Ex Parte Sumner et al

Patent Trials and Appeals Board

Jan 28, 2019

12228820 - (D) (P.T.A.B. Jan. 28, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/228,820 08/15/2008
67749 7590 01/30/2019
Ashland LLC
WILLIAM J. DA VIS, ESQ.
1005 U.S. 202/206
Bridgewater, NJ 08807
FIRST NAMED INVENTOR
Michael J. Sumner
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.
ASH.7108.US 6636
EXAMINER
MULCAHY, PETER D
ART UNIT PAPER NUMBER
1762
NOTIFICATION DATE DELIVERY MODE
01/30/2019 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):
ntietcheu@ashland.com
wdavis@ashland.com
schen@ashland.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL J. SUMNER, CHARLES L. FISHER,
and ROBIN F. RIGHETTINI
Appeal 2018-003137
Application 12/228,820
Technology Center 1700
Before KAREN M. HASTINGS, GRACE K. OBERMMAN, and
WESLEY B. DERRICK, Administrative Patent Judges.
HASTINGS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 request our review under 35 U.S.C. § 134 of the
Examiner's final decision rejecting claims 1-3, 7-9, 11, 13-15, 18 and
25-27 under 35 U.S.C. § 103(a) as being unpatentable over Fujita et al.,
(US 6,808,821 B2, issued Oct. 26, 2004). We have jurisdiction over the
appeal under 35 U.S.C. § 6(b).
1 The real party in interest is stated to be Ashland Licensing and Intellectual
Property, LLC. (Appeal Br. 2).
Appeal 2018-003137
Application 12/228,820
We AFFIRM.
Claim 1 is illustrative of the subject matter on appeal ( emphasis added
to highlight key limitation in dispute):
1. A gelcoat composition comprising an unsaturated polyester
base resin, a reactive diluent component, a pigment and more than
about 2% by weight inorganic extended filler wherein the reactive
diluent component comprises styrene and one or more alternative
reactive diluents selected from the group consisting of 1,6-
hexanediol diacrylate, butylmethacrylate, butyl acrylate and 2-
ethylhexylacrylate, wherein a total amount of the one or more
alternative reactive diluents comprises about 20% or less by
weight of the reactive diluent component, wherein the gelcoat
composition has a blush measured as DE of less than about
2.20 after being submerged in water at about 65 °C for about 6
hours and then remaining in the water for about 14 hours.
Independent claim 11 is similar to that of claim 1, except it recites a
"yellowing" property instead of the "blush" property of claim 1 (Claims
Appendix 14). Claim 14 is directed to a process for making a gelcoat as
recited in either of claims 1 in 11, wherein the gelcoat composition has
either the "blush" property of claim 1 or the "yellowing" property of claim
11 (Claims Appendix 15).
ANALYSIS
We have reviewed each of Appellants' arguments for patentability.
We will sustain the Examiner's rejections for essentially those reasons
expressed in the Answer, including the Response to Argument section, and
we add the following primarily for emphasis.
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Appeal 2018-003137
Application 12/228,820
It is well established that when claimed ranges overlap or lie inside
ranges disclosed by the prior art for every component in a claim, a prima
facie case of obviousness is established. In re Harris, 409 F.3d 1339, 1341
(Fed. Cir. 2005); In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003). It is
also well established that a reference is not limited to its examples or
preferred embodiments; see Merck & Co., Inc. v. Biocraft Labs., Inc., 874
F.2d 804, 807 (Fed. Cir. 1989) (holding that the prior art's disclosure of over
1200 possible combinations rendered all possible formulations obvious).
In reviewing the relevant facts of this case, the Examiner's
determination that Fujita suggests overlapping ranges for all of the
compositional components is reasonable (see, e.g., Ans. 6). Appellants'
main argument that Fujita does not teach or suggest 20% by weight or less
of the acrylate diluent is unavailing for reasons set out by the Examiner
(Ans. 3-5 (pointing out that one of ordinary skill would have appreciated
from the entirety of the reference that Fujita is teaching that styrene is the
preferred diluent and an acrylate in amounts of 50% or less may be admixed
therewith)). 2 Notably, Appellants admit that the examples of Fijita
exemplify that styrene is the preferred diluent that may be combined with a
minor amount of acrylate as exemplified in Example 3 of Fujita (Appeal Br.
5, 6). While Appellants observe that the acrylate used in Example 3 of
Fujita is not one of those listed in claim 1, the Examiner aptly points out that
Fujita explicitly lists the acrylate diluents recited in claim 1 as alternatives to
the methyl methacrylate used in Fujita's Example 3 (Ans. 2, discussing
Fujita col. 6, 1. 43 to col. 7, 1. 18).
2 No reply brief has been filed.
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Appeal 2018-003137
Application 12/228,820
Thus, a preponderance of the evidence supports the Examiner's
position that it would have been prima facie obvious to use an acrylate
alternative reactive diluent (in combination with a styrene reactive diluent)
as claimed in amounts that overlap the claimed range. Accordingly, one of
ordinary skill in the art, using no more than ordinary creativity, would have
selected amounts of the styrene/acrylate mixture that would have naturally
resulted in the claimed properties (see, e.g., Ans. 5, 6).
The law is replete with cases in which the difference between the
claimed invention and the prior art is some range or other variable within the
claims. These cases have consistently held that the Appellants must show
that the particular range is critical, generally by showing that the claimed
range achieves unexpected results relative to the prior art range. See e.g., In
re Peterson, 315 F.3d at 1329; In re Woodruff, 919 F.2d 1575, 1578 (Fed.
Cir. 1990). The burden rests with Appellants to establish (1) that the alleged
unexpected results presented as being associated with the claimed invention
are, in fact, unexpected, (2) that the comparisons are to the disclosure of
closest prior art, and (3) that the supplied evidentiary showing is
commensurate in scope with the claimed subject matter. See In re Klosak,
455 F.2d 1077, 1080 (CCPA 1972).
Appellants point to examples presented in the Specification as
providing evidence of the criticality of using the appropriate acrylate diluent
(not methyl methacrylate) so as to result in the claimed "blush" property of
claim 1 (Appeal Br. 8, 10, 11; Spec. Table 1, E2 and E6). However, a
preponderance of the evidence supports the Examiner's position that this
evidence has not been shown to be "unexpected," nor is the evidence
commensurate in scope with the claims (see, e.g., Ans. 5). For example,
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Appeal 2018-003137
Application 12/228,820
claim 1 uses the open-ended term "comprising" and thus may include other
unrecited components. Indeed, neither claim 11 nor claim 14 require the
"blush" property recited in claim 1. As previously discussed, Fujita also
explicitly teaches using an amount of the acrylates recited in claim 1
throughout the claimed range.
We, therefore, discern no error in the Examiner's determination that
the applied prior art would have rendered obvious the gelcoat composition of
claim 1 ( or claim 11, or claim 14 ).
Thus, Appellants have not persuasively argued that the facts and
reasons relied on by the Examiner are insufficient to establish a prima facie
case of obviousness. In light of these circumstances, the preponderance of
the evidence supports the Examiner's rejection. Accordingly, we sustain the
rejection of the claims on appeal.
DECISION
The decision of the Examiner is affirmed.
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(l).
AFFIRMED
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