Ex Parte Cinader et al

Patent Trials and Appeals Board

Jan 14, 2019

14007033 - (D) (P.T.A.B. Jan. 14, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/007,033 09/24/2013
32692 7590 01/16/2019
3M INNOVATIVE PROPERTIES COMPANY
PO BOX 33427
ST. PAUL, MN 55133-3427
FIRST NAMED INVENTOR
David K. Cinader Jr.
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.
67277US004 2940
EXAMINER
MORAN, EDWARD JOHN
ART UNIT PAPER NUMBER
3772
NOTIFICATION DATE DELIVERY MODE
01/16/2019 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):
LegalUSDocketing@mmm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID K. CINADER JR., BILL H. DODGE, and
BRADLEY W. EATON
Appeal 2017-011676
Application 14/007,033 1
Technology Center 3700
Before DONALD E. ADAMS, ERIC B. GRIMES, and RYAN H. FLAX,
Administrative Patent Judges.
ADAMS, Administrative Patent Judge.
DECISION ON APPEAL
This Appeal under 35 U.S.C. § 134(a) involves claims 2---6, 9--11, 13,
16, 17, 19-22, and 35-39 (Final Act. 2 1). Examiner entered rejections under
35 U.S.C. § 103(a). We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellants identify "3M Innovative Properties Co., ... which is a
subsidiary of 3M Co.," as the real party in interest (App. Br. 3).
2 Examiner's August 12, 2016 Final Office Action.
Appeal 2017-011676
Application 14/007,033
STATEMENT OF THE CASE
Appellants' disclosure relates to "[ c ]omposite materials and related
methods useful in the field of dentistry" (Spec. 1 :7-8). Claims 2, 5, and 6
are representative and reproduced below:
2. A dental assembly comprising:
a dental article having an outer surface for attachment to
a tooth; and
an adhesive in contact with the outer surface, the
adhesive comprising:
and
a compressible material carrier having interior
surfaces that are hidden from view;
a conformal coating disposed on at least a portion
of the compressible material, wherein the coating has a
substantially uniform thickness and is disposed on
interior surfaces of the compressible material that are
hidden from view, and wherein the thickness of the
conformal coating is in the range of 2 to 20 nanometers.
5. The assembly of claim 2, wherein the compressible material
comprises meltblown nonwoven microfibers.
6. The assembly of claim 5, wherein the microfibers have an
average effective fiber diameter ranging from 0.1 to 20
micrometers.
(App. Br. 16.)
2
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Application 14/007,033
Grounds of rejection before this Panel for review:
Claims 2-5, 10, 11, 13, 16, 17, 19-22, 35, and 37-39 stand rejected
under 35 U.S.C. § I03(a) as unpatentable over the combination of Cinader3
and Parsons. 4
Claims 6, 9, and 36 stand rejected under 35 U.S.C. § I03(a) as
unpatentable over the combination of Cinader, Parsons, and Weisman. 5
ISSUE
Does the preponderance of evidence relied upon by Examiner support
a conclusion of obviousness?
FACTUAL FINDINGS (FF)
FF 1. Cinader discloses
an assembly including: a dental article ( e.g., an orthodontic
appliance) for bonding to tooth structure, the article having an
outer surface; and a compressible material attached to the
surface of the article. Preferably, the compressible material is
mechanically bonded to the surface of the article, chemically
bonded to the surface of the article, or a combination thereof.
In certain embodiments, the compressible material includes a
hardenable or partially hardened dental composition ( e.g., a
foamed dental composition).
(Cinader ,r 5; see also id. ,r 34--35; see Final Act. 3.)
FF 2. Cinader defines the term "dental composition" as "a material ( e.g., a
dental or orthodontic material) capable of adhering (e.g., bonding) to a tooth
structure. Dental compositions include, for example, adhesives ( e.g., dental
and/or orthodontic adhesives)" (Cinader ,r 9; see Final Act. 3).
