Ex Parte Schuster et al

Patent Trial and Appeal Board

Jun 30, 2016

13056701 (P.T.A.B. Jun. 30, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/056,701 0113112011
22045 7590 07/05/2016
BROOKS KUSHMAN P,C
1000 TOWN CENTER
TWENTY-SECOND FLOOR
SOUTHFIELD, MI 48075
FIRST NAMED INVENTOR
Johann Schuster
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.
WAS1099PUSA 6071
EXAMINER
JOHNSON, CHRISTINA ANN
ART UNIT PAPER NUMBER
1742
NOTIFICATION DATE DELIVERY MODE
07/05/2016 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):
docketing@brookskushman.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL
AND APPEAL BOARD
Ex parte JOHANN SCHUSTER, THOMAS FRESE, and
REINHARD ROTHENAICHER
Appeal2014--003201
Application 13/056, 701
Technology Center 1700
Before, BEYERL YA. FRANKLIN, MICHAEL P. COLAIANNI, and
N. WHITNEY WILSON, Administrative Patent Judges.
T"""'IT""ti. A. -... TTTT T-.. T ' 1 • • , , • T'lo , , T 1
t< KAl'\J~ll"l, Aamznzsrranve rarem Juage.
DECISION ON APPEAL
Appellants seek our review under 35 U.S.C. § 134 of the Examiner's
decision rejecting claims 10-28. We have jurisdiction over the appeal under
35 U.S.C. § 6(b).
Appeal2014-003201
Application 13/056,701
STATEMENT OF THE CASE
Claim 10 is illustrative of Appellants' subject matter on appeal and is
set forth below:
10. A process for producing moldings made of silicone
rubber, comprising molding an organosilicon composition in a
mold and curing the composition by crosslinking, removing a
crosslinked molded article from the mold, and conditioning
the molded article in a conditioning oven at a pressure of
from 10 to less than 150 hPa.
The Examiner relies on the following prior art references as evidence
of unpatentability:
Deering et al.,
(hereafter "Deering")
Nooren
Tsai et al.,
(hereafter "Tsai")
Mitsukuchi (as translated)
us 4,430,461
us 5,684, 125
US 6,290,892 B 1
JP 61-103931
KE-951 U Shin Etsu Silicones, retrieved at
Feb. 7, 1984
Nov. 4, 1997
Sept. 18, 2001
July 29, 1988
http://www. shinetsusilicones.comlcontentlke-951 u (retrieved on 2112/2013)
(hereafter "Shin Etsu")
VAROX® DBPH Specification, Vanderbilt Chemicals, LLC, 2009-08-13,
retrieved at http://www.rtvanderbilt.com/ documents/psdocs/71100.pdf
(retrieved on 2/12/2013) (hereafter "DBPH Specification")
The Examiner also relies upon certain dictionary definitions from respective
online dictionaries as identified on pages 8-11 of the Final Office Action.
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Application 13/056,701
THE REJECTIONS
1. Claims 22-23 and 26-28 are rejected under 35 U.S.C. § 112 (a) or
35 U.S.C. § 112 (pre-AIA), first paragraph, as failing to comply with the
written description requirement.
2. Claims 10, 12, 14, 16-17, and 22-23 are rejected under 35 U.S.C.
§ 102(b) as being anticipated by Mitsukuchi (as translated).
3. Claim 18 is rejected under 35 U.S.C. § 102(b) as being anticipated by
Mitsukuchi (as translated) as evidenced by Shin-Etsu and DBPH
Specification.
4. Claims 11, 13, 15 and 26-28 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Mitsukuchi (as translated).
5. Claims 19-21 are rejected as being unpatentable over iviitsukuchi( as
translated) as applied to claim 10 above, and further in view of Deering as
evidenced by certain dictionary definitions provided in the Merriam-Webster
Dictionary and Collins English Dictionary.
6. Claim 24 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Mitsukuchi (as translated) as applied to claim 10 above, and further in
view of Tsai.
7. Claim 25 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Mitsukuchi (as translated) in view of Deering as applied to claim19
above, and further in view ofNooren.
