Ex Parte Millward et al

Patent Trial and Appeal Board

Dec 31, 2014

12954344 (P.T.A.B. Dec. 31, 2014)

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.
12/954,344 11/24/2010 Dan Millward MI22-4700 5217
21567 7590 01/02/2015
Wells St. John P.S.
601 West First Avenue
Suite 1300
Spokane, WA 99201-3828
EXAMINER
GHYKA, ALEXANDER G
ART UNIT PAPER NUMBER
2812
MAIL DATE DELIVERY MODE
01/02/2015 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte DAN MILLWARD, STEFAN UHLENBROCK, and
TIMOTHY A. QUICK
____________________

Appeal 2012-008943
Application 12/954,344
Technology Center 2800
____________________

Before ADRIENE LEPIANE HANLON, CATHERINE Q. TIMM, and
JAMES C. HOUSEL, Administrative Patent Judges.

TIMM, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF CASE
Appellants seek review of the Examiner’s decision to reject claim 55
under 35 U.S.C. § 102(b) as anticipated by Kruck,1 and claims 56–58 under
35 U.S.C. § 103(a) as obvious over Kruck. We have jurisdiction under
35 U.S.C. §§ 6(b) and 134(a).

1 Kruck et al., DE 42 02 889 A1, pub. Aug. 5, 1993. The Examiner made of
record both a German language version and an English language version of
the document on July 8, 2011 and refers to both documents. Our review is
based upon the English language version supplemented by the generic
formulas and table of the German language document.
Appeal 2012-008943
Application 12/954,344

2
For the reasons presented by the Examiner in the Answer, we
AFFIRM. We add the following for emphasis.
Claim 55 is directed to a ligand source. Claim 55 reads as follows:
55. A ligand source of the Formula (III):

or a tautomer thereof,
wherein each R1, R2, R3, R4, and R5 is independently
hydrogen or an alkyl moiety having 1 to 10 carbon atoms, with
the proviso that one or more of the following apply:
R1 is different than R5, or R2 is different than R4.
Claims Appendix at Appeal Br. 8.
Although Appellants are correct that the formula I–IV compounds
described by Kruck include a bound metal and are not a ligand source with a
structure according to the claimed formula, as pointed out by the Examiner,
Kruck teaches forming the metal bound compounds from ligand source
compounds that inherently would have a chemical structure within the scope
of claim 55. Appellants argue that there is no evidence to support the
Examiner’s finding of inherency, but such evidence is present in Kruck at
page 7, lines 1–22 of the English-based document as explained by the
Examiner. Ans. 7. Appellants do not address this evidence. Appeal Br. and
Reply Br. in their entirety.
Appeal 2012-008943
Application 12/954,344

3
A preponderance of the evidence supports the Examiner’s finding that
Kruck teaches ligand sources of the formula of claim 55.
With respect to the obviousness of the ligand sources of the dependent
claims, we agree with the Examiner’s response to argument presented on
pages 8 and 9 of the Answer.

CONCLUSION
We sustain the Examiner’s rejections.

DECISION
The Examiner’s decision is affirmed.

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)(1).

AFFIRMED

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