Ex Parte Roelle et al

Patent Trial and Appeal Board

Jul 8, 2016

12569184 (P.T.A.B. Jul. 8, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/569, 184 0912912009
123223 7590 07112/2016
Drinker Biddle & Reath LLP (WM)
222 Delaware A venue, Ste. 1410
Wilmington, DE 19801-1621
FIRST NAMED INVENTOR
Thomas Roelle
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
074033-0230-287265 7802
EXAMINER
ANGEBRANNDT, MARTIN J
ART UNIT PAPER NUMBER
1722
NOTIFICATION DATE DELIVERY MODE
07/12/2016 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
DBRIPDocket@dbr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte THOMAS ROELLE, FRIEDRICH-KARL BRUDER,
THOMAS FAECKE, MARC-STEPHEN WEISER, DENNIS HOENEL, and
NICOLAS STOECKEL 1
Appeal2014-0005294
Application 12/569,184
Technology Center 1700
Before CHUNG K. PAK, KAREN M. HASTINGS, and
WESLEY B. DERRICK, Administrative Patent Judges.
PAK, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134(a) from the
Examiner's decision2 rejecting claims 1-3 and 5-11, which are all of the claims
pending in the above-identified application. We have jurisdiction under 35 U.S.C.
§ 6(b). 3
1 The real party in interest is said to be Bayer Material Science AG. Appeal Brief
filed October 31, 2013 ("App. Br.") at 2.
2 Non-Final Action entered June 13, 2013 ("Non-Final Act.") at 1-19 and the
Examiner's Answer entered January 7, 2014 ("Ans.") at 2-6.
3 Although the action appealed from was Non-Final Action entered June 13, 2013
("Non-Final Act.") rejecting claims 1-3 and 5-11, we have jurisdiction pursuant to
Appeal2014-005294
Application 12/569,184
We AFFIRM.
STATEMENT OF THE CASE
The subject matter on appeal is directed to "photopolymers based on specific
urethane acrylates as writing monomers which are suitable for the production of
holographic media, in particular for visual display images." Spec. 1, 11. 8-10.
According to pages 20 and 21 of the Specification, the polyurethane compositions
useful for such purpose "preferably comprise 10 to 94.999% by weight of the
unsaturated urethanes of the formulae (I) to (III) [(writing monomers),]"
"preferably comprise 15 to 70% by weight of the unsaturated urethanes of the
formulae (I) to (III) [(writing monomers),]" and "particularly preferably comprise
20 to 50% by weight of the unsaturated urethanes of the formulae (I) to (III)
[(writing monomers).]" Details of the appealed subject matter are recited in
illustrative claims 1, 10, and 11, which are reproduced below from the Claims
Appendix of the Appeal Brief:
1. A polyurethane composition comprising a writing monomer
component a) containing at least 20-50 % by weight, based on the
total weight of said polyurethane composition, of one or more
unsaturated urethanes a) of formulae (I), (II), and (III) as writing
monomers and polymeric compounds or corresponding matrix
precursors as a matrix for the writing monomers
35 U.S.C. §§ 6 and 134 because the claims have been twice presented and rejected.
See Ex parte Lemoine, 46 USPQ2d 1420, 1423 (BPAI 1994).
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Application 12/569,184
(T)
(U}
(HI)
wherein R is in each case, independently of one another, a radiation-
curable group; and Xis in each case, independently of one another, a
single bond between R and C=O or a linear, branched, or cyclic
hydrocarbon radical which optionally contains heteroatoms and/or is
optionally substituted by functional groups.
10. An unsaturated urethane of formula (II)
(II)
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Application 12/569,184
wherein R is in each case, independently of one another, a radiation-
curable group; and Xis in each case, independently of one another, a
single bond between R and C=O or a linear, branched or cyclic
hydrocarbon radical which optionally contains heteroatoms and/or is
optionally substituted by functional groups.
11. A polyurethane composition comprising a writing monomer
component a) containing at least 10 % by weight, based on the total
weight of said polyurethane composition, of one or more unsaturated
urethanes a) of formulae (I) and (II) as writing monomers and
polymeric compounds or corresponding matrix precursors as a matrix
for the writing monomers
(11)
wherein R is in each case, independently of one another, a radiation-
curable group; and Xis in each case, independently of one another, a
single bond between R and C=O or a linear, branched, or cyclic
hydrocarbon radical which optionally contains heteroatoms and/or is
optionally substituted by functional groups.
