Ex Parte Vogt

Patent Trial and Appeal Board

May 23, 2018

13753203 (P.T.A.B. May. 23, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
131753,203 01129/2013
27384 7590 05/23/2018
Briscoe, Kurt G.
Norris McLaughlin & Marcus, PA
875 Third Avenue, 8th Floor
New York, NY 10022
FIRST NAMED INVENTOR
Sebastian Vogt
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.
100727-202 7609
EXAMINER
HEINCER, LIAM J
ART UNIT PAPER NUMBER
1767
MAILDATE DELIVERY MODE
05/23/2018 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 SEBASTIAN VOGT
Appeal2017-007831
Application 13/753,203
Technology Center 1700
Before MICHAEL P. COLAIANNI, GEORGE C. BEST, and
N. WHITNEY WILSON, Administrative Patent Judges.
BEST, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner finally rejected claims 21-23 and 25-29 of Application
13/753,203 under 35 U.S.C. § 103(a) as obvious. Final Act. (Mar. 1, 2016).
Appellant1 seeks reversal of the rejections2 pursuant to 35 U.S.C. § 134(a).
We have jurisdiction under 35 U.S.C. § 6(b).
For the reasons set forth below, we affirm.
1 Heraeus Medical GmbH is identified as the applicant and real party in
interest. Br. 2.
2 Claims 1-20 and 24 are withdrawn from consideration and, thus, are not
subject to the appealed rejections. Final Act. 1; Br. 2.
Appeal2017-007831
Application 13/753,203
BACKGROUND
The '203 Application describes an initiator system for the radical
polymerization of a monomer for polymethylmethacrylate bone cements.
Spec 1. According to the '203 Application, initiator systems based on
barbiturates, heavy metal ions, and chloride ions are known, but some
chloride salts cannot dissolve or have limited solubility in
methylmethacrylate monomers. Id. at 3--4. The initiator system described in
the '203 Application is said to provide reproducible initiation behavior by
safely dissolving alkali chlorides and alkaline earth chlorides in
methylmethacrylate monomers. Id. at 5.
Claim 21 is representative of the '203 Application's claims and is
reproduced below from the Claims Appendix to the Appeal Brief:
21. An initiator system for radical polymerization of a
monomer compnsmg
(i 1) at least one barbituric acid derivative selected from the
group consisting of barbiturates having one substituent
each at position 1 and position 5, one substituent each
at positions 1, 3, and 5 or one substituent each at
positions 1 and 3 and two substituents at position 5, the
substituents being alkyl substituents each having a
length of 1 to 10 carbon atoms;
(i2) at least one heavy metal salt selected from the group
consisting of heavy metal salts and heavy metal
complexes;
(i3) at least one alkali or alkaline earth halide;
(i4) at least one complexing agent for alkali or alkaline
earth ions that contains at least two ether groups; and
(i5) optionally, water
wherein said at least one complexing agent enables
sufficient amounts of said at least one alkali or alkaline earth
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Application 13/753,203
halide to dissolve in said monomer for radical
polymerization.
Br. 9 (Claims App.).
REJECTIONS
On appeal, the Examiner maintains the following rejections:
1. Claims 21-23 and 25-28 are rejected under 35 U.S.C. § 103(a)
as unpatentable over the combination of Vogt3 and Unruh. 4
Final Act. 2; Answer 3.
2. Claim 29 is rejected under 35 U.S.C. § 103 as unpatentable
over the combination of Vogt and Unruh. Final Act. 3;
Answer4.
Appellant argues for the reversal of the obviousness rejections to
claims 22, 23, 25-28, and 29 on the basis of limitations present in
independent claim 21. See Br. 5-8. We select claim 21 as representative
and claims 22, 23, 25-28, and 29 will stand or fall with claim 21. 37 C.F.R.
§ 41.37(c)(l)(iv).
Rejection 1 and Rejection 2. Appellant argues that these rejections
should be reversed because: (1) Unruh is non-analogous art that may not be
used in an obviousness rejection of claim 21, Br. 5; (2) neither Vogt nor
Unruh disclose or suggest that complexing halide ions would have led to
reproducible polymerization initiation, id. at 6; and (3) Vogt's initiator
system suffers from non-reproducible initiation behavior in the presence of
water, but the ordinary skilled artisan would not have looked to Unruh's
3 US 2011/0313078 Al, published Dec. 22, 2011.
4 US 5,604,191, issued Feb. 18, 1997.
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Application 13/753,203
circuit board cleaning process for a solution to Vogt's initiator issues, id. at
6-7.
First, Appellant's arguments (1) and (3) assert that Unruh is non-
analogous art. Id. at 5. Appellant further argues that Unruh's complexing
agent for providing a halide ion from a halide salt is unnecessary because
alkali halides have "very high" solubility in the monomer and the halide ions
are already present in initiator systems. Id. (citing Spec. 3--4; Vogt i-f 98).
Appellant's arguments are not persuasive.
First, to rely upon a reference as a basis for an obviousness rejection
of Appellant's claims, the reference must either (i) be in the field of the
inventor's endeavor or (ii) be reasonably pertinent to the particular problem
with which the inventor was concerned. In re Kahn, 441 F .3d 977, 986-87
(Fed. Cir. 2006); In re Oetiker, 977 F.2d 1443, 1447 (Fed. Cir. 1992).
In this case, the Examiner correctly determined that Unruh was
reasonably pertinent to the particular problem with which the inventor was
concerned.
For example, Unruh discloses using benzo-12-crown-4 as a preferred
complexing agent for lithium cations. Answer 3 (citing Unruh 6:23--45).
Unruh further discloses that "complexing agents exhibit the property of
