Ex Parte Reihs

Board of Patent Appeals and Interferences

Jan 26, 2009

10204661 (B.P.A.I. Jan. 26, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte KARSTEN REIHS
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Appeal 2008-4446
Application 10/204,661
Technology Center 1700
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Decided: January 26, 2009
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Before BRADLEY R. GARRIS, JEFFREY T. SMITH, and
KAREN M. HASTINGS, Administrative Patent Judges.

HASTINGS, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from a final rejection of
claims 1-7, 9-12, 17-36, and 41-43. We have jurisdiction under 35 U.S.C. §
6(b).
We REVERSE.
Appeal 2008-4446
Application 10/204,661

Appellant’s invention is directed to a material (e.g. car windows)
having a long-term stable water-repellent or oil-repellent surface (Spec. 1:5-
6 and 16-19). The durability of prior art films was “restricted to a few
months under normal use” (Spec. 2:12-15). The goal of Appellant’s
invention is to provide a surface which is stable for many years (Spec. 2:17-
19; Spec. 20:1-2).
Representative claim 1 reads as follows:
1. Material having a long-term stable water-repellent or
oil-repellent surface
made up at least of a substrate (1) with a reservoir
coating (2) arranged thereon and containing a freely movable
repellent agent,
a covering coating (3) which is arranged thereover and is
provided with pores (4) or which is permeable to the repellent
agent,
and an outer coating (5) which is made up of the repellent
agent,
in which context a water-repellent surface exhibits a
boundary angle in relation to water of greater than 900 and an
oil-repellent surface exhibits a boundary angle in relation to n-
decane of greater than 900.

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Fischel-Ghodsain US 5,455,043 Oct. 3, 1995
Calton US 6,180,127 Jan. 30, 2001
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Application 10/204,661

The Examiner rejected the claims as follows:
(i) claims 1-7, 9-12, 17-36, and 42-431 under 35 U.S.C. § 112, second
paragraph as being indefinite; and
(ii) claims 1-7, 9-11, 17-36, and 41-43 under 35 U.S.C. § 103(a) as
unpatentable over Fischel-Ghodsian in view of Calton.

ISSUES
Has the Examiner reversibly erred in finding that claims are indefinite
under 35 U.S.C. § 112, second paragraph, on the basis of the claim language
“freely moveable” in claim 1 and “freely moving” in claim 42?
Has the Examiner erred in determining that the claims are obvious
over Fischel-Ghodsian in view of Calton; specifically, has the Examiner
erred in determining that it would have been obvious to have used the “slow
release” insect repellent composition of Calton in the “controlled release”
device of Fischel-Ghodsian, and, if not, has the Examiner erred in
establishing that such a device would have the claimed water-repellent or
oil-repellent surface?

1The Examiner states that claim 41 is also rejected under this ground (Ans.
2, 3). However, claim 41 was not included in the listing of claims for the
§ 112, second paragraph, rejection in the final rejection of 10/13/2006. Nor
was claim 41 included in the immediately preceding non-final § 112, second
paragraph, rejection of 2/9/2006. The procedures for making a new ground
of rejection in an Examiner’s Answer were not followed. Thus, a rejection
of claim 41 under 35 U.S.C. § 112, second paragraph, is not before us on
appeal. Claim 41 was objected to in the Office actions of 2/9/2006 and
10/13/2006. As provided in 35 U.S.C. § 134, we consider claim rejections,
not objections. Instead, such objections are petitionable to the Director,
under 37 C.F.R. § 1.181.
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Application 10/204,661

We answer all of these questions in the affirmative.

