Ex Parte Cook et al

Patent Trial and Appeal BoardApr 15, 2016

13069252 (P.T.A.B. Apr. 15, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/069,252 03/22/2011 27305 7590 04/19/2016 HOW ARD & HOW ARD ATTORNEYS PLLC 450 West Fourth Street Royal Oak, MI 48067 FIRST NAMED INVENTOR Julie L. Cook 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. DC10189CNT1/071049.00175 9785 EXAMINER STANLEY, JANEL ART UNIT PAPER NUMBER 1767 NOTIFICATION DATE DELIVERY MODE 04/19/2016 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): IPDocket@HowardandHoward.com dtrost@HowardandHoward.com tmorris@Howardandhoward.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JULIE L. COOK, JAMES L. GOUDIE, DIANE M. KOSAL, LORI STARK-KASLEY, WAYNE J. CHATTERTON, GANIYU JAIYEOLA, WILLIAM R. STA GI, and JAMES A. STEELE 1 Appeal2014-005299 Application 13/069,252 Technology Center 1700 Before BRADLEY R. GARRIS, BEYERL YA. FRANKLIN, and CHRISTOPHER L. OGDEN, Administrative Patent Judges. OGDEN, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. Â§ 134(a) from the Examiner's decision2 finally rejecting claims 1-6, 9-10, 12-15, and 18-21 in the above- identified application. We have jurisdiction pursuant to 35 U.S.C. Â§ 6(b ). We AFFIRM. 1 According to Appellants, the real parties in interest are Dow Coming Corporation, Utilx Corporation, and Bank of America, N.A. Appeal Br. 3. 2 The Examiner's decision, and the grounds thereof, are set forth in the Examiner's Answer, dated Jan. 10, 2014. The Answer contains modifications to the Final Action resulting from an Advisory Action dated June 12, 2013. See Answer 2. Appeal2014-005299 Application 13/069,252 BACKGROUND Appellants' invention relates to a fluid mixture and associated method for "preventing aluminum corrosion in restored electrical distribution cable," where the mixture includes "a liquid anti-treeing agent" and "a water- reactive compound" that may also be an anti-treeing agent. Spec. iJ 1. Independent claim 1 is representative: 1. A fluid mixture for contacting the interior of a cable including a central stranded conductor therein, said fluid mixture comprising: (A) a liquid anti-treeing agent having a boiling point > 90Â°CÂ· and ' (B) a compound different from (A) and having a diffusion coefficient of at least about 1x10-7 cm2/sec at 50Â°C in low-density polyethylene, the compound (B) selected from a water-reactive compound or a water- reactive anti-treeing agent; wherein (A) is present in about 95 parts by weight and (B) is present in about 5 parts by weight, based on 100 parts by weight of the fluid mixture, to obtain a fluid Â· Â· t. i.. Â·1Â· Â· nnor< ~ Â· Â· Â· Â· mixture witu a uozizng poznt :::: Yv \.__, ~or mmimizmg disruption of the conductor and for minimizing corrosion of the conductor in the cable. Appeal Br. 23 (emphasis added). The only other independent claim is claim 9, which is directed to a related "method of contacting the interior of a cable with a fluid mixture." Id. at 24. The Examiner maintains the following grounds of rejection: I. Claims 1-6 and 18 under 35 U.S.C. Â§ 103(a) as unpatentable over U.S. Patent No. 5,372,841 [hereinafter Kleyer] (issued Dec. 13, 1994) in view of U.S. Patent No. 4,766,011 [hereinafter Vincent] (issued Aug. 23, 2 Appeal2014-005299 Application 13/069,252 1988), citing as further evidence several material data sheets3 specifying the boiling points of certain relevant alkoxysilane compounds. Answer 2-8. II. Claims 9, 10, 12-15, and 19-21under35 U.S.C. Â§ 103(a) as unpatentable over Kleyer in view of Vincent, as evidenced by the MSDS documents. Answer 9-15. Appellants present arguments for both rejections as a group. See Appeal Br. 12. Therefore, consistent with the provisions of 37 C.F.R. Â§ 41.37(c)(l)(iv) (2013), we limit our discussion to claim 1. All the claims stand or fall together. DISCUSSION 1. Prima Facie Case Referring to compounds (A) and (B) of claim 1, the Examiner finds that Kleyer teaches a "typical" weight percent ratio (A):(B) ranging from 10:90 to 90:10, see Answer 4, 17-18, which "is very close to the claimed 95 parts by weight (A) and about 5 parts by weight (B) such that one of ordinary skill in the art would have expected similar properties," id. at 18. The