Ex Parte Peretolchin et alDownload PDFPatent Trial and Appeal BoardAug 30, 201612524184 (P.T.A.B. Aug. 30, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/524, 184 07/23/2009 123223 7590 09/01/2016 Drinker Biddle & Reath LLP (WM) 222 Delaware A venue, Ste. 1410 Wilmington, DE 19801-1621 FIRST NAMED INVENTOR Maxim Peretolchin 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. 074008-0909-US (286112) 6863 EXAMINER SALVA TORE, LYNDA ART UNIT PAPER NUMBER 1789 NOTIFICATION DATE DELIVERY MODE 09/01/2016 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): IPDocketWM@dbr.com penelope.mongelluzzo@dbr.com DBRIPDocket@dbr.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MAXIM PERETOLCHIN, GUNTER SCHERR, ROLAND ETTL, and VOLKER SCHADLER Appeal2015-002854 Application 12/524, 184 Technology Center 1700 Before ADRIENE LEPIANE HANLON, GEORGE C. BEST, and MONTE T. SQUIRE, Administrative Patent Judges. SQUIRE, Administrative Patent Judge. DECISION ON APPEAL Appellants 1 appeal the Examiner's final rejection of claims 15-28, 30, and 32 under 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6(b ). For the reasons set forth below, we AFFIRM-IN-PART. 1 Appellants identify BASF SE as the Real Party in Interest. App. Br. 2. Appeal2015-002854 Application 12/524, 184 The Claimed Invention Appellants' disclosure relates to flexible, sheet-like substrates having an abrasive surface and their use as wiping cloths for cleaning surfaces. Spec 1, 11. 5, 6; Abstract. Claim 15 is representative of the claims on appeal and is reproduced below from the Claims Appendix to the Appeal Brief (App. Br. 19) (emphasis added to identify disputed limitations): 15. A flexible, sheet-like cleaning substrate having an abrasive surface obtained by applying an aqueous solution or dispersion of at least one precondensate of a heat-curable resin to the top and/or bottom of a flexible, sheet-like substrate in an amount of at least 5 to 90% by weight, based on the uncoated, dry substrate, crosslinking the precondensate and drying the treated substrate wherein the abrasive surface has a structure that when the abrasive surface is pushed or moved on top of another surface, the abrasive surface cleans said another surface. The References The Examiner relies on the following references in rejecting the claims on appeal: Smith US 5,491,022 Hausdorf et al., US 5,498,471 (hereinafter "Hausdorf ') Hu et al., US 2007/0149676 Al (hereinafter "Hu") The Rejections Feb. 13, 1996 Mar. 12, 1996 June 28, 2007 On appeal, the Examiner maintains the following rejections: 1. Claims 15, 16, 19, 23, 24, 26-28, 30, and 32 stand rejected under 35 U.S.C. § 102(b) as being anticipated by Hausdorf. 2. Claims 17, 18, and 25 stand rejected 35 U.S.C. § 103(a) as being unpatentable over Hausdorf. 2 Appeal2015-002854 Application 12/524, 184 3. Claims 21and22 stand rejected 35 U.S.C. § 103(a) as being unpatentable over Hausdorf as applied to claim 15 above and further in view of Hu. 4. Claim 20 stands rejected 35 U.S.C. § 103(a) as being unpatentable over Hausdorf as applied to claim 15 above and further in view of Smith. OPINION Rejection 1 Appellant argues claims 15, 16, 19, 23, 24, 26-28, 30, and 32 as a group. We, therefore, select claim 15 as representative of this group, and the remaining claims stand or fall with claim 15. 37 C.F.R. § 41.37(c)(l)(iv). The Examiner finds that Hausdorf discloses all of claim 15' s limitations and thus, rejects claim 15 as being anticipated by Hausdorf. Final Act. 3, 4 (citing Hausdorf, Abstract, col. 2, 11. 30-40, 30-33, col. 3, 11. 1-5, 50-60). In particular, the Examiner finds that Hausdorf teaches coating a non-woven or paper with a crosslinked aqueous dispersion comprising a mixture of acrylic acid esters and styrene and a precondensate of melamine and formaldehyde, and applying the dispersion in an amount ranging from 30-60 grams per meter squared. Id. at 3 (citing Hausdorf, Abstract, col. 2, 11. 30-40, 30-33). The Examiner finds further that Hausdorf teaches that the disclosed coating is impregnated, and dried and cured at temperatures ranging from 100-120°C. Id. at 3 (citing Hausdorf, col. 3, 11. 