whether the prior art anticipates and/or renders obvious the claimed invention."). 3 Appeal2013-005264 Application 13/196,232 The instant Specification does not expressly define the meaning of the words "on average" in the claim term "m is on average 3 to 1 O," but does indicate that an average m value need not be an integer. See Spec. 5:9--12 ("m is on average 1 to 30 .... very particularly preferably 3 to 10, and exceptionally preferably 3.5 to 7.9."). Applying the broadest reasonable interpretation consistent with the Specification, we conclude that "m is on average 3 to 10," refers to a population of molecules which may have a range of m values, wherein the average value of m for the population is 3 to 10. Because the Specification focuses on average values form-and is silent with respect to the range of m values encompassed by that average-a population wherein "mis on average 3," for example, quite plausibly encompasses molecules having m values of, for example, 2 and 4. 4 With respect to Table A, Appellants contend that only mixtures where "m = 3-1 O" ("and (b) at least one R2 = ethoxy and ( c) R6 2: 11 C atoms") exhibit "good" qualities for each of the nine tested properties. App. Br. 8- 12; see id. at 11 ("When mis not 3-10 ... values for properties ML (1 +4), t5 (partly) 300%/100%, DIN abrasion, Ball Rebound and M300 are bad (or become worse."). As noted by the Examiner, however, the data presented in Table A "are not commensurate in scope with the protection sought." Ans. 7-8, 9, 12, 13. Table A provides only a single value (m = 5) for the range "m is on average 3 to 10." Assuming, for the sake of simplicity, that them is invariably an integer value, Table A shows that m = 2 results in "bad" values 4 Consistent with this view, we note that Examples 8 and 9 of the Specification are synthesized from starting materials in which "m is on average 5." See Spec. 41:25--43 :8. 4 Appeal2013-005264 Application 13/196,232 for the three properties tested but provides no information regarding, e.g., m = 3 or m = 4. Applying our construction wherein m represents an average value over a population of undefined range, Table A again provides no information on the effect of the full range of m values claimed. Accordingly, we agree with the Examiner that the evidence provided in Table A is not commensurate in scope with the protection sought. See, e.g., In re Harris, 409 F.3d 1339, 1344 (Fed. Cir. 2005) ("Even assuming that the results were unexpected, Harris needed to show results covering the scope of the claimed range. Alternatively Harris needed to narrow the claims.") SUMMARY The rejections under 35 U.S.C. § 103(a) in view ofDeschler and Hirata are affirmed for the reasons of record. TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED 5 Copy with citationCopy as parenthetical citation