Ex Parte König et al

Patent Trial and Appeal Board

Sep 15, 2016

13375052 (P.T.A.B. Sep. 15, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/375,052 03/08/2012
26285 7590 09/19/2016
K&L GA TES LLP-Pittsburgh
210 SIXTH AVENUE
PITTSBURGH, PA 15222-2613
FIRST NAMED INVENTOR
Thomas Konig
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.
074023-0355-286851 2004
EXAMINER
TISCHLER, FRANCES
ART UNIT PAPER NUMBER
1765
NOTIFICATION DATE DELIVERY MODE
09/19/2016 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):
USpatentmail@klgates.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte THOMAS KONIG, JORG KIRCHHOFF, MICHAEL BIERDEL,
KLEMENS KOHLGRUBER, JOHANN RECHNER, ING JOHAN V AES,
JOHAN V ANDER EYNDE, FRANK BRUYNSEELS, and
BERT RUYTINX
Appeal2015---003379
Application 13/375,052
Technology Center 1700
Before PETER F. KRATZ, BEYERL Y A. FRANKLIN and
DEBRA L. DENNETT, Administrative Patent Judges.
FRANKLIN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants seek our review under 35 U.S.C. § 134 of the Examiner's
decision rejecting claims 15 and 16. We have jurisdiction over the appeal
under 35 U.S.C. § 6(b ).
Appeal2015-003379
Application 13/375,052
STATEMENT OF THE CASE
Claim 15 is illustrative of Appellants' subject matter on appeal and is
set forth below:
15. An aromatic polycarbonate comprising less than 5 ppm of
aromatic chlorine compounds and less than 0.5 ppm of
dichloromethane and less than 5 ppm of monohydric phenols
and less than 0.5 ppm of aromatic compounds containing no
chlorine.
App. Br. 8 (Claims Appendix).
The Examiner relies on the following prior art reference as evidence
of unpatentability:
Elsner et al.
(hereafter "Elsner")
US 6,534,619 Bl
THE REJECTION
Mar. 18, 2003
Claims 15 and 16 are rejected under pre-AIA 35 U.S.C. § 102(b) as
anticipated by, or, in the alternative, under pre-AIA 35 U.S.C. § 103(a) as
obvious over Elsner.
ANALYSIS
The Examiner makes certain findings as set forth on pages 4---6 of the
Non-final Office Action mailed December 5, 2013 (the Examiner relies
upon these findings as stated on page 2 of the Answer). On page 5 of the
Non-final Office Action, the Examiner finds that Elsner discloses a total of
as low as 5 ppm for all volatile impurities combined, and discloses the
claimed amount of bisphenol impurity, but does not explicitly disclose the
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Appeal2015-003379
Application 13/375,052
amounts of each remaining impurity separately. The Examiner states that
since Elner's process is identical, Elsner's polycarbonate inherently contains
the amounts of impurities as claimed by Appellants. Alternatively, the
Examiner states that it would have been obvious to have varied certain
parameters through routine experimentation to arrive at the claimed amounts
of impurities. Non-final Office Act. 4--5.
Appellants point out that in fact Elsner' s process is not identical to the
process used by Appellants (as described in Appellants' Specification).
Appeal Br. 4--5. We agree for the reasons provided by Appellants in the
record. We note that in reply to this point made by Appellants, the
Examiner states that the present claims are composition claims and not
process claims or apparatus claims. Ans. 9. However, because the
Examiner's position relies upon an inherency theory, the fact that the
process used in arriving at Appellants' claimed invention is different from
that set forth in Elsner undermines the Examiner's inherency theory. The
Examiner also states that certain process parameters (e.g., a pipe
devolatilizer) are equivalent to certain process parameters of Elsner (e.g., a
shell-and-tube heat exchanger). Ans. 9. However, in so doing, the
Examiner does not direct us to evidence in the record indicating that this is
so, and in fact states that even if such devices are not equivalent, they serve
the same purpose of removing volatile impurities from polycarbonates. Ans.
9. Again, the evidence is lacking to support an inherency position.
Alternatively, the Examiner puts forth an obviousness position, but in
so doing, does not properly address all of the claimed elements, one being
"less than 0.5 ppm of aromatic compounds containing no chlorine".
Appellants point this out on pages 3-6 of the Appeal Brief. As such, no
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Appeal2015-003379
Application 13/375,052
explanation is provided in the rejection as to what type of modifications of
the process according to Elsner would be needed to arrive at this claimed
element (as well as other claimed elements). The Examiner also states that
claims 15 and 16 allow for elements to be in the amount of zero ppm, and
states that ingredients that are not mentioned in Elsner would meet such
subject matter. Ans. 6. However, just because certain volatiles are not
specifically named in Elsner is not enough. The Examiner has not properly
established that such elements are not necessarily present since the
inherency theory is flawed (for the reasons discussed, supra). Elsner
discloses, for example, that 50 ppm of unnamed volatile constituents are
present. Elsner, col. 5, 11. 54--57.
In view of the above, we reverse the rejection.
r-y-'11 • ' • • 1
l ne reJ ecuon is reversea.
DECISION
ORDER
REVERSED
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