Henkel lP & Holding GmbHDownload PDFPatent Trials and Appeals BoardMar 19, 20212020002695 (P.T.A.B. Mar. 19, 2021) Copy Citation 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. 14/615,570 02/06/2015 Jie Bai LDEI-200/US 9940 31217 7590 03/19/2021 Henkel Corporation One Henkel Way Rocky Hill, CT 06067 EXAMINER BROOKS, KREGG T ART UNIT PAPER NUMBER 1764 NOTIFICATION DATE DELIVERY MODE 03/19/2021 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): rhpatentmail@henkel.com trish.russo@henkel.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JIE BAI Appeal 2020-002695 Application 14/615,570 Technology Center 1700 Before JEFFREY T. SMITH, GEORGE C. BEST, and BRIAN D. RANGE, Administrative Patent Judges. SMITH, 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, 6, 7, and 9. (See Final Act. 1.) We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as HENKEL IP & HOLDING GMBH. (Appeal Br. 3.) Appeal 2020-002695 Application 14/615,570 2 CLAIMED SUBJECT MATTER The claims are directed to a liquid compression molding encapsulants. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A liquid compression molding thermosetting resin encapsulant composition having low warpage when compression molded and oven cured, comprising: a thermosetting resin component comprising an epoxy resin component, a polyether block copolymer present in an amount of about 0.5% to about 5% by weight, sufficient to reduce warpage in x and y directions when the encapsulant is compression molded and oven cured, a thermal expansion reducing additive comprising about 70% to about 90% silica filler by weight, and a cure component comprising the combination of an anhydride and an imidazole in a ratio of about 25:1 anhydride to imidazole, wherein, when compression molded and oven cured, the encapsulant composition has the following combination of warpage-reducing physical properties: a Tg1 of about -70°C to about -30°C as measured by DMA, and a Tg2 of about 100°C to 150°C as measured by TMA. REJECTIONS I. Claims 1, 6, 7, and 9 are rejected under 35 U.S.C. § 112(a) or 35 U.S.C. § 112 (pre-AIA), first paragraph, as failing to comply with the written description requirement. (Final Act. 2–3.) II. Claims 1, 6, 7, and 9 are rejected under pre-AIA 35 U.S.C. § 103(a) as unpatentable over Fu (WO 2013/095908 A2, June 27, 2013) as evidenced by George Wypych, Handbook of Polymers, 390–393 (2nd ed. 2016) (“Wypych”) and Hirose et al., Dielectric study of dynamical Appeal 2020-002695 Application 14/615,570 3 heterogeneity in blends of polyethers, 352 J. Non-Crystalline Solids 4758– 4762 (2006) (“Hirose”). (Final Act. 3–6.) OPINION We review the appealed rejections for error based upon the issues Appellant identifies, and in light of the arguments and evidence produced thereon. See In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (“[I]t has long been the Board’s practice to require an applicant to identify the alleged error in the examiner’s rejections . . . .” (citing Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential))). Written Description rejection To satisfy the written description requirement, a patent applicant must “convey with reasonable clarity to those skilled in the art that, as of the filing date sought, he or she was in possession of the invention.” Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563–64 (Fed. Cir. 1991) (emphasis omitted). In order to satisfy the written description requirement, the disclosure as originally filed does not have to provide in haec verba support for the claimed subject matter at issue. See Fujikawa v. Wattanasin, 93 F.3d 1559, 1570 . . . (Fed. Cir. 1996). Nonetheless, the disclosure must . . . convey with reasonable clarity to those skilled in the art that . . . [the inventor] was in possession of the invention. Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563–64 . . . (Fed. Cir. 1991). Put another way, one skilled in the art, reading the original disclosure, must immediately discern the limitation at issue in the claims. Waldemar Link GmbH & Co. v. Osteonics Corp., 32 F.3d 556, 558 . . . (Fed. Cir. 1994). That inquiry is a factual one Appeal 2020-002695 Application 14/615,570 4 and must be assessed on a case-by-case basis. See Vas- Cath, 935 F.2d at 1561 . . . . Purdue Pharma L.P. v. Faulding Inc., 230 F.3d 1320, 1323–24 (Fed. Cir. 2000). The court in Purdue also stated: [O]ne cannot disclose a forest in the original application, and then later pick a tree out of the forest and say here is my invention. In order to satisfy the written description requirement, the blaze marks directing the skilled artisan to that tree must be in the originally filed disclosure. Purdue, 230 F.3d at 1326–27 (citing In re Ruschig, 379 F.2d 990, 994–95 (CCPA 1967). The court further stated that “there is nothing in the written description of [the examples] that would suggest to one skilled in the art that the Cmax/C24 ratio is an important defining quality of the formulation, nor does the disclosure even motivate one to calculate the ratio.” Purdue, 230 F.3d at l327. We are not persuaded by Appellant’s arguments that the Specification demonstrates that Appellant was in possession of the anhydride:imidazole ratio of about 25:1 as recited in claim 1. As acknowledged by Appellant, the Specification does not explicitly describe the ratio of anhydride and imidazole recited in claim 1. (Appeal Br. 9–10.) The Examiner stated: [T]he specification has no general teaching of an anhydride:imidazole ratio, only teachings as to a total amount of curing agents including anhydrides and imidazoles. The only suggestion of such a ratio is from the amounts in the samples of the invention in table 1, which range from a calculated ratio of 26.25:1 to 26.3:1, which is not sufficient disclosure to reasonably convey that the inventor had possession of a ratio of about 25:1. (Ans. 3.) Appeal 2020-002695 Application 14/615,570 5 Thus, the Examiner found that the Specification fails to provide support for the claim range of specific surface areas. (Ans. 3.) Appellant contends that the Specification—which describes a variety of materials (including anhydrides and imidazoles) that may be used as the cure component—sufficiently describes the invention as now claimed. Appellant specifically states: The difference between, on the one hand, the 26.3:1 ratio that is calculated from one of Appellants’ exemplary compositions and, on the other hand, a 25:1 ratio, is a mere 5.2%. But Appellants’ specification explains that, in some embodiments, anhydrides or imidazoles can be present in amounts “within the range of about 10 to 50% of the thermosetting resin composition.” Specification at ¶ [0078]. Thus, in embodiments of the thermosetting resin compositions of the disclosure, the individual amounts of anhydride and imidazole can vary over a range of 40%. The ratios of the anhydride and imidazole would likewise vary over a broad range, since that ratio is itself a function of the individual amounts of anhydride and imidazole. Thus, when the claim feature of “about 25:1” is understood in the context of (for example), this disclosure in the specification, it becomes clear that the feature is not limited to “exactly 25:1” as the Examiner asserts but, rather, the feature embraces a broader range - one that includes (at least) the ratios of the exemplary compositions (i.e., 26.25:1 and 26.3:1). (Reply Br. 3–4.) As even the portion of the Specification cited by Appellant states, the anhydrides or imidazoles can be present in amounts within the range of about 10 to 50% of the thermosetting resin composition and are not limited to specific ratios relative to one another. (Reply Br. 4; Spec. ¶ 78.) Thus, Appellant’s argument, which is not commensurate in scope with claim 1 or Appeal 2020-002695 Application 14/615,570 6 the Specification and is not supported by objective evidence, is not persuasive of written descriptive support. In this regard, the Examiner has cited the Specification’s exemplified embodiment (table 1) that provides calculated ratios of 26.25:1 and 26.3:1— which we note are for specific examples—that are insufficient to convey that the inventor had possession of the claimed ratio of about 25:1. (Ans. 3.) Appellant has failed to direct us to portions of the Specification that reveal the limited showing in the exemplified embodiments create a recognition of a desired relationship between the amount of anhydride and imidazole relative to one another and to amounts that are not included in the exemplified showings. Nowhere does the Specification discuss or even reveal a recognition of a desired relationship between the amount