efficiently solvating cations," which are present in an alkali or alkaline earth
halide, e.g., lithium chloride. Unruh 3:20-38. In particular, Unruh teaches
that such solvated cations are "soluble in organic solvents," thereby allowing
for the reaction of the halide anion. Id. at 3:35; 3:57-66.
The Specification, furthermore, explicitly discloses that "[l]ithium
chloride dissolves to some extent in methylmethacrylate." Spec. 3--4
( emphasis added). However, "[ u ]sing the complexing component ... in
paste B ensures that sufficient amounts of the alkali/alkaline earth halide ...
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Application 13/753,203
dissolve in the monomer ... for radical polymerisation of paste B at all
times, which ensures that the initiation behaviour is reproducible."5 Id. at 5.
Thus, we agree with the Examiner that the Specification identifies the
limited solubility of lithium chloride in methylmethacrylate as a problem.
In view of the foregoing, we agree with the Examiner that Unruh is
reasonably pertinent to a problem which the inventor faced and, therefore, is
analogous art.
Second, Appellant further argues in connection with argument (2) that
because Unruh "does not describe any initiator system[,] he does not have
such problems" as "spontaneous polymerization and non-reproducible
changes of the initiation behavior." Br. 4, 5.
Appellant, however, is incorrect in arguing that the applied prior art's
silence, with respect to the problem of spontaneous polymerization and non-
reproducible changes of the initiation behavior, is relevant to our disposition.
Cross Med. Prods., Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293,
1323 (Fed. Cir. 2005) ("One of ordinary skill in the art need not see the
identical problem addressed in a prior art reference to be motivated to apply
its teachings."); see also KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 419-20
(2007) ("In determining whether the subject matter of a patent claim is
obvious, neither the particular motivation nor the avowed purpose of the
patentee controls. . . . The first error of the Court of Appeals in this case
5 The Specification discloses that the "[p ]articularly preferred alkali or
alkaline earth halides include potassium chloride, sodium chloride, calcium
chloride, and magnesium chloride with lithium chloride being most
preferred as alkali chloride." Spec. 11 (emphasis added).
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Application 13/753,203
was ... holding that courts and patent examiners should look only to the
problem the patentee was trying to solve." (citation omitted)).
Furthermore, Appellant's arguments are not persuasive because they
do not overcome the applied prior art's disclosure that: (i) Vogt's initiator
system includes the requisite barbituric acid derivatives, heavy metal salts,
heavy metal compounds, and alkali halide ions, particularly those derived
from lithium chloride, Vogt i-fi-f 10, 85, 97, 58, Abstract; and (ii) Unruh
specifically describes benzo-12-crown-4 as a preferred complexing agent for
lithium, thereby increasing the alkali halide's solubility. Unruh 6:23--45;
3:20-38; 3:57---66; see In re Fritch, 972 F.2d 1260, 1264 (Fed. Cir. 1992)
("It is well settled that a prior art reference is relevant for all that it teaches
to those of ordinary skill in the art.").
Appellant's arguments have not identified reversible error in the
Examiner's reasoned determination that the ordinary skilled artisan would
have recognized that Unruh's benzo-12-crown-4 complexing agent would be
suitable for complexing Vogt' s lithium metal cation, thereby leaving the
halide anion readily available to react. Answer 5 (citing Unruh 6:23--45).
The Supreme Court has made clear that an obviousness analysis "need not
seek out precise teachings directed to the specific subject matter of the
challenged claim, for a court can take account of the inferences and creative
steps that a person of ordinary skill in the art would employ." KSR, 550 U.S.
at 418.
Third, Appellant distinguishes Vogt' s initiator system, which
allegedly suffers from non-reproducible initiation behavior in the presence
of water, from the claimed initiator system. Br. 6-7.
Appellant's argument is not persuasive.
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Application 13/753,203
Even assuming that Vogt's initiator system must exclude water, claim
21 is directed to an initiator system comprising several requisite
components, i.e., (il}-(i4), and, optionally, water. If the initiator system is
comprised solely of components (i 1 }-(i4), and the conditions of the requisite
wherein clause are met, the claimed initiator system is complete. See
Answer 7. The remainder of the claim, therefore, is not necessarily added,
because "(i5) ... water" is an optional component. Cf Ex parte
Schulhauser, No. 2013-007847, slip op. 9 (PTAB Apr. 28, 2016)
(precedential) (available at https://go.usa.gov/xQm7T). To render the
claimed system obvious, the prior art must teach the structure that performs
the function of the contingent step along with the other recited claim
limitations. Id. at 9, 14. Thus, Appellant's arguments do not identify
reversible error in the Examiner's determination that the combination of
Vogt and Unruh renders claim 21 obvious.
We, therefore, affirm the Examiner's rejections of claims 21-23 and
25-29 as unpatentable over the combination of Vogt and Unruh. 37 C.F.R.
§ 41.37(c)(l)(iv).
CONCLUSION
For the reasons set forth above, we affirm the rejections of claims 21-
23 and 25-29 of the '203 Application.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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