Ex Parte Lerg et al

Patent Trial and Appeal Board

Nov 3, 2017

13459662 (P.T.A.B. Nov. 3, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/459,662 04/30/2012 Heike Lerg 3321-P50009 3003
13897 7590 ]
Abel Law Group, LLP
8911 N. Capital of Texas Hwy
Bldg 4, Suite 4200
Austin, TX 78759
EXAMINER
HOLLOMAN, NANNETTE
ART UNIT PAPER NUMBER
1612
NOTIFICATION DATE DELIVERY MODE
11/07/2017 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):
mail @ Abel-IP.com
hmuensterer @ abel-ip. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HEIKE LERG and MANUELA KOEHLER
Appeal 2017-002055
Application 13/459,662
Technology Center 1600
Before FRANCISCO C. PRATS, RICHARD J. SMITH,
and JOHN E. SCHNEIDER, Administrative Patent Judges.
SCHNEIDER, Administrative Patent Judge.
DECISION ON REQUEST FOR REHARING
Pursuant to 3 C.F.R. § 41.52, Appellants have submitted a Request for
Rehearing dated July 31, 2017 (“Request”), requesting rehearing of the June
1, 2017 Decision (“Decision”) affirming the Examiner’s rejection of claims
61-80 under 35 U.S.C. § 103(a).
We have considered the Decision in light of Appellants’ comments in
the Request. We are persuaded that we misapprehended Appellants’
arguments with respect to claims 68 and 78. We therefore grant Appellants’
request and modify our Decision with respect to claims 68 and 78 as
follows.
Appeal 2107-002055
Application 13/459,662
Appellants argue that the Board overlooked Appellants’ argument that
claims 68 and 78 call for a coating that consists of methylhydrogen-
polysiloxane and that neither Tanaka nor Susak teaches a coating consisting
solely of methylhydrogenpolysiloxane. Request 2. We have considered
Appellants’ argument and are persuaded that we misapprehended
Appellants’ argument in the Appeal Brief.
“[Cjlosed transition phrases such as ‘consisting of are understood to
exclude any elements, steps, or ingredients not specified in the claim.” AFC
Indus., Inc. v. CardinalIG Co., 239 F.3d 1239, 1245 (Fed. Cir. 2001).
Claims 68 and 78 both use the transitional phrase “consisting of’ which
excludes the presence of coating materials other than
methylhydrogenpolysiloxane. Appeal Br. 19 and 21 (Claims App’x).
While Tanaka teaches use of methylhydrogenpolysiloxane as a
coating for titanium dioxide, Tanaka 122, Tanaka teaches the use of the
compound in combination with a fluorine coating compound. Tanaka
Abstract and 120. Tanaka does not teach or suggest a coating which
contains only methylhydrogenpoylsiloxane. Nor has the Examiner pointed
to anything in Susak which would lead one skilled in the art to use
methylhydrogenpolysiloxane alone as a coating for titanium dioxide as
called for in the claims. See, Ans. 8. We find that the Examiner has not
established that it would have been obvious to one skilled in the art at the
time the invention was made to use methylhydrogenpolysiloxane alone as a
coating for titanium dioxide.
For these reasons we grant Appellants’ Request and modify our
Decision to reverse the rejection of claims 68 and 78.
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Appeal 2107-002055
Application 13/459,662
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).
GRANTED
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