Ex Parte Ulrich et al

Patent Trial and Appeal Board

Sep 6, 2016

10525160 (P.T.A.B. Sep. 6, 2016)

UNITED STATES PATENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
10/525,160 09/26/2005
7590 09/07/2016
Lanxess Corporation
Law & Intellectual Property Department
111 Ride Park West Drive
Pittsburgh, PA 15275-1112
FIRST NAMED INVENTOR
Ralf Ulrich
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.
P0-7856/LeA 36,229 5659
EXAMINER
USELDING, JOHN E
ARTUNIT PAPER NUMBER
1763
MAIL DATE DELIVERY MODE
09/07/2016 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RALF ULRICH, MATTHIAS MAHLKE, MARCUS
SCHAFER, HELMUT SCHULTE, PETER SCHWARZ,
MARTIN HOCH, and ROLAND P ARG
Appeal 2014-009165
Application 10/525, 160
Technology Center 1700
Before TERRY J. OWENS, ROMULO H. DELMENDO, and
JEFFREY R. SNAY, Administrative Patent Judges.
OWENS, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
The Appellants argue that "neither Kim nor Carrus is concerned with
the object of the present invention relating to increasing the breaking
resistance of nano-reinforced moulding compositions, and thus, a person of
ordinary skill in the art working in this field would also find no motivation
in Kim or Carrus indicating that such a combination, even if it was to be
made, would have any effect on the breaking resistance" (Req. Reh'g 5).
That argument is not well taken because establishing a prima facie
case of obviousness does not require that references solve the same problem
solved by the Appellants. See In re Kemps, 97 F.3d 1427, 1430 (Fed. Cir.
1996); Jn re Beattie, 974 F.2d 1309, 1312 (Fed. Cir. 1992); In re Dillon, 919
F.2d 688, 693 (Fed. Cir. 1990) (en bane); In re Lintner, 458 F.2d 1013, 1016
Appeal 2014-009165 .
Application 10/525, 160
(CCPA 1972).
The Appellants argue that because Carrus discloses that the reagents
for providing polar groups in each of paragraphs 23 and 24 can be used in
mixtures but the oolvmers functionalized with nolar e:rouns in narae:raoh 26
.1: .,, .I. '"""" ... .... - ...
and the polymers containing functional groups in paragraph 27 are
alternatives, Carrus does not provide for using the polymers in paragraph 26
in admixture with the polymers in paragraph 27 (Req. Reh'g 5-6).
Carrus discloses that the composite material comprises "at least one
polymer containing a predetermined quantity of polar groups" (if 16) and
that "[t]he polymer containing polar groups is generally selected from
polymers functionalized with polar groups" (if 20). Carrus, therefore, would
have led one of ordinary skill in the art, through no more than ordinary
creativity, to use a mixture of a polymer functionalized with polar groups
from paragraph 26 (such as an ethylene-vinyl acetate copolymer) with a
polymer containing polar groups from paragraph 27 (such as a polyamide).
See KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 418 (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").
The Appellants argue for the first time in this appeal that Carrus does
not indicate that the ethylene-vinyl acetate copolymer is suitable as a
compatibilizer for polyethylene and polyamide and that, therefore, it would
not have been obvious for one of ordinary skill in the art to use Carrus's
ethylene-vinyl acetate copolymer's ethylene/vinyl acetate ratio (if 30-32) in
Kim's ethylene-vinyl acetate copolymer compatibilizer (p. 8, 11. 10-16;
p. 11, 11. 12-14; p. 12, 11. 4-12) (Req. Reh'g 3-5).
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Appeal 2014-009165
Application 10/525,160
As stated in 37 C.F.R. § 41.52(a)(l) (2012), "[a]rguments not raised,
and Evidence not previously relied upon, pursuant to §§ 41.37, 41.41, or
41.4 7 are not permitted in the request for rehearing except as permitted by
paragraphs (a)(2) through (a)(4) of this section." The Appellants' new
argument does not fall within those exceptions and, therefore, is untimely.
Consequently, we do not consider that argument.
For the above reasons the Appellants' request for rehearing is denied.
DE1""1ED
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