Ex Parte Chopinet et al

Patent Trial and Appeal Board

May 31, 2017

13517425 (P.T.A.B. May. 31, 2017)

United States Patent and Trademark Office
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.
13/517,425 06/20/2012 Marie-Helene Chopinet 400116US99PCT 8003
22850 7590 06/02/2017
OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P.
1940 DUKE STREET
ALEXANDRIA, VA 22314
EXAMINER
SAMPLE, DAVID R
ART UNIT PAPER NUMBER
1784
NOTIFICATION DATE DELIVERY MODE
06/02/2017 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):
patentdocket @ oblon. com
oblonpat @ oblon. com
tfarrell@oblon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARIE-HELENE CHOPINET,
MAIKE HILLERS, CAROLINE FAILLAT,
and PABLO VILATO
Appeal 2015-003211
Application 13/517,425
Technology Center 1700
Before ROMULO H. DELMENDO, GEORGE C. BEST, and
JENNIFER R. GUPTA, Administrative Patent Judges.
BEST, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner finally rejected claim 21 of Application 13/517,425
under 35 U.S.C. § 112,11 as failing to comply with the written description
requirement and finally rejected claims 1—22 under 35 U.S.C. § 103(a) as
obvious. Final Act. (March 12, 2014). Appellants1 seek reversal of the
1 Eurokera S.N.C. is identified as the real party in interest. Appeal Br. 2.
Appeal 2015-003211
Application 13/517,425
rejection of claims 1—20 and 222 pursuant to 35 U.S.C. § 134(a). A hearing
was held on May 25, 2017. We have jurisdiction under 35 U.S.C. § 6.
For the reasons set forth below, we affirm-in-part and designate this
partial affirmance as constituting a new ground of rejection.
BACKGROUND
Fireplace inserts improve the performance of conventional open-
hearth fireplaces. Spec. 1. The ’425 Application describes an enamel
composition that is intended for covering a glass pane of a fireplace insert.
Id. Claim 1 is representative of the ’425 Application’s claims and is
reproduced below:
1. An enamel composition, comprising:
a glass frit;
a pigment in a content varying from 40 to 65% of the total
weight of the enamel composition; and
optionally a vehicle or medium,
wherein the glass frit comprises, expressed as percentages by
weight of the total weight of the glass frit:
Si02 45-65%;
A1203 0-13%;
b2o3 greater than 30%;
Na20 0-10%;
k2o 0—10%; and
Li20 0-10%.
Appeal Br. Claims App. i.
2 Appellants cancelled claim 21 in an amendment filed July 7, 2014 and
entered July 9, 2014. See Appeal Br. 2.
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Application 13/517,425
REJECTION
On appeal, the Examiner maintains the following rejection:
Claims 1—20 and 22 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Shimatani.3 Final Act. 3.
DISCUSSION
We discuss independent claims 1 and 22 separately below.
Claim 1. Claim 1 requires, in relevant part, that the glass frit be
comprised of greater than 30% by weight B2O3. The Examiner found that
Shimatani describes or suggests this claim limitation. Final Act. 4.
Shimatani describes a glass composition comprising 10%—30% B2O3. Id.
(citing Shimatani p. 3,11. 23—24). The Examiner, however, found that
no difference can be discerned by [sic, between] an upper limit
of 30% B2O3 as in the reference and the range of “greater than
30%” as recited in claim 1. For example, 30.1% B2O3 is within
the teachings of the reference when considering two significant
figures, and is also “greater than 30” as recited in claim 1.
Id.
Appellants argue that the rejection of claim 1 should be reversed
because the Examiner erred by finding that Shimatani’s description of the
use of between 10% and 30% B2O3 would describe or suggest the claimed
B2O3 content of greater than 30%. Appeal Br. 11—15.
We agree with Appellants. In particular, the Examiner’s finding that a
person having ordinary skill in the art could not discern a difference between
the upper limit of 30% B2O3 described in Shimatani and the claimed range
3 EP 0 771 765 Al, published May 7, 1997.
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Application 13/517,425
of greater than 30% B2O3 is erroneous. The Examiner’s error lies, in part, in
trying to have things both ways. In the Examiner’s example, the Examiner
correctly indicates that at the level of two significant figures 30.1% B2O3 is
within Shimatani’s description of the use of up to 30% B2O3. The Examiner,
however, cannot simultaneously use two significant figures for determining
whether or not a particular composition falls within Shimatani’s description
and use three significant figures for determining whether or not that same
composition falls within the scope of claim 1.
Furthermore, the facts in this case are very similar to the facts in a
non-precedential Federal Circuit opinion, which we consider solely for its
persuasive value. See In re Patel, 566 F. App’x 1005, 1009—10 (Fed. Cir.
2014) (distinguishing In re Woodruff, 919 F.2d 1575 (Fed. Cir. 1990);
Titanium Metals Corp. of Am. v. Banner, 788 F.2d 775 (Fed. Cir. 1985); In
re Peterson, 315 F.3d 1325 (Fed. Cir. 2003)). In Patel, the Federal Circuit
considered whether a claim limitation requiring between 26 and 80 weight
percent of a first polymer was rendered prima facie obvious by a prior art
disclosure of 0.5 to 25 weight percent of that polymer. Id. at 1007. The
Federal Circuit stated that “a rejection based on ranges approaching each
other might well be appropriate where there is a teaching in the prior art that
the endpoints of the prior art range are approximate or can be flexibly
applied.” Id. at 1010. On the facts before it, however, the Federal Circuit
found that rejection was not appropriate because the prior art emphasized
limiting the amount of the polymer in question, stating that increasing the
amounts to more than 25% negatively affected the properties of the claimed
fabric. Id.
In this case, the prior art describes a range of useful B2O3 content in
the glass powder and explains why varying the B2O3 content outside that
