Ex Parte Haese et al

Patent Trial and Appeal Board

Nov 30, 2012

11312013 (P.T.A.B. Nov. 30, 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.
11/312,013 12/20/2005 Wilfried Haese PO8621/BMS041122 5197
23416 7590 11/30/2012
CONNOLLY BOVE LODGE & HUTZ, LLP
P O BOX 2207
WILMINGTON, DE 19899
EXAMINER
HIGGINS, GERARD T
ART UNIT PAPER NUMBER
1785
MAIL DATE DELIVERY MODE
11/30/2012 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 WILFRIED HAESE, BURKHARD REITZE,
ALEXANDER MEYER, MICHAEL PREIN,
FRIEDRICH-KARL BRUDER, MICHAEL ROPPEL,
MATTHIAS VOETZ, and DIETER RUHLE
____________

Appeal 2011-010403
Application 11/312,013
Technology Center 1700
____________

Before TERRY J. OWENS, MARK NAGUMO, and
GRACE KARAFFA OBERMANN, Administrative Patent Judges.

Opinion for the Board by OBERMANN, Administrative Patent Judge.

Opinion concurring in part by NAGUMO, Administrative Patent Judge.

DECISION ON APPEAL
The named inventors (collectively “Appellant”) appeal under 35
U.S.C. § 134 from the rejection of claims 6, 8, and 9 directed to an optical
data storage substrate. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
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STATEMENT OF THE CASE
Claim 6 is illustrative of the subject matter on appeal:
6. An optical data storage substrate having a surface and
comprising a polymeric material comprising a polycarbonate
prepared by a phase interface process from one or more
bisphenols and phosgene, wherein the phosgene is present in an
excess of 8 to 17 mol% during the process based on a total
amount of the one or more bisphenols; wherein 95 to 100% of
the surface of the substrate has a potential value of - 1.5 to + 1.5
kV; wherein 0 to 5% of the surface of the substrate has a
potential value between -1.5 and -2.5, and + 1.5 to +2.5 , and
wherein no more than 1 % of the surface of the substrate has a
potential value less than -2.5 kV and more than +2.5 kV,
wherein all potential values are measured with a Monroe probe
at a distance of 3.5 mm from the surface of the substrate with a
scanning region for each value measured of 12 cm in an X- and
Y-direction, and for each value measured in steps of 2 mm in
the X- and in the Y-directions.

The Examiner relies on the following evidence of unpatentability:

Horn US 3,787,359 Jan. 22, 1974
Kauth US 6,613,868 B2 Sept. 2, 2003

THE REJECTIONS
Appellant seeks our review of the following rejections, which we refer
to by number in our analysis:
1. Claims 6, 8, and 9 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Kauth; and
2. Claims 6, 8, and 9 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Horn in view of Kauth.

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ISSUES
The following dispositive issues arise:
1. Does the Examiner err in finding that Kauth describes the
subject matter of claim 6, including the limitation that requires an optical
data storage substrate comprising a polycarbonate prepared by a process
wherein “phosgene is present in an excess of 8 to 17 mol%” based on the
total amount of bisphenols?
2. Does the Examiner err in finding that an ordinary artisan would
have been led to combine the disclosures of Horn and Kauth?
We answer the first question in the affirmative and, on that basis,
reverse Rejection 1. We answer the second question in the negative and, on
that basis, affirm Rejection 2.

ANALYSIS
For each rejection, Appellant argues claims 6, 8, and 9 as a group.
App. Br. 6-7.1 We select claim 6 as representative of the group. Claims 8
and 9 stand or fall with claim 6. 37 C.F.R. § 41.37(c)(1)(vii).

Rejection 1: Anticipation by Kauth
Claim 6 specifies an optical data storage substrate comprising a
polycarbonate prepared by a process wherein “phosgene is present in an
excess of 8 to 17 mol%” based on the total amount of bisphenols. The
Examiner finds that Kauth describes molar excesses of phosgene in ranges
of “12 to 22 %” and “14 to 20 %.” Ans. 4 (citing Kauth 3:28-32). On that

