Fickert?Mayer?Stark?

Board of Patent Appeals and Interferences

May 19, 2011

10618936 (B.P.A.I. May. 19, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ANDREAS BACHER, KARL-ERNST FICKERT,
THEO MAYER and KURT STARK

Appeal 2009-015225
Application 10/618,936
Technology Center 1700
____________

Before BRADLEY R. GARRIS, CHUNG K. PAK, and
MICHAEL P. COLAIANNI, Administrative Patent Judges1.

PAK, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
Pursuant to 37 C.F.R. § 41.52(a)(1), Appellants request rehearing2 of
our Decision of October 7, 2010 (“Decision”) wherein we sustained the

1Administrative Patent Judge Michael P. Colaianni has been substituted for
Administrative Patent Judge Edward C. Kimlin who retired subsequent to
the Board’s decision dated October 7, 2010.
2Appellants’ Request for Reconsideration filed December 3, 2010 is treated
as Appellants’ Request for Rehearing (“Req.”) consistent with 37 C.F.R.
§ 41.52(a)(1) .
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Examiner's rejection of claims 1, 4 through 7, 10 through 17, and 21 through
23 under 35 U.S.C. §103(a) as unpatentable over the combined disclosures
of Schilling and Maruyama.
Appellants first contend that the Board reversibly erred in finding that
one of ordinary skill in the art would have been led to employ the claimed
silane-containing monomer taught by Maruyama as the other polymerizable
monomer of the copolymer of polyvinyl alcohol taught by Schilling. (Req.
1-4).
Thus, the first critical question raised is: Did the Board reversibly err
in finding that one of ordinary skill in the art would have been led to employ
the claimed silane-containing monomer taught by Maruyama as the other
polymerizable monomer of the copolymer of polyvinyl alcohol taught by
Schilling within the meaning of 35 U.S.C. 103(a) ? On this record, we
answer this question in the negative.
As stated by Supreme Court of the United States in KSR Int’l. Co. v.
Teleflex Inc., 550 U.S. 398, 418 (2007):
[A]nalysis [of whether the subject matter of a claim
would have been obvious under § 103] 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. [(Emphasis added.]

