Ex Parte Hagen et al

Patent Trial and Appeal Board

Mar 28, 2017

13121967 (P.T.A.B. Mar. 28, 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.
13/121,967 05/13/2011 Rainer Hagen 074033-023 l-US-287266 3956
123223 7590 03/31/2017
Drinker Biddle & Reath LLP (WM)
222 Delaware Avenue, Ste. 1410
Wilmington, DE 19801-1621
EXAMINER
ANGEBRANNDT, MARTIN J
ART UNIT PAPER NUMBER
1722
NOTIFICATION DATE DELIVERY MODE
03/31/2017 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):
IPDocketWM @ dbr.com
penelope. mongelluzzo @ dbr. com
DB RIPDocket @ dbr. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RAINER HAGEN, NICOLAS STOECKEL,
FRIEDRICH-KARL BRUDER, FRANCOIS DEUBER,
THOMAS ROELLE, THOMAS FAECKE, MARC-STEPHAN WEISER,
and DENNIS HOENEL
Appeal 2014-005532
Application 13/121,967
Technology Center 1700
Before PETER F. KRATZ, MARK NAGUMO, and
WESLEY B. DERRICK, Administrative Patent Judges.
KRATZ, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 13—18 and 20—27. We have jurisdiction
pursuant to 35 U.S.C. § 6.
Appellants’ claimed invention is directed to a medium suitable for
recording holograms comprising a specified carrier I and a specified
polyurethane composition-based photopolymer strata II applied to the
carrier. Appellants disclose “not more than 200 pm” as a preferred layer
thickness for the photopolymer strata II (Spec. 5,11. 6-8). According to
Appellants’ Specification “[t]he polyurethane compositions of the
Appeal 2014-005532
Application 13/121,967
photopolymer strata II) preferably have a total surface tension which is less
than that of the carrier I), including any coatings thereof’ and “[ojwing to
the lower surface tension, it is possible to achieve layers of the
photopolymer strata II) in particular in the abovementioned thickness range
and with good surface quality” (Spec. 5,11. 9-17). The surface tension is
disclosed as being calculated from specified contact angle measurements
(Spec. 5,11. 10-15; 23,11. 10-14).
Claim 13, the sole independent claim on appeal, requires the carrier
(which could be glass, polycarbonate, polyethylene terephthalate, cellulosic
triacetate, etc.') to have a specified transparency but does not limit the
carrier to a particular material or thickness. Claim 13 requires the
polyurethanes that the photopolymer stratum is based upon to comprise a
composition derived from a polyisocyanate component A1 2, an isocyanate-
reactive component B3, actinic radiation reactive compounds C4,
photoinitiators D5, and free radical stabilizers E6.
1 See Spec. 3,11. 14-19.
2 Appellants disclose that the polyisocyanate A embraces “all compounds
well known per se to the person skilled in the art or mixtures thereof which
have on average two or more NCO functions per molecule” (Spec. 5,11. 25—
27.
3 Appellants disclose that “all polyfunctional, isocyanate-reactive
compounds which have on average at least 1.5 isocyanate-reactive groups
per molecule can be used per se as component B)” (Spec. 6,11. 14—15).
4 See Spec. 8,1. 19-p. 12,1. 12.
5 See Spec. 12,1. 13-p. 14,1. 13.
6 See Spec. 14,1. 16-23.
2
Appeal 2014-005532
Application 13/121,967
Claim 13 is illustrative and reproduced below:
13. A medium suitable for recording holograms, comprising:
I) as a carrier, a stratum of a transparent material which is transparent
to light in the visible spectral range, having a transmission of greater than
85% in the wavelength range of 400 to 780 nm; and
II) at least one photopolymer stratum applied to the carrier I) and
based on polyurethane compositions, comprising
A) a polyisocyanate component,
B) an isocyanate-reactive component,
C) compounds which have groups reacting under the action of actinic
radiation with ethylenically unsaturated compounds with polymerization
(radiation-curing groups) and which themselves are free of NCO groups,
D) photoinitiators, and
E) free radical stabilizers,
wherein the polyurethane compositions of the photopolymer stratum II) have
a total surface tension which is less than that of the carrier I).
The Examiner relies on the following prior art references as evidence
in rejecting the appealed claims:
Takeyama US 2005/0250016 A1
Takizawa US 2006/0194122 A1
Whiteside et al. US 7,173,744 B1
Sasaki US 2007/0223348 Al
Hayashida et al. US 2009/0305146 Al
Stoeckel et al. WO 2008/125199 Al
Nov. 10, 2005
Aug. 31,2006
Feb. 6, 2007
(“Whiteside”)
Sept. 27, 2007
Dec. 10, 2009
(“Hayashida”)
Oct. 23, 2008
(“Stoeckel”)
The Examiner maintains the following grounds of rejection:
1. Claims 13, 14, 16, and 23—27 stand rejected under 35 U.S.C.
§ 102(e) as being anticipated by Hayashida.