3 Cinader, Jr., US 2009/0233252 Al, published Sept. 17, 2009.
4 Parsons et al., US 2009/0137043 Al, published May 28, 2009.
5 Weisman et al., US 4,865,596, issued Sept. 12, 1989.
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Application 14/007,033
FF 3. Cinader discloses:
As used herein, "mechanically bonded" means bonded or
attached through physical means ( e.g., using hooks, loops,
protrusions, van der Waals interactions, ionic bonds, and the
like, including combinations thereof), and in certain
embodiments utilizing the undercuts provided by mesh ( e.g., on
Victory Series brackets) and glass grit (e.g., on ceramic
brackets). As used herein, "chemically bonded" means bonded
or attached through chemical means (e.g., via shared electron
pairs such as covalent bonding, coordinate covalent bonding,
acid-base interactions such as Br0nsted-Lowry reactions, and
the like, including combinations thereof). For example, a
hardenable dental composition ( e.g., a hardenable resin, glass
ionomer, resin-modified glass ionomer, and/or epoxy) can be
hardened to chemically bond the compressible material [] to
surface [] of dental article []. In certain embodiments,
compressible material [] can be surface treated ( e.g., with a
silane coupling agent) to enhance the bond to surface [] of
dental article []. In some embodiments, the compressible
material [] can be bonded to surface [] of dental article [] by
melting or softening the compressible material.
(Cinader ,r 58; see Final Act. 3.)
FF 4. Cinader discloses that "[a] wide variety of compressible materials
can be used in [its] assemblies ... including, for example, porous materials"
(Cinader ,r 38; see Final Act. 3).
FF 5. Cinader discloses: "Exemplary porous materials include foams (e.g.,
polymeric foams including, for example, cellulose foams, glass foams,
polymeric foams, and combinations thereof), sponges, nonwoven fabrics,
glass fibers ( e.g., glass wool), ceramic fibers, cotton fibers, cellulose fibers,
woven mats, nonwoven mats, scrims, and combinations thereof' (Cinader
,r 42; see Final Act. 3).
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Application 14/007,033
FF 6. Cinader discloses:
For embodiments in which the compressible material includes
fibers, the fibers can optionally be tied together ( e.g., using a
reactive silane, a curable resin, or a colloidal silica) to form a
mat or scrim. In certain embodiments, mats can be prepared,
for example, using short chopped glass or other fiber loosely
bound. Optionally, the fibers can be temporarily encapsulated
into a sheet or web to aid in cutting and handling using, for
example, a water soluble or dispersible encapsulant ( e.g.,
polyvinyl alcohol). In such embodiments, the mat can be cut
into a desired shape and attached to an outer surface of a
bracket, and the temporary encapsulant can then be washed
away. In certain embodiments, nonwoven structures can be
used as carriers for loading a reinforcing material (e.g., short
chopped fibers) to enhance the strength of the composite
formed upon curing.
(Cinader ,r 43; see Final Act. 3.)
FF 7. Cinader discloses:
A dental article ( e.g., an orthodontic appliance) can be bonded
to a tooth structure using compressible materials and
hardenable dental compositions ... using direct and/or indirect
methods. For [ example a] ... compressible material [] and a
hardenable dental composition is contacted with tooth structure
[] and base [] of [an] orthodontic appliance []; and the
hardenable dental composition is hardened. During this
procedure, the orthodontic appliance is applied to the tooth
structure with sufficient pressure to substantially fill any gaps
between the appliance and tooth structure. . . . Because the
contour of the tooth structure surface may not precisely match
the contour of the outer surface of the base [], compressible
material [] can be essentially completely compressed ( e.g., at
most 10% original pore volume remaining) in some areas, and
essentially uncompressed ( e.g., at least 90% of original pore
volume remaining), or somewhat compressed in other areas. In
certain embodiments, compressing compressible material [] as
completely as possible to minimize the distance between [the]
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Application 14/007,033
appliance [] and tooth structure [] can be advantageous for
accurately expressing the prescription of the appliance.
(Cinader ,r 152; see Final Act. 3--4.)
FF 8. Examiner found that Cinader "does not teach[] a conformal coating
[] disposed on at least a portion of the compressible material/polymeric
component as required" by Appellants' claimed invention, and relies on
Parsons to make up for this deficiency in Cinader (Final Act. 4).
