Ex Parte Hobisch et alDownload PDFPatent Trial and Appeal BoardSep 26, 201210565014 (P.T.A.B. Sep. 26, 2012) Copy Citation 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. 10/565,014 01/18/2006 Gerald Hobisch 11885-00075-US 5437 23416 7590 09/27/2012 CONNOLLY BOVE LODGE & HUTZ, LLP P O BOX 2207 WILMINGTON, DE 19899 EXAMINER DOLLINGER, MICHAEL M ART UNIT PAPER NUMBER 1766 MAIL DATE DELIVERY MODE 09/27/2012 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 GERALD HOBISCH and PETER MORRE ____________ Appeal 2011-010748 Application 10/565,014 Technology Center 1700 ____________ Before ADRIENE LEPIANE HANLON, BEVERLY A. FRANKLIN, and DEBORAH KATZ, Administrative Patent Judges. FRANKLIN, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134 from the Examiner's rejection of claims 1 and 6. We have jurisdiction under 35 U.S.C. § 6. STATEMENT OF THE CASE Claim 1 is representative of the subject matter on appeal and we refer pages 9-10 of Appellants’ Brief for a copy of claim 1 rather than reproduce it herein. Appeal 2011-010748 Application 10/565,014 2 The prior art relied upon by the Examiner in rejecting the claims on appeal is: Tuemmler US 6,114,434 Sep. 5, 2000 Staritzbichler EP 0 272,524 Jul. 12, 1987 THE REJECTION Claims 1 and 6 are rejected under 35 U.S.C. §103(a) as being unpatentable over Staritzbichler in view of Tuemmler. ANALYSIS As an initial matter, Appellants have not presented separate arguments for all of the rejected claims. Rather, Appellants’ arguments are principally directed to independent claim 1. Any claim not separately argued will stand or fall with its respective independent claim. See 37 C.F.R. § 41.37(c)(1)(vii). With regard to the prior art rejection, we essentially adopt the Examiner’s findings pertinent to the issues raised by Appellants. We therefore incorporate the Examiner’s position as set forth in the Answer. We add the following for emphasis only. It is the Examiner position that it would have been obvious to use: the preferred polycarboxylic polymer A from Tuemmler as the polycarboxylic acid polymer A of Staritzbichler because Tuemmler teaches that the polycarboxylic acid A features a high pigment binding capacity, is stable on storage, and undergoes little or no change in viscosity in the course of storage in the pigment pastes produced therefrom. Ans. 6-7. Appeal 2011-010748 Application 10/565,014 3 The Examiner concludes that it would have been obvious to have combined Tuemmler’s polymer A with Staritzbichler’s polymer B to arrive at the claimed combination of polymer A and polymer B according to claim 1. Ans. 6-7. Appellants argue: Contrary to the Examiner's assertions, Tuemmler does not teach that any advantage could be achieved by combining the polycarboxylic polymer A with the hydroxyl group-containing polyesters B taught in Staritzbichler. Tuemmler is specifically and squarely directed to component B being an aldehyde or ketone. For example, Tuemmler states in col. 1, 11. 46-48, "[i]t was the object of the present invention to provide water-dilutable resins based on water-insoluble aldehyde or ketone resins..." (emphasis added). Thus, the only advantage that can be gleaned from the use of component A taught in Tuemmler is with an aldehyde or ketone resin as component B. Tuemmler does not disclose or suggest that their component A could be useful in any other manner other than with an aldehyde or ketone resin. Moreover, all beneficial results obtained within Tuemmler require component B to be an aldehyde or ketone resin. Unlike Tuemmler, no such aldehyde or ketone resin is involved in the present invention or in the invention of Staritzbichler. As such, there is no reasonable expectation for one of ordinary skill in the art to expect that any advantage achieved in Tuemmler by using component A would be successful in the invention of Staritzbichler. Br. 6. We are not convinced by the above-mentioned argument because, as the Examiner correctly points out on pages 7-8 of the Answer, Staritzbichler does contain a resin of formaldehyde condensate with melamine, urea, benzoguanamine, etc. Staritzbichler, p. 2, para, 2 of machine translation. The Examiner points out that these encompass the aldehyde-urea polymers Appeal 2011-010748 Application 10/565,014 4 B of Tuemmler. Tuemmler, col. 2, l. 8. The Examiner therefore correctly states that Appellants have not addressed this aspect of the rejection. Ans. 8. As such, we are not convinced of error by such argument. Appellants then argue that the polyester B of Staritzbichler contains urethane groups which are necessary components that ensure the disclosed intrinsic viscosity desired by Staritzbichler. Appellants argue that these urethane groups are excluded by the claims from the claimed polyester B. We are not persuaded of error because, as stated by the Examiner on page 8 of the Answer, the claimed language in claim 1 does not exclude urethane groups from the polyester B of the claims. The Examiner also explains that: [a] polyester urethane still reads on a polyester, as evidenced by Staritzbichler's use of the term "polyester" to describe component B. The disclosed polymer B of Staritzbichler is based on polyester and contains all the claimed components in the claimed amounts and exhibits the claimed hydroxyl number. Ans. 8. The Appellants have failed to establish otherwise. In view of the above, we affirm the rejection. CONCLUSIONS OF LAW AND DECISION The rejection 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)(1). AFFIRMED sld Copy with citationCopy as parenthetical citation