Ex Parte Althoff et al

Patent Trial and Appeal BoardOct 22, 2012

11586267 (P.T.A.B. Oct. 22, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 11/586,267 10/25/2006 Ralf Althoff 20207 9102 23389 7590 10/22/2012 SCULLY SCOTT MURPHY & PRESSER, PC 400 GARDEN CITY PLAZA SUITE 300 GARDEN CITY, NY 11530 EXAMINER PEPITONE, MICHAEL F ART UNIT PAPER NUMBER 1767 MAIL DATE DELIVERY MODE 10/22/2012 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 ALTHOFF, TORSTEN HENNING, and HELMUT LAMMERTING ____________ Appeal 2011-004750 Application 11/586,267 Technology Center 1700 ____________ Before HERBERT C. LORIN, LINDA M. GAUDETTE, and MARK NAGUMO, Administrative Patent Judges. PER CURIAM. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s decision1 finally rejecting, as unpatentable under 35 U.S.C. §103(a), claims 1, 3, and 5-9 over Harakal (US 4,936,917, issued Jun. 26, 1990) in view of Roth (Reg. No. H444, published Mar. 1, 1988), and claim 4 over the same references, further in view of Wesala (US 4,491,607, issued Jan. 1, 1985) .2 We have jurisdiction under 35 U.S.C. § 6(b). 1 Final Office Action mailed March 2, 2010 2 Appeal Brief filed Aug. 2, 2010 Appeal 2011-004750 Application 11/586,267 2 We sustain the above rejections based on the findings of fact, conclusions of law, and rebuttals to arguments expressed by the Examiner in the Answer3. The Examiner’s rejection is based on the use of known, liquid (i.e., having a melting point below room temperature) mold release agents (taught by Roth) for their intended purpose (as release effective substances) in Harakal’s mold release composition. See KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) (“The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.”). Although Appellants argue Harakal only exemplifies the use of solid release agents, Appellants have not persuasively shown that one of ordinary skill in the art would have been discouraged from trying a liquid release agent based on the known use thereof as taught by Roth. See In re Gurley 27 F.3d 551, 553 (Fed. Cir. 1994) (“A reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant.”); cf. Syntex (U.S.A.) LLC v. Apotex, Inc., 407 F.3d 1371, 1379-80 (Fed. Cir. 2005) (“A statement that a particular combination is not a preferred embodiment does not teach away absent clear discouragement of that combination.”). As found by the Examiner, Harkal does not explicitly preclude the use of a liquid mold release agent as long as the combined melting point of the mold release agents is solid at the mold pour temperature and liquid at the demold temperature. (Ans. 6-7.) Appellants have not refuted, by a preponderance of the evidence, the Examiner’s finding that this requirement would be met by the proposed prior art combination. Further, Appellants have not directed us to 3 Examiner’s Answer mailed Oct. 27, 2010 Appeal 2011-004750 Application 11/586,267 3 persuasive evidence of unexpected results in the use of a liquid polyester release agent as claimed. See Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1371-72 (Fed. Cir. 2007) (explaining a superior property is not unexpected if it results from routine, verification testing to optimize selection of known ingredients because selection of the best ingredients proves nothing more than routine optimization that would have been obvious to one of ordinary skill in the art). 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). AFFIRMED cam