1-5, 50-60). Appellants argue that the Examiner's rejection of claim 15 should be reversed because "the Examiner has not adequately demonstrated that every element of the claims is disclosed, either expressly or inherently, by the Hausdorf reference." App. Br. 5. In particular, Appellants argue that 3 Appeal2015-002854 Application 12/524, 184 Hausdorf does not disclose or suggest: (a) a "cleaning substrate," (b) an "abrasive surface," and that ( c) "the abrasive surface cleans ... another surface," as recited the claim. Id. at 7-11. We are not persuaded by Appellants' arguments. To serve as an anticipatory reference, "the reference must disclose each and every element of the claimed invention, whether it does so explicitly or inherently." In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009). Based on the record before us, the Examiner's finding that Hausdorf discloses each and every element of claim 15, including a cleaning substrate, an abrasive surface, and that the abrasive surface cleans another surface is supported by a preponderance of the evidence. Hausdorf, Abstract, col. 2, 11. 30-40, 30-33, col. 3, 11. 1-5, 50-60. Appellants' argument that because Hausdorf "is directed to a substrate for flexible circuit boards," it does not disclose or suggest a "cleaning substrate" (App. Br. 7, 9) is unpersuasive because Hausdorf's teachings are not limited to the disclosures in its examples. See In re Ji;fills, 470 F.2d 649, 651 (CCP A 1972) ("[A] reference is not limited to the disclosure of specific working examples."). As the Examiner points out (Ans. 2), although Hausdorf "exemplifies employing the coated substrate in circuit boards," its disclosure is not limited to substrates for use only in printed circuit boards. Moreover, as the Examiner found (Ans. 2, 3), because Hausdorf discloses a coated, flexible substrate having the same structural and the same chemical composition of Appellants' claimed substrate, it follows that Hausdorf's substrate would likewise be able to function "as a wipe for cleaning," as claimed. See In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997) (noting that "the absence of a disclosure relating to function does not defeat the ... finding of anticipation."). Appellants do not give an adequate 4 Appeal2015-002854 Application 12/524, 184 reason why the substrate of Hausdorf could not have been used for cleaning or otherwise establish reversible error in the Examiner's findings in this regard. Cf In re Pearson, 494 F.2d 1399, 1403 (CCPA 1974). As the Examiner also found (Ans. 4) and contrary to Appellants' argument, Hausdorf does disclose both an "abrasive surface" and that the "abrasive surface cleans another surface" inasmuch as claimed. Regarding disclosure of an abrasive surface, as found by the Examiner (Ans. 4), Hausdorf teaches: (1) that a composition is coated or impregnated onto the surface of the substrate such that it has desired thickness and weight (Hausdorf, col. 3, 11. 1---65, claim 6); (2) adding particulate materials to the composition; and the (3) particulate materials having a structure, which would provide for an abrasive surface if exposed (id. at col. 3, 11. 1-30, claim 1 ). Also, as the Examiner found (Ans. 2, 3) and as previously discussed above regarding the cleaning substrate limitation, because Hausdorf describes a substrate having the same structure and same chemical composition as claimed, it follows that the prior art substrate would indeed have the same abrasive surface properties, i.e., the ability to "function in the capacity as a wipe for ... scouring depending on the amount of force [that] is used." Schreiber, 128 F.3d at 1477. Moreover, regarding the phrase "that when the abrasive surface is pushed or moved on top of another surface, the abrasive surface cleans said another surface," as recited in claim 15, we agree with the Examiner (Ans. 4) that this is an intended use recitation, and thus, does not serve to distinguish Appellants' claimed substrate from the prior art. Cf Pearson, 494 F .2d at 1403. Appellants have also not given a sufficient reason why the abrasive surface of Hausdorf s substrate would not clean another surface when "pushed or moved on top of [said] another surface," as claimed. 5 Appeal2015-002854 Application 12/524, 184 Accordingly, we affirm the Examiner's rejection of claims 15, 16, 19, 23, 24, 26-28, 30, and 32 under 35 U.S.C. § 102(b) as being anticipated by Hausdorf. Rejection 2 Appellant argues claims 17, 18, and 25 as a group. We select claim 17 as representative, and claims 18 and 25 stand or fall with claim 1 7. 