Monsanto Technology LLC

Patent Trials and Appeals Board

Dec 18, 2020

2020002489 (P.T.A.B. Dec. 18, 2020)

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.
13/770,929 02/19/2013 Virginia Ursin MONS:046USD1 9966
73905 7590 12/18/2020
DENTONS US LLP
P.O. BOX 061080
CHICAGO, IL 60606-1080
EXAMINER
ZILBERING, ASSAF
ART UNIT PAPER NUMBER
1792
NOTIFICATION DATE DELIVERY MODE
12/18/2020 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):
patents.us@dentons.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WENJIE CHEN and ARISTOTELIS KARAGIANNIS
Appeal 2020-001064
Application 14/965,446
Technology Center 1700
Before FRANCISCO C. PRATS, DEBRA L. DENNETT, and
LILAN REN, Administrative Patent Judges.
REN, 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 and 3–15. See Final Act. 3, 6, 7, 10.
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as Solutia Inc. Appeal
Br. 3.
Appeal 2020-001064
Application 14/965,446
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CLAIMED SUBJECT MATTER
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. An interlayer comprising:
a first polymer layer comprising a first poly(vinyl butyral)
resin and at least one plasticizer, wherein the residual hydroxyl
content of said first poly(vinyl butyral) resin is at least about 18.5
weight percent, wherein the plasticizer content of said first
polymer layer is about 27 parts per hundred resin (phr) or less;
a second polymer layer adjacent to and in contact with said
first polymer layer, wherein said second polymer layer comprises
a second poly(vinyl butyral) resin and at least one plasticizer; and
a third polymer layer, wherein said third polymer layer
comprises a third poly(vinyl butyral) resin and at least one
plasticizer, wherein said first polymer layer is disposed between
and in contact with each of said second and said third polymer
layers,
wherein the residual hydroxyl content of said first
poly(vinyl butyral) resin is at least 5 weight percent greater than
the residual hydroxyl content of said second poly(vinyl butyral)
resin, and wherein the plasticizer content of said second polymer
layer is at least 2 phr greater than the plasticizer content of said
first polymer layer, and
wherein the residual hydroxyl content of said first
poly(vinyl butyral) resin is at least 5 weight percent greater than
the residual hydroxyl content of said second poly(vinyl butyral)
resin and the residual hydroxyl content of said third poly(vinyl
butyral) resin.
Claims Appendix (Appeal Br. 20).
REFERENCES
The prior art references relied upon by the Examiner are:
Name Reference Date
Lu US 2006/0210782 A1 Sep. 21, 2006
Ma US 2006/0231189 A1 Oct. 19, 2006
Appeal 2020-001064
Application 14/965,446
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Sasaki US 2017/0298547 A1 Oct. 19, 2017
Miyai EP 0710545A1 Nov. 6, 1995

REJECTIONS2
The Examiner rejects claims 1, 3, 4, 6–12, 14, and 15 under pre–AIA
35 U.S.C. § 103(a) as being unpatentable over Miyai in view of Lu. Final
Act. 3, 7.
The Examiner rejects claims 5 and 13 under pre–AIA 35 U.S.C.
§ 103(a) as being unpatentable over (i) Miyai in view of Lu and Sasaki or
(ii) Miyai in view of Lu and Ma. Final Act. 6, 10.
Claims Rejected 35 U.S.C. § Reference(s)/Basis
1, 3, 4, 6–12, 14, 15 103(a) Miyai, Lu
5, 13 103(a) Miyai, Lu, Sasaki or
Miyai, Lu, Ma

OPINION
We review the appealed rejections for error based upon the issues
identified by Appellant and in light of the arguments and evidence produced
thereon. Cf. Ex parte Frye, 2010 WL 889747, *4 (BPAI 2010) (precedential)
(cited with approval in 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.”)). After having considered
the evidence presented in this Appeal and each of Appellant’s contentions,
we are not persuaded that reversible error has been identified, and we affirm

2 The Examiner’s double patenting rejections (Final Act. 12–13, 14) have
been withdrawn. Advisory Action of April 15, 2019, 2.
Appeal 2020-001064
Application 14/965,446
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the Examiner’s § 103(a) rejections for the reasons expressed in the Final
Office Action and the Answer. We add the following primarily for emphasis.
Claim 13
In support of the obviousness rejection, the Examiner finds Miyai
describes a multi-layer resin which comprises “at least two plasticized
polyvinyl butyral resin films and the difference in the plasticizer content in
the adjacent resin films is 5 weight parts to 50 weight parts for 100 weight
parts of the resin which makes up each resin film.” Miyai 5:49–51; see Final
Act. 3 (citing various portions of Miyai). The Examiner also finds Lu
describes a multi-layer sheet where “the residual hydroxyl content of the two
adjacent polymer sheets can differ by at least 1.8%, 2.0%, 2.2%, 2.5%,
3.0%, 4.0%, 5.0%, 7.5%, or by at least 10%” and that “as the residual
hydroxyl content decreases, plasticizer capacity (i.e., amount) increases.” Lu
¶ 13; Final Act. 4 (citing Lu ¶ 66). The Examiner concludes that it would
have been obvious for a skilled artisan
to vary residual hydroxyl of poly(vinyl butyral) resin in the
first, second and third polymer layers to amounts, including that
presently claimed and to vary difference between the residual
hydroxyl content in adjacent polymer layers to amounts,
including that presently claimed, by controlling reaction times,
reactant concentrations, and other variables in the
manufacturing process, in Miyai, in order to provide desired
plasticizer loading in the polymer layers, stably maintain the
difference in plasticizer content between the polymer layers as
well as to obtain superior sound suppression characteristics, and
thereby arrive at the claimed invention.