Here, Appellants do not dispute our finding that “Schilling, like
Appellants, discloses a copolymer comprising vinyl alcohol units and 1-
alkylvinyl alcohol units as well as ‘other polymerizable monomers’”
(Compare Decision 4 with Req. 1-4.) Although Schilling does not
specifically list the other polymerizable monomers as including the claimed
siliane-containing monomer, there is no dispute that “Maruyama discloses a
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copolymer similar in structure to Schilling’s copolymer which also
comprises the presently claimed silane-containing monomer.” (Compare
Decision 4 with Req. 1-4.) Appellants also do not dispute our finding that
“Maruyama teaches that the silicon atom of the copolymer reacts with the
cellulose fibers and pigments of the paper to improve its surface properties,
such as strength, printability and barrier properties.” (Compare Decision 4
with Req. 1-4.) Further, Appellants do not dispute our finding that
Maruyama’s copolymers, like those of Schilling, are used “as binders in
coating slips, i.e., coatings that are applied to paper to produce a smooth,
ink-receptive surface.” (Compare Decision 3-4 with Req. 1-4.)
Given the above teachings, we find no reversible error in finding that
one of ordinary skill in the art would have been led to employ the claimed
silane-containing monomer taught by Maruyama as the other polymerizable
monomer of the copolymer of polyvinyl alcohol taught by Schilling within
the meaning of 35 U.S.C. 103(a).
In reaching this determination, we have considered Appellants’
arguments at pages 1-3 of the Request for Rehearing that Schilling’s
copolymers already have excellent support properties for optical brighteners,
greater pigment binding capacity and high water-retention values, including
no pigment shock, thus providing no reason to employ the claimed silane-
containing monomer taught by Maruyama for providing the same
advantages. However, as discussed supra, Schilling teaches that its
copolymer binder having such properties can also have other polymerizable
monomers, inclusive of the claimed silane-containing monomer taught by
Maruyama. Maruyama also teaches obtaining additional advantageous
properties, i.e., strength, printability and barrier properties, of a copolymer
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binder through including the claimed silane-containing monomer as
indicated supra. According to col. 8, l. 50 to col. 9, l. 25, of Maruyama,
these additional advantages are possible because the use of the claimed
silane-containing monomer prevents a coating agent containing a copolymer
binder comprising the claimed silane-containing monomer from penetrating
into a paper and permits the formation of a firm uniform film on the surface
layer of the paper. Moreover, notwithstanding Appellants’ argument to the
contrary at page 2 of the Request for Rehearing, the use of such monomer
taught by Maruyama is not reasonably expected to cause any adverse effect
on the storage stability property of the copolymer binder taught by Schilling
since Maruyama teaches that its structurally similar binder having such
monomer is stable in an alkaline solution as indicated at page 4 of our
Decision.
Given the additional beneficial properties imparted by the claimed
silane-containing monomer to a copolymer binder structurally similar to the
copolymer binder taught by Schilling, one of ordinary skill in the art looking
to include “other polymerizable monomers” into a copolymer of polyvinyl
alcohol, as taught by Schilling, would have been led to employ a
conventional polymerizable monomer used in coating slip binders, such as
the claimed silane-containing monomer taught by Maruyama, with
reasonable expectation of successfully imparting the additional beneficial
properties associated with such monomer.
Appellants also contend that the Board reversibly erred in finding that
Appellants have not carried their burden of showing that the claimed
invention as a whole imparts unexpected results relative to the closest prior
art, namely Schilling and Maruyama.
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Thus, the second critical question is: Did the Board reversibly err in
finding that Appellants have not carried their burden of showing that the
claimed invention as a whole imparts unexpected results relative to the
closest prior art, namely Schilling and Maruyama? On this record, we
answer this question in the negative as well.
It is well settled that the burden of demonstrating unexpected results is
on Appellants who rely on them. In re Geisler, 116 F.3d 1465, 1470 (Fed.
Cir. 1997); In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972). Appellants
shoulder the burden of demonstrating that the showing relied upon imparts
unexpected results relative to the closest prior art, In re Baxter Travenol
Labs., 952 F.2d 388, 392 (Fed. Cir. 1991) and is reasonably commensurate
in scope with the degree of protection sought by the claims on appeal, In re
Harris, 409 F.3d 1339, 1344 (Fed. Cir. 2005); In re Clemens, 622 F.2d
1029, 1035 (CCPA 1980). The showing of “unexpected results must be
established by factual evidence. Mere argument or conclusory statement
…does not suffice.” In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984).
Here, as stated at page 5 of the Decision,
Examples1 and 2 according to the present invention show
results for only two silanes, namely, vinyltriethoxysilane and
vinylmethyldiethoxysilane. On the other hand, independent
claim 1 encompasses an untold number of silane-containing,
ethylenically unsaturated monomers, including those
comprising heteroatoms, such as O and N. …
Also,…the exemplified amount of silane-containing
monomer, 0.33mole%, is not reasonably commensurate in
scope with the lower and upper regions of the claimed range,
0.01 and 1 mol%.

