Ex Parte Meyer et al

Patent Trial and Appeal Board

May 16, 2014

11977616 (P.T.A.B. May. 16, 2014)

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.
11/977,616 10/25/2007 Alexander Meyer 15778*10 (BMS051042) 2791
23416 7590 05/19/2014
NOVAK DRUCE CONNOLLY BOVE + QUIGG LLP
(DE OFFICE)
1875 EYE STREET, N.W.
SUITE 1100
WASHINGTON, DC 20006
EXAMINER
HIGGINS, GERARD T
ART UNIT PAPER NUMBER
1785
MAIL DATE DELIVERY MODE
05/19/2014 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 ALEXANDER MEYER, WOLFGANG EBERT,
WILFRIED HAESE, GABRIELE KRETSCHMAR,
BURKHARD REITZE, THOMAS WINZEN,
FRIEDRICH-KARL BRUDER, BERT RUYTINX,
ALEXANDER KARBACH, MATTHIAS VOETZ,
and ANDREAS POGODA
____________

Appeal 2012-006132
Application 11/977,616
Technology Center 1700
_________

Before EDWARD C. KIMLIN, CHUNG K. PAK, and
GEORGE C. BEST, Administrative Patent Judges.

KIMLIN, Administrative Patent Judge.

DECISION ON APPEAL

This is an appeal from the final rejection of claims 1-6. We have
jurisdiction under 35 U.S.C. § 6(b). Claim 1 is illustrative:
1. A polycarbonate resin comprising fluorescing
particles, wherein the distribution of particle diameters of said
fluorescing particles conforms to

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8.0 - ≤ 10 µm: 0.02-2.4 counts/g,
> 10 - ≤ 20 µm: 0.02-2.4 counts/g,
> 20 - ≤ 30 µm: 0.02-1.0 counts/g,
> 30 - ≤ 40 µm: 0.02-0.6 counts/g,
> 40 - ≤ 50 µm: 0.02-0.5 counts/g,
> 50 - ≤ 80 µm: 0.02-0.4 counts/g,
> 80 - ≤ 200 µm: 0.02-0.4 counts/g, and
> 200 - ≤ 400 µm: 0.02-0.2 counts/g,

as determined by dissolving 50 g of said polycarbonate resin in
700 ml of dichloromethane and filtering through a Teflon filter
of 5 µm pore size, and scanning with an excitation wavelength
of 400-440 nm, at 50x magnification and an illumination time
of 40 msec per scan.

The Examiner relies upon the following references in the rejection of
the appealed claims:
Tominari US 5,525,701 Jun. 11, 1996
Elsner US 6,620,906 B1 Sep. 16, 2003
Ishida US 6,723,824 B1 Apr. 20, 2004

Appellants' claimed invention is directed to a polycarbonate resin
comprising fluorescing particles having the recited distribution of particle
diameters.
Appealed claims 1-6 stand rejected under 35 U.S.C. § 112, first
paragraph, enablement requirement. Claims 1-6 stand rejected under
35 U.S.C. § 102(b) as being anticipated by either Elsner or Tominari.
Claims 1-5 stand rejected under 35 U.S.C. § 102(b) as being anticipated by
Ishida. Claim 6 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Ishida in view of Elsner.1