2. Claims 13, 15—17, and 23—27 stand rejected under 35 U.S.C.
§ 102(b) as being anticipated by Takeyama.
3
Appeal 2014-005532
Application 13/121,967
3. Claims 13, 14, 16—18, and 23—27 stand rejected under 35 U.S.C.
§ 102(b) as being anticipated by Takizawa.
4. Claims 13—17, and 20—27 stand rejected under 35 U.S.C. § 102(e)
as being anticipated by Stoeckel.
5. Claims 13—18 and 20-27 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Stoeckel.
6. Claims 13—18 and 23—27 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Whiteside.
7. Claims 13—17 and 23—27 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Sasaki.
8. Claims 13—18 and 20-27 stand provisionally rejected on the
ground of nonstatutory obviousness-type double patenting as being
unpatentable over claims 15—33 of Application No. 13/540,190, now
abandoned.
9. Claims 13—18 and 20-27 stand provisionally rejected on the
ground of nonstatutory obviousness-type double patenting as being
unpatentable over claims 13—27 of Application No. 13/201,004, now
matured into U.S. Patent No. 8,715,889.
10. Claims 13—18 and 20-27 stand provisionally rejected on the
ground of nonstatutory obviousness-type double patenting as being
unpatentable over claims 1—13 of Application No. 12/569,203, now
abandoned.
11. Claims 13—18 and 20-27 stand provisionally rejected on the
ground of nonstatutory obviousness-type double patenting as being
unpatentable over claims 1—13 of Application No. 12/569,344, now matured
into U. S. Patent No. 8,361,678.
4
Appeal 2014-005532
Application 13/121,967
12. Claims 13—18 and 20—27 stand provisionally rejected on the
ground of nonstatutory obviousness-type double patenting as being
unpatentable over claims 1—13 of Application No. 12/704,571, now matured
into U. S. Patent No. 8,685,595.
13. Claims 13—18 and 20—27 stand rejected on the ground of
nonstatutory obviousness-type double patenting as being unpatentable over
claims 1—10 ofU.S. Patent No. 7,981,987.7
Obviousness—type Double Patenting Rejections
The provisional obviousness-type double patenting rejections over
certain claims of Application No. 13/540,190 and Application No.
12/569,203 (Rejections 8 and 10) are moot because PTO records indicate
that the latter Applications have an abandoned status.
Appellants do not dispute the remaining obviousness-type double
patenting rejections (Rejections 9 and 11—13) (App. Br. 10-11).
Accordingly, we summarily affirm the latter rejections.
Prior Art Rejections
After review of the opposing positions articulated by Appellants and
the Examiner, the applied prior art, and Appellants’ claims and Specification
disclosures, we determine that the Appellants’ arguments are insufficient to
identify reversible error in the Examiner’s anticipation and/or obviousness
rejections over the applied prior art (Rejections 1—7). In re Jung, 637 F.3d
1356, 1365 (Fed. Cir. 2011).
7 Contrary to Appellants’ argument, Rejection 13 is and was not a
provisional rejection at the time Appellants filed the Appeal Brief (Br. 11).
5
Appeal 2014-005532
Application 13/121,967
Accordingly, we affirm the stated anticipation and obviousness
rejections for substantially the fact findings and the reasons set forth by the
Examiner in the Examiner’s Answer and the Final Office Action. We offer
the following for emphasis only.
Concerning the Examiner’s anticipation and obviousness rejections
over the applied prior art, Appellants argue the rejected claims together as a
group with respect to each rejection. Accordingly, we select claim 13 as the
representative claim on which we focus in deciding this appeal as to each of
the stated rejections.
Appellants’ argument with respect to each of the anticipation
rejections and as to each of the obviousness rejections as presented by the
Examiner is essentially limited to the total surface tension limitation of
representative claim 13 as an argued distinction (Br. 6—10; claim 13).
Appellants contend that the Examiner has not carried the burden to establish
that the applied reference as utilized by the Examiner in any of the four
anticipation rejections and any of the three obviousness rejections
discloses/teaches a hologram recording medium that would have expressly
or inherently possessed a relative surface tension characteristic that satisfies
the limitation “wherein the polyurethane compositions of the photopolymer
stratum II) have a total surface tension which is less than that of the carrier
I)” (claim 13; Br. 6-10).
For each of the Examiner’s anticipation rejections (Rejections 1—4),
Appellants do not particularly address and contest all of the Examiner’s
factual findings as to the teachings of each of the applied references
(Hayashida, Takeyama, Takizawa, and Stoeckel, respectively) and the
correspondence thereof with Appellants’ claim 13 and the Specification
6
Appeal 2014-005532
Application 13/121,967
disclosure that undergird the Examiner’s anticipation position. In particular,
the Examiner maintains that the recording medium of each of these applied
references has a carrier and a polyurethane-based photopolymer stratum
substantially corresponding to that claimed such that it is reasonable to
expect that the respective references’ recording medium would be possessed
of a total stratum polyurethane compositions surface tension that is lower
than the carrier surface tension (Final Act. 2-4, 6—7; Ans. 2-4, 6; see Ans.