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Application 13/056,701
ANALYSIS
We select claims 10, 11, 19, 22, 24, 25, and 26 as representative of all
the claims on appeal, based upon Appellants' presented arguments. 37
C.F.R. § 41.37(c)(l)(iv) (2014).
Rejection 1
It is the Examiner's position that there is inadequate written
descriptive support for the subject matter in claims 22 and 23 because claim
22 recites that conditioning takes place at a temperature of "250°C or less",
whereas the original Specification only supports a conditioning temperature
range of from 20°C-350°C (seep. 3, lines 29-32 of original specification).
Final Act. 2-3. Appellants do not address this rejection of claims 22 and 23
in the Appeal Brief or in the Reply Brief.We therefore summarily affirm the
rejection of claims 22 and 23.
With regard to claims 26, 27, and 28, the Examiner states that these
claims require crosslinking of the crosslinked composition to be at
least 90% complete, at least 95% complete, and at least 97% complete,
respectively, prior to conditioning. The Examiner states that original
disclosure, however, does not support these limitations as the original
Specification for the reasons set forth on page 3 of the Final Office Action.
Appellants submit that claim 26, for example, requires crosslinking to
be at least 90% complete, which is supported by the preferable range of
crosslinking completion of 90-97%, and that claim 28, for example, requires
crosslinking to be at least 97% complete, which is also supported by the
same range. Appeal Br. 3. Appellants submit that the fact that conditioning
can increase the crosslinking to "up to 100%" (Spec. 3) does not conflict
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Application 13/056,701
with the claim language. Id. We add that claim 27 recites 95%. We agree
with Appellants that the claims are supported by the Specification. Page 3,
lines 20-23, of the Specification discloses:
The degree of crosslinking at the end of the crosslinking step is
preferably from 90 to 97%. The conditioning step of the invention can
then increase the degree of crosslinking up to 100%.
The above-quoted excerpt fully supports claims 26, 27, and 28 for the
reasons provided in the record by Appellants in both the Appeal Brief
(Appeal Br. 3) and Reply Brief (Reply Br. 2), and for the reasons stated
herein (which includes discussion of claim 27).
In view of the above, we affirm Rejection 1 with respect to claims 22
and 23, but reverse Rejection 1 with respect to claims 26, 27, and 28.
Rejection 2
Part of the issue for Rejection 2 is the proper claim
interpretation of claim 10 regarding the conditioning step. The
Examiner interprets claim 10 as not excluding conditioning steps
involving pressures outside the claimed pressure range because the
use of the word "comprising" allows for other steps in the claimed
process.
On the other hand, Appellants interpret the claim as requiring
operating pressures for a conditioning step to be from 10 to less than
150 hPa. Appeal Br. 6.
We agree with Appellants that the claim imposes a lower limit
of 10 hPA (as well as an upper limit of 150 hPa). The Specification
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Application 13/056,701
discloses a singular conditioning step, and not multiple conditioning
steps. 1 See, e.g., page 3 of the Specification. We thus agree with
Appellants that Mitsukuchi operates first at a pressure of 1.33 hP A
(lower than the claimed lower limit of 10 hPa), and then at 133 hPa,
and therefore Mitsukuchi does not anticipate the claim because claim
10 imposes a lower limit of 10 hP A. Mitsukuchi, p. 9 (English
translation).
With regard to the pnor art embodiment disclosed in
Mitsukuchi (set forth in the paragraph bridging pages 4 and 5 of the
English translation of Mitsukuchi), relied upon by the Examiner (Ans.
4--5), it is the Examiner's position that "under 133 hP A" anticipates
the claimed range of from 10 to less than 150 hP A, for the reasons
stated on pages 4--5 of the Answer.
Appellants argue that the prior art embodiment of Mitsukuchi
fails to anticipate because Mitsukuchi teaches that volatiles are not
substantially removed. Appeal Br. 4. Appellants also argue that
anticipation requires "strict identity" and that "below 100 mm Hg"
(below 133 hPa) is inspecific, and does not anticipate the claim range
of 10 hPa to less than 150 hPa. Appeal Br. 5. Appellants likens the
present facts to the case of Atofina v. Great Lakes Chem. Corp., 447
F.3d 991, 999 (Fed. Cir. 2006). Appeal Br. 5.