Examiner finds that "Kleyer opens itself to modification by establishing 3 Sigma-Aldrich Pty, Ltd., Phenyltrimethoxysilane (material safety data sheet v. 1.2) (Mar. 12, 2004); Power Chemical Corp., Diphenyldimethoxysilane (Donor B), SiSiBÂ® Silanes, http://www.powerchemical.net/silanes/8221.html (last visited June 23, 201 O); Si bond, Phenylmethyldiethoxysilane (material safety data sheet) (201 O); Power Chemical Corp., Phenylmethyldimethoxysilane, SiSiBÂ® Silanes, http://www.powerchemical.net/silanes/86 l l .html (last visited June 23, 2010); Gelest, Inc., Trimethylmethoxysilane (material safety data sheet) (Feb. 5, 1999); ScienceLab.com, Inc., Dimethyldimethoxysilane (material safety data sheet) (last updated Nov. 6, 2008). Collectively, these are referred to herein as "the MSDS documents." 3 Appeal2014-005299 Application 13/069,252 a sufficiently broad 'typical' range of (A) to (B) very close to that claimed, by teach[ing] use of the least amount of (B) necessary, and by stating that suitable amounts are readily determinable by routine experimentation." Id. The Examiner also finds that the amounts of (A) and (B) are result- effective variables that can be optimized based on various considerations known in the art. Id. at 5. In particular, the Examiner finds that the mixture's boiling point (or alternatively, vapor pressure at operating conditions) was a "known issue[] of concern" related to the (A):(B) ratio. Id. at 26; see also id. at 5-6. The Examiner also finds that Vincent provides a motivation for one of ordinary skill in the art to modify the ratio of components in a related mixture "to control the rate of increase in the viscosity of the mixture of silanes, [and] to obtain the fastest absorption of the anti-treeing silanes while still providing a mobile gel which slows the exudation rate of the tree retardant." Id. at 5 (citations to Vincent 3 :42--44, 56-62 omitted). Appellants argue that "the Examiner has failed to show that the instantly claimed amounts of (A) and (B) relate in any way to viscosity," Appeal Br. 14, and argue that the ratio of 95:5 "would not be derived from optimizing (A):(B) for purposes of viscosity." Reply Br. 4. According to Appellants, the Specification discloses that the reason for the (A):(B) ratio required in the claims "relates to boiling point and corrosion, which is not described, considered, or even contemplated" in Kleyer or Vincent. Id. at 14-15. Moreover, Appellants argue, "the Examiner has no reason to even believe that optimizing for viscosity would necessarily also optimize boiling point temperature." Id. at 16. Appellants also argue that "an optimized ratio of (A):(B) for purposes of viscosity is mutually exclusive with an optimized ratio of (A):(B) for purposes of corrosion." Reply Br. 3--4. 4 Appeal2014-005299 Application 13/069,252 We find no reversible error in the Examiner's determination that a prima facie case of obviousness exists, based on the (A):(B) ratio range disclosed by Kleyer. The upper value of this "typical" range is 90: 10, which is close enough to the ratio of 95:5 required by claim 1 that one would expect the compositions to have substantially the same properties. See In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003) ("[A]primafacie case of obviousness exists when the claimed range and the prior art range do not overlap but are close enough such that one skilled in the art would have expected them to have the same properties."). Moreover, as the Examiner correctly finds, see Answer 18, the range disclosed by Kleyer is not exclusive, and Kleyer teaches that the value of B should be as low as possible, consistent with the objective to "reduce the asymmetric penetration front of the antitreeing agent (A)." Kleyer 6:36-38. In addition, we find no reversible error in the Examiner's determination that the (A) and (B) proportions are result-effective variables. Kleyer teaches that the composition will affect the mixture's vapor pressure at the operating temperature of the conductor, "which can be as high as 130Â° C." Id. at 5: 11: 12. Thus, one of ordinary skill in the art would have had reason to optimize the (A):(B) ratio with the expectation that it would predictably affect the vapor