Ex Parte Weidinger et alDownload PDFPatent Trial and Appeal BoardJun 30, 201613303593 (P.T.A.B. Jun. 30, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/303,593 11/23/2011 6449 7590 07/05/2016 ROTHWELL, FIGG, ERNST & MANBECK, P,C 607 14th Street, N.W. SUITE 800 WASHINGTON, DC 20005 Jtirgen WEIDINGER 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. 2185-319 1074 EXAMINER ADKINS, CHINESSA T ART UNIT PAPER NUMBER 1788 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): PTO-PAT-Email@rfem.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JURGEN WEIDINGER and CHRISTOPH ZAUNER Appeal2015-003357 Application 13/303,593 Technology Center 1700 Before BEYERL YA. FRANKLIN, N. WHITNEY WILSON, and JEFFREY R. SNAY, Administrative Patent Judges. FRANKLIN, Administrative Patent Judge. DECISION ON APPEAL Appellants seek our review under 35 U.S.C. § 134 of the Examiner's final decision rejecting claims 1-14 and 19--43. Claims 15-17 have been withdrawn from consideration and claim 18 has been cancelled. We have jurisdiction over the appeal under 35 U.S.C. § 6(b ). STATEMENT OF THE CASE Claim 1 is illustrative of Appellants' subject matter on appeal and is set forth below: 1. A material comprising at least one layer (A) of expanded elastomer or thermoplastic elastomer blend Appeal2015-003357 Application 13/303,593 wherein layer (A) comprises a styrene substituted organic polymer, which is present in the formulation in at least 30 phr - related to a total elastomeric polymer content of 100 parts per hundred rubber (phr) - and layer (A) furthermore comprises at least 10 phr of a chlorinated organic polymer of thermoplastic or thermoplastic elastomer nature- related to the styrene substituted organic polymer - and layer (A) additionally comprises greater than 60 phr of halogenated paraffin, halogenated fatty acid substituted glycerine, or any combination thereof. The Examiner relies on the following prior art references as evidence of unpatentability: Clark Fukui Miura et al. ("Miura") Manzo et al. ("Manzo") Katsunori et al. ("Katsunori") us 2,849,028 us 5,795,634 US 2003/0109621 Al US 2004/0126562 Al US 2009/0169860 Al THE REJECTIONS Aug. 26, 1958 Aug. 18, 1998 June 12, 2003 July 1, 2004 July 2, 2009 1. Claims 1, 3-7, 9, 10, 12-14, 19-25, 28-38, and 41--43 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Katsunori in view of Miura. 2. Claims 2, 26, and 27 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Katsunori in view of Miura, and further view of Clark. 3. Claims 8, 39, and 40 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Katsunori in view of Miura in further view of Manzo. 4. Claim 11 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Katsunori in view of Miura, and further view of Fukui. 2 Appeal2015-003357 Application 13/303,593 ANALYSIS As an initial matter, we select claim 1 as representative of the claims on appeal, based upon Appellants' presented arguments. 3 7 C.F .R. § 41.37(c)(l)(iv) (2014). We adopt the Examiner's findings in the Examiner's Answer and AFFIRM, and add the following. Rejections 1--4 The Examiner's statement of Rejection 1 is set forth on pages 2-6 of the Answer. It is the Examiner's position that Katsunori teaches the claimed subject matter, but fails to teach wherein layer (A) additionally comprises greater than 60 phr of halogenated paraffin, halogenated fatty acid substituted glycerine, or any combination thereof. Ans. 3--4. The Examiner relies upon Miura for teaching a material comprising at least one layer /1'. K • 1 A A /'"\. '\ • 1 1 1 • 1 • /1'. K • 1 f\ 1 ,.... ~iv1mra paras. i.:+, .:+Y J compnsmg a vmy1 cn10nae resm vvuura paras. iv, u, and 15), and 50 to 300 parts by weight of chlorinated paraffin having 12 to 50 carbon atoms with 30 to 70 wt.% in chlorination degree (Miura paras. 10, 13). Ans. 4. Appellants argue that Katsunori discloses that the closed-cell sheet may include one of eleven rubber based resins, one of seven crystalline resins (with an additional fifty resins), and one of eighteen softeners. Katsunori paras. 