Ex Parte Green et al

Patent Trial and Appeal BoardSep 11, 2018

14643100 (P.T.A.B. Sep. 11, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 14/643,100 03/10/2015 George D. Green 21898 7590 09/13/2018 ROHM AND HAAS COMPANY c/o The Dow Chemical Company P.O. Box 1967 2040 Dow Center Midland, MI 48641 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. 71338-US-PCD 6280 EXAMINER KEYS,ROSALYNDANN ART UNIT PAPER NUMBER 1671 NOTIFICATION DATE DELIVERY MODE 09/13/2018 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): FFUIMPC@dow.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte GEORGE D. GREEN and RAYMOND J. SWEDO Appeal 2017-009115 Application 14/643, 100 Technology Center 1600 Before ERIC B. GRIMES, MICHAEL J. FITZPATRICK, and SUSAN L. C. MITCHELL, Administrative Patent Judges. FITZPATRICK, Administrative Patent Judge. DECISION ON APPEAL George D. Green and Raymond J. Swedo ("Appellants") 1 appeal under 35 U.S.C. Â§ 134(a) from a decision finally rejecting claims 3-5. We have jurisdiction under 35 U.S.C. Â§ 6(b ). We affirm. 1 The real party in interest is identified as Rohm and Haas Company. Appeal Br. 4. Appeal 2017-009115 Application 14/643, 100 STATEMENT OF THE CASE The Specification According to Appellants, the claimed invention "relates to new compounds useful in a method for marking liquid hydrocarbons and other fuels and oils." Spec. 1:1-2. The Rejected Claims The rejected claims are reproduced as follows: 3. A compound having formula (Ph3C)mAr(OR)n, wherein Ph represents a phenyl group, Ar is a C6-C 12 hydrocarbyl aromatic ring system, R is C3-C12 alkyl or C7-C12 aralkyl, m is one or two, and n is two or three. 4. The compound of claim 3 in which R is C3-C12 alkyl. 5. The compound of claim 4 in which Ar is a benzene ring system, n is two, and R is C3-C12 alkyl. Appeal Br. 11. The Appealed Rejection The following rejection is before us for review: claims 3-5 under 35 U.S.C. Â§ 103(a) (pre-AIA) as unpatentable over Clapp. 2 Final Act. 3. DISCUSSION The Final Office Action states that claims 3-5 are rejected as obvious over Clapp "for the reasons given in the previous office action, mailed March 11, 2016." Final Act. 3. However, the office action mailed March 11, 2016, does not contain a rejection of claims 3-5. Thus, we presume the 2 Daniel P. Clapp, The Phosphorescence of Tetraphenylmethane and Certain Related Substances, 61 J. AM. CHEM. Soc. 523-24 (Feb. 1939) ("Clapp"). 2 Appeal 2017-009115 Application 14/643, 100 Final Office Action meant to refer instead to the immediately previous office action, which was mailed May 25, 2016. Indeed, the rejection of claims 3-5 in the May 25, 2016, office action is identical to the rejection as stated in the Examiner's Answer mailed March 28, 2017. Compare May 25, 2016, Non- Final Act. 5-6, with Ans. 3--4. Clapp is titled The Phosphorescence of Tetraphenylmethane and Certain Related Substances. Clapp 523. Clapp discloses that tetraphenylmethane, which is outside the scope of claims 3-5, "shows a brilliant blue-green after-glow, with a visible duration at room temperature of about twenty-three seconds." Id. Clapp further discloses that "tetraphenylmethane derivatives containing [certain] substituents also show phosphorescence, although less marked." Id. at 524. Among these substituents are "4-methoxy, 2,4-dimethoxy, [and] 4-ethoxy." Id. "The color of the after-glow varies from green to blue, with visible durations of two to twelve seconds." Id. The tetraphenylmethane derivatives identified by Clapp also are outside the scope of claims 3-5. However, as the Examiner found, at least three of the derivatives differ from all of claims 3-5 only with respect to the "R" in the recited formula of (Ph3C)mAr(OR)n. See May 25, 2016, Non-Final Act. 5; Ans. 3--4. In that regard, the Examiner found as follows: Clapp discloses compounds having the formula (Ph3C)mAr(OR)n, where Ph represents a phenyl group; Ar is a C6 hydrocarbyl aromatic ring system, specifically a benzene ring system; m is one and n is 2 ( see entire disclosure, in particular paragraph[s] 2 and 4 on page 524). Clapp differs from the instant claims in that Clapp disclose compounds wherein R is C 1 alkyl, which differs as the lower homo log of the claimed C3-C12 alkyl. 