Ex Parte He et al

Patent Trial and Appeal Board

Jan 15, 2019

13839978 (P.T.A.B. Jan. 15, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/839,978 03/15/2013 Guroen He
20306 7590 01/16/2019
MCDONNELL BOEHNEN HULBERT & BERGHOFF LLP
300 S. WACKER DRIVE
32NDFLOOR
CHICAGO, IL 60606
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.
ll-223-US2 1014
EXAMINER
GOLDEN, CHINESSA T
ART UNIT PAPER NUMBER
1788
MAIL DATE DELIVERY MODE
01/16/2019 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GUROEN HE, TARUN AMLA, LARRY D. OLSON,
and PEGGY CONN
Appeal2018-003077
Application 13/839,978
Technology Center 1700
Before KAREN M. HASTINGS, N. WHITNEY WILSON, and
CHRISTOPHER C. KENNEDY, Administrative Patent Judges.
HASTINGS, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 seeks our review under 35 U.S.C. § 134(a) of the
Examiner's decision rejecting claims 1-3, 5, 8, 9, 11-16, 19-23, 25-30, 39
and 40 under 35 U.S.C. 103(a) as unpatentable over at least the basic
combination of Fujimoto et al. (US 2010/0129676 Al, published May 27,
1 Appellant is the Applicant, Isola USA Corp., which is also stated to be the
real party in interest (Appeal Br. 1 ).
Appeal2018-003077
Application 13/839,978
2010) in view of Bartley et al. (US 2010/0280198 Al, published Nov. 4,
2010). 2
We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.
Independent claim 1 is illustrative of the subject matter on appeal
( emphasis added to highlight key disputed limitation):
1. A varnish composition comprising:
( 1) from about 3 0 to about 8 0% by dry weight of a base
resin selected from a raw resin, a synthesized base resin and
combinations thereof wherein the raw resin is a copolymer of
butadiene and styrene in which the butadiene is present in the
copolymer in an amount greater than 50 mole% and wherein the
synthesized base resin is the product of the synthesis of an
admixture of ingredients comprising:
i. a copolymer of butadiene and styrene wherein the
butadiene is present in the copolymer in an amount greater than
50 mole%;
ii. at least one monomer of a mono maleimide having the
following formula:
~-R
wherein R is alkyl, aryl and mixed alkyl-aryl; and
iii. at least one reactive monomer;
(2)/rom about 1 to about 30% by dry weight of at least
one monomer of bismaleimide having the following formula:
2 While the Examiner applies additional prior art to dependent claim 27,
Appellant does not present any argument against this rejection; the focus is
on claim 1 (Appeal Br. 3, 6).
2
Appeal2018-003077
Application 13/839,978
where R is alkyl, aryl, or mixed alkyl-aryl; and
(3) an initiator.
ANALYSIS
Upon consideration of the evidence on this record and each of
Appellant's contentions, we find that the preponderance of evidence
supports the Examiner's conclusion that the subject matter of Appellant's
claim 1 is unpatentable over the applied prior art. We sustain the
Examiner's§ 103 rejections essentially for the reasons set out by the
Examiner in the Answer and the Final Office Action.
We add the following primarily for emphasis.
Appellant's principal arguments in the Appeal Brief are 1) that the
Examiner's proposed combination of Fujimoto with Bartley is improper
because Bartley is non analogous art (Appeal Br. 6-9), and 2) that the
Examiner has not shown that the claimed ingredient ranges are result
effective variables, with the Appellant stating that "the varnish composition
of Fujimoto include ingredients beyond those claimed" (Appeal Br. 10). In
the Reply Brief, Appellant reiterates these arguments, and maintains that the
rejection relies upon impermissible hindsight.
Appellant's arguments do not fully address the rejection and the
inferences of these references that are presented on this record for our
review.
3
Appeal2018-003077
Application 13/839,978
It has been established that "the [obviousness] analysis need not seek
out precise teachings directed to the specific subject matter of the challenged
claim, for a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ." KSR Int 'l Co. v. Teleflex
Inc., 550 U.S. 398,418 (2007). Likewise, it is also well settled that a
reference stands for all of the specific teachings thereof as well as the
inferences one of ordinary skill in the art would have reasonably been
expected to draw therefrom. See In re Fritch, 972 F.2d 1260, 1264---65 (Fed.
Cir. 1992). It is also well established that the obviousness inquiry does not
ask "whether the references could be physically combined but whether the
claimed inventions are rendered obvious by the teachings of the prior art as a
whole." In re Etter, 756 F.2d 852, 859 (Fed. Cir. 1985) (en bane); see also
In re Keller, 642 F.2d 413,425 (CCPA 1981) (stating "[t]he test for
obviousness is not whether the features of a secondary reference may be
bodily incorporated into the structure of the primary reference").
