11247755 (B.P.A.I. Jul. 30, 2009)

Ex Parte Przybylinski et al

Board of Patent Appeals and InterferencesJul 30, 2009

11247755 (B.P.A.I. Jul. 30, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte JOHN L. PRZYBYLINSKI, GORDON T. RIVERS, and THOMAS H. LOPEZ ____________ Appeal 2008-006129 Application 11/247,755 Technology Center 1700 ____________ Decided:1 July 30, 2009 ____________ Before BEVERLY A. FRANKLIN, KAREN M. HASTINGS, and MICHAEL P. COLAIANNI, Administrative Patent Judges. COLAIANNI, Administrative Patent Judge. DECISION ON APPEAL 1 The two-month time period for filing an appeal or commencing a civil action, as recited in 37 C.F.R. § 1.304, begins to run from the Decided Date shown on this page of the decision. The time period does not run from the Mail Date (paper delivery) or Notification Date (electronic delivery). Appeal 2008-006129 Application 11/247,755 2 This is a decision on an appeal under 35 U.S.C. § 134 from the Examiner’s final rejection of claims 1 through 22, which are all of the claims pending in the above-identified application.2 We have jurisdiction pursuant to 35 U.S.C. § 6. We AFFIRM. STATEMENT OF THE CASE The subject matter on appeal is directed to a composition and its method of using. (Claims 1, 7, 16, and 22). 2 Appellants' statement in the STATUS OF AMENDMENTS AFTER FINAL section of the Appeal Brief inadvertently indicates that "the requested amendments have been entered." (App. Br. 3). However, as is apparent from the record, the Examiner entered Appellants' amendment dated July 2, 2007, but did not enter Appellants' amendment dated June 18, 2007. (See amendment dated July 2, 2007, entered by the Examiner on July 12, 2007, and amendment dated June 18, 2007, denied entry by the Examiner on June 25, 2007). We note that the claims recited in the CLAIMS ON APPEAL section of the Appeal Brief correctly reflect the current claims on appeal. Appeal 2008-006129 Application 11/247,755 3 Claim 1 is illustrative: Appellants appeal the following rejections of the Examiner3: 1) Claims 1-22 under 35 U.S.C. § 103(a) over Quinlan (US 4,080,375, published Mar. 21, 1978); and 2) Claims 1-22 under 35 U.S.C. § 103(a) over Dhawan (US 4,931,189, published Jun. 5, 1990). With respect to rejections (1) and (2), Appellants argue the claims in each rejection as a group. Accordingly, we address Appellants’ arguments 3 The Examiner has withdrawn the § 112, first and second paragraph, rejections set forth in the Final Office Action mailed April 18, 2007. (See Ans. 2-13). Appeal 2008-006129 Application 11/247,755 4 regarding each rejection with respect to claim 1 only. See 37 C.F.R. § 41.37(c)(1)(vii)(2009). With respect to rejection (2), Appellants provide no additional argument for this rejection. (App. Br. 10). Instead, Appellants refer to the arguments they made for rejection (1). (App. Br. 10). Thus, our decision regarding the rejection of claim 1 in rejection (2) stands or falls with our decision regarding the rejection of claim 1 in rejection (1). With respect to rejection (1), Appellants do not dispute the Examiner's findings regarding Quinlan. (Compare Ans. 7-9 with App. Br. 7-11 and Reply Br. 2-4). Nor do Appellants dispute the Examiner's reason for modifying Quinlan to arrive at the claimed invention. Id. Instead, Appellants allege that all of the figures disclosed in the Specification show "surprising" (i.e., unexpected) results. (Reply Br. 4). Specifically, Appellants allege4 that Figure 2 shows the "claimed compound provides, at 2 mg/l P the same scale protection as 3.2 mg/l P of the compound disclosed in Quinlan." (App. Br. 9 and Reply Br.5 3-4)(emphasis omitted). Appellants allege that "such a small change in the structure could produce such a large performance change is surprising." (App. Br. 9). ISSUE Does Appellants' evidence, when evaluated against the facts on which the Examiner's prima facie case of obviousness is based, weigh in favor of non- obviousness? We decide this issue in the negative. 