3 Appellant argues for the patentability of claims 1, 3–15 as a group with
claim 1 being the representative claim. See Appeal Br. 10–19. These claims
stand or fall together. See id.; see also 37 C.F.R. § 41.37(c)(1)(iv).
Appeal 2020-001064
Application 14/965,446
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Final Act. 5–6 (citing Lu ¶¶ 6, 15, 66 and providing a rationale to combine
the references).
Appellant argues that the Examiner reversibly erred because the
claims “are not directed to interlayers having superior sound suppression,
but instead, are directed to interlayers having improved stiffness for a high
level of impact protection.” Appeal Br. 13; see also id. at 15. This argument
is not persuasive because it is incommensurate in scope with the claim
language which does not recite any particular parameter such as stiffness. In
re Self, 671 F.2d 1344, 1348 (CCPA 1982) (holding that “appellant’s
arguments fail from the outset because . . . they are not based on limitations
appearing in the claims”). Moreover, “[i]n determining whether the subject
matter of a patent 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 invalid under
§ 103.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 419 (2007). “[T]he
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.”
Id. at 418. In any event, Appellant’s argument – directed to a potential use of
the apparatus – does not structurally distinguish the apparatus recited in
claim 1 and is therefore unpersuasive of reversible error. See Hewlett-
Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1468 (Fed. Cir. 1990)
(“[A]pparatus claims cover what a device is, not what a device does.”).
Appellant next argues that the Examiner reversibly erred because
certain unspecified “Examples of Miyai that have three (or more) layers of
poly(vinyl butyral) have either the same level of plasticizer or have a higher
level of plasticizer in the middle layer, which is opposite that of Appellants’
Appeal 2020-001064
Application 14/965,446
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claims.” Appeal Br. 13. Appellant’s argument is unpersuasive first and
foremost because it lacks citations to the Miyai reference and is therefore
unsupported by evidence. See id. Without citations to Miyai, it is unclear
which “Examples of Miyai” (id.) Appellant is referring to and we decline to
speculate which portions of Miyai contain such examples. Moreover, when
determining obviousness, “the prior art as a whole must be considered. The
teachings are to be viewed as they would have been viewed by one of
ordinary skill.” In re Hedges, 783 F.2d 1038, 1041 (Fed. Cir. 1986).
Appellant’s argument that unspecified prior art examples do not describe the
recited apparatus does not explain why the Examiner’s findings – based on
teachings of Miyai that are undisputed – should be ignored.
Appellant’s argument that “Lu is essentially the opposite of the
present invention” (Appeal Br. 14) is unpersuasive for the same reason as
analyzed above. Appellant’s argument that the Examiner’s proposed
combination would not arrive at the claimed invention (id. at 16) is
unpersuasive because it is solely based on combining these unspecified
examples in the prior art and does not address the Examiner’s findings in
support of the obviousness analysis.
Appellant next argues that the Examiner engaged in impermissible
hindsight. Appeal Br. 16. Appellant’s conclusory argument does not show,
however, that a person of ordinary skill in the art is imbued with knowledge
taught only by the inventor of the challenged patent. See W.L. Gore &
Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540, 1553 (Fed. Cir. 1983) (“To
imbue one of ordinary skill in the art with knowledge of the invention in
suit, when no prior art reference or references of record convey or suggest
that knowledge, is to fall victim to the insidious effect of a hindsight
syndrome wherein that which only the inventor taught is used against its
Appeal 2020-001064
Application 14/965,446
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teacher.”). In contrast, hindsight does not occur when a person of ordinary
skill in the art is imbued with knowledge that “was within the level of
ordinary skill at the time the claimed invention was made and does not
include knowledge gleaned only from applicant’s disclosure.” See In re
McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971). In this case, the
Examiner’s obviousness analysis is supported by citations to the references
which Appellant does not address. No reversible error has been identified
here.
Appellant also argues that “when the prior art teaches away from a
combination or modification, that combination or modification is more
likely to be nonobvious.” Appeal Br. 17. Appellant’s conclusory argument is
unpersuasive first and foremost because it does not cite to any particular
prior art teachings or explain why the prior art “criticize[s], discredit[s], or
otherwise discourage[s] the solution claimed.” See In re Fulton, 391 F.3d
1195, 1201 (Fed. Cir. 2004) (“The prior art’s mere disclosure of more than
one alternative does not constitute a teaching away from . . . alternatives
because such disclosure does not criticize, discredit, or otherwise discourage
the solution claimed.”). Similar to Appellant’s other arguments which are
unsupported by evidence, the argument regarding teaching away is an
“[a]ttorneys’ argument [which] is no substitute for evidence.” Johnston v.
IVAC Corp., 885 F.2d 1574, 1581 (Fed. Cir. 1989).
CONCLUSION
The Examiner’s rejections are affirmed.
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Application 14/965,446
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DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 3, 4, 6–
12, 14, 15
103 Miyai, Lu 1, 3, 4, 6–
12, 14, 15

5, 13 103 Miyai, Lu, Sasaki
or Miyai, Lu, Ma
5, 13
Overall
Outcome
1, 3–15

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