Appellant's arguments that Bartley is non analogous art because
Bartley is only drawn to a solid polymer as opposed to a varnish or resin are
not persuasive of error in the Examiner's rejection for the reasons set out by
the Examiner (Ans. 13, 14 (explaining that Bartley discusses the use of a
polymeric coating for a wide variety of substrates including electronic
components)). There is no dispute that varnish composition of claim 1
encompasses the varnish composition of Fujimoto except that Fujimoto
lacks explicit description of the recited ranges of ingredient amounts and
lacks an explicit description of "at least one reactive monomer" (Ans. 4;
Appeal Br. generally). Bartley exemplifies that one of ordinary skill in the
art would have known that a reactive monomer may be used in an acrylate
4
Appeal2018-003077
Application 13/839,978
polymer coating composition to improve adhesion to various substrates
(see, e.g., Bartley,r,r 8, 28, 31, 43, 52, abstract; Ans. 5, 13, 14). Appellant
has not shown reversible error in the Examiner's determination that a person
of ordinary skill in the art would have, using no more than ordinary
creativity, used a reactive monomer such as exemplified in Bartley in the
varnish composition of Fujimoto (e.g., Ans. 11, 12). Appellant has also not
shown that use of the reactive monomer has any criticality; indeed,
Appellant's Specification states that reactive monomers are "optional
ingredients" (Spec. 17, section (6) (a)).
Furthermore, in KSR Int 'l Co., 550 U.S. at 419--420, the Supreme
Court observed that:
In determining whether the subject matter of a ... claim is
obvious, neither the particular motivation nor the avowed
purpose of the patentee controls. What matters is the objective
reach of the claim. If the claim extends to what is obvious, it is
... [ unpatentable] under § 103.
See also Wyers v. Master Lock Co., 616 F.3d 1231, 1238 (Fed. Cir. 2010)
("[t]he Supreme Court's decision in KSR ... directs us to construe the scope
of analogous art broadly," stating that ''familiar items may have obvious uses
beyond their primary purposes, and a person of ordinary skill often will be
able to fit the teachings of multiple patents together like pieces of a puzzle").
Here, Bartley can be seen to exemplify that a reactive monomer is
useful in a polymeric coating in a wide variety of applications (e.g., Bartley
,r ,r 43, 52). Appellant has not shown error in the Examiner's determination
that one of ordinary skill would have readily appreciated that a reactive
monomer would have had an obvious use in e.g., a varnish polymeric
composition of Fujimoto.
5
Appeal2018-003077
Application 13/839,978
We "take account of the inferences and creative steps that a person of
ordinary skill in the art would employ," and find a person of ordinary skill in
the art would have overcome any difficulties in including such a reactive
monomer in the varnish of Fujimoto within their level of skill. KSR Int 'l
550 U.S. at 418; see also id. at 421 ("A person of ordinary skill is also a
person of ordinary creativity, not an automaton."); Ball Aerosol & Specialty
Container, Inc. v. Limited Brands, Inc., 555 F.3d 984, 993 (Fed. Cir. 2009)
(under the flexible inquiry set forth by the Supreme Court, the PTO must
take account of the "inferences and creative steps," as well as routine steps,
that an ordinary artisan would employ ( emphasis omitted)).
Appellant's argument that Fujimoto allows other ingredients in his
varnish (Appeal Br. 10) is not persuasive since claim 1 uses open ended
language, e.g., "comprising", and thus also permits other ingredients to be
included therein. Determining workable amounts of the ingredients would
have been well within the level of skill in the art (Ans. 15). One of ordinary
skill would have readily appreciated that the amount of each component in a
composition would affect its properties (Fujimoto ,r 21; Ans. 5, 15). "A
recognition in the prior art that a property is affected by the variable is
sufficient to find the variable result-effective." In re Applied Materials, Inc.,
692 F.3d 1289, 1297 (Fed. Cir. 2012). It is well settled that it would have
been obvious for an artisan with ordinary skill to develop workable or even
optimum ranges for result-effective parameters. In re Woodruff, 919 F.2d
1575, 1577 (Fed. Cir. 1990); In re Boesch, 617 F.2d 272,276 (CCPA 1980);
In re Aller, 220 F.2d 454, 456 (CCPA 1955). Notably, Appellant does not
rely upon any evidence of secondary considerations, such as unexpected
results.
6
Appeal2018-003077
Application 13/839,978
Accordingly, we affirm the Examiner's prior art rejections of the
claims under 35 U.S.C. § 103(a) for the reasons given above and presented
by the Examiner.
DECISION
The Examiner's§ 103 rejections are affirmed.
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)(l ).
AFFIRMED
7