37 C.F.R. § 41.37(c)(l)(iv). Claim 17 depends from claim 15 and adds the limitation: "wherein the heat-curable resin used is a precondensate of melamine and formaldehyde in which the molar ratio of melamine to formaldehyde is greater than 1:2." App. Br. 19 (Claims App'x). The Examiner finds that Hausdorf suggests all of the limitations of claim 17 and would have rendered claim 17 obvious. Final Act. 4. In particular, the Examiner finds that although Hausdorf does not teach the claimed molar ratio of melamine to formaldehyde, "absent unexpected results it would be within the skill of a worker in the art to optimize the molar ratio of melamine to formaldehyde in the precondensate as a function controlling flexibility of the coated substrate and desired crosslinking." Id. at 3, 4. Appellants argue that the Examiner's rejection of claim 17 should be reversed because the Examiner failed to provide a sufficient rationale to support the finding that "absent unexpected results it would be within the skill of a worker in the art to optimize the molar ratio of melamine to formaldehyde in the precondensate as a function controlling flexibility of the coated substrate and desired crosslinking." App. Br. 15. We agree with Appellants' arguments. The Examiner does not identify or direct us to sufficient evidence that at the time of invention it 6 Appeal2015-002854 Application 12/524, 184 would have been within the skill of a worker having ordinary skill in the art to optimize the molar ratio of melamine to formaldehyde in the precondensate to a level of "greater than 1:2," as required by claim 17. As noted by Appellants (App. Br. 15), the Examiner does not provide a citation or direct us to any specific teaching or disclosure-whether in Hausdorf or elsewhere in the record-to support this finding. The Examiner's conclusory assertion (Ans. 3, 4) that "absent unexpected results it would be within the skill of a worker in the art to optimize the molar ratio of melamine to formaldehyde," without more, is insufficient to sustain the Examiner's obviousness conclusion and findings in this regard. In re Kahn, 441F.3d977, 988 (Fed. Cir. 2006) (holding "rejections on obviousness grounds cannot be sustained by mere conclusory statements"). Accordingly, we reverse the Examiner's rejection of claims 17, 18, and 25 under 35 U.S.C. § 103(a) as obvious over Hausdorf. Rejection 3 Appellant argues claims 21 and 22 as a group. We select claim 21 as representative, and claim 22 stands or falls with claim 21. 3 7 C.F .R. § 41.37(c)(l)(iv). Claim 21 depends from claim 15 and adds the limitation: "wherein the solution or dispersion of the precondensate comprises at least one curing agent." App. Br. 20 (Claims App'x). The Examiner finds that the combination of Hausdorf and Hu suggests all of claim 21 's limitations and would have rendered claim 21 obvious. Final Act. 5, 6. Appellants argue that the Examiner's rejection of claim 21 should be reversed for the same reasons and deficiencies in Hausdorf presented above with respect to claim 15 and because "Hu does not remedy the deficiencies in Hausdorf discussed above." App. Br. 16, 17. 7 Appeal2015-002854 Application 12/524, 184 Accordingly, for the same reasons provided by the Examiner and discussed above for affirming the Examiner's rejection of claim 15 above, i.e., Rejection 1, we affirm the Examiner's rejection of claims 21 and 22 under 35 U.S.C. § 103(a) as obvious over the combination of Hausdorf and Hu. Rejection 4 Claim 20 depends from claim 15 and adds the following limitation: "wherein the substrate is paper or nonwoven comprising cellulose fibers." App Br. 19 (Claim App'x). The Examiner finds that the combination of Hausdorf and Smith suggests all of claim 20's limitations and would have rendered claim 20 obvious. Final Act. 6. Appellants argue that "the Examiner has not adequately set forth evidence to support a primafacie case of obviousness." App. Br. 17. In particular, Appellants argue that the Examiner's rejection should be reversed for the same reasons and deficiencies in Hausdorf presented above with respect to claim 15 and because "Smith does not remedy the deficiencies in Hausdorf discussed above." Id. Accordingly, for the same reasons provided by the Examiner and discussed above for affirming the Examiner's rejection of claim 15 above, i.e., Rejection 1, we affirm the Examiner's rejection of claim 20 under 35 U.S.C. § 103(a) as obvious over the combination of Hausdorf and Smith. DECISION/ORDER The Examiner's rejections of claims 15, 16, 19, 23, 24, 26-28, 30, and 32 under 35 U.S.C. § 102(b) as being anticipated by Hausdorfis affirmed. 8 Appeal2015-002854 Application 12/524, 184 The Examiner's rejection of claims 17, 18, and 25 under 35 U.S.C. § 103(a) as being unpatentable over Hausdorf is reversed. The Examiner's rejection of claims 21 and 22 under 35 U.S.C. § 103(a) as being unpatentable over Hausdorf in view of Hu is affirmed. The Examiner's rejection of claim 20 35 U.S.C. § 103(a) as being unpatentable over Hausdorf in view of Smith is affirmed. It is ordered that the Examiner's decision is affirmed-in-part. 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-IN-PART 9 Copy with citationCopy as parenthetical citation