The 35 U.S.C. § 112, 2nd paragraph, Rejection
PRINCIPLES OF LAW
“The legal standard for definiteness is whether a claim reasonably
apprises those of skill in the art of its scope.” In re Warmerdam, 33 F.3d
1354, 1361 (Fed. Cir. 1994); see also Miles Lab., Inc. v. Shandon, Inc., 997
F.2d 870, 875 (Fed. Cir. 1993) (If the claims read in light of the specification
reasonably apprise those skilled in the art of the scope of the invention, §
112 demands no more). “The degree of precision necessary for adequate
claims is a function of the nature of the subject matter.” Id.
ANALYSIS and FACTUAL FINDINGS
The Examiner finds that it is not clear what “freely movable” means
in claim 1, nor what “freely moving” means in claim 42, in describing the
“repellent agent” (Ans. 3-4).
The initial burden rests with the Examiner of presenting evidence or
reasoning why persons of ordinary skill in the art would not understand the
metes and bounds of the claims. We determine that the Examiner has not
met this initial burden.
The phrase “freely movable” in the context of the present invention is
discussed throughout the Appellant’s Specification (e.g., Spec. 2: ll. 20-30;
Spec. 13, ll. 26-30). One of ordinary skill in the art would understand that
“freely movable” means the repellent agent flows through the structure of
the reservoir layer and moves through the permeable or porous covering
layer to appear on the surface of the covering layer as a surface of repellant
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Application 10/204,661