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Application 12/569,184
App. Br. 24-27 (disputed limitations highlighted in italicized form).
The Examiner maintains the following grounds of rejection:
1. Claims 1-3, 5-9, and 11under35 U.S.C. §102(e) as anticipated by
W02008/125 l 99 Al published in the name of Stoeckel et al. on
October 23, 2008 ("Stoeckel '199");
2. Claims 1-3, 5-9, and 11 on the ground ofnonstatutory obviousness-
type double patenting as unpatentable over claims 1-10 of US Patent
7,981,987 B2 issued to Stockel et al. on July 19, 2011 ("Stockel
'987") in view of US 2005/0058911 Al published in the name of
Takeyama on March 17, 2005 ("Takeyama");
3. Claim 10 on the ground of nonstatutory obviousness-type double
patenting as unpatentable over claims 1-10 of Stockel '987 in view of
US Patent 3,013,048 issued in the name of Holtschmidt on December
12, 1961 ("Holtschmidt");
4. Claims 1-3 and 5-11 on the ground ofnonstatutory obviousness-type
double patenting as unpatentable over claims 1-10 of Stockel '987 in
view of Takeyama and Holtschmidt;
5. Claim 10 provisionally on the ground of nonstatutory obviousness-
type double patenting as unpatentable over claim 15 of copending
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Application 12/569,184
Application 13/504,190 (US 2012/0214895 Al published in the name
of Rolle et al. on Aug. 23, 2012) ("Rolle"); and
6. Claims 1-3 and 5-11 provisionally on the ground ofnonstatutory
obviousness-type double patenting as unpatentable over claims 15-33
of Rolle in view ofTakeyama. 4 Non-Final 1-19; Ans. 2-6.
DISCUSSION
To prevail in an appeal to this Board, Appellants must adequately explain or
identify reversible error in the Examiner's rejections. See 37 C.F.R.
§ 41.37(c)(l)(iv) (2012); see also In re Jung, 637 F.3d 1356, 1365-66 (Fed. Cir.
2011) (explaining that even if the Examiner had failed to make a prima facie case
of unpatentability, it has long been the Board's practice to require Appellants to
identify the alleged error in the Examiner's rejections).
Rejection 1
Having carefully considered the evidence in this appeal record in light of the
respective positions advanced by the Examiner and Appellants, we are not
persuaded that Appellants adequately explain or identify reversible error in the
Examiner's rejection of claims 1-3, 5-9, and 11under35 U.S.C. §102(e) as
anticipated by Stoeckel '199.5
"Anticipation is a question of fact .... " In re American Academy of Science
Tech Center, 367 F.3d 1359, 1362 (Fed. Cir. 2004), citing In re Hyatt, 211 F.3d
4 The Examiner inadvertently includes cancelled claim 4 in this rejection set forth
at page 19 of the Non-Final Action. However, the Examiner removes cancelled
claim 4 in this rejection set forth at page 6 of the Answer.
5 Appellant's arguments are directed to claims 1, 3, and 11, which we select as
representative. See 37 C.F.R. § 41.37(c)(l)(iv).
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1367, 1371-72 (Fed. Cir. 2000). The inquiry as to whether a reference anticipates
a claim must focus on what subject matter is encompassed by the claim and what
subject matter is described by the reference. As set forth by the court in Kalman v.
Kimberly-Clark Corp., 713 F.2d 760, 772 (Fed. Circ. 1983), it is only necessary for
the claims to "'read on' something disclosed in the reference, i.e., all limitations in
the claim are found in the reference, or 'fully met' by it."
Here, Stoeckel '199 broadly discloses olefinically unsaturated aromatic
urethanes having a high refractive index, which are defined by the following
chemical structures:
R-X
in which X is oxygen, amino or sulfur and R comprises at least 30 mol% of
olefinically unsaturated hydrocarbon radicals optionally containing heteroatoms
and not more than 70 mol% of hydrocarbon radicals optionally containing
heteroatoms, which are free of olefinically unsaturated groups. See, e.g., Non-
Final Act. 7; Stoeckel '199, p. 1, 11. 12-13 andp. 8, 11. 7-16. In addition to such
broadly described olefinically unsaturated aromatic urethanes, Stoeckel '199
specifically exemplifies the above chemical structures that have oxygen and
ethylacrylate as X and R, respectively, i.e., X-R as oxyethylacrylate (-O-
CH2CH20(C=O)C=CH2), as shown in Examples 1 and 3 of the Specification and
as encompassed by claims 1 and 11. See, e.g., Non-Final Act. 3 and 7-11 and Ans.