9-17).
For example and with respect to Rejection 1, as identified above, the
Examiner finds that Hayashida discloses recording material layers
(photopolymer stratum) having a composition according to Table 2, “which
is applied to glass substrates [visible light transparent carrier] and then
affixed to each other using a 67 nm polycarbonate film and the recording
layer is 200 microns thick [0065-0068]” (Final Act. 3). The Examiner
essentially finds, inter alia, that the hexamethylene diisocyanate of
Hayashida corresponds to Appellants’ disclosed and claimed polyisocyanate
component A, Hayashida’s photopolymerization initiator corresponds to
Appellants’ photoinitiator D, Hayashida’s glycols (modified glycerol
propylene oxide) correspond to Appellants’ isocyanate reactive component
B, and Hayashida’s acrylates (EO modified tribromophenol acrylate)
correspond to Appellants’ component C (Final Act. 3; Hayashida (Table 2;
Spec. 14,11. 16-23).
The Examiner takes the position that the recording materials are
substantially the same, maintaining Hayashida’s “coatings are well formed
and demonstrated to be useful for recording holograms and therefore the
surface tension limitations are [inherently] met” (Final Act. 3). The
7
Appeal 2014-005532
Application 13/121,967
Examiner finds that Appellants present no comparative example showing a
medium suitable for recording holograms that has a polyurethane-based
photopolymer stratum applied to a transparent carrier, which fails to have a
surface tension relationship respecting the polyurethane compositions and
the carrier, as claimed (Ans. 10—12).
Appellants do not particularly argue how Hayashida fails to meet the
carrier I and/or the photopolymer stratum II compositional requirements
called for in representative claim 13. Rather, Appellants proffer the
conclusory contention that “the rejection fails to have a basis in fact or
reasoning which shows that the claimed total surface tension feature
necessarily flows from the teachings of Hayashida” (Br. 7).
Similarly, for the other rejections, the Examiner makes factual
findings with respect to how each of the separately applied references
(Takeyama, Takizawa, and Stoeckel, respectively) discloses subject matter
corresponding to the subject matter of representative claim 13 but for
expressly describing the surface tension feature in the other anticipation
rejections (Rejections 2-4) and as to how each of Stoeckel, Whiteside, and
Sasaki (Obviousness Rejections 5—7) would have taught or suggested a
holograph recording medium substantially corresponding to the
representative claim 13 medium but for the surface tension limitation (Final
Act. 3—7). Based on the correspondence of structure and holographic
functionality, the Examiner takes the position that the surface tension
property as called for in representative claim 13 would have been inherently
obtained based on the prior art teachings or suggestions set forth by the
Examiner in each of Rejections 2—7 (id.).
8
Appeal 2014-005532
Application 13/121,967
As with the argument against the Examiner’s Rejection 1, Appellants
proffer conclusory contentions with respect to each of Rejections 2—7 that
the latter rejections fail for lack of an adequate basis in fact or reasoning to
support the Examiner’s inherency position as to the surface tension
limitation of claim 13 (Br. 7—10).
However, it is also well settled that when a claimed product
reasonably appears to be substantially the same as a product disclosed by the
prior art, the burden is on the applicant to prove that the prior art product
does not necessarily or inherently possess characteristics attributed to the
claimed product, and that it is of no moment whether the rejection is based
on § 102 or § 103 since the burden is on the applicant is the same. In re
Spada, 911 F.2d 705, 708 (Fed Cir. 1990); In re Best, 562 F.2d 1252, 1255
(CCPA 1977).
Appellants have not provided any persuasive reasoning or credible
evidence to refute the Examiner’s inherency determinations by the
conclusory arguments presented in traversing each of Rejections 1 through
7. “Attorney’s arguments in a brief cannot take the place of evidence.” In re
Pearson, 494 F.2d 1399, 1405 (CCPA 1974). See In re Crish, 393 F.3d
1253, 1259 (Fed. Cir. 2004) (“[Wjhen the prior art evidence reasonably
allows the PTO to conclude that a claimed feature is present in the prior art,
the evidence ‘compels such a conclusion if the applicant produces no
evidence or argument to rebut it.’” (quoting Spada, 911 F.2d at 708 n.3)).
Accordingly, Appellants’ argument fails to show harmful error in the
Examiner’s prima facie determination of the unpatentability of
representative claim 13 over the separately applied prior art in each of
9
Appeal 2014-005532
Application 13/121,967
Rejections 1—7 for the reasons set forth in the Final Action and Answer
based on the conclusory argument presented.
Appellants have not met their burden to show harmful error in the
Examiner’s rebuttable determination that the product mediums taught or
suggested by each of the separately applied prior art references inherently
satisfy the argued surface tension feature of representative claim 13.
Accordingly, the Examiner’s §§102 and 103 rejections are affirmed
with respect to all of the claims on appeal.
CONCLUSION/ORDER
The Examiner’s decision to reject the appealed claims is affirmed.
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
10