Henkel lP & Holding GmbH

Patent Trials and Appeals Board

Mar 19, 2021

2020002695 (P.T.A.B. Mar. 19, 2021)

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.)
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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
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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
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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.)
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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
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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”).
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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.
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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.
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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