Kevin Wyndham

Patent Trials and Appeals BoardSep 9, 2021

2020005345 (P.T.A.B. Sep. 9, 2021)

UNITED STATES PATENT AND TRADEMARK OFFICE 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. 13/266,166 11/17/2011 Kevin D. Wyndham 10480US.PCT (W-537-US2) 8601 13871 7590 09/09/2021 WOMBLE BOND DICKINSON (US) LLP / Waters ATTN: IP DOCKETING P.O. BOX 7037 ATLANTA, GA 30357-0037 EXAMINER PEO, KARA M ART UNIT PAPER NUMBER 1777 NOTIFICATION DATE DELIVERY MODE 09/09/2021 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): BostonDocket@wbd-us.com IPDocketing@wbd-us.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte KEVIN D. WYNDHAM Appeal 2020-005345 Application 13/266,166 Technology Center 1700 Before LINDA M. GAUDETTE, KAREN M. HASTINGS, and BRIAN D.RANGE, Administrative Patent Judges. HASTINGS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1 and 246–249. See Final Act. 1. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. 1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest of record in this application as Waters Technologies Corporation. Appeal Br. 1. Appeal 2020-005345 Application 13/266,166 2 CLAIMED SUBJECT MATTER The claims are directed to an inorganic/organic hybrid material useful for liquid chromatography (LC). Spec. 1, l. 26 to Spec. 2, l. 8. Claim 1 is reproduced in the Appeal Brief Claims Appendix and is illustrative of the claimed subject matter (Appeal Brief 19–22, Claims Appendix). The relevant part of claim 1 that is in dispute is reproduced here: 1. An inorganic/organic hybrid material comprising an inorganic/organic hybrid surrounding material and an inorganic/organic hybrid core; wherein the inorganic/organic hybrid surrounding material comprises a material of a formula selected from the group consisting of formula I: (SiO2)d/[R 2((R)p(R 1)qSiOt)m]; (I) wherein, R and R1 are each independently C1-C18 alkoxy, C1-C18 alkyl, C2-C18 alkenyl, C2-C18 alkynyl, C3-C18 cycloalkyl, C1-C18 heterocycloalkyl, C5-C18 aryl, C5-C18 aryloxy, or C1-C18 heteroaryl; R2 is C1-C18 alkyl, C2-C18 alkenyl, C2-C18 alkynyl, C3-C18 cycloalkyl, C1-C18 heterocycloalkyl, C5-C18 aryl, C1-C18 heteroaryl, wherein each R2 is attached to two or more silicon atoms; p and q are each independently 0.0 to 2.0; t is 0.5, 1.0, or 1.5; d is 0 to about 30; m is an integer from 2-20; t = (3-(p+q)) and p+q ≤ 2; 2 (See Claims Appendix 19–22 for the remainder of the claim) Appeal 2020-005345 Application 13/266,166 3 REFERENCE The prior art relied upon by the Examiner is: Name Reference Date Walter WO 03/014450 Al Feb. 20, 2003 REJECTION Claims 1 and 246–249 are rejected under 35 U.S.C. § 103 as being unpatentable over Walter. Final Act. 4–5. OPINION The Examiner bears the initial burden of presenting a prima facie case of obviousness. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). “[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006), quoted with approval in KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). Upon consideration of the evidence and each of Appellant’s contentions as set forth in the Appeal Brief, as well as the Reply Brief, we conclude that the preponderance of the evidence supports Appellant’s position that the Examiner has not met the burden in this case for substantially the same reasons as set forth by Appellant in the Briefs. Accordingly, we reverse the Examiner’s § 103 rejection of all the claims on appeal. We add the following primarily for emphasis. A preponderance of the evidence supports Appellant’s position that the Examiner has not adequately explained how to arrive at the surrounding material so as to render obvious the claimed surrounding material of Appeal 2020-005345 Application 13/266,166 4 “formula I” and that any proposed modification of Walter to modify its material(s) based on the various teachings of Walter would be based on an improper hindsight reconstruction for the reasons discussed by Appellant in the Briefs (Appeal Br. 8−17; Reply Br. 5–6). More specifically, Appellant argues that the Examiner has not adequately explained or established that Walter’s formula Zn(R’)bSi-R (modified as proposed by the Examiner) meets Appellant’s formula I (Appeal Br. 13–17; Reply Br. 5–6). It should be noted that the Examiner relies upon Walter’s description of functionalizing groups starting at page 15, line 30 to page 17, line 16 to teach that the inorganic/organic hybrid surrounding material comprises a material of Appellant’s claimed “formula (I)” (Ans. 3; Final Act. 4). In response, the Examiner contends that one of ordinary skill “would be capable of reading Walter and understanding it reads on the claims in their entirety” (Ans. 8)2. However, for example, as pointed out by Appellant, the Examiner does not adequately explain how Walter’s description that the hybrid materials are surface modified by coating with a polymer teaches formula (I) (e.g., Appeal Br. 15). The Examiner contends that the polymer coating is not being relied upon “as a disclosure of Appellant’s full formula I” but only to read on the claimed variable “m” (Ans. 7). 2 It appears that Walter shares a common/related assignee (i.e. Waters Investment Ltd.) to that of this appeal (i.e. Waters Technologies Corporation). Furthermore, Appellant points out in the Related Appeals section that U.S. patent application no. 13/639,328 is a related appeal (Appeal 2020-000821) whose claims also “recite the same formula (I)” (Appeal Br. 2). A decision in Appeal 2020-000821 affirming the Examiner’s §§ 112 and 103 rejections was mailed Feb. 8, 2021. The applied prior art in that appeal differs from the prior art applied here. Appeal 2020-005345 Application 13/266,166 5 The Examiner’s position is insufficient because the Examiner has not adequately explained how one of ordinary skill would have combined the various embodiments or disclosures of Walter to render obvious the claimed subject matter.3 The fact finder must be aware “of the distortion caused by hindsight bias and must be cautious of arguments reliant upon ex post reasoning.” KSR, 550 U.S. at 421 (citing Graham v. John Deere Co., 383 U.S. 1, 36 (1966) (warning against a “temptation to read into the prior art the teachings of the invention in issue”)). The Examiner has not adequately explained why the skilled artisan’s knowledge or inferences and creativity would have supported the obviousness determination based on the relied upon teachings of Walter. Accordingly, we reverse the § 103 rejection of the claims. CONCLUSION The Examiner’s rejection is reversed. 3 Contrary to Appellant’s arguments that the embodiments of Walter may not be combined without further explanation (Reply Br. 1–5), it is noted that Walter explicitly states “and combinations” of the relied upon embodiments thereof (e.g., Walter, p. 16, l. 22). Nonetheless, as Appellant argued, the Examiner has not adequately explained how such a combination would render formula I of claim 1 for the surrounding material obvious (Appeal Br. 16–17). Appeal 2020-005345 Application 13/266,166 6 DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 246–249 103 Walter 1, 246–249 REVERSED