Appellants have not proffered any factual basis to show that the
showing relied upon indicates that the improved performance would also
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result if the claimed silane-containing monomers materially different from
those exemplified were used and/or the claimed amounts of silane-
containing monomers outside of those exemplified were employed. See
Harris, 409 F.3d at 1344 (explaining that a showing of unexpected results
was not reasonably commensurate with the scope of the claims on appeal
where such showing was directed to a particular ingredient at or near the
midpoint of the claimed concentration range, with no adequate basis to
conclude that the other concentrations within the claimed range would
provide the same performance); In re Greenfield, 571 F.2d 1185, 1189
(CCPA 1978) (explaining that evidence of unexpected results was not
reasonably commensurate with the scope of the claims where such evidence
related to a single compound, with no adequate basis to conclude that other
compounds included within the scope of the claims would exhibit the same
behavior).
Appellants’ reliance on a conclusory statement made by one of the
inventors (declarant) at paragraph 9 of the Declaration to support their
arguments that “there is no scientific reason to believe that the same results
would not be obtained throughout the claimed ranges, i.e., the range of
concentration and the range of comonmers” at page 2 of the Request for
Rehearing is not persuasive. First, we note that this conclusory statement is
not based on factual evidence. De Blauwe, 736 F.2d at 705 (A showing of
unexpected results must be based on factual evidence.) Secondly, we note
that the Declaration relied upon by Appellants indicates that this statement is
highly unreliable since the Examples and Comparative Example in the
Declaration show even small structural changes in silane-containing
monomers and/or changes in the amount of the silane-containing monomers
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employed would significantly affect the behavior of the copolymer binders
(Declaration, pages 4-7). In particular, the Declaration shows Comparative
Example 1supposedly representative of the closest prior art employing a
silane-containing monomer (vinyltrimethoxysilane) structurally more similar
to those employed in Examples 1 and 2 discussed supra than the other
claimed silane-containing monomers having, e.g., heteroatoms to obtain
results significantly inferior to those in Examples 1 and 2 as evidenced by
Tables 1 through 3 (id.). The Declaration also shows Comparative Example
1 employing such silane-containing monomer in an amount different from
those amounts of particular silane-containing monomers used in Examples 1
and 2 to obtain results significantly inferior to those employed in Examples
1 and 2 (id.).
Appellants also contend that the showing is at least reasonably
commensurate in scope with separately argued dependent claims 5 and 22 ,
which is narrower than claim 1(Req. 2). However, dependent claims 5 and
22 include the same concentration range of a silane-containing monomer
recited in claim 1 and include, inter alia, vinyltrimethoxysilane as one of the
silane-containing monomers. According to pages 4 through 7 of the
Declaration, vinyltrimethoxysilane is representative of the closest prior art
and imparts inferior results (not unexpected results). Thus, for the reasons
discussed supra, Appellants have not shown that the showing relied upon is
reasonably commensurate with the scope of claims 5 and 22.
Appellants for the first time in this appeal argue at pages 2 and 3 of
the Request for Rehearing that “a Maruyama-type silane-modified polyvinyl
alcohol” referred to in paragraph 6 of the Declaration is the closest prior art
since the “Maruyama type silane-modified polyvinyl alcohol” is “virtually
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identical to the preferred Maruyama copolymer of Example 1 of Maruyama,
and is the commercial embodiment of Maruyama, sold by the Maruyama
assignee.” (Emphasis original.) Appellants also argue that “[i]f there is any
difference…, it is that Maruyama’s Example 1 states that his copolymer
contains 0.5 (one significant digit) weight percent of vinyltrimethoxysilane-
derived units, whereas the commercial POVAL® R-1130 contained 0.55
(two significant digits) weight percent.” However, we need not address
these new arguments since they were not timely presented in the Appeal
Brief and are, therefore, considered waived. Compare Optivus Technology,
Inc. v. Ion Beam Applications S.A., 469 F.3d 978, 989 (Fed. Cir. 2006)
(arguments raised for the first time in the reply brief that could have been
raised in the opening brief are waived); accord Ex parte Scholl, No. 2007-
3653, slip op. at 18 n.13 (BPAI March 13, 2008) (designated as “Informative
Opinion”). Even were we to consider such arguments, we find them to be
unpersuasive since they are not supported by any factual evidence.
De Blauwe, 736 F.2d at 705.
Accordingly, based on the foregoing, we have granted Appellants’
request to the extent that we have reconsidered our decision, but we deny
Appellants’ request to make any change therein. We find no reversible error
in “our judgment that the evidence of obviousness presented by the
Examiner outweighs the evidence of non-obviousness proffered by
Appellants” set forth at page 7 of the Decision.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

DENIED
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