Ex Parte Hester et alDownload PDFPatent Trial and Appeal BoardJul 29, 201612701821 (P.T.A.B. Jul. 29, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 121701,821 02/08/2010 32692 7590 08/02/2016 3M INNOVATIVE PROPERTIES COMPANY PO BOX 33427 ST. PAUL, MN 55133-3427 FIRST NAMED INVENTOR Jonathan F. Hester 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. 64796US005 1841 EXAMINER LIGHTFOOT, ELENA TSOY ART UNIT PAPER NUMBER 1715 NOTIFICATION DATE DELIVERY MODE 08/02/2016 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): LegalUSDocketing@mmm.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JONATHAN F. HESTER, KARL B. RICHTER, CLINTON P. WALLER, JR. and DOUGLAS E. WEISS Appeal 2014-001177 Application 12/701,821 Technology Center 1700 Before CHUNG K. PAK, LINDA M. GAUDETTE, and WESLEY B. DERRICK, Administrative Patent Judges. GAUDETTE, Administrative Patent Judge. DECISION ON APPEAL Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's decision2 finally rejecting claims 1, 2, 4--9, 12-14, and 16 under 35U.S.C.§103(a) as being unpatentable over Weiss et al (US 2007/0154651 Al, pub. July 5, 2007 ("Weiss")) in view of Watanabe (US 6,533,415 B2, iss. Mar. 18, 2003) and further in view of 1 Appellants identify the real party in interest as "3M Company (formerly known as Minnesota Mining and Manufacturing Company) of St. Paul, Minnesota and its affiliate 3M Innovative Properties Company of St. Paul, Minnesota." Appeal Brief filed August 19, 2013 ("App. Br."), 2. 2 Final Office Action mailed June 18, 2013 ("Final Act."), 2; see also Examiner's Answer mailed October 10, 2013 ("Ans."), 2 (withdrawing the rejections of claims 1, 2, 4--9, 12-14, and 16 based on obviousness over Gsell in view of various secondary references). Appeal 2014-001177 Application 12/701, 821 Komatsu et al (US 2007/0007196 Al, pub. Jan. 11, 2007 ("Komatsu")) and Magat et al (US 3,188,228, iss. June 8, 1965 ("Magat")). See App. Br. 3. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. The invention relates to methods of making polymeric substrates having enhanced hydrophilicity. Specification filed February 8, 2010 ("Spec."), 1: 16. Claim 1, the sole independent claim on appeal, is representative of the invention and reads as follows: 1. A method of making a functionalized substrate, the method comprising the steps of: 1) providing a porous base substrate having interstitial and outer surfaces; 2) saturating the porous base substrate with a first solution comprising (a) at least one grafting monomer having at least one (meth)acrylate group and at least one additional ethylenically unsaturated, free-radically polymerizable group; and optionally (b) one or more additional monomers having at least one ethylenically unsaturated, free-radically polymerizable group and a hydrophilic group; and optionally a chain transfer agent, wherein at least one of (a), and/or (b) monomers are hydrophilic, and wherein the monomer solution comprises: (a) 1 to 10 wt.% of (a) monomers; (b) 1 to 10 wt. % of (b) monomers, (c) 0.02 to 0.15 wt.% of chain transfer agent; and ( e) solvent; and 3) exposing the saturated porous base substrate to a controlled amount of gamma radiation so as to form a first functionalized substrate comprising grafted polymer attached to the surfaces of the porous base substrate. 2 Appeal 2014-001177 Application 12/701, 821 Appellants do not present separate arguments in support of any particular claim or claim grouping. Accordingly, dependent claims 2, 4--9, 12-14, and 16, stand or fall with claim 1. See generally, App. Br. 4--17. The Examiner finds Weiss discloses or suggests a method as claimed in claim 1 with the exception of: (1) saturating the porous base substrate with a solution that includes (a) a chain transfer agent and (b) the explicitly claimed weight percentages of monomers, and (2) a step of exposing the saturated porous base substrate to gamma radiation. See Ans. 3-7. Appellants challenge the Examiner's determination that it would have been obvious to have modified Weiss to include each of the features not described explicitly in Weiss. See generally, App. Br. 4--17. We have considered the arguments advanced by Appellants in their Appeal and Reply3 Briefs, but are not convinced of error in the Examiner's conclusion of obviousness for the reasons expressed in the Answer (see Ans. 3-37) and below. With respect to the monomer solution, the Examiner relies on paragraphs 23--41 of Weiss (Ans. 3), which include the following disclosure: The grafting monomers usually have both (a) a free-radically polymerizable group and (b) at least one additional function[ al] group thereon. The free-radically polymerizable group is typically an ethylenically unsaturated group such as a (meth)acryloly group or a vinyl group .... In addition to having a free-radically polymerizable group, suitable grafting monomers typically have an additional functional group selected from a second ethylenically unsaturated group, an epoxy group, an azlactone group, an isocyanato group, an ionic group, an alkylene oxide group, or combination thereof. ... [T]he grafted species can impart a hydrophilic surface to the functionalized substrate that includes a porous base substrate having a hydrophobic surface prior to surface modification with the grafted species. That is, 3 Reply Brief filed October 28, 2013 ("Reply Br."). 