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Application 13/517,425
range gives undesirable results. In particular, Shimatani states that “[w]hen
the content of B2O3 is less than 10%, the flow ability of the glass is
deteriorated[, and w]ith the content more than 30%, the coefficient of
thermal expansion is excessively high.” Shimatani 3,11. 31—32. This
description does not provide a person having ordinary skill in the art any
reason to use a B2O3 content in excess of 30%. Nor has the examiner
provided any other reason to use an amount of B2O3 that is outside the range
described in Shimatani.
Accordingly, we reverse the rejection of claim 1 as unpatentable over
Shimatani. Claims 2—20 depend from claim 1. We, therefore, also reverse
the rejection of these claims.
Claim 22. Claim 22 reads:
22. An enamel composition, comprising:
a glass frit;
a pigment in a content varying from 40 to 65% of the total
weight of the enamel composition; and
optionally a vehicle or medium,
wherein the glass frit comprises, expressed as percentages by
weight of the total weight of the glass frit:
Si02 45-65%;
A1203 0-13%;
B203 23-55%;
Na20 0-10%;
k2o 0—10%; and
Li20 0-10%, and
wherein the enamel composition does not contain BaO.
Appeal Br. Claims App. v—vi.
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The Examiner found that “Shimatani et al. discloses a glass frit and
enamel composition that has overlapping ranges with the composition
recited in claim 22. Shimatani et al. differs from claims 9, 10 and 20 [sic,
claim 22] by reciting the inclusion of BaO whereas claim 22 precludes
BaO.” Final Act. 6. The Examiner also found that Shimatani teaches that
use of less than 1% BaO in the frit material adversely affects the flowability
of the frit material. Id. (citing Shimatani 3 (“When the content of BaO is
less than 1 %, the flowability of the glass is deteriorated. With the content
more than 10%, the coefficient of thermal expansion is excessively high.”)).
The Examiner concluded that “it would have been obvious to one of
ordinary skill in the art at the time of the invention to have omitted BaO
from the frit of Shimatani and to thereby have a frit with degraded
flowability, because it is within the level of ordinary skill in the art to omit
an ingredient to lose its function.” Id.
Appellants argue that the rejection of claim 22 should be reversed
because the Examiner has improperly relied upon generic guidance recited
in MPEP § 2144.04 IIA. Appeal Br. 23. In particular, Appellants argue that
a person having ordinary skill in the art would not have omitted the BaO at
the cost of degrading the flowability of the glass frit especially since
Shimatani states that its purpose “is to provide ‘an enamel frit composition
. . . [that] is flowable at low temperature, low in coefficient of thermal
expansion, and excellent in abrasion resistance and acid resistance without
containing any harmful component.’” Appeal Br. 24 (quoting Shimatani 3,
11. 21-23).
We are not persuaded by Appellants’ argument. The ’425
Application’s Specification states that the chemical risks of the use of BaO
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Application 13/517,425
were well-established.4 Spec. 5. At the time of the invention, therefore, a
person having ordinary skill in the art would have had reason to accept the
degraded flowability of the glass frit material as a trade-off for eliminating
the use of toxic BaO. In re Urbanski, 809 F.3d 1237, 1243 (Fed. Cir. 2016)
(affirming finding that “one of ordinary skill would have been motivated to
pursue the desirable properties taught by [one prior art reference], even at
the expense of foregoing the benefit taught by [a second prior art
reference.]”). Because such trade-offs are commonly made by persons of
ordinary skill in the art, we conclude that the differences between the subject
matter of claim 22 and Shimatani would have been obvious to a person of
ordinary skill in the art at the time of the invention.
Accordingly, we affirm the rejection of claim 22. Because we have
relied on facts and reasoning not raised by the Examiner, we designate our
affirmance as constituting a new ground of rejection. In re Leithem,
661 F.3d 1316, 1319 (Fed. Cir. 2011) (“Mere reliance on the same statutory
basis and the same prior art references, alone, is insufficient to avoid making
a new ground of rejection when the Board relies on new facts and rationales
not previously raised to the applicant by the examiner.”).
CONCLUSION
For the reasons set forth above, we reverse the rejection of claims 1—
20 of the ’425 Application. We, however, affirm the rejection of claim 22.
4 At the hearing in this appeal, Appellants’ attorney agreed that the
Specification contained an admission that a person having ordinary skill in
the art at the time of the invention would have known about the toxicity of
BaO. A transcript of the hearing will be made of record in the
’425 Application’s prosecution history in due course.
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Application 13/517,425
We designate our affirmance of this rejection as constituting a new ground
of rejection.
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b), which provides that “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
Section 41.50(b) also provides that the appellant, WITHIN TWO MONTHS
FROM THE DATE OF THE DECISION, must exercise one of the
following two options with respect to the new ground of rejection to avoid
termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new Evidence relating to the claims so rejected, or
both, and have the matter reconsidered by the examiner, in which event the
proceeding will be remanded to the examiner; or
(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same record.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED-IN-PART; NEW GROUND OF REJECTION
PURUSANT TO 37 C.F.R, $ 41.50(b)
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