material which is replenished as it is worn off of the outer surface. (id., see
also, e.g., Spec. 19:8-26; Br. 11).
The Examiner argues that the “[S]pecification does not clearly define
and limit” diffusion of the repellent agent as the “only mechanism through
which the repellent freely moves from the reservoir to the [outer] surface”
(Ans. 3, 4; emphasis provided). This however does not establish that the
claim in its present form would have failed to set forth the claimed
invention with a reasonable degree of precision and particularity to one of
ordinary skill in the art.
Hence, the Examiner has not established a prima facie case of
indefiniteness of the invention of claims 1 and 42.
The 35 U.S.C. § 103 Rejection
PRINCIPLES OF LAW
The Examiner has the initial burden of establishing a prima facie case
of obviousness. See In re Piasecki, 745 F.2d 1468, 1472 (Fed. Cir. 1984).
For a prima facie case of obviousness to be established there must be
“an apparent reason to combine the known elements in the fashion
claimed.” KSR Int'l. Co. v. Teleflex Inc., 127 S. Ct. 1727, 1740-41 (2007).
In making an obviousness determination one “can take account of the
inferences and creative steps that a person of ordinary skill in the art would
employ.” KSR, 127 S. Ct. at 1741.
A patent applicant is free to recite features of an apparatus either
structurally or functionally, i.e., by what it does. See, e.g., In re Schreiber,
128 F.3d 1473, 1477 (Fed. Cir. 1997). Where an apparatus is claimed
functionally rather than structurally and the PTO has reason to believe that a
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functional limitation is an inherent characteristic of the prior art, it possesses
the authority to require the applicant to prove that the subject matter shown
to be in the prior art does not possess the characteristic. Schreiber, 128 F.3d
at 1478.
In relying upon a theory of inherency, the Examiner has the initial
burden to provide a basis in fact and/or technical reasoning to reasonably
support a finding that the alleged inherent characteristic necessarily flows
from the teachings of the applied prior art. Ex parte Levy,17 USPQ2d 1461,
1463-64 (BPAI 1990).
Inherent anticipation of a claim feature cannot be based on
possibilities or probabilities; the mere fact that a certain thing may result
from a given set of circumstances is not sufficient. In re Oelrich, 666 F.2d
578, 581 (CCPA 1981); see also MEHL/Biophile Int’l Corp. v. Milgraum,
192 F.3d 1362, 1365 (Fed. Cir. 1999).
ANALYSIS and FACTUAL FINDINGS
We need only discuss independent claims 1 and 41.
Appellant contends that the combination of Fischel-Ghodsian and
Calton would not result in the properties and functional characteristics
claimed, i.e. the “long-term stable water-repellent or oil-repellent surface” as
recited in each independent claims 1 and 41 (e.g., Br. 25-26). Appellant also
contends that there is nothing in the combination proposed by the Examiner
that discloses or suggests a structure that will slowly disperse an agent to a
surface over a number of years (Br. 29).
The Examiner indicates that the length of long-term stability of
the water or oil repellent surface is not “positively claimed” (Ans. 11).
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The Examiner also alleges that the proposed combination meets the
claimed structure and that therefore the resulting structure will
inherently possess the claimed properties (e.g., of having an oil or
water repellant surface) “or Appellant’s claim is incomplete” (e.g.,
Ans. 6, 12).
The Examiner’s position is not well taken. The dispositive issue is
whether, as noted above, the Examiner has met the initial burden of
establishing that one would have been motivated to use the slow release
formulation of Calton as the insect repellent in Fischel-Ghodsian, and, if so,
has the Examiner met the initial burden of establishing that such a structure
would have the claimed water-repellent or oil-repellent surface.
It is undisputed that the polymer gel reservoir of Fischel-Ghodsian
may contain an insect repellent. However, Fischel-Ghodsian teaches the
diffusion rate limiting membrane 44 controls the release rate of the insect
repellent from the reservoir 42 into the surrounding environment as a vapor
(e.g., col. 6, ll. 15-20; col. 7, ll. 28- 40; col. 12, Example 2).
Calton describes an insect repellant formulation applied to the skin
containing an alkylated polyvinylpyrrolidone as a “slow release agent”, in
addition to a volatile insect repellant, which provides an enhanced resistance
to removal by water, salt water or sweat (col. 2, ll. 3-45).
The Examiner concluded that “it would have been obvious . . . to
employ the insect repellant formulation as described by Calton [in Fischel-
Goldstein] motivated by the desire to provide the slow release properties in
addition to low skin penetration and high resistance to removal by water.’
(Ans. 6).
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However, the deficiency of this reasoning is that Fischel-Ghodsian
already provides for controlling the release of the insect repellent via the
diffusion rate limiting membrane. There is no reason given by the Examiner
why an artisan would have provided the alkylated polyvinylpyrrolidone
component of Calton (that is, the slow release agent) into the insect repellant
polymer gel reservoir of Fischel-Ghodsian. In addition, since Fischel-
Ghodsian’s device is an alternative to applying insect repellant directly to
the skin (e.g., col. 3, ll. 20-25; col. 13, ll. 3-9), there is no apparent reason to
use a component therein which is designed for low skin penetration and to
resist removal from the skin (i.e., the alkylated polyvinylpyrrolidone).
Further, even assuming arguendo that one would have combined these
references as proposed by the Examiner, the Examiner has not directed us to
any credible evidence or persuasive technical reasoning to substantiate the
assertion that the combination would have the properties required by
independent claims 1 and 41 (see, e.g., App. Br. 24-29). It is not apparent
that the alkylated polyvinylpyrrolidone insect repellent composition would
have formed a water or oil repellent surface as required by the claims. The
Examiner has not established with any evidence or persuasive technical
reasoning that the alkylated polyvinylpyrrolidone component of Calton
would have been able to diffuse into or onto the decorative layer 50 of
Fischel-Ghodsian in such a way so as to form a water or oil repellent surface
as required by claims 1 and 41.
Thus, we agree with Appellant that the structure of the combined prior
art does not necessarily have the properties recited in claims 1 and 41. (App.
Br. 7-12).
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In our view the Examiner is, at best, improperly relying on the mere
possibility that under certain conditions, the apparatus of Fischel-Ghodsian
as modified by Calton would have the claimed property. Oelrich, 666 F.2d
at 581.
Accordingly, we are constrained by these circumstances to reverse the
Examiner’s rejection under 35 U.S.C. § 103 based on Fischel-Ghodsian and
Calton.
CONCLUSION/ORDER
The decision of the Examiner rejecting claims 1-7, 9-12, 17-36, and
42-43 under 35 U.S.C. § 112, second paragraph, is reversed.
The decision of the Examiner rejecting claims 1-7, 9-11, 17-36, and
41-43 under 35 U.S.C. § 103 (a) as being unpatentable over Fischel-
Ghodsian and Calton is reversed.
The Examiner’s decision to reject the appealed claims is reversed.

REVERSED

PL Initial:
sld

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Appeal 2008-4446
Application 10/204,661

PERMAN & GREEN
425 POST ROAD
FAIRFIELD, CT 06824

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