Ex Parte Low et al

Patent Trial and Appeal Board

Jul 13, 2017

13202375 (P.T.A.B. Jul. 13, 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.
13/202,375 08/19/2011 Bee T. Low DOW-36193-A-US 7922
29423 7590 07/17/2017
Hnsrh R1arlcwe.11 T T P/
EXAMINER
The Dow Chemical Company ZEMEL, IRINA SOPJIA
555 East Wells Street, Suite 1900
Milwaukee, WI53202-3819 ART UNIT PAPER NUMBER
1765
NOTIFICATION DATE DELIVERY MODE
07/17/2017 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):
jere.polmatier@huschblackwell.com
ptomailbox @ whdlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BEE T. LOW and STEPHEN YAUSANG CHENG1
Appeal 2016-004270
Application 13/202,375
Technology Center 1700
Before BRADLEY R. GARRIS, AVELYN M. ROSS, and
JEFFREY R. SNAY, Administrative Patent Judges.
GARRIS, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
This is in response to a timely filed Request for Rehearing
(“Rehearing Request”) of our Decision dated April 27, 2017 wherein we
affirmed the Examiner’s rejection under 35 U.S.C. § 103(a) of claims 1—17.
Appellants state the following grounds for their Request:
Appellants] respectfully request[] a rehearing of this case
because evidence of unexpected results was overlooked by the
Board. In particular, the Board failed to consider Table A in
Appellants’] Reply Brief—Table A being fully supported in the
1 Dow Global Technologies, Inc., is identified as the real party in interest.
(App. Br. 3.)
Appeal 2016-004270
Application 13/202,375
prosecution history and in the originally filed application. It is
submitted that the Decision issued is in error due to the Board's
failure to consider the unexpected results and other evidence in
the record.
(Rehearing Request 2.)
Appellants’ above quoted statements are not entirely consistent with
our treatment of the contention in the Reply Brief that an unexpected result
is shown in Table A. This treatment is reproduced below:
Finally, Appellants contend that “[t]he criticality of the
cooling time range of 210-270 seconds for achieving the
unexpected result of maintaining compressed thickness is shown
in Table A below (reproduced below from Appellant’s [sic]
specification)” (Reply Br. 5).
As an initial matter, we observe that the Reply Brief does
not identify the specific location of the referenced Table A in
their 19 August 2011 Specification of record.0 Correspondingly,
the Reply Brief does not identify any Specification disclosure
that characterizes as unexpected the result shown in the
referenced Table A. For these reasons, the contention regarding
an unexpected result appears to be merely an unsupported
statement presented by the attorney who wrote the Appeal and
Reply Briefs. As such, the contention lacks persuasive merit.
See In re Geisler, 116 F.3d 1465, 1470-71 (Fed. Cir. 1997)
(reiterating that unexpected results must be established by factual
evidence and holding that attorney’s statement that improved
results were “surprising” insufficient to establish unexpected
results).
(Decision 7.)
As reflected by this reproduction, our Decision explicitly addressed
Table A by pointing out that Appellants had not identified the specific
location or source of the Table A data and had not identified any
Specification or other disclosure wherein one with ordinary skill in the art
characterized the result shown in Table A as unexpected. For these reasons,
2
Appeal 2016-004270
Application 13/202,375
we determined that “the contention regarding an unexpected result appears
to be merely an unsupported statement presented by the attorney who wrote
the Appeal and Reply Briefs [such that] the contention lacks persuasive
merit” {id.).
In their Request, Appellants continue to not identify any disclosure
wherein an artisan characterizes the Table A result as unexpected (see
generally Rehearing Request). Accordingly, the contention that Table A
shows a result which is unexpected continues to appear to be merely an
attorney’s statement and therefore insufficient to establish an unexpected
result. For this reason alone, the Request fails to show harmful error in our
Decision’s treatment of the unexpected result issue raised by Appellants in
their Appeal and Reply Briefs.
In addition, the Request newly cites specific Specification disclosures
(e.g., Tables 17 and 21—23) from which data was taken in creating Table A
(Rehearing Request 2-4) and newly cites paragraphs 8—9 in the Low
Declaration of record as evincing an unpredictable result {id. at 6).
These new citations of evidence not previously relied upon in
Appellants’ Appeal and Reply Briefs are not permitted in a Request for
Rehearing. 37 CFR § 41.52(a)(1) (2016). Therefore, we will not consider
this newly cited evidence or Appellants’ discussion of it in our disposition of
the subject Request.
For the above-stated reasons, Appellants fail to show that our
Decision is in error.
The Request for Rehearing is denied.
DENIED
3