2; see also Stoeckel' 199, pp. 26 and 31, Examples 1 and 14 which are identical to
Appellants' Examples 1 and 3 for forming the writing monomers having formulae
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(l) and (Ill) recited in claims 1 and 11 at pages 24-25 of the Specification. Thus,
notwithstanding Appellants' arguments to the contrary, we agree with the
Examiner that Stoeckel '199 describes or exemplifies the writing monomers
having formulae (I) and (III) recited in claims 1 and 11 with sufficient specificity
to constitute an anticipatory disclosure for such writing monomers. See, e.g., In re
Gosteli, 872 F.2d 1008, 1010 (Fed. Cir. 1989) ("Section 102(e) bars the issuance of
a patent if its generic claims are anticipated by prior art disclosing individual
chemical species."); see also In re Best, 562 F.2d 1252, 1255 (CCPA 1977)
([ w ]here ... the claimed and prior art products are identical or substantially
identical, or are produced by identical or substantially identical processes, the PTO
can require an applicant to prove that the prior art products do not necessarily
or inherently possess the characteristics of his claimed product.")
Appellants contend that claims 1 and 11 of the above-identified application
define X and R of formulas (I) and (III) of the writing monomers differently than X
and R of the above chemical structures of the aromatic urethanes described in
Stoeckel' 199. App. Br. 10. However, the Examiner correctly explains that the
combination of X and R (X-R) of formulae (I) and (III) of the writing monomers
recited in claims 1 and 11 is no different from the combination of X and R (X-R)
of the above chemical structures of the aromatic urethanes exemplified in Stoeckel
'199. Final Act. 8-9. When X and R of formulas (I) and (III) of the recited
writing monomers are, for example, a single bond and oxyethylacrylate,
respectively, they embrace oxyethylacrylate attached to C=O like the chemical
structures of the olefinically unsaturated aromatic urethanes formed in Examples 1
and 14 of Stoeckel '199. Id; compare also Stoeckel '199, pp. 26 and 31, Examples
1 and 14, with Spec. 24-25, Examples 1 and 3. Indeed, Appellants do not
specifically refute the Examiner's finding that formulas (I) and (III) of the writing
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monomers recited in claims 1 and 11 correspond to the olefinically unsaturated
aromatic urethanes formed in Examples 1 and 14 of Stoeckel' 199. Compare Final
Act. 8-9 with App. Br. 7-11. Nor do Appellants adequately explain why
Examples 1and14 of Stoeckel '199, which are identical to Appellants' Examples
1 and 3 for forming the recited writing monomers, do not form the writing
monomers recited in claims 1 and 11. App. Br. 7-11.
Appellants also contend that the olefinically unsaturated aromatic urethanes
exemplified by Stoeckel '199 are not used in the proportions recited in claims 1
and 11. App. Br. 11-14; Reply Br. 3--4. Although Stoeckel '199 does not
exemplify using "at least 20-50% by weight" or "at least 10% by weight" of the
olefinically unsaturated aromatic urethanes as required by claims 1 and 11,
respectively, the Examiner correctly finds that Stoeckel '199 discloses that its
holographic media (corresponding to the claimed polyurethane composition)
contains 0.1 to 75% by weight of the urethane component, preferably either 2-13%
by weight of the urethane component or 12.5-55% by weight of the urethane
component. Stoeckel '199, pp. 21-22. In other words, Stoeckel '199 discloses
usingl2.5-55% by weight of the urethane component based on the total weight of
its holographic media as one of the two preferred embodiments. Id.; Wm. Wrigley
Jr. Co. v. Cadbury Adams USA LLC, 683 F.3d 1356, 1361 (Fed. Cir. 2012)
("While Shahidi discloses a number of different combinations of cooling and
flavoring elements, one of them is the combination of menthol, which Shahidi
identifies as one of the 'most suitable' flavoring agents, with WS-23, which
Shahidi identifies along with WS-3 as among a group of three 'particularly
preferred cooling agents,"' thus anticipating the claimed combination of WS-23
and menthol.); see also In re Schaumann, 572 F.2d 312 (CCPA 1978) (holding
that a small genus can be a disclosure of each species within the genus); Bristol-
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Application 12/569,184
Myers Squibb Co. v. Ben Venue Labs, Inc., 246 F. 3d 1368, 1380 (Fed. Cir.