3 Appeal 2014-001177 Application 12/701, 821 the grafted species contain an alkylene oxide group can impart a hydrophilic character to the resulting functionalized substrate. Weiss i-fi-123-24. The Examiner finds Weiss discloses the concentration of monomers in the solution "ranges from about 1 wt % to about 100 wt %, desirably, from about 5 wt % to about 30 wt %, and more desirably from about 10 wt % to about 20 wt % based on a total weight of solution" (Weiss i1 71 ). Ans. 4. The Examiner finds these ranges overlap the claimed range of 1 to 10 wt. %, and that "overlapping ranges are prima facie evidence of obviousness." Id. Appellants argue Weiss discloses "a laundry list of monomers" and Weiss fails to provide any guidance to select from this list monomers that fall within the scope of both (a) and (b) monomers. Reply Br. 5---6; see App. Br. 5. As broadly claimed, (b) monomers are optional components of the claim 1 monomer solution. Claim 1 ("optionally (b )" (emphasis added)); see also, Spec. 7 :2 ("The monomer solution may comprise one or more hydrophilic '(b )' monomer." (emphasis added)). The Specification contemplates a monomer solution comprising a hydrophilic (a) monomer, and specifies that (b) monomers are not required where (a) monomers confer hydrophilicity. Spec. 10:25-26; see also id. at 10:9-11 ("Most preferably '(a)' monomers are those di(meth)acrylates of glycerol having a free hydroxyl group (to provide hydrophilicity).") We find the above-quoted disclosure in Weiss provides guidance to one of ordinary skill in the art to select a hydrophilic (a) monomer as recited in claim 1. Accordingly, Appellants' argument that Weiss does not provide guidance to select a (b) monomer is not persuasive, since claim 1 does not require the presence of a (b) monomer where the (a) monomer confers hydrophilicity. Appellants' argument that one of ordinary skill in the art would not have used a solution containing monomers in the amounts claimed (see App. Br. 5---6) is unpersuasive because Appellants have not provided evidence of criticality in the 4 Appeal 2014-001177 Application 12/701, 821 claimed ranges. In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003) ("[T]he existence of overlapping or encompassing ranges shifts the burden to the applicant to show that his invention would not have been obvious."). Appellants argue the Examiner erred in finding one of ordinary skill in the art would have been motivated to modify, and had a reasonable expectation of success in modifying, Weiss's monomer solution to include a chain transfer agent, based on the teachings of Watanabe, and that the Examiner failed to give weight to their evidence of unexpected results. See App. Br. 7-16. Appellants' arguments are unavailing because, like the (b) monomers, the chain transfer agent is an optional component of the claim 1 monomer solution. Claim 1 ("optionally a chain transfer agent" (emphasis added)); see also, Spec. 17:26-27 ("The monomer solution preferably contains a chain transfer agent to control the molecular weight of the resultant polymer." (emphasis added)); id. at 18:9-10 ("The monomer solution may comprise up to 0.5 parts by weight of a chain transfer agent." (emphasis added)). With respect to the claim 1 step of exposing the saturated porous base substrate to gamma radiation, the Examiner contends it would have been obvious to one of ordinary skill in the art to use gamma radiation instead of an electron beam radiation in Weiss's grafting step based on Komatsu's teaching that either gamma rays or electron beams are suitable for graft polymerization of free- radically polymerizable monomer, and Magat's teachings that high energy radiation is more effective for grafting an organic compound to a substrate and "graft polymerization can be readily carried out using gamma-rays." Ans. 6-7. Appellants argue "[ e Jach of Komatsu and Magat are using different monomers grafted to different substrates for different end-uses. Alone or in 5 Appeal 2014-001177 Application 12/701, 821 combination, neither of Komatsu[] [n]or Magat[] establish the equivalence of gamma and ebeam [radiation] for the process of Weiss." App. Br. 7. The Examiner has fully addressed this argument in the Answer and persuasively explained why Komatsu, though not in Appellants' field of endeavor, is nonetheless analogous art because it is pertinent to the problem with which Appellants' invention is concerned, i.e., "the problem of graft polymerization of monomers to a polymeric substrate." Ans. 12-13. We also are unconvinced of error in the Examiner's reliance on Magat to establish one of ordinary skill in the art would have understood that the higher energy provided by gamma rays is more efficient for grafting any monomer to a polymer substrate. Id. at 13-14. Appellants argue the Examiner ignored comparative examples in the Specification which demonstrate Appellants' discovery that gamma radiation is more efficient than electron beam radiation, noting that Komatsu and Magat demonstrate the effectiveness of both types of radiation, but do not demonstrate the improved efficiency achieved by gamma irradiation. See Reply Br. 8. Appellants' claims do not include any limitations tied to the efficiency of the grafting step and, therefore, the evidence fails to show unexpected results over the improved efficiency in Weiss's grafting step that would result inherently from the use of gamma irradiation as suggested by Komatsu and Magat. Cf Ans. 14; Iron Grip Barbell Co. v. USA Sports, Inc., 392 F.3d 1317, 1322 (Fed. Cir. 2004) (explaining that unexpected results that are probative of non-obviousness are those that are "different in kind and not merely in degree from the results of the prior art"). In sum, for the reasons expressed in the Answer and above, Appellants have failed to persuade us of error in the Examiner's conclusion of obviousness. We, therefore, sustain the Examiner's rejection of claims 1, 2, 4--9, 12-14, and 16 under 35 U.S.C. § 103(a). 6 Appeal 2014-001177 Application 12/701, 821 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 )(iv). AFFIRMED 7 Copy with citationCopy as parenthetical citation