Ex Parte Rondon et alDownload PDFPatent Trial and Appeal BoardAug 11, 201612970208 (P.T.A.B. Aug. 11, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/970,208 12/16/2010 23517 7590 08/15/2016 MORGAN, LEWIS & BOCKIUS LLP (BO) 1111 PENNSYLVANIA A VENUE, N.W. WASHINGTON, DC 20004 FIRST NAMED INVENTOR Sonia RONDON 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. PTK-25617304322001 5680 EXAMINER ROBINSON, CHANCEITY N ART UNIT PAPER NUMBER 1722 NOTIFICATION DATE DELIVERY MODE 08/15/2016 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): kcatalano@morganlewis.com patents@morganlewis.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte SONIA RONDON 1 and Kevin Ray Appeal2014-008513 Application 12/970,208 Technology Center 1700 Before CHUNG K. PAK, MARK NAGUMO, and A VEL YN M. ROSS, Administrative Patent Judges. NAGUMO, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Sonia Rondon and Kevin Ray ("Rondon") timely request rehearing2 under 37 C.F.R. § 41.41 of our Decision, entered 31May2016 ("Op."), 1 The real party in interest is listed as Presstek, Inc. (Appeal Brief, filed 28 February 2014 ("Br."), 2.) 2 Request for Rehearing, filed 1 July 2016 ("Request"). Appeal2014-008513 Application 12/970,208 affirming the rejections of claims 1-11 3 for obviousness over a patent issued to Fujiyoshi.4 First, Rondon appears to urge that we questioned, erroneously, the computations of the molar ratio of Si-H bonds in the cross-linking agent to vinyl groups in the polydialkylsiloxane reported by declarant Dr. Kevin Ray as being exemplified in the examples of Fujiyoshi. Rondon concludes that we "as a result erroneously determined that Fujiyoshi teaches an embodiment within the scope of claim 1." (Request 2, 11. 3--4.) Rondon proceeds to provide evidence---copies of pages from a Gelest website providing chemical compositional information regarding the commercial silane product HMS501 used in the working Examples of Fujiyoshi-that, in Rondon's view, support Dr. Ray's Declaration. (Id. at 3; and attachment to the Request.) To be clear: we did not determine that Fujiyoshi provides any examples within the scope of appealed claim 1. But we did hold that, with the exception of claim 12, Rondon had failed to show error in the Examiner's determination that the claimed layered recording media would have been obvious in view of the teachings of Fujiyoshi. We are not persuaded that we misapprehended or overlooked any of the points raised by Rondon in the Request. As we found (Op. 7, 1st full para.), and as Rondon admits (Request 2, 1st full para.), the Ray Declaration does not include the technical data for the HMS-501 silane product. 3 Rondon does not criticize the reversal of the rejection of claim 12. 4 Kunitaka Fujiyoshi et al., Directly imageable waterless planographic printing plate precursor, and directly imageable waterless planographic printing plate, U.S. Patent No. 6,344,306 Bl (2002). 2 Appeal2014-008513 Application 12/970,208 We cannot have overlooked or misapprehended evidence not presented to us. Moreover, the Regulations governing appeals provide that "Arguments not raised, and Evidence not previously relied upon, pursuant to§§ 41.37 [Brie:f5], 41.41 [Reply brief'], or 41.4 7 [Oral hearing] are not permitted in the request for rehearing except as permitted by paragraphs (a)(2) [recent relevant decision of either the Board or a Federal Court] through (a)(4) [designated or improperly non-designated new grounds of rejection] of this section." 37 C.F.R. § 41.52(a)(l) (2015). In any event, the ratio (moles HMS501)/(moles DV-PDMS) = 0.00244/0.00176 = 1:1.4 demonstrated in the Request, while in some contexts is reasonably characterized as "approximately 1: 1 as stated in Dr. Ray's declaration" (Request 3, 11. 12-13), is in the present context much closer to 1.5, the minimum ratio recommended by Fujiyoshi (Fujiyoshi col. 13, 11. 25-28; Op. 7; last para.). Thus; Fujiyoshi's Examples are not so different from the range preferred by Fujiyoshi as Dr. Ray appears to imply. On the present record, we are not persuaded that Fujiyoshi's Examples would have been regarded by those skilled in the art as discouraging the use of the preferred range of 1.5 to 30 of the Si-H:vinyl molar ratio. In particular, we are not persuaded that persons of ordinary skill in the art would have disregarded Fujiyoshi's express teachings that "[a] more preferable range is 10 to 20" 5 Note especially: "A brief shall not include any new or non-admitted amendment, or any new or non-admitted affidavit or other Evidence." 37 C.F.R. § 41.37(c)(2) (emphasis added). 6 Note especially: "A reply brief shall not include any new or non-admitted amendment, or any new or non-admitted affidavit or other Evidence." 37 C.F.R. § 41.41(b)(2) (emphasis added). 3 Appeal2014-008513 Application 12/970,208 (Fujiyoshi, col. 13, 11. 26-27; Op. 7, last para.) simply because the most preferred range was not exemplified in working examples. Rondon renews and somewhat elaborates its arguments that Fujiyoshi would not have suggested the "linked ranges" of Si-H:vinyl groups and the molecular weight ranges. (Request 4--5.) However, the more preferred range of 10 to 20 taught by Fujiyoshi is almost entirely within the range of ratios of about 11: 1 to about 25: 1 recited for polydialkylsiloxanes having a molecular weight range of 30,000 to 75,000, and is squarely in the middle of the range of 5: 1 to 27: 1 recited for vinyl-functional polydialkylsiloxanes in the molecular weight range of 110,000 to 130,000 recited in claim 1. As we found in our Opinion, "the range prefered [sic] by Fujiyoshi of the Si-H:C=C ratio of 10 to 20 applies to both ranges of silicone molecular weights recited in claim 1." (Op. 9, 11. 2--4.) We are not persuaded of harmful error in the findings of fact or conclusions of law set out in our Opinion. Accordingly, while we have considered the Request, we deny the relief sought. ORDER It is ORDERED that the Request for Rehearing is denied. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). DENIED 4 Copy with citationCopy as parenthetical citation