FF 9. Parsons discloses:
Coatings of inorganic materials, ... allow the creation of
multifunctional textiles. Multifunctional textiles are materials
that possess a combination of many different properties such as
flame retardancy, water repellency, and antibacterial activity.
These multifunctional textiles can be used for a number of
different tasks, for example in such industries as medical,
geotextiles and construction, upholstery, and filtration, to name
a few. It is still desirable, however, for these coated textiles to
still meet consumer demand in regards to comfort, ease of care,
and health issues. Also, modified textile materials can protect
against mechanical, thermal, chemical, and biological attacks,
and at the same time offer improved durability and
performance.
(Parsons ,r 8.)
FF 10. Parsons relates "to a process for the modification of the surface and
bulk properties of fiber and textile media, including synthetic polymeric and
natural fibers and yams in woven, knit, and non-woven form by low-
temperature ALD [ Atomic Layer Deposition]" (Parsons ,r 3; see id. ,r 40
("The terms 'fiber' and 'fiber-based substrate' as used herein, are meant in
their broadest sense to encompass all materials having a fibrous structure");
,r 67; Final Act. 4).
FF 11. Parsons' "ALD technique can permit the controlled deposition of
thin films of up to about 0.5 nm per cycle, providing a method for precise
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control over coating thickness" (Parson ,r 47; see id. ,r 43 ("film thickness is
directly controlled by the number of reactant exposure cycles used"); see
,r 46; see also id. ,r 92 ( exemplifying the deposition of Ab03 onto a substrate
in ten ALD cycles); Final Act. 4).
FF 12. Parsons discloses:
Coatings that are of particular interest are those which ( 1)
improve stability of a material for mechanical, chemical, photo-
chemical, or thermal destruction, (2) improve water, oil, and
soil repellency properties of a material, (3) exhibit unique light
absorption and emission properties in the UV and IR regions,
( 4) change the electrical conductivity of a material, ( 5) control
release or immobilization of various active species. In addition,
fibers and textile materials that are modified by such films can
exhibit increased yield strength, reduced strain at yield stress,
increased elastic modulus, increased fiber toughness, as well as
increased wettability. It will be recognized that many materials
are useful for more than one of these applications and that
inorganic thin films will be useful for other applications not
described here.
(Parsons ,r 56.)
FF 13. Parsons discloses that "Aluminum oxide is [a] good example of a
coating material that can be deposited using ALD. Aluminum oxide has
many favorable traits including strong adhesion to different substrate
surfaces, good dielectric properties, and good chemical and thermal stability
(Parsons ,r 57; see also id. ,r 48; Final Act. 4.)
FF 14. Examiner finds that the combination of Cinader and Parsons "does
not explicitly teach that the fibers have an average effective fiber diameter
ranging from 0.1-20 or 2.5-6 microns" and relies on Weisman to make up
for this deficiency in the combination of Cinader and Parsons (Final Act. 5).
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ANALYSIS
The combination of Cinader and Parsons:
Based on the combination of Cinader and Parsons, Examiner
concludes that, at the time Appellants' invention was made, it would have
been prima facie obvious to coat the compressible fibrous material of
Cinader's device with Parsons' aluminum oxide conformal coating to
enhance the properties ofCinader's fibrous material (see FF 1-13; see
generally Final Act. 4). As Examiner explains, the combination of Cinader
and Parsons would result in a device wherein "the hardenable composition
would be in contact with the coating" (id. at 4--5).
Appellants' claim 2 does not require the conformal coating to provide
increased bond strength and/ or reduce bond variability between the
compressible material and the surrounding adhesive matrix (see App. Br.
16). Therefore, we are not persuaded by Appellants' contention that "[ t ]he
present specification provides a number of examples illustrating how the
conformal coating can provide increased bond strength and reduce bond
variability between the compressible material and the surrounding adhesive
matrix" (id. at 6; see also id. at 5-7; Reply Br. 2 ("The conformal coating
provides increased bond strength and reduced bond variability between the
compressible material and the surrounding adhesive matrix")).
