Ex Parte Portet et al

Patent Trial and Appeal Board

Jun 13, 2016

13996634 (P.T.A.B. Jun. 13, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/996,634 06/21/2013 David Portet
22428 7590 06/15/2016
Foley & Lardner LLP
3000 K STREET N.W.
SUITE 600
WASHINGTON, DC 20007-5109
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.
065691-2500 6516
EXAMINER
LEONG, NATHAN T
ART UNIT PAPER NUMBER
1715
NOTIFICATION DATE DELIVERY MODE
06/15/2016 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):
ipdocketing@foley.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID PORTET and GREGORY LECOLLINET
Appeal 2016-003 7 65
Application 13/996,634
Technology Center 1700
Before JAMES C. HOUSEL, CHRISTOPHER C. KENNEDY, and
JENNIFER R. GUPTA, Administrative Patent Judges.
GUPTA, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
decision2 finally rejecting claims 1, 3, 5, 9-15, and 17-28. An oral hearing
was held on June 7, 2016. 3 We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellants identify the real party in interest as Rolex SA. Appeal Brief
filed September 8, 2015 ("App. Br."), 2.
2 Final Office Action mailed April 10, 2015 ("Final Act.").
3 The record will include a transcript of the oral hearing when it becomes
available.
Appeal2016-003765
Application 13/996,634
The claims are directed to methods for coating a surface of a watch or
jewellery component with a synergistic composition comprising at least one
thiol compound and at least one bisphosphonic compound or a salt thereof.
Claim 1, reproduced below, is illustrative of the claims on appeal.
1. A method comprising coating a surface of a watch or
jewellery component with a synergistic composition comprising
at least one thiol compound and at least one bisphosphonic
compound or a salt thereof to form a coated surface,
wherein said thiol compound is a perfluorinated thiol of the
following formula I:
wherein: n is an integer from 1 to 20, m is an integer from 1 to
10 and xis 1;
wherein said bisphosphonic compound is a perfluorinated
bisphosphonic of the following formula II:
--· CF3
H,,PO c H l
..... 3\ ...-..-~, L.-N"'-rr .. CF -· CF '""" . -CF \-'"'' >-./fn . ~·o/ 2 ""T-··cF~1 3
HO"'......-\ . l : 2Jx
H
2
P0
3
O ... m'" .
wherein: n is an integer from 1 to 20, m is an integer from 1 to
10 and xis 1; and
wherein the lipophobicity of the coated surface is increased.
App. Br. 20 (Claims Appendix).
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Appeal2016-003765
Application 13/996,634
REJECTIONS
The following rejections are before us for review:
1. Claims 1, 3, 5, 9--15, 18-25, and 27 4 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Portet et al. 5 (WO 2008/017721 A2,
published Feb. 14, 2008) (hereinafter "Portet") in view of Zu et al.
(WO 2010/068535 Al, published June 17, 2010) (hereinafter
"Zu"); and
2. Claims 17, 26, and 28 6 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Portet in view of Zu, with evidence from Tosatti
et al. (US 2010/0068553 Al, published Mar. 18, 2010).
ANALYSIS
Rejection 1
The Appellants argue for patentability of claims 1, 3, 5, 9-15, 18-25,
and 27, subject to the first ground of rejection, as a group. Appellants have
not presented any additional substantive arguments for patentability of
4 We note that the Examiner omitted claims 23-25 and 27 from the caption
of the rejection, but included these claims in the body of the rejection. See
Final Act. 2-7. We treat the omission as an inadvertent and harmless error
for purposes of the present appeal and we refer to the rejection herein as
including these claims.
5 We refer to the machine translation of record of Portet as cited by the
Examiner and Appellants. See, e.g., Ans. 3-7; see also App. Br. 7-8.
6 We note that the Examiner omitted claims 26 and 28 from the caption of
the rejection, but included these claims in the body of the rejection. See
Final Act. 7. Moreover, we note Appellants recognize that claims 26 and 28
fall under this rejection. App. Br. 5---6. Thus, we treat the omission as an
inadvertent and harmless error for purposes of the present appeal and we
refer to the rejection herein as including these claims.
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Appeal2016-003765
Application 13/996,634
independent claim 12 or dependent claims 25 and 27 (see App. Br. 5-17).
Thus, we select claim 1 as representative of this group, and claims 3, 5, 9-
15, 18-25, and 27, will stand or fall with claim 1.
Appellants do not dispute that Portet discloses a perfluorinated
bisphosphonic compound of formula (II), as recited in claim 1. Rather,
Appellants argue that "[t]he Examiner erred in not specifying any disclosure
in Portet that would lead a skilled artisan to the thiol-PFPE of formula I of
the [present] claims." App. Br. 7. We do not find this argument to be
persuasive. Portet discloses covering metal surfaces with self-assembled
monolayers (SAMs) ofbisphosphonic compounds for the purpose of
lubrication of metal surfaces (Portet 2, 4), and specifically discloses a
perfluorinated bisophosphonic compound within the scope of formula II in
claim 1 (Example 7 (Molecule B)). Similarly, Zu discloses forming SAMs
of a perfluoropolyether organosulfur compound on metal surfaces (e.g.,
gold) for lubrication (1 :21-27; 4:8-12), and specifically discloses
perfluoropolyether thiol compound within the scope of formula I in claim 1
(9: 17-26; 10: 1-9). "It is prima facie obvious to combine two compositions
each of which is taught by the prior art to be useful for the same purpose, in
order to form a third composition which is to be used for the very same
purpose." In re Kerkhoven, 626 F.2d 846, 850 (CCPA 1980). "The
combination of familiar elements according to known methods is likely to be
obvious when it does no more than yield predictable results." KSR Int'! Co.
v. Teleflex Inc., 550 U.S. 398, 416 (2007).
Next, Appellants argue that the Examiner failed to give proper weight
to the evidence of unexpected results submitted in the Declaration under
37 C.F.R. § 1.132 executed by co-inventor Dr. David Portet (hereinafter
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Appeal2016-003765
