Ex Parte Roelle et alDownload PDFPatent Trial and Appeal BoardJul 8, 201612569184 (P.T.A.B. Jul. 8, 2016) Copy Citation 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). 2 Appeal2014-005294 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) 3 Appeal2014-005294 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. 4 Appeal2014-005294 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 5 Appeal2014-005294 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). 6 Appeal2014-005294 Application 12/569,184 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 7 Appeal2014-005294 Application 12/569,184 (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 8 Appeal2014-005294 Application 12/569,184 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- 9 Appeal2014-005294 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 10 Appeal2014-005294 Application 12/569,184 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 11 Appeal2014-005294 Application 12/569,184 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). 12 Appeal2014-005294 Application 12/569,184 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." 13 Appeal2014-005294 Application 12/569,184 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.") 14 Appeal2014-005294 Application 12/569,184 (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. 15 Appeal2014-005294 Application 12/569,184 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. 16 Appeal2014-005294 Application 12/569,184 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 17 Appeal2014-005294 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 18 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 19 Copy with citationCopy as parenthetical citation