1 We refer in our analysis to the Examiner’s Answer mailed March 22, 2011
(“Ans.”) and the Appeal Brief filed January 28, 2011 (“App. Br.”).
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basis, the Examiner reasons that Kauth “teaches a 12 % and 14 % molar
excess of phosgene,” id. at 8, which anticipates the specified range of “8 to
17 mol%.” Claim 6.
Appellant disagrees, contending that “Kauth fails to disclose a specific
embodiment that uses a phosgene excess” within the specified range. App.
Br. 3. Appellant argues that Kauth discloses “phosgene excesses of 18.5,
19.1, 20.0, and 20.0 mol %, respectively, in its Examples 1 through 4.” Id.
at 3 and n.1 (clarifying how the phosgene excesses of Examples 1 through 4
were calculated). The Examiner appears to accept Appellant’s calculations
regarding the phosgene molar excesses employed in Kauth’s examples, but
finds that Kauth’s general description of overlapping ranges is anticipatory,
notwithstanding that each of Kauth’s examples describes a phosgene molar
excess that falls outside of the specified range. See Ans. 7-8.
When the prior art discloses a range that overlaps a specified range,
but no specific examples falling within the specified range are disclosed, a
fact-dependent question arises as to whether the reference describes the
claimed subject matter “with sufficient specificity to anticipate” the claim.
Atofina v. Great Lakes Chem. Corp., 441 F.3d 991, 999 (Fed. Cir. 2006)
(holding that a reference’s temperature range of 100-500 degrees C did not
describe the specified range of 330-450 degrees C with sufficient specificity
to anticipate the claim); see MPEP § 2131.03 (Part II). In our opinion, the
Examiner fails as a matter of fact to identify an anticipatory embodiment in
Kauth, or to adequately explain why Kauth’s general disclosure of phosgene
molar excess ranges (“12 to 22 %” and “14 to 20 %”) describes the specified
range (“8 to 17 mol%) with sufficient specificity to anticipate claim 6.
On this record, we reverse Rejection 1.
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Rejection 2: Obviousness over Horn in view of Kauth
The Examiner concludes that the subject matter of claim 6 would have
been obvious over Horn in view of Kauth. Ans. 5-6. Horn describes a
polycarbonate useful in “the manufacture of safety glass, crash helmets,
insulators for electrical purposes, household articles, panels, sheeting, fibers,
and films,” but does not specifically mention its usefulness in manufacturing
optical data storage substrates. Horn 6:3-9; App. Br. 4. The Examiner finds
that, where Horn and Kauth “are both drawn to polycarbonates formed using
a two-phase interface process, it would have been obvious to” use Horn’s
polycarbonate as a substrate for optical recording media as taught by Kauth.
Ans. 5. The Examiner further finds that both Kauth and the ordinary artisan
recognize that “[p]olycarbonate is ubiquitous as substrate materials for
optical recording media.” Id.
Appellant disagrees, contending that “Kauth teaches that its process
results in very high-quality polycarbonate, as measured by its yellowness
index and terminal phenolic OH group content.” App. Br. 4. In Appellant’s
view, “Horn gives no indication that its process results in polycarbonate of
comparable quality” and, therefore, “it would be unpredictable by the skilled
artisan that the polycarbonate of Horn could successfully be used as a
substrate to make the optical recording media taught by Kauth.” Id. Thus,
Appellant reasons, “the skilled artisan would have no motivation or
suggestion to combine the disclosures of Horn and Kauth.” Id.
The Examiner responds that Horn in fact discloses “colorless
polycarbonate[s]” that an ordinary artisan would recognize as “valuable in
the field of optical recording media because they would not absorb or scatter
incident laser light used for recording/reproducing.” Ans. 8 (quoting Horn
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6:51-55 (Example 1)). We find that the Examiner’s reasoning adequately
addresses Appellant’s arguments as to the yellowness index discussed in
Kauth. App. Br. 4; see Kauth 2:17-21. Like Horn’s polycarbonates, Kauth’s
polycarbonates “may be used industrially in a known manner as any molded
articles or even sheets and films, for example in the automotive industry.”
Kauth 4:63-67; see Ans. 5 (citing Kauth 4:63-67); see also Horn 6:3-9
(identifying applications that include safety glass, sheeting, and films). On
this record, a preponderance of evidence supports the Examiner’s finding
that an ordinary artisan would have been led to use Horn’s “colorless
polycarbonate” as a substrate for optical recording media as taught by
Kauth. Ans. 8 (quoting Horn 6:51-55 (Example 1)); Ans. 5.
No persuasive argument or evidence having been brought forward by
Appellant, we affirm Rejection 2.

CONCLUSION
We reverse the rejection of claims 6, 8, and 9 as anticipated by Kauth.
We affirm the rejection of claims 6, 8, and 9 as unpatentable over
Horn in view of Kauth.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136.

AFFIRMED
Appeal 2011-010403
Application 11/312,013

NAGUMO, Administrative Patent Judge, concurring in part.
I join in the affirmance of the obviousness rejection. However, I write
separately because my reasons for reversing the anticipation rejection are
distinct from those of the majority.
It is well settled that, during examination, product-by-process claims
are rejected properly over prior art that discloses products, no matter how
made, that are the same or substantially the same as the product claimed.
See, e.g., In re Brown, 459 F.2d 531, 535 (CCPA 1972) (“when the prior art
discloses a product which reasonably appears to be either identical with or
only slightly different than a product claimed in a product-by-process claim,
a rejection based alternatively on either section 102 or section 103 of the
statute is eminently fair and acceptable.”) As the court explained, “the
Patent Office is not equipped to manufacture products by the myriad of
processes put before it and then obtain prior art products and make physical
comparisons therewith.” Id.
The Examiner appears to have assumed that the entire range of
phosgene relative excesses disclosed by Kauth provides essentially identical
polycarbonate product. Appellants appear to challenge this assumption,
implicitly arguing that the range recited in the claims provides a distinct
product. The evidentiary basis for these assumptions is not immediately
apparent from the record on appeal. However, the Examiner bore the initial
burden to come forward with evidence and argument that the reference
products were the same or substantially the same as products covered by the
claims. Not having done so, and not having explained why Appellants’
implicit challenge to the Examiner’s tacit assumption is incorrect (i.e., not
supported by the preponderance of the evidence of record), the Examiner
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failed to establish an adequate evidentiary basis for anticipation, and thus
failed to provide a sound basis for believing that the products of the
applicant and the prior art are the same. On the present record, the burden
was not shifted to Appellants to show that they are not. Accordingly, I
reverse the rejection for anticipation.

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