Ex Parte Knies et alDownload PDFPatent Trial and Appeal BoardMay 16, 201613634508 (P.T.A.B. May. 16, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/634,508 09/12/2012 22045 7590 05/18/2016 BROOKS KUSHMAN P,C 1000 TOWN CENTER TWENTY-SECOND FLOOR SOUTHFIELD, MI 48075 FIRST NAMED INVENTOR Wolfgang Knies 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. WASN0116PUSA 6316 EXAMINER NASSIRI MOTLAGH, ANITA ART UNIT PAPER NUMBER 1734 NOTIFICATION DATE DELIVERY MODE 05/18/2016 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): docketing@brookskushman.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte WOLFGANG KNIES, KARIN BOEGERSHAUSEN, and HANS EIBLMEIER 1 Appeal2014-006874 Application 13/634,508 Technology Center 1700 Before ROMULO H. DELMENDO, JEFFREY T. SMITH, and JEFFREY W. ABRAHAM, Administrative Patent Judges. ABRAHAM, Administrative Patent Judge. DECISION ON APPEAL This is a decision on an appeal under 35 U.S.C. § 134 from the decision of the Examiner finally rejecting claims 8-14. We have jurisdiction pursuant to 35 U.S.C. § 6(b). We reverse. 1 According to the Appeal Brief, the Real Party in Interest is Wacker Chemie AG. App. Br. 1. Appeal2014-006874 Application 13/634,508 BACKGROUND Appellants' claimed invention relates to the disposal of hexachlorodisilane (HCDS) residues. Spec. 1: 18-19. Claim 8 is the only independent claim at issue on appeal, and is reproduced below from the Claims Appendix: 8. A process for disposing of hexachlorodisilane-containing vapors, comprising introducing hexachlorodisilane- containing vapors into a mixture comprising a nonpolar hydrocarbon which is liquid at 900 to 1100 hPa and 25°C, urea, and an alcohol which is liquid at 900 to 1100 hPa and 25°C. The Examiner maintains and Appellants appeal the rejection of claims 8-12 as unpatentable under 35 U.S.C. § 103(a) over Obemeder2 and claims 13 and 14 as unpatentable under 35 U.S.C. § 103(a) over Obemeder in view ofMcKams. 3 OPINION The Examiner finds that Obemeder teaches a process involving the reaction of urea with an organosilicon compound containing chlorine radicals, including HCDS. Final Act. 2. The Examiner further finds that Obemeder discloses the reaction being carried out in the presence of an inert 2 Obemeder et al., US 6,218,498 B 1, issued Apr. 17, 2001. 3 McKams et al., Correlation between Hydrophobicity of Short-Chain Aliphatic Alcohols and Their Ability to Alter Plasma Membrane Integrity, 36 Fundamental and Applied Toxicology 62 (1997). 2 Appeal2014-006874 Application 13/634,508 solvent such as xylene, which is a nonpolar hydrocarbon that is a liquid at 900 to 1100 hPa and 25°C. Id. at 2-3. Additionally, the Examiner finds that Obemeder teaches that "the organosilicon compounds according to his invention can remove protic compounds such as alcohols which leads to non-volatile and toxicologically and ecologically acceptable reaction products." Id. at 3 (citing Obemeder, 10:46-52). Thus, although the Examiner recognizes that Obemeder does not disclose the presence of alcohol in the aforementioned reaction of urea with an organosilicon compound containing chlorine radicals, the Examiner determines that it would have been obvious to a person of ordinary skill in the art to add alcohol to Obemeder's reaction mixture "in order to generate non-volatile and toxicologically and ecologically acceptable products." Id.; Ans. 5 Appellants argue, inter alia, that Obemeder fails to teach or suggest all limitations recited in the claims, and the Examiner's rejection is based on improper hindsight reconstruction of Appellants' invention. App. Br. 4--7. For example, Appellants point out that "[t]he entire purpose of Oberneder is to prepare urea group-containing silicon compounds, not to destroy them," and that a person of ordinary skill in the art would not have had any motivation (or reason) to add an alcohol to Obemeder' s reaction mixture because doing so would impede the synthesis of Obemeder' s desired compounds. Id. at 6-7; Reply Br. 5---6. According to the U.S. Supreme Court, "[a] factfinder should be aware ... of the distortion caused by hindsight bias and must be cautious of argument reliant upon ex post reasoning." KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 421(2007) (citing Graham v. John Deere Co., 383 U.S. 1, 36 3 Appeal2014-006874 Application 13/634,508 ( 1966) ). Additionally, "[ o ]ne cannot use hindsight reconstruction to pick and choose among isolated disclosures in the prior art to deprecate the claimed invention." In re Fine, 837 F.2d 1071, 1075 (Fed. Cir. 1988). Appellants' arguments persuade us that the Examiner relied on impermissible hindsight to arrive at the determination of obviousness. As Appellants correctly point out, the Examiner expressly acknowledges that "Obemeder' s field of endeavor is the synthesis of organosilicon compounds." Ans. 3; Reply Br. 2. Despite this acknowledgement, the Examiner determines that it would have been obvious to a person of ordinary skill in the art to add a reactive ingredient (i.e., alcohol) to Obemeder' s reaction mixture that would interfere with Obemeder' s intended goal of synthesizing organosilicon compounds. Ans. 3. We are not persuaded by the Examiner's determination that a person of ordinary skill in the art would have had a reason to add an alcohol to Obemeder's reaction mixture because Obemeder's method "eventually leads to the formation of compounds that are toxicologically and ecologically acceptable products starting from a compound such as HCDS." Id. Although Obemeder does discuss toxicologically and ecologically acceptable products formed via reactions involving alcohols, these products are formed by the reaction of an alcohol with Obemeder' s synthesized organosilicon product. See Obemeder 10:46-58, 19:34--41. In other words, Obemeder teaches that these reactions take place after the original reaction between urea and an organosilicon compound containing chlorine radicals is complete. Moreover, the reaction between Obemeder's oraganosilicon compound and an alcohol is intended to remove the alcohol, as opposed to removing HCDS contaminants. Id. 4 Appeal2014-006874 Application 13/634,508 Since Obemeder strives to produce certain organosilicon compounds, including ones that can then be used to remove alcohols, one skilled in the art would have been discouraged from taking steps to prevent the formation of those organosilicon compounds in the first place. Thus, after weighing the arguments and evidence of record, we find an artisan possessing common sense would not have reasonably been led to add an alcohol to Obemeder' s reaction mixture without having the benefit of Appellants' claims to use as a guide. Additionally, we note that independent claim 8 requires introducing HCDS-containing vapors into a mixture of a nonpolar hydrocarbon, urea, and an alcohol. The Examiner, however, has not directed us to evidence within Obemeder disclosing or suggesting the use of HCDS-containing vapors. In view of the foregoing, the Examiner has not satisfied the initial burden of presenting a prima facie case of obviousness, and we conclude that the Examiner's rejection is improperly based upon improper hindsight reasoning. KSR, 550 U.S. at 421. The Examiner does not rely on McKams to cure the aforementioned deficiencies. CONCLUSION For the reasons set forth above, we reverse the decision of the Examiner to reject claims 8-14 under 35 U.S.C. § 103(a). REVERSED 5 Copy with citationCopy as parenthetical citation