Application I3/996,634
"Portet Declaration"). See App. Br. 14. We are not persuaded by this
argument. The Examiner acknowledges that the combinations of
biophosphonic acid and thiols tested perform better than the individual
components alone (Ans. I 0), but finds the compounds tested are not
commensurate in scope with the scope of claims I and I2 (Ans. 9).
The Portet Declaration describes testing the contact angle of six
mixtures containing combinations of two different thiol compounds, I.3
(n=6, m=5), and I.6 (n=IO, m=5), and three different bisphosphonic
compounds, II. I (n=4, m-4), II.2 (n=4, m=5), and II.5 (n=8, m=5) as
compared to the contact angle of the thiol and bisphosphonic compounds
contained in those mixtures individually (Portet Declaration 6-7 (8.3-8.4);
Spec. Tables 8 and I 0). The Portet Declaration also describes testing the
wash resistance of two mixtures, each containing a bisphosphonic compound
and thiol compound (mixture I (II. I +I.3) and mixture 4 (II.2+I.3)), as
compared to the bisphosphonic and thiol compounds contained in each
mixture individually (Portet Declaration 5 (8.2)). The Portet Declaration
contends that the data presented demonstrates that the combination of
perfluorinated thiol and perfluorinated bisphosphonic compounds results in
an unexpected synergistic effect in both epilame effect (as evidenced by the
contact angle measurements) and washing resistance. See Portet
Declaration 4--7.
We have considered the evidence as a whole and determine that it is
not commensurate in scope with independent claims I and I 2. The evidence
is limited to mixtures containing thiol compounds having n values of 6 and
I 0 and the same m value of 5 in combination with bisphosphonic
compounds having n values of 4 and 8 and m values of 4 and 5. In contrast,
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Appeal2016-003765
Application 13/996,634
the thiol compound of formula I and bisphosphonic compound of formula II
in independent claims 1 and 12 include compounds where n ranges from 1 to
20, and m ranges from 1 to 10. On this record, Appellants have not provided
sufficient evidence to support a conclusion that compositions containing
other compounds falling within claimed formulas I and II would be expected
to behave in the same manner as the tested compositions. See In re
Kollman, 595 F.2d 48, 55 (CCPA 1979) (multiple examples and data points
purportedly showing unexpected results did not provide an adequate basis to
determine that the great number of compositions contained in the claims
would behave the same way); In re Greenfield, 571F.2d1185, 1189 (CCPA
1978) ("Establishing that one (or a small number of) species gives
unexpected results is inadequate proof, for 'it is the view of this court that
objective evidence of non-obviousness must be commensurate in scope with
the claims which the evidence is offered to support."'). Further, the burden
is on Appellants, not the Examiner (see Reply Brief filed February 2, 2016
("Reply Br."), 2-3), to present evidence establishing that mixtures
containing the untested compounds falling within the claims would have the
same synergistic improvements as the mixtures containing the tested
compounds. See In re Kao, 639 F.3d 1057, 1068 (Fed. Cir. 2011) ("If an
applicant demonstrates that an embodiment has an unexpected result and
provides an adequate basis to support the conclusion that other embodiments
falling within the claim will behave in the same manner, this will generally
establish that the evidence is commensurate with the claims." (emphasis
added)).
Appellants argue that the Examiner erred in failing to consider the test
data showing improved washing resistance presented in the Portet
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Appeal2016-003765
Application 13/996,634
Declaration. Reply Br. 6. We do not find this argument to be persuasive.
As discussed above, the Examiner has considered the evidence and finds it
unpersuasive because the "data is [] not commensurate in scope with the
claimed range (for example, the variable 'n' is at a value of 4--10 for all
experiments, yet the claimed range is 1-20)." Ans. 9.
For the reasons above, we sustain the rejection.
Rejection 2
Claims 17 and 28 depend directly (claim 17) or indirectly (claim 28)
from claim 12. Claim 26 depends directly from claim 1. Appellants argue
that claims 17, 26, and 28 are not obvious over Portet in view of Zu, as
evidenced by Tosatti by virtue of their dependency on claims 1 and 12. See
App. Br. 17-18. This argument is not persuasive of error in the Examiner's
rejection because, for the reasons discussed above, we are not persuaded of
any deficiencies in the Examiner's rejection of claims 1 and 12.
Accordingly, we sustain this rejection.
Appellants argue for the first time in the Reply Brief that the
Examiner "erred in asserting that the contact angle is inherent from Portet's
disclosure," "erred in stating 'it would have been obvious to one of ordinary
skill in the art to have modified the contact angle as desired in order to
control the substrate to the desired wettability and lubrication,"' and "does
not explain what steps a skilled artisan could take to modify the contact
angle." Reply Br. 6. These arguments concerning contact angle are not
responsive to any argument raised in the Examiner's Answer and Appellants
have not provided a showing of good cause why we should consider them
now. Thus, we will not consider these arguments in the present appeal. See
37 C.F.R. § 41.41(b); see also Ex parte Borden, 93 USPQ2d 1473, 1474
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Appeal2016-003765
Application 13/996,634
(BPAI 2010) (informative decision) ("[T]he reply brief [is not] an
opportunity to make arguments that could have been made in the principal
brief on appeal to rebut the Examiner's rejections, but were not.").
DECISION
For the above reasons, we affirm the Examiner's rejections of
claims 1, 3, 5, 9--15, and 17-28.
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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