2001 )("[T]he disclosure of a small genus may anticipate the species of that genus
even if the species are not themselves recited.").
The preferred range, namely 12.5-55% by weight, of the urethane
component disclosed in Stoeckel '199 not only is within "at least 10% by weight"
of the olefinically unsaturated aromatic urethanes as recited in claim 11, but also is
substantially identical to, entirely encompasses, and does not significantly deviate
from "at least 20-50% by weight" of the olefinically unsaturated aromatic urethane
component as recited in claim 1. Both Stoeckel '199 and Appellants' Specification
indicate that their preferred or claimed ranges of the urethane component (i.e., the
recited writing monomer component) are useful for the same holographic purposes.
Compare Stoeckel '199, pp. 21-22 with Spec. 20-21. Thus, we concur with the
Examiner that one of ordinary skill in the art would have readily envisaged using
"at least 10% by weight" or "at least 20-50% by weight" of the olefinically
unsaturated aromatic urethane component exemplified in Stoeckel '199 in its
holographic media within the meaning of 35 U.S.C. § 102(e). Perricone v. Medicis
Pharmaceutical Corp., 432 F.3d 1368, 1376-77 (Fed. Cir. 2005)("Pereira's
disclosed range of concentration does not exactly correspond to Dr. Perricone' s
claimed range. However, Pereira's disclosure nonetheless discloses and anticipates
Dr. Perricone' s particular claimed 'effective amount' ranges ... [because] Pereira' s
range entirely encompasses, and does not significantly deviate from, Dr.
Perricone's claimed ranges."); Atlas Powder Co. IRECO Inc., 190 F.3d 1342,
1345 (Fed. Cir. 1999)(presuming anticipation based on a substantial overlap
between the claimed ranges of ingredients in an explosive composition and the
ranges of the same disclosed in a prior art reference); In re Ornitz, 351F.2d1013,
1016-17 ( CCP A 1965 ("Even assuming arguendo appellant have discovered that
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ranges of some constituents are critical to certain [important] properties, we are not
convinced of novelty in the claimed range of compositions since Payson [i.e., prior
art,] disclose those properties for substantially the same ranges of composition.")
(citing In re Nehrenberg, 280 F.2d 161, 163 (CCPA 1960)); see also Clearvalue,
Inc. v. Pearl River Polymers, Inc., 668 F.3d 1340, 1344 (Fed. Cir. 2012)
(explaining that unlike the situation inAtofina v. Great Lakes Chemical Corp., 441
F.3d 991 (Fed. Cir. 2006), anticipation was established because there was no
indication that the claim limitation of 50 ppm, which is narrower than the prior art
range of 150 ppm or less, was critical or that the claimed method worked
differently at different points within the prior art range of 150 ppm or less).
Appellants refer to, inter alia, Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d
1359 (Fed. Cir. 2008) to show that for a prior art reference to anticipate the
claimed invention, "[t]he prior art reference must clearly and unequivocally
disclose the claimed invention or direct those skill in the art to the [claimed]
invention without any need for picking, choosing, and combining various
disclosures not directly related to each other by the teachings of the cited
reference." App. Br. 9. However, Appellants do not adequately explain, much less
sufficiently show, why the unsaturated aromatic urethanes useful for a holographic
media exemplified in Stoeckel '199 and the preferred percentage range of the
urethane component useful for a holographic media disclosed in Stockel '199 are
not directly related to each other. App. Br. 9-15; Reply Br. 1--4. As indicated
supra, we find no error in the Examiner's finding that Stoeckel' 199, as a whole,
clearly and unequivocally directs one of ordinary skill in the art to the invention
recited in claims 1 and 11.
Appellants separately contend that Stoeckel '199 "fails to disclose the
composition of claim 3 with sufficient specificity of at least this reason as well as
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for the reasons cited above." App. Br. 15. However, Appellants do not contest the
Examiner's finding that Stoeckel' 199's exemplified disclosure of oxyethylacrylate
(-O-CH2CH20(C=O)C=CH2) constitutes X having oxyethyl (an oxyalkylene)
moiety and R having acrylate moiety as recited in claim 3 (and included in claim
1). Compare Non-Final Act. 12 and Ans. 13 with App. Br. 15 and Reply Br. 1--4.