50, 54--57 and 66. Appeal Br. 6. Appellants argue that, in total, there are over 1,300 combinations of these elements which may be formed from the lists provided in Katsunori, and that none of the exemplary combinations provided in Katsunori include the materials as claimed. Katsunori paragraphs 97-110. Appeal Br. 6. Appellants argue that 3 Appeal2015-003357 Application 13/303,593 Katsunori merely provides a laundry list of materials with no teaching or suggestion for the combination of a styrene substituted organic polymer, a chlorinated organic polymer, and a halogenated paraffin, as recited in claim 1. Appellants also submit that Katsunori recites a broad laundry list of thousands of alternatives that provide no motivation or suggestion to select the claimed combination of materials. Appeal Br. 7. Appellants argue that the selection of the claimed materials from these laundry lists requires impermissible hindsight using the Appellants' Specification as a roadmap for the selection of these materials. Id. Appellants then argue that Miura fails to remedy the shortcomings of Katsunori for the reasons stated on pages 7-8 of the Appeal Brief and on pages 3-5 of the Reply Brief. We are unpersuaded by Appellants' arguments for the reasons provided by the Examiner on pages 10-15 of the Answer, which we incorporate herein as our own. We add that the fact that a reference '' 1. 1 1' • ' 1 .. (""("" ' • 1 • ' • 1 ' 1 msc10ses a mummae or enecuve comomauons aoes nm renaer any particular formulation less obvious." Merck & Co., Inc. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989); see also In re Corkill, 771 F.2d 1496, 1500 (Fed. Cir. 1985) (obviousness rejection of claims affirmed in light of prior art teaching that "hydrated zeolites will work" in detergent formulations, even though "the inventors selected the zeolites of the claims from among 'thousands' of compounds"); In re Susi, 440 F .2d 442, 445 (CCP A 1971) (obviousness rejection affirmed where the disclosure of the prior art was "huge, but it undeniably include[d] at least some of the compounds recited in appellant's generic claims and [was] of a class of chemicals to be used for the same purpose as appellant's additives"). 4 Appeal2015-003357 Application 13/303,593 With regard to Appellants' stated positon pertaining to lack of motivation for the proposed modification of Katsunori according the Miura (Appeal Br. 7-8, Reply Br. 3-5), we agree with the Examiner's stated reply made on pages 13-14 of the Answer. Therein, the Examiner explains that both Katsunori and Miura disclose a material comprising a vinyl chloride polymer and chlorinated paraffin suitable for use in architecture, construction and vehicles, and sound insulation materials. Ans. 14. The Examiner adequately explains why one would have incorporated the amount of chlorinated paraffin into the material of Katsunori according to Miura in order to provide sound insulation members exhibiting high vibration damping performance and high sound insulation, mechanical strength and shape retentively. Id. Appellants argue that there is nothing in Miura that teaches one skilled in the art to use chlorinated paraffin in combination with elastomers, and that Miura fails to describe a relationship between chlorinated polymers and styrene butadiene. Reply Br. 3--4. However, the Examiner relies upon Katsunori for teaching an elastomer comprising a styrene butadiene elastomer and a rubber resin of polyvinyl chloride. Ans. 13. The Examiner relies upon Miura for teaching a material comprising at least one layer of a vinyl chloride resin and 50 to 300 parts by weight of chlorinated paraffin. Ans. 13. Appellants thus do not adequately address the combination of applied teachings as presented by the Examiner. . We thus affirm Rejection 1. Because Appellants rely upon the same arguments for the other rejections (Appeal Br. 8-10), we also affirm Rejections 2--4. DECISION The Examiner's rejections of claims 1-14 and 19--43 are affirmed. 5 Appeal2015-003357 Application 13/303,593 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). AFFIRMED 6 Copy with citationCopy as parenthetical citation