1 The Examiner has withdrawn the § 102 rejection over Funakoshi and the
§ 103 rejection over Funakoshi in view of Elsner.
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Appellants do not present separate arguments for any particular claim
on appeal. Nor do Appellants present a separate, substantive argument
against the § 103 rejection of claim 6. Accordingly, all the appealed claims
stand or fall together.
We have thoroughly reviewed each of Appellants' arguments for
patentability. However, we find that the Examiner's rejections are well
founded and supported by the cited prior art. Accordingly, we will sustain
the Examiner's rejections for the reasons set forth in the Answer, which we
incorporate herein, and we add the following for emphasis only.
We consider first the § 112, first paragraph rejection of all the
appealed claims. As stated by the Examiner, the degree of enablement for a
specification must be reasonably commensurate in scope with the degree of
protection sought by the claims. In the present case, we concur with the
Examiner that Appellants' Specification falls far short of enabling one of
ordinary skill in the art to make the subject matter within the considerably
broad scope of the appealed claims. The appealed claims encompass an
untold combination of fluorescent particles having sizes within eight
different ranges, with each recited range corresponding to another range of
particle densities. For instance, the claims embrace a myriad of
polycarbonate resins which comprise particle sizes of 8, 9, or 10 microns in
a concentration of 0.02 counts/g, or 2.4 counts/g, or any value in between
these minimum and maximum density values.
On the other hand, as noted by the Examiner, Appellants'
Specification is limited to one working example for making a specific
polycarbonate composition under specific processing conditions, which
composition comprises fluorescent particles having size ranges whose
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density values fall within the claimed ranges. However, the Specification
provides absolutely no guidance for how to control and adjust the processing
parameters disclosed in the working example to achieve density values for
the eight separate size ranges that result in either a higher or lower density
than that obtained in the example. For instance, while the Specification
example makes a polycarbonate resin having 1.06 counts/g of fluorescing
particles within the size range of 8.1-10 microns, the Specification provides
no guidance for achieving a concentration of 0.02 or 2.4 counts/g, the
minimum and maximum limits recited in the appealed claims. We note that
Appellants concede that "the Specification may not 'teach' one of ordinary
skill in the art 'how to modify the manufacturing parameters'" (Br. 6, last
para.). We disagree with Appellants, however, that "such a teaching is
unnecessary to provide enablement" (id.). Although the specification need
not disclose what is well known in the art, the knowledge of one skilled in
the art cannot be relied upon to supply information that is required to enable
the novel aspect of the claimed invention. Auto. Techs. Int’l Inc. v. BMW of
N. Am., Inc., 501 F.3d 1274, 1283 (Fed. Cir. 2007); ALZA Corp. v. Andrx
Pharms., LLC, 603 F.3d 935, 941 (Fed. Cir. 2010).
While Appellants maintain that "[o]ne of ordinary skill in the art
would know how to ‘vary such parameters' given the ranges disclosed," no
evidence is proffered to support the conclusory statement (id.).
Appellants also contend that the Specification describes a specific
filtration method for attaining the claimed invention, namely, "deep bed
filtration." However, Appellants have not refuted the Examiner's finding
that the working example in the Specification does not use deep bed
filtration.
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Appellants respond to the Examiner's criticism that the Specification
does not teach the origin and chemical composition of the fluorescing
particles by pointing to page 4, lines 20-25, which discloses that dust,
metals, and carbonaceous materials may be fluorescing particles. However,
the cited portion of the Specification provides no such disclosure and the
Specification actually teaches that dust and carbonaceous material which can
be detected in a solvent "are not covered by the present invention" (page 3,
lines 9-10).
We will also sustain the § 102 rejections over Elsner, Tominari, and
Ishida. It is well settled that when a claimed product reasonably appears to
be substantially the same as the 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. See In
re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990); In re Best, 562 F.2d 1252,
1255 (CCPA 1977). In the present case, the Examiner has demonstrated
sufficient correspondence between the Elsner, Tominari, and Ishida
processes for forming and filtering polycarbonate resins, and Appellants'
process, to support the conclusion that the polycarbonate resins of the prior
art comprise fluorescent particles within the size distributions broadly
claimed, and to require Appellants to demonstrate otherwise with objective
evidence. This Appellants have not done.
Appellants maintain that the filtration method of Elsner "is used to
remove solid substances" whereas "the gel like particles according to the
present invention cannot be removed" (Br. 9, 2nd para.). However, as
pointed out by the Examiner, Appellants' argument is in contradiction to
their Specification which states that the fluorescing particles are different
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from gel like particles of the prior art (Spec. 3: ll. 16-26). Also, although
Appellants submit that "the process of Elsner does not read on the
Appellants' Inventive Example 1" (Br. 9, 2nd para.), it is not necessary for
Elsner to describe a process exactly like the one exemplified by Appellants
in order to achieve a polycarbonate resin comprising fluorescing particles
that fall within the considerable breadth of the appealed claims.
Furthermore, Appellants have not refuted the Examiner's finding with
respect to the correspondence between the process of Elsner and Appellants'
exemplified process (see Ans. bridging pages 10-11).
Appellants also contend that "Tominari discloses conventional
filtration methods [which] are not suitable to remove fluorescing particles
which have a gel like character as described in the present invention" (Br. 9,
last para.). However, as noted above, the present Specification discloses that
the fluorescing particles are different than the gel like particles of the prior
art. As for Appellants' argument that "[t]he deep bed filtration method for
achieving the present polycarbonate is not disclosed, or even suggested, in
Tominari" (Br. sentence bridging 9-10), Appellants have not refuted the
Examiner's finding that the "working Example 1 of Appellants' Specification
does not use deep bed filtration" (Ans. 12, 1st para.).
Appellants' argument against Ishida is rebutted by the Examiner at
pages 12-13 of the Answer.
In conclusion, based on the foregoing and the reasons well stated by
the Examiner, the Examiner’s decision rejecting the appealed claims is
affirmed.
The decision of the Examiner is affirmed.

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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)(iv).
AFFIRMED

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