Thus, based on the facts and reasons indicated above, we find no error in the
Examiner's finding that Stoeckel '199, as a whole, clearly and unequivocally
directs one of ordinary skill in the art to the invention recited in claim 3.
Accordingly, we affirm the Examiner's decision rejecting claims 1-3, 5-9,
and 11under35 U.S.C. §102(e) as anticipated by the disclosure of Stoeckel '199.
Rejection 2
Having carefully considered the evidence in this appeal record in light of the
respective positions advanced by the Examiner and Appellants, we are not
persuaded that Appellants adequately explain or identify reversible error in the
Examiner's rejection of Claims 1-3, 5-9, and 11 on the ground of nonstatutory
obviousness-type double patenting as unpatentable over claims 1-10 of Stockel
'987 in view of Takeyama. 6
Obviousness-type double patenting is a judicially-created doctrine designed
to "prevent claims in separate applications or patents that do not recite the 'same'
invention, but nonetheless claim inventions so alike that granting both exclusive
rights would effectively extend the life of patent protection." Perricone v. Medicis
Pharm. Corp., 432 F.3d at 1373 (citation omitted). It prohibits the issuance of
claims in a second patent that are "not patentably distinct from the claims of the
6 Appellants' arguments are directed to common limitations in claims 1 and 11,
which we select as representative. See 37 C.F.R. § 41.37(c)(l)(iv).
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first patent." Jn re Langi, 759 F.2d 887, 892 (Fed. Cir. 1985) (citations omitted). A
later patent claim "is not patentably distinct from an earlier claim if the later claim
is obvious over, or anticipated by, the earlier claim." Eli Lilly & Co. v. Barr Labs.,
Inc., 251F.3d955, 968 (Fed. Cir. 2001) (citations omitted). "[I]n certain
instances, it [i.e., a patent's disclosure may be used as a dictionary to learn the
meaning of terms in a claim." See In re Vogel, 422 F.2d 438, 441(CCPA1970);
In re Basel! Poliolefine Italia SP.A., 547 F.3d 1371 (Fed. Cir. 2008)("[T]he
disclosure may be used to learn the meaning of terms and in 'interpreting the
coverage of [a] claim.' It may also be used to answer the question whether claims
merely define an obvious variation of what is earlier disclosed and claimed."). As
with statutory obviousness under 35 U.S.C. § 103, obviousness-type double
patenting is an issue of law premised on underlying factual inquiries. Otsuka
Pharm. Co. v. Sandoz, Inc., 678 F.3d 1280, 1290 (Fed. Cir. 2012).
Here, claim 10 of Stockel '987 recites a holographic media "prepared from
urethane (meth) acrylates according to claim 6, an isocyanate component, an
isocyanate-reactive component and a photoinitiator." Claim 6 of Stockel '987
recites the urethane (meth) acrylates of the following formula:
"in which Xis oxygen, amino or sulfur and R comprises at least 30 mol% of
olefinically unsaturated hydrocarbon radicals optionally containing heroatoms and
not more than 70 mol% of hydrocarbon radicals optionally containing heteroatoms,
which are free of olefinically unsaturated groups."
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Appellants do not question the Examiner's determination that one of
ordinary skill in the art would have been led to employ the urethane (meth)
acrylate monomer recited in claim 6 of Stockel '987 in the claimed proportion per
the teachings of Takeyama in the holographic media recited in claim 10 of Stockel
'987. 7 Compare Non-Final 14-16 with App. Br. 16-17. Rather, Appellants
contend that claim 6 of Stockel '987 recites a monomer different from that recited
in claims 1 and 11 of the above-identified application because claim 6 of Stockel
'987 defines X and Y differently than X and Y recited in claims 1 and 11 of the
above-identified application. App. Br. 17. However, the Examiner correctly
explains that the combination of X and R (X-R) of the above chemical structures of
the urethane (meth) acrylate monomer recited claims 6 and 10 in Stockel '987 is
encompassed by the combination ofX and R (X-R) of formulas (I) and (III) of the
writing monomers recited in claims 1 and 11 of the above-identified application.