pressure. We also find no reversible error in the Examiner's finding, see Answer 5, that viscosity would have been a factor of concern relating to the (A):(B) ratio, based on Vincent, which teaches that a "mixture of silanes can range from 100 wt% trialkoxysilanes to 100 wt % dialkoxysilanes" in order to control "the rate of increase of viscosity." Vincent 3 :42--48. Although Appellants argue that "the claimed ratio of (A):(B) would not be derived from optimizing (A):(B) for purposes of 5 Appeal2014-005299 Application 13/069,252 viscosity," Reply Br. 4, Appellants have produced no factually supported evidence to that effect. Moreover, we have carefully considered Appellants' argument that corrosion resistance was not known at the time of filing to be a concern related to the (A):(B) ratio; however, the reasons for one of ordinary skill to optimize the (A):(B) ratio need not be the same reasons that appear in Appellants' Specification. Cf KSR Int'l. Co. v. Teleflex Inc., 550 U.S. 398, 420 (2007) ("[A ]ny need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining [prior art] elements in the manner claimed."). For the above reasons, we are not persuaded that the Examiner has failed to establish a prima facie case of obviousness. 2. Unexpected Results Appellants argue that "the instantly claimed fluid mixture unexpectedly provides ... substantially better corrosion resistance, which is connected to the boiling point temperature of the fluid mixture." Reply Br. 8. Appellants point to Table 4 of the Specification, which indicates that in Aluminum corrosion testing at 70Â°C, Comparative Example C 1-2 has a significantly higher rate of corrosion than Example 1-2. Appeal Br. 19. The composition of Comparative Example C 1-2 has an (A):(B) ratio of 70:30, which is the preferred ratio ofKleyer, whereas Example 1-2 has an (A):(B) ratio of about 95:5. See id. Appellants also note that the composition of Comparative Example C 1-1 has a boiling point of only 7 5 Â°C, whereas Example 1-1 has a boiling point of 134 Â°C ("2: 90Â°C," as required by claim 1). Reply Br. 6. The boiling points for Comparative Example Cl-2 and Example 1-2 are 62 Â°C and 7 6 Â°C, respectively, see Spec. 10, because of the 6 Appeal2014-005299 Application 13/069,252 addition of a corrosion agent designed to simulate long-term corrosion, Appeal Br. 21; Reply Br. 8-9. The Examiner determines that the evidence presented by Appellants fails to show unexpected results. Answer 24, 26-27. We find no reversible error in the Examiner's determination. In particular, the Examiner correctly finds that the Specification demonstrates that at least one mixture, with an (A):(B) ratio at the upper end of the broad range taught by Kleyer, would have a boiling point "2: 90Â°C" as required by claim 1. Answer 25. In particular, the composition of Example 1-3 is a mixture with an (A):(B) ratio of 90: 10 and a boiling point of 108 Â°C. Spec. 8-10 tbls. 1, 3. According to Table 4 of the Specification, the mixture of Example 1-4 (corresponding to Example 1-3, but containing the corrosion agent) has an average rate of corrosion essentially the same as Example 1-2, where the (A):(B) ratio is approximately 95:5. See id. at 11. Furthermore, claim 1 encompasses a broad class of anti-treeing agents and water-reactive compounds, yet Appellants have only directed our attention to corrosion tests relating to mixtures of one particular set of (A) and (B) components, phenylmethyldimethoxysilane and trimethylmethoxysilane. Spec. 8-11. Appellants have not pointed to evidence sufficient for us to conclude that "the great number and variety of compositions included by the claims would behave in the same manner as the [single] tested composition." In re Lindner, 457 F.2d 506 (Fed. Cir. 1972). Thus, Appellants have not met their burden to show unexpected results commensurate with the scope of claim 1. Because Appellants have failed to rebut the Examiner's prima facie case of obviousness, we find no reversible error in the Examiner's rejection of claims 1-6, 9-10, 12-15, and 18-21. 7 Appeal2014-005299 Application 13/069,252 DECISION The Examiner's decision is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ l .136(a)(l )(iv). AFFIRMED 8