4 We note Appellants' reference to "example 2" in the first full paragraph of page 9 of the Appeal Brief is harmless error since it is clear that this should read "Figure 2." See Reply Br. 3-4. 5 Since all of the pages of the Reply Brief are not numbered, we number, consecutively, the pages of the Reply Brief starting with 1 at the page entitled "REPLY BRIEF FOR APPELLANTS." Appeal 2008-006129 Application 11/247,755 5 RELEVANT FINDINGS OF FACT (FF) 1. Appellants do not dispute the Examiner's findings regarding Quinlan. (Compare Ans. 7-9 with App. Br. 7-11 and Reply Br. 2-4). In this regard, Appellants do not dispute the Examiner's finding that Quinlan teaches the claimed compound except for a branched alkylene group (i.e., CH2CH(CH3)) in the place of the claimed trimethylene group (i.e., (CH2)3). (Compare Ans. 7-9 with App. Br. 7-11 and Reply Br. 2- 4). Nor do Appellants dispute the Examiner's reason for modifying Quinlan to arrive at the claimed invention. Id. 2. The Specification, however, discloses that comparative example 1A (i.e., Comp 1A) is a mixture of two different amine compounds reacted to form an aminomethylene phosphonate mixture. (Spec. 10). PRINCIPLES OF LAW “[W]here the prior art gives reason or motivation to make the claimed [invention] . . . the burden (and opportunity) then falls on an applicant to rebut that prima facie case. Such rebuttal or argument can consist of . . . [any] argument or presentation of evidence that is pertinent.” In re Dillon, 919 F.2d 688, 692-93 (Fed. Cir. 1990)(en banc)(emphasis omitted). A Rule 132 affidavit, to be effective, must compare the claimed subject matter with the closest prior art. In re Burckel, 592 F.2d 1175, 1179 (CCPA 1979). Appeal 2008-006129 Application 11/247,755 6 ANALYSES AND CONCLUSIONS Having conceded that the Examiner has established a prima facie case of obviousness (FF 1), Appellants seek to rebut this prima facie case of obviousness by alleging "surprising" (i.e., unexpected) results. (Reply Br. 4). Specifically, Appellants allege that Figure 2 of their disclosure illustrates that "the claimed compound provides, at 2 mg/l P the same scale protection as 3.2 mg/l P of the compound disclosed in Quinlan." (App. Br. 9 and Reply Br. 4)(emphasis omitted). In other words, Appellants allege that Quinlan is the closest prior art and that comparative example "Comp 1A" corresponds to Quinlan's compound. In that regard, the Specification discloses that comparative example 1A (i.e., Comp 1A) is a mixture of two different amine compounds reacted to form an aminomethylene phosphonate mixture. (FF 2). Appellants, however, have failed to establish that this aminomethylene phosphonate mixture corresponds to Quinlan's compound having a branched alkylene group. Since Figure 2 merely illustrates Appellants’ claimed composition and its comparative examples, none of which have been persuasively shown to correspond to Quinlan's composition, we determine that Appellants' evidence, when evaluated against the facts on which the Examiner's prima facie case of obviousness is based, weighs most heavily in favor of obviousness of the subject matter defined by claim 1 within the meaning of 35 U.S.C. § 103. ORDER In summary, all of the rejections made by the Examiner are sustained. Appeal 2008-006129 Application 11/247,755 7 Accordingly, the Examiner's decision is affirmed. TIME PERIOD 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)(iv)(2009). AFFIRMED cam MADAN & SRIRAM, P.C. 2603 AUGUSTA DRIVE SUITE 700 HOUSTON TX 77057-5662