Final Act. 14-16. As evidenced by the Examples of Stockel '987, the coverage of
X-R attached to C=O of the formulas recited in claim 6 of Stockel '987 includes or
embraces oxyethylacrylate (-O-CH2CH20(C=O)C=CH2). Id; compare also
Stockel '987, cols. 16-20 with Spec. 24-26. When X and R of formulae (I) and
7 Implicit in claim 10 of Stockel '987 is that the amount of the urethane acrylate
monomer component employed in a mixture is sufficient to perform as a
holographic media. According to column 14, lines 18--44, of Stockel '987, to
produce the holographic media recited in claim 10, the amount of the urethane
acrylate component employed can be from 0.1 to 75% by weight based on the total
weight of the holographic media. Thus, we interpret the holographic media recited
in claim 10 to cover at least 0.1 to 75% by weight of the urethane acrylate based on
the total weight of the holographic media, thus overlapping with the amounts of the
urethane acrylate writing monomers recited in claims 1 and 11. See, e.g. In re
Peterson, 315 F.3d 1325, 1329-30 (Fed. Cir. 2003) ("In cases involving
overlapping ranges, we and our predecessor court have consistently held that even
a slight overlap in range establishes a prima facie case of obviousness.")
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(Ill) of the writing monomers recited in instant claims 1 and 11, for example, are a
single bond and oxyethylacrylate, respectively or an oxyalkylene ( oxyethyl) and
acrylate, respectively, they embrace oxyethylacrylate (-O-CH2CH20(C=O)C=CH2)
attached to C=O included in claims 6 and 10 of Stockel '987. Thus, we concur
with the Examiner that one of ordinary skill in the art would have been led to select
the exemplified embodiments included in claims 6 and 10 of Stockel '987 for the
purpose of obtaining a desired holographic media. See, e.g., Merck & Co., Inc. v.
Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) ("That the '813 patent
discloses a multitude of effective combinations does not render any particular
formulation less obvious. This is especially true because the claimed composition
is used for the identical purpose."); In re Corkill, 771 F.2d 1496, 1500 (Fed. Cir.
1985) (obviousness rejection of claims affirmed in light of prior art teaching that
"hydrated zeolites will work" in detergent formulations, even though "the
inventors selected the zeolites of the claims from among 'thousands' of
compounds")); see also, In re Susi, 440 F.2d 442, 445 (CCPA 1971) (obviousness
rejection affirmed where the disclosure of the prior art was "huge, but it
undeniably include[ d] at least some of the compounds recited in appellant's generic
claims and [was] of a class of chemicals to be used for the same purpose as
appellant's additives"). Stated differently, claims 1 and 11 of the instant
application are no more than an obvious variation of the invention recited in claims
6 and 10 of Stockel '987.
Accordingly, we affirm the Examiner's rejection of claims 1-3, 5-9, and 11
on the ground of nonstatutory obviousness-type double patenting as unpatentable
over claims 1-10 of"Stockel '987" in view of Takeyama.
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Rejection 3
Having carefully considered the evidence in this appeal record in light of the
respective positions advanced by the Examiner and Appellants, we are persuaded
that Appellants adequately explain reversible error in the Examiner's rejection of
claim 10 on the ground of nonstatutory obviousness-type double patenting as
unpatentable over claims 1-10 of Stockel '987 in view of Holtschmidt.
The Examiner takes the position that:
It would have been obvious to one skilled in the art to modify
the tris(p-isocyanatophenyl)thiophosphate acrylate ... recited in claim 6
of [Stockel '987 (U.S. Patent] 7[,]981 [,]987 by replacing the sulfur
double bonded to the phosphorous with an oxygen double bonded to
the phosphorous to form a tris(p-isocyanatophenyl)phosphate with a
reasonable expectation of forming a sueful urethane acrylate given the
direction to aromatic triisocyanate in [U.S. Patent] 7[,]981 [,]987 in
claims 1 and 5, based upon their equivalence of tris(p-
isocyanatophenyl)phosphate and tris(p-isocyantophenyl)thiophophate
being old and well known as evidenced by Holtschmidt et al. '048.
Non-Final Act. 16-17. However, as correctly argued by Appellants, the Examiner
does not identify any teaching in Holtschmidt to show that tris(p-
isocyanatophenyl)phosphate and tris(p-isocyantophenyl)thiophophate are
equivalent or interchangeable for the purpose of forming a holographic media.
Compare App. Br. 19 with Non-Final Act. 16-17. Thus, on this record, the
Examiner does carry the burden of establishing a prima facie case of
unpatentability regarding the subject matter of claim 10 based on claims 1-10 of
Stockel '987 and the disclosure of Holtschmidt.