Appellants' claim 2 does not require a coating that enhances bonding
to an adhesive matrix or "a conformal coating to modify the adhesion
between the fibers in the compressible material carrier and the surrounding
adhesive" (see App. Br. 8; see also id. at 10-11; Reply Br. 3---6). Therefore,
we are not persuaded by Appellants' contentions that neither Cinader nor
Parsons suggest modifying fibers to include a coating to enhance bonding to
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an adhesive matrix (App. Br. 8; see also id. at 9 ("conspicuous by its
absence is any disclosure in Parsons that the coatings can be applied to fibers
to enhance adhesion of the coated fibers to a surrounding adhesive matrix")).
For the foregoing reasons, we are not persuaded by Appellants'
contention that Parsons disclosed "benefits of ALD coatings on fiber and
textile materials ... [that] are far afield from adhesive bonding in an oral
environment" (see App. Br. 9; see also id. at 12 ("Parsons fails to recognize
or appreciate that a conformal coating can enhance bonding between a fiber
and an adhesive matrix material"); Reply Br. 2-5; cf FF 9-13). Therefore,
we are not persuaded by Appellants' contention that Examiner "failed to
show that either Cinader nor Parsons recognize or appreciate the need to
improve properties of the fibers in the compressible materials such as bond
strength to the adhesive matrix," which is not required by Appellants' claim
2 (App. Br. 9).
Parsons discloses improving fibrous materials, such as those disclosed
by Cinader, for use in medical applications (FF 1-13). Therefore, we are not
persuaded by Appellants' contentions relating to the rationale for combining
Parsons with Cinader (see App. Br. 10). See In re Beattie, 974 F.2d 1309,
1312 (Fed. Cir. 1992) ("As long as some motivation or suggestion to
combine the references is provided by the prior art taken as a whole, the law
does not require that the references be combined for the reasons
contemplated by the inventor.").
Parsons discloses that the ALD method provides precise control over
coating thickness and exemplifies the deposition of Ab03 onto a substrate in
ten ALD cycles, wherein thin films ofup to about 0.5 nm thickness are
added per cycle, resulting in a coating thickness of about 5 nm (FF 11 ).
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Therefore, we are not persuaded by Appellants' contention that the
combination of Cinader and Parsons fails to suggest a conformal coating
thickness in the range of 2 to 20 nanometers as required by Appellants'
claim 2 or that Examiner failed to establish "that modifying Parsons'
processes to reach the claimed thickness range would only involve routine
experimentation, as Parsons fails to recognize or appreciate the criticality of
the thickness of the conformal coating" (see App. Br. 11-12).
To be complete, we recognize that Examiner makes reference to
Cinader's paragraph 58, which discloses, inter alia, that Cinader's
"compressible material [] can be surface treated ... to enhance the bond to
[the] surface[] of [a] dental article" (see Final Act. 3; FF 3). Therefore, we
are not persuaded by Appellants' contention that Examiner provided no
support for the proposition that "Cinader 'discloses that treatments can be
provided to improve the bonding of the material, teaching to one of ordinary
skill in the art that weak bonding may be of concern" (App. Br. 8 (footnote
omitted); see also Reply Br. 2).
The combination of Cinader, Parsons, and Weisman:
Based on the combination of Cinader, Parsons, and Weisman,
Examiner concludes that, at the time Appellants' invention was made, it
would have been prima facie obvious to modify the device suggested by the
combination of Cinader and Parsons with Weisman because Cinader
discloses "that the materials disclosed in Weisman are exemplary for the
device of Cinader" (Final Act. 5 (citing Cinader ,r 42)).
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Application 14/007,033
Having found no deficiency in the combination of Cinader and
Parsons, we are not persuaded by Appellants' contention that Weisman fails
to "cure[] the deficiencies of Cinader and Parsons" (App. Br. 14).
CONCLUSION
The preponderance of evidence relied upon by Examiner supports a
conclusion of obviousness.
The rejection of claim 2 under 35 U.S.C. § 103(a) as unpatentable
over the combination of Cinader and Parsons is affirmed. Claims 3-5, 10,
11, 13, 16, 17, 19-22, 35, and 37-39 are not separately argued and fall with
claim 2.
The rejection of claim 6 under 35 U.S.C. § 103(a) as unpatentable
over the combination of Cinader, Parsons, and Weisman is affirmed. Claims
9 and 36 are not separately argued and fall with claim 6.
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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