Ex Parte Lu et al

Patent Trial and Appeal Board

Sep 29, 2016

13031399 (P.T.A.B. Sep. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/031,399
31217 7590
Henkel Corporation
One Henkel Way
Rocky Hill, CT 06067
02/21/2011
10/03/2016
FIRST NAMED INVENTOR
Zheng Lu
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.
LC-651/PCT/US 4832
EXAMINER
ABU ALI, SHUANGYI
ART UNIT PAPER NUMBER
1731
NOTIFICATION DATE DELIVERY MODE
10/03/2016 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):
rhpatentmail@henkel.com
trish.russo@henkel.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ZHENG LU and JOSEPH SCHULZ
Appeal2015-002671
Application 13/031,399
Technology Center 1700
Before BEYERL YA. FRANKLIN, N. WHITNEY WILSON, and
DEBRA L. DENNETT, Administrative Patent Judges.
WILSON, Administrative Patent Judge.
DECISION ON APPEAL
.6. .... ,1 .... ,....,-TTr-11"\l\1,....Al/'\.r'" , .. T"""1 •-, Appeuants' appeal unaer j) u.~.L. s U4~aJ rrom tne bxammer s
February 11, 2014 decision finally rejecting claims 1--4, 6-10, 12, 13, and 22
("Final Act."). We have jurisdiction over the appeal under 35 U.S.C. § 6(b ).
We affirm.
1 Appellants identify the Real Party in Interest as Henkel US IP LLC
(Appeal Br. 1).
Appeal2015-002671
Application 13/031,399
CLAIMED SUBJECT MATTER
Appellants' invention is directed to a mold sealer composition for use
with stainless steel or chrome plated molds (Spec. i-fi-15, 38, Abstract).
Details of the claimed invention are set forth in representative claim 1,
which is reproduced below from the Claims Appendix of the Appeal Brief:
1. A mold sealer composition for use with stainless
steel or chrome-plated molds consisting essentially of:
(a) a carrier-soluble silane having the formula I:
R1 f3-a) I .
R3-N-X-Si-R2 I (a}
H
(I)
wherein
R 1 is selected from the group consisting of hydroxy and
alkoxy;
R2 is selected from the group consisting of alkyl,
alkyene and hydride;
R3 is selected from the group consisting of hydrogen
and alkyl, optionally substituted by an amino group
or an alkoxysilyl group;
Xis C1-C6 alkylene; and
a is 0 or 1;
(b) a carrier comprising water in which said silane is soluble;
( c) a pH modifier, and
wherein said composition is free of filler, has a pH of 10-
11, is stable for a period of at least about six months to at least
about one year, and provides improved releasability when used
in a stainless steel or chrome-plated mold with a mold release
composition.
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Appeal2015-002671
Application 13/031,399
REJECTIONS
I. Claims 1--4, 7-9, 12, and 22 are rejected under 35 U.S.C. § 103(a)
as being unpatentable over Bouvy.2
II. Claim 6 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Bouvy in view of Hattemer. 3
III. Claim 10 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Bouvy in view of Barron. 4
IV. Claim 13 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Bouvy in view of Peters. 5
DISCUSSION
Appellants do not separately argue rejections II-IV and only offer
separate arguments with respect to claims 1 and 22 (Appeal Br. 6, 7, 22).
Accordingly, our discussion will focus on the rejection of claims 1 and 22
over Bouvy.
The Examiner finds that Bouvy discloses a composition comprising
silane such as aminopropyltriethoxysilane, water, and a pH adjuster (Final
Act. 3, citing Bouvy, 9:42-59). The Examiner further finds that Bouvy
teaches that the pH of its composition is from 4--13, which overlaps with the
claimed range of 10-11 (Final Act. 3, citing Bouvy, 13: 14--16). The
Examiner also finds that the stability limitation of claim 1 is met because the
composition of Bouvy is the same as the claimed invention (Final Act. 3--4 ).
2 Bouvy et al., U.S. Patent No. 6,995,210 B2, issued February 7, 2006.
3 Hattemer et al., WO 2006/122684 A2, published November 23, 2006.
4 Barron et al., U.S. Patent No. 4,507,443, issued March 26, 1985.
5 Peters, et al., U.S. Patent No. 6,258,888 Bl, issued July 10, 2001.
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Appeal2015-002671
Application 13/031,399
Appellants argue that Bouvy's composition requires the presence of a
"filler," while the claimed composition "is free of filler" (Appeal Br. 7-11 ).
In support of their position, Appellants cite to 17 different passages from
Bouvy which state, suggest, or infer that Bouvy's composition includes a
filler (Id. at 7-10). 6 Appellants contend that because, in their view, Bouvy
requires the presence of a filler, (1) a person of skill in the art would not
have created a composition without a filler, (2) removal of the filler from
Bouvy's composition would have rendered it unsatisfactory for its intended
purpose (Id. at 12); (3) removing the filler from Bouvy's composition would
have yielded a composition with unpredictable properties (Id. at 13), and (4),
the Examiner has not established an adequate reason why one of skill in the
art would have excluded the filler from Bouvy's composition (Id. at 15).
Appellants' arguments are not persuasive. As explained by the
Examiner, Bouvy states that the use of a filler is optional (Ans. 5, citing
Bouvy, 13:7). Thus, though Bouvy may express a preference for the
presence of a filler, it explicitly states that, at least in some circumstances, a
filler need not be present. Appellants have not provided an explanation of
why the cited passage from Bouvy does not teach that the presence of a filler
is optional.
A reference is not limited to the teaching in its preferred embodiment,
but also for what one of ordinary skill might reasonably infer from the
teachings. In re Opprecht, 12 USPQ 2d 1235, 1236 (Fed. Cir. 1989); see
also In re Fracalossi and Wajer, 681 F .2d 792 (CCP A 1982) (reference is
6 Appellants also cite to the prosecution history of Bouvy as showing that a
filler is required in Bouvy's composition (Appeal Br. 10).
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Appeal2015-002671
Application 13/031,399
prior art not only for specifically disclosed embodiments, but also all that it
fairly teaches).
In this case, the preponderance of the evidence supports the
Examiner's finding that Bouvy teaches that the presence of a filler is
optional. With this finding, none of Appellants' arguments are persuasive of
reversible error.
With regards to the rejection of claim 22 over Bouvy, Appellants
argue that because it uses the transitional phrase "consisting of," the
presence in Bouvy's composition of a catalyst E (Appeal Br. 17-18) is an
additional reason that the rejection should be reversed. However, the
Examiner finds that the presence of the catalyst in Bouvy' s composition is
optional, because Bouvy states that the catalyst may be present in an amount
of "up to 3 parts by weight," which would include 0 parts by weight (Ans.
5---6; see, also Bouvy 11 :32-34, 39:38--44 (preparation of claimed emulsion
"optionally'; includes catalyst E)). Appellants have not persuaded us of
reversible error in this finding, nor of a reason to reverse the rejection.
CONCLUSION
We affirm each of the Examiner's rejections.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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