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Accordingly, we reverse the Examiner's rejection of claim 10 on the ground
of nonstatutory obviousness-type double patenting as unpatentable over claims 1-
10 of Stockel '987 in view of Holtschmidt.
Rejection 4
The Examiner repeats the same reasoning set forth in rejections 2 and 3
above for rejecting claims 1-3 and 5-11 on the ground ofnonstatutory
obviousness-type double patenting as unpatentable over claims 1-10 of Stockel
'987 in view of Takeyama and Holtschmidt. Final Act. 17-18. As a rebuttal to
this redundant rejection maintained by the Examiner, Appellants again rely on the
same arguments advanced in connection with the Examiner's rejections 2 and 3.
App. Br. 20-22.
Accordingly, based on the reasons stated supra, we affirm the Examiner's
rejection of claims 1-3, 5-9, and 11 on the ground of nonstatutory obviousness-
type double patenting as unpatentable over claims 1-10 of Stockel '987 in view of
Takeyama and Holtschmidt, but reverse the Examiner's rejection of claim 10 on
the ground of nonstatutory obviousness-type double patenting as unpatentable over
claims 1-10 of Stockel '987 in view of Takeyama and Holtschmidt.
Rejections 5 and 6
Appellants do not specifically dispute the merits of the Examiner's
provisional rejections of claim 10 on the ground of nonstatutory obviousness-type
double patenting as unpatentable over claim 15 of Rolle and claims 1-3 and 5-11
on the ground of nonstatutory obviousness-type double patenting as unpatentable
over claims 15-33 of Rolle in view of Takeyama. App. Br. 22. In particular,
Appellants do not specifically identify or adequately explain any reversible error in
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Application 12/569,184
the Examiner's provisional obviousness-type double patenting rejections. Id.
Appellants merely state (id.) that:
Appellants first respectfully submit that it would be premature
to address the instant provisional rejection until patentable claims
have been found. Appellants further note that, in the event the instant
claims are found to be allowable, the double patenting rejection
should be withdrawn in the instant case. This is because the
copending application was filed after the instant application.
Accordingly, we summarily affirm the Examiner's provisional rejections of
claim 10 on the ground of nonstatutory obviousness-type double patenting as
unpatentable over claim 15 of Rolle and claims 1-3 and 5-11 on the ground of
nonstatutory obviousness-type double patenting as unpatentable over claims 15-33
of Rolle in view of Takeyama.
ORDER
Upon consideration of the record, and for the reasons given, it is
ORuEREu that the decision of the Examiner to reject claims 1-3, 5-9, and
11under35 U.S.C. §102(e) as anticipated by "Stockel '199 is AFFIRMED;
FURTHER ORDERED that the decision of the Examiner to reject
claims 1-3, 5-9, and 11 on the ground ofnonstatutory obviousness-type double
patenting as unpatentable over claims 1-10 of Stockel '987 in view of Takeyama is
AFFIRMED;
FURTHER ORDERED that the decision of the Examiner to reject claim 10
on the ground of nonstatutory obviousness-type double patenting as unpatentable
over claims 1-10 of Stockel '987 in view ofHoltschmidt is REVERSED;
FURTHER ORDERED that the decision of the Examiner to reject claims 1-
3, 5-9, and 11 on the ground of nonstatutory obviousness-type double patenting as
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Appeal2014-005294
Application 12/569,184
unpatentable over claims 1-10 of Stockel '987 in view of Takeyama and
Holtschmidt is AFFIRMED;
FURTHER ORDERED that the decision of the Examiner to reject claim 10
on the ground of nonstatutory obviousness-type double patenting as unpatentable
over claims 1-10 of Stockel '987 in view of Takeyama and Holtschmidt is
REVERSED;
FURTHER ORDERED that the decision of the Examiner to reject claim 10
provisionally on the ground of nonstatutory obviousness-type double patenting as
unpatentable over claim 15 of Rolle is AFFIRMED;
FURTHER ORDERED that the decision of the Examiner to reject claims
claims 1-3 and 5-11 provisionally on the ground ofnonstatutory obviousness-type
double patenting as unpatentable over claims 15-33 of Rolle in view of Takeyama
is AFFIRMED; and,
FURTHER ORDERED that no time period for taking any subsequent action
in connection with this appeal may be extended under 37 C.F.R. § l.136(a)(l)(iv).
AFFIRMED
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