of anhydride and imidazole relative to one another or to a ratio that includes amounts other than the exemplified. To the extent the exemplified embodiment describes specific examples having specific a relationship between the amount of anhydride and imidazole present relative to one another, this disclosure would not be sufficient to satisfy the written description requirement, because the Specification provides no indication that the ratio of anhydride to imidazole is important to form thermosetting resin compositions that are capable of reducing molded wafer warpage. Purdue, 230 F.3d at 1327; cf. also ICU Med., Inc. v. Alaris Med. Sys., Inc., 558 F.3d 1368, 1377 (Fed. Cir. 2009) (to comply with the written description requirement, the specification “must do more than merely disclose that which would render the claimed invention obvious”). Appeal 2020-002695 Application 14/615,570 7 Accordingly, we agree with the Examiner that the Specification does not provide sufficient support to inform one of ordinary skill in the art that Appellant was in possession of the thermosetting resin composition having the specific ratio of anhydride to imidazole recited in claim 1. Prior Art rejection We need only address independent claim 1. That claim is directed to a liquid compression molding thermosetting resin composition that comprises “a cure component comprising the combination of an anhydride and an imidazole in a ratio of about 25:1 anhydride to imidazole.” We limit our discussion to the Fu reference.2 Examiner finds Fu teaches thermosetting resin composition comprising an epoxy resin and anhydride hardener that form a cured network (abstract), thus a thermosetting resin matrix including an epoxy resin as required by claim 1. (Final Act. 3.) Examiner finds Fu teaches the composition comprises an anhydride and an imidazole. The Examiner specifically states: Fu teaches anhydride and imidazole, but does not recite the ratio of anhydride to imidazole, where example 5 is calculated to be approximately 90:1 for such ratio. However, Fu teaches the amount of imidazole, which is a catalyst according to Fu, ranging from 0.1 to 1.0 wt% in one preferred range, so as to provide a desired catalytic effect for curing (para. 0076). As such, based on the example 5, Fu suggests adjusting the amount of imidazole that would [] provide a ratio between 13.6:1 to 136:1, which includes the recited ratio of 25:1. (Final Act. 4.) 2 The Examiner did not rely upon either Wypych or Hirose to address the ratio of anhydride to imidazole and a thermosetting composition. Appeal 2020-002695 Application 14/615,570 8 Establishing a prima facie case of obviousness of an invention comprising a combination of known elements requires “an apparent reason to combine the known elements in the fashion claimed.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). The Examiner provides no explanation that Fu recognizes the need to incorporate anhydride (hardener) and an imidazole (catalyst) in amounts required by the claimed invention. The Examiner has failed to identify a teaching in Fu that recognizes a desired relationship between the amount of anhydride and imidazole required for the composition. The Examiner has failed to adequately explain why a person of ordinary skill in the art would have arrived at a composition containing an anhydride and an imidazole in ratio of about 25:1 as required by independent claim 1. Thus, the Examiner’s rejection clearly is based upon impermissible hindsight in view of the Appellant’s disclosure. See In re Warner, 379 F.2d 1011, 1017 (CCPA 1967) (“A rejection based on section 103 clearly must rest on a factual basis, and these facts must be interpreted without hindsight reconstruction of the invention from the prior art.”). For the above reasons we reverse the prior art rejection. CONCLUSION The Examiner’s decision to reject claims 1, 6, 7, and 9 is AFFIRMED. Appeal 2020-002695 Application 14/615,570 9 DECISION SUMMARY Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 6, 7, 9 112, first paragraph Written Description 1, 6, 7, 9 1, 6, 7, 9 103(a) Fu, Wypych, Hirose 1, 6, 7, 9 Overall Outcome 1, 6, 7, 9 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). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED Copy with citationCopy as parenthetical citation