The Examiner makes an effort to contrast the present case with
Atofina, and likens the present case to Clear Value, Inc.
1 The Specification discloses operating pressures of less than 150 hPa (Spec.
4), and specifically from 10 to 150 hP A (Spec.3), and more particularly from
50 to 100 hPA (Spec.3).
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Application 13/056,701
v. Pearl River Polymers, Inc., 668 F.3d 1340, 1344-45 (Fed. Cir.
2012). Ans. 5. In so doing, the Examiner correctly points out that
Appellants' Specification discloses that the operating pressure can be
"less than 150 hP A" (Spec. 4 ), indicating that there is no criticality for
the claimed lower limit of 10 hPa. Notably, in the Reply Brief,
Appellants do not dispute this point made by the Examiner, and we
thus are not convinced of error in the Examiner's stated position.
In view of the above, we affirm Rejection 2.
Rejection 3
Appellants present similar arguments for Rejection 3 as
presented for Rejection 2 (Appeal Br. 6). We thus affirm Rejection 3
for the same reasons that we affirmed Rejection 2.
Rejection 4
Claims 11, 13, 15 and 26-28 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Mitsukuchi.
The Examiner relies upon the embodiment of Mitsukuchi
involving high vacuum treatment followed by low vacuum treatment.
Mitsukuchi, pp. 7-8. Final Act. 7. Appellants argue that Mitsukuchi
teaches that the low vacuum treatment aspect of this embodiment is
not effective unless it is preceded by a high vacuum treatment.
Appeal Br. 7. Appellants submit that therefore this is a teaching
away. Appellants state that they have surprisingly and unexpectedly
discovered that the use of high vacuum, as required by Mitsukuchi, is
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Application 13/056,701
not necessary to effectively remove volatiles according to their
invention. Appeal Br. 7.
In reply, the Examiner states, inter alia, that such does not amount to
a teaching away; rather, it is a teaching that a single pressure treatment is
inferior to a two-step treatment (use of a high vacuum treatment before a low
vacuum treatment). Ans. 6-7. We agree, and note that a known or obvious
device or method "does not become patentable simply because it has been
described as somewhat inferior to some other product [or method] for the
same use."). In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994).
In view of the above, we affirm the Rejection 4.
Rejection 5
Rejection 5 involves a rejection of claims 19-21 as being unpatentable
over Mitsukuchi (as translated) in view of Deering as evidenced by certain
dictionary definitions provided in the Merriam-Webster Dictionary and
Collins English Dictionary.
The Examiner's positon for this rejection is set forth on pages 8-11 of
the Final Office Action, which we do not repeat herein.
Appellants argue that Deering is non-analogous art, for the reasons
presented on pages 7-9 of the Appeal Brief, and on pages 3--4 of the Reply
Brief. Notably, on page 3 of the Reply Brief, Appellants state:
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Application 13/056,701
With respect to Deering, the Office states that Deering is analogous
because it is in the field of silicones, and because it has to do with
removing volatiles from silicone rubber. This is incorrect. Appellants'
invention is much narrower than the broad (very broad) field of
silicones. It is directed to thermal conditioning of crosslinked silicone
rubber. Merely because "silicones" are involved does not place
Deering in the same field of endeavor as Appellants.
Appellants then refer to In re Clay, 966 F.2d 656 (Fed. Cir. 1992), in
which the Court stated:
The PTO argues that Sydansk and Clay's inventions are part of a
common endeavor - "maximizing withdrawal of petroleum stored
in petroleum reservoirs." However, Sydansk cannot be considered
to be within Clay's field of endeavor merely because both relate to
the petroleum industry. Clay's field of endeavor is the storage of
refined liquid hydrocarbons. The field of endeavor of Sydansk's
invention, on the other hand, is the extraction of crude petroleum.
The Board clearly erred in considering Sydansk to be within the
same field of endeavor as Clay's.
