Ex Parte Low et alDownload PDFPatent Trial and Appeal BoardJul 13, 201713202375 (P.T.A.B. Jul. 13, 2017) Copy Citation 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 Copy with citationCopy as parenthetical citation