Ex Parte Kuhlmann et al

Patent Trial and Appeal Board

Nov 28, 2018

13400159 (P.T.A.B. Nov. 28, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/400, 159 02/20/2012
157 7590 11/30/2018
Covestro LLC
1 Covestro Circle
PITTSBURGH, PA 15205
FIRST NAMED INVENTOR
Timo Kuhlmann
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.
BMS111216 5073
EXAMINER
KRUPICKA, ADAM C
ART UNIT PAPER NUMBER
1784
NOTIFICATION DATE DELIVERY MODE
11/30/2018 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):
US-IPR@covestro.com
laura.finnell@covestro.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TIMO KUHLMANN, MICHAEL WAGNER, OSER RAFAEL,
TERRY G. DA VIS, and IGNACIO OSIO
Appeal2018-000668
Application 13/400,159 1
Technology Center 1700
Before CATHERINE Q. TIMM, JENNIFER R. GUPTA, and
SHELDON M. McGEE, Administrative Patent Judges.
McGEE, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134, Appellants seek our review of the
Examiner's rejections of claims 1-20. App. Br. 2.
We have jurisdiction. 35 U.S.C. § 6.
We affirm, and enter a new ground of rejection pursuant to our
authority under 37 C.F.R. § 41.50(b).
1 Appellants identify Covestro LLC and Covestro Deutschland AG as the
real parties in interest. App. Br. 1.
Appeal2018-000668
Application 13/400,159
BACKGROUND
The subject matter on appeal is directed to a multilayer assembly
useful as "a mirror/reflector in the sector of CPV ( concentrating
photovoltaics) and CSP (concentrating solar power)." Spec. 1:3-5.
Claim 1 is illustrative of the appealed subject matter, and is copied
below from the Claims Appendix to the Appeal Brief, with emphasis added
to the relevant limitation at issue in this appeal:
1. A multilayer assembly comprising five layers:
layer A: a substrate layer selected from the group
consisting of a thermoplastic, metal and glass;
layer B: a barrier layer selected from the group consisting
of titanium, gold, palladium, platinum, vanadium and tantalum;
layer C: a reflective metallic layer;
layer D: an oxidic layer selected from the group consisting
of aluminum oxide (Al Ox), titanium dioxide, Si 02, Ta20s, Zr02,
Nb20s and HfO; and
layer E: a plasma polymer layer deposited from siloxane
precursors selected from the group consisting of
hexamethyldisiloxane (HMDSO ), octamethylcyclotetrasiloxane
(OMCTS), octamethyltrisiloxane (OMTS), tetraethylorthosilane
(TEOS) and tetramethyldisiloxane (TMDSO),
decamethylcyclopentasiloxane (DMD MS),
hexamethylcyclotrisiloxane (HMCTS), trimethoxymethylsilane
(TMOMS) and tetramethylcyclotetrasiloxane (TMCTS),
wherein the multilayer assembly has a Reflection Index of
9 5. 0% or greater after 1000 hours of a Xenon weathering test.
App. Br. 10 (emphasis added)
OPINION
Claims 1-20 are rejected under 35 U.S.C. § 112, first paragraph as
failing to comply with the written description and enablement requirements.
2
Appeal2018-000668
Application 13/400,159
Appellants argue each rejection as a group. We, therefore, select
independent claim 1 as representative for each rejection, and separately
decide each appealed rejection on the basis of claim 1 alone as set forth
below. 37 C.F.R. § 41.37 (c)(l)(iv).
The Written Description Rejection
The Examiner finds claim 1 lacks written description support for the
recitation "wherein the multilayer assembly has a Reflection Index of 95%
or greater after 1000 hours of a Xenon weathering test" because "support for
applicants' claimed range of reflective indices could not be found in the
original disclosure." Final 3.
Appellants first argue that the recited Reflection Index (RI) of 95% or
greater has written descriptive support because Example 1 has an RI value of
95% while comparative Examples 2 and 3 had RI values lower than 95%.
App. Br. 3--4. Appellants urge that because "multilayer assemblies having a
reflection index of at least 95% meet this weathering test," the skilled artisan
"would understand that refraction [ sic, reflection] indices greater than 95%
likewise meet this weathering test as set forth in the Specification." Id. at 4;
see also id. (urging that, upon consulting the specification, the skilled artisan
"would see that the results of 82.3% and 92.1 % are not acceptable, but
results of 95.0% are acceptable," and thereby "easily deduce that weathering
results that are greater than 95.0% are also acceptable, and would likewise
pass the weathering test").
This argument fails to persuade us of reversible error in the
Examiner's rejection. The test for compliance with the written description
requirement is "whether the disclosure of the application relied upon
reasonably conveys to those skilled in the art that the inventor had
3
Appeal2018-000668
Application 13/400,159
possession of the claimed subject matter as of the filing date." Ariad
Pharmaceuticals, Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir.
2010) ( en bane) ( emphasis added). "[T]he specification must describe an
invention understandable to that skilled artisan and show that the inventor
actually invented the invention claimed." Id. Claims that recite a range of
values outside those described in the written description, on their face, lack
written descriptive support. In re Wertheim, 541 F.2d 257,263 (CCPA
1976) (holding a claim reciting a solids content range of "at least 35%,"
which reads literally on embodiments employing solids contents outside the
25---60% range described provided evidence that persons skilled in the art
would not recognize in the disclosure a description of the invention defined
by the claims). Here, the single value of 95.0% does not evince that
Appellants possessed embodiments having Reflective Index values greater
than 95.0%. Thus, there is no written descriptive support for the recited
range.
Moreover, the results to which Appellants refer appear in Table 5 of
the Specification fail to evince the required support. Table 5 of Appellants'
Specification is depicted below:
Table 5: HI ~tftcr weathedng:
rfu .,, ·--·---r C ! i.niate' change ··r. Xenon ·test .... ····r Damp. h~;t "l 'tr;;·i~;t"']
I r test . l (af1cr 1 ooo 11n l test ! test i
t·· . . '" ""'". ". -~· .. ' - '" .•