Reply Br. 3.
Appellants then explain that Deering is not directed to removing
volatiles from silicone rubber, but is directed to removing volatiles from
"vulcanizable silicone rubber," i.e. liquid, uncrosslinked rubber precursors.
Reply Br. 3. Appellants submit that Deering does so by heating and agitating
the liquid reactants in a Banbury mixer, a large chest-type mixer with
rotating mixing blades and removing volatiles as the liquid continues to "tum
over." Appellants explain that silicone rubber is a crosslinked solid, and
cannot be liquefied nor agitated in a mixer. As such, Appellants submit that
the process of Deering is for removal of large amounts (5-12 weight percent)
of volatiles which arise during synthesis or compounding of the vulcanizable
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Application 13/056,701
components, not the relatively small amount of volatiles which are exuded
as a vulcanizable silicone rubber vulcanizes. Reply Br. 3. Appellants thus
submit that removal of volatiles from a non-crosslinked, agitated, liquid is
totally different from removal of volatiles from a crosslinked solid, and that
neither the problem nor the solution of Deering are in any way similar to
those of Appellants. Reply Br. 3. We are persuaded by Appellants stated
positon. On this record before us, the Examiner does not adequately
reconciled the differences pointed out by Appellants. The Examiner states
that the process of Deering is also applicable to processing smaller amounts
of volatiles (Ans. 9), but Appellants explain the error in this interpretation
for the reasons set forth on page 4 of the Reply Brief.
In view of the above, we reverse Rejection 5.
Rejection 6
Rejection 6 involves a rejection of claim 24 under 35 U.S.C.
§ 103(a) as being unpatentable over Mitsukuchi (as translated) in view
of Tsai.
Claim 24 recites that the organosilicon composition is an addition
curable organosilicon composition which cures by hydrosilylation. The
Examiner relies upon Tsai for teaching this subject matter. Final Act. 11-
12. Ans. 11-12. Appellants argue that Tsai is incompatible with
Mitsuskuchi for the reasons set forth on page 10 of the Appeal Brief. We
are not persuaded by such argument. The Examiner satisfactorily explains
that Tsai pertains to hydrosilylation-cured silicone rubber and Tsai
demonstrates that it is known to remove volatiles under vacuum from
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Application 13/056,701
hydrosilylation-cured silicone rubber (Tsai, col. 5, 11. 57-57) just as
Mitsukuchi teaches it is known to remove volatiles under vacuum from
peroxidically crosslinkable silicone rubber. Ans. 11-12.
In view of the above, we affirm Rejection 6.
Rejection 7
Rejection 7 involves a rejection of claim 25 under 35 U.S.C. § 103(a)
as being unpatentable over Mitsukuchi (as translated) in view of Deering, in
view ofNooren. Claim 25 recites that the exhaust gas of claim 10, which
has been scrubbed with water, is recirculated to the conditioning oven.
The Examiner's position for this rejection is set forth on pages 12-13
of the Final Office Action and on pages 12-13 of the Answer. The
Examiner's position is that it \'l/ould have been obvious to have modified
Mitsukuchi in view of Deering by employing a closed gas system, rather
than an open gas system, because it is a substitution of one known element
for another that yields predictable results.
Appellants' position is set forth on pages 10-11 of the Appeal
Brief. Appellants argue that N ooren is directed to a very different
process for the reasons stated therein. It is notable that Appellants do
not dispute the Examiner's position that substituting an open system
with a closed system would have been a matter of substituting one
known element for another that yields predictable results. We thus are
not persuaded by Appellants' argument for the reason provided by the
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Examiner on pages 12-13 of the Final Office Action, on page pages
12-13 of the Answer.
DECISION
We affirm Rejection 1 with respect to claims 22 and 23, but reverse
Rejection 1 with respect to claims 26, 27, and 28.
We affirm Rejection 2.
We affirm Rejection 3.
We affirm Rejection 4.
We reverse Rejection 5.
We affirm Rejection 6.
We affirm Rejection 7.
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). See 37 C.F.R.
§ 1.136(a).
ORDER
AFFIRMED-IN-PART
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