3 Appeal 2017-009115 Application 14/643, 100 May 25, 2016, Non-Final Act. 5; Ans. 3--4. Appellants do not dispute these findings. See Appeal Br. 7. 3 The Examiner also found that Clapp teaches that these tetraphenylmethane derivatives provide favorable "grundmaterial" for developing additional organic phosphors. May 25, 2016, Non-Final Act. 5 ( citing Clapp 524); Ans. 4 (same). The Examiner concluded that given "the close similarity in structure between the claimed chemical compounds and those of Clapp[,] ... one of ordinary skill in the art at the time the invention was made would have been motivated to make the claimed compounds in searching for new phosphors." May 25, 2016, Non-Final Act. 5---6; Ans. 4. Appellants argue the Examiner did not "provide[] any reason that one would have selected any one of the alkoxy-substituted tetraphenylmethanes, or any of the other compounds mentioned in Clapp, as the 'known compound' which is the best starting point for these specific modifications, as required by Takeda [Chem. Indus., Ltd. v. Alp hap harm Pty., Ltd., 492 F.3d 1350, 1357 (Fed. Cir. 2007)]." Appeal Br. 8. Appellants also argue that the Examiner failed to identify a reason why a person of ordinary skill in the art would have made the required modification. Id. We are not persuaded by either argument. The Examiner relies on Clapp at page 524, which explicitly teaches both the starting compounds and a reason to modify them. See May 25, 2016, Non-Final Act. 5---6 (citing Clapp 524); Ans. 4 (same). In that regard, Clapp states: 3 Appellants did not file a reply brief. 4 Appeal 2017-009115 Application 14/643, 100 It is known that . . . triphenyhnethane dyes[] are responsible for the phosphorescence of many solid organic compounds. If this is the case with tetraphenylmethane and related substances, it would seem that this entire series of compounds provides a favorable "grundmaterial" for organic phosphors. Clapp 524 (footnote omitted). Notably, the "related substances" explicitly include tetraphenylmethane derivatives with the following alkoxy- substituents: "4-methoxy, 2,4-dimethoxy, [and] 4-ethoxy." Id. Appellants also argue that a person of ordinary skill in the art would not have been motivated to substitute larger alkoxy groups (i.e., C3-C12) because Clapp taught that the substitution of smaller alkoxy groups (i.e., C1 and C2), had led to a reduction in the temporal duration of phosphorescence from about 23 seconds to a range 2-12 seconds. Appeal Br. 7. We are not persuaded by this argument, which is based on unestablished premises. First, it is based on the unestablished premise that a shorter temporal duration of phosphorescence lacks utility or would be undesirable. Second, it is based on the unestablished premise that temporal duration is the only quality in which a person of ordinary skill would be interested. Both premises are unsupported based on the record before us. As the Examiner points outs: [T]he teachings of Clapp provide[] motivation for the skilled artisan to obtain new organic phosphors that vary in the duration of the phosphorescence by modifying the temperature or that vary in the duration of the phosphorescence or the color or intensity (less marked) of the after-glow by modifying the structure of tetraphenylmethane to obtain tetraphenylmethane derivatives containing the substituents which have been shown to also show phosphorescence. Ans. 5 (emphasis added). 5 Appeal 2017-009115 Application 14/643, 100 SUMMARY For the reasons discussed, we affirm the Examiner's rejection of claims 3-5. TIME PERIOD No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l )(iv). AFFIRMED 6