Ex Parte VogtDownload PDFPatent Trial and Appeal BoardMay 23, 201813753203 (P.T.A.B. May. 23, 2018) Copy Citation 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 Br. 2. 2 Claims 1-20 and 24 are withdrawn from consideration and, thus, are not subject to the appealed rejections.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 2 Appeal2017-007831 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. 3 Appeal2017-007831 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 ... 4 Appeal2017-007831 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). 5 Appeal2017-007831 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. 6 Appeal2017-007831 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 7 Copy with citationCopy as parenthetical citation