Ex Parte Mayville et al

Patent Trial and Appeal BoardMay 29, 2013

11105901 (P.T.A.B. May. 29, 2013)

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. 11/105,901 04/14/2005 Christian G. Mayville GIPH 0102 PUSP 3907 22045 7590 05/30/2013 BROOKS KUSHMAN P.C. 1000 TOWN CENTER TWENTY-SECOND FLOOR SOUTHFIELD, MI 48075 EXAMINER DICUS, TAMRA ART UNIT PAPER NUMBER 1791 MAIL DATE DELIVERY MODE 05/30/2013 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 CHRISTIAN G. MAYVILLE1 and Christopher J. Wawsczyk ________________ Appeal 2011-007016 Application 11/105,901 Technology Center 1700 ________________ Before CATHERINE Q. TIMM, MARK NAGUMO, and CHRISTOPHER L. CRUMBLEY, Administrative Patent Judges. NAGUMO, Administrative Patent Judge. DECISION ON REQUEST FOR RECONSIDERATION2 Christian G. Mayville and Christopher J. Wawsczyk (“Mayville”) timely request reconsideration3 of the decision mailed 14 March 2013, 1 The real party in interest is listed as NJT Enterprises, LLC. (Appeal Brief, filed 23 July 2010 (“Br.”), 1.) 2 See also the corresponding Request in Appeal 2011-009386, application 11/106,082, decided concurrently. 3 Request for Reconsideration, filed 13 May 2013 (“Request,” cited as “Req.”) 1, 1st para. Appeal 2011-007016 Application 11/105,901 2 affirming the final rejection4 of claims 1-7 and 30 under § 103 in view of Heuwinkel.5, 6 We deny the relief requested. Initially, we observe that the request in this case appears to be substantially identical7 to the request filed in the companion case, Appeal 2011-009386. Accordingly the Opinions in support of the Decisions on Reconsideration are substantially the same. A Request for Reconsideration, inter alia, must state with particularity the points believed to have been misapprehended or overlooked by the Board. Arguments not raised in the briefs before the Board and evidence not previously relied upon in the brief and any reply brief(s) are not permitted in the request for rehearing except as permitted by paragraphs (a)(2) [recent relevant decision of the Board or a Federal Court] and(a)(3) of this section [new ground]. 37 C.F.R. §41.52(a)(1) (2011) (emphasis added). Mayville urges three bases for reconsideration of our decisions: (1) Heuwinkel does not disclose an extruded thermoplastic film; (2) the compositions (paints) disclosed by Heuwinkel cannot be extruded; 4 Office action mailed 8 April 2010. 5 Heike Heuwinkel et al., Aqueous Coating Media and Their Use in Single- Layer and Multi-Layer Coating Processes, U.S. Patent 5,886,085 (1999). 6 Mayville states that it agrees to file a terminal disclaimer over the Wawsczyk patent. (Req. 1, 1st para.) 7 The mention of Mientus in this case (Req. 1, 1st para.) is inapposite as no corresponding rejection was appealed or reviewed. Appeal 2011-007016 Application 11/105,901 3 (3) “following cure (by crosslinking), the Heuwinkel films are not thermoplastic as required by the claims, but are thermoset films.” (Req. 1, 2d para.) Mayville’s arguments in the remainder of the Request focus on the alleged teaching by Heuwinkel of cross-linked, thermoset films. (Id. at 2.) Mayville has not, however, directed our attention to any prior argument and citations to supporting evidence in the principal Brief on Appeal8 or in the Reply9 distinguishing Heuwinkel by the alleged cross- linked character of the disclosed coatings.10 We cannot have misapprehended or overlooked an argument that was not made. Review of Mayville’s arguments previously filed shows that Mayville focused on the alleged non-extrudability of the compositions disclosed by Heuwinkel. As explained in the Decision, that focus is inapposite. We conclude that Mayville has not shown good cause to modify the Decision. 8 Brief filed 23 July 2010. 9 Reply Brief filed 10 March 2011. 10 In this regard, we note that Heuwinkel teaches that component I(B), which is characterized as a crosslinking agent, can be present at 0-50% by weight. (Heuwinkel, abstract; col. 2, ll. 51-55; col. 6, ll. 7-39.) Thus, this crosslinking component need not be present. Moreover, component II(C), a binder vehicle present at 1-30% by weight, is characterized as having ionic groups of charge opposite to those in component A). (Heuwinkel, abstract, col. 2, l. 56-col. 3, l. 2; col. 6, ll. 40-50.) As illustrated by Mayville’s 901 Specification, it is well known that standard ionomers are thermoplastic polymers that contain both covalent and ionic bonds. Heuwinkel’s disclosure, contrary to Mayville’s implicit argument, includes non-covalently crosslinked coatings based on ionomers. Appeal 2011-007016 Application 11/105,901 4 C. Order We have considered Mayville’s Request for Reconsideration but we decline to modify the Decision. DENIED cam