3M INNOVATIVE PROPERTIES COMPANY

Patent Trials and Appeals Board

Oct 1, 2020

2020000880 (P.T.A.B. Oct. 1, 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.
14/442,340 05/12/2015 Zai-Ming Qiu 70231US004 3707
32692 7590 10/01/2020
3M INNOVATIVE PROPERTIES COMPANY
PO BOX 33427
ST. PAUL, MN 55133-3427
EXAMINER
ROSENTHAL, ANDREW S
ART UNIT PAPER NUMBER
1613
NOTIFICATION DATE DELIVERY MODE
10/01/2020 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):
LegalUSDocketing@mmm.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
_________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
_________________

Ex parte ZAI-MING QIU, ALEXANDER J. KUGEL, and
MICHAEL J. SVAROVSKY

_________________

Appeal 2020-000880
Application 14/442,340
Technology Center 1600
_________________

Before Richard M. LEBOVITZ, JASON V. MORGAN, and
DEBORAH KATZ, Administrative Patent Judges.

KATZ, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 seeks our review,2 under 35 U.S.C. § 134(a), of the
Examiner’s decision to reject claims 19–26 and 31–37. We have jurisdiction
under 35 U.S.C. § 6(b). We REVERSE.

1 We use the word “Appellant” as defined in 37 C.F.R. § 1.42. Appellant
identifies the real party-in-interest as the 3M Company. (Appeal Br. 3.)
2 We consider the Final Office Action issued May 15, 2019 (“Final Act.”),
the Appeal Brief filed October 11, 2019 (“Appeal Br.”), the Examiner’s
Answer issued on November 5, 2019 (“Ans.”), and the Reply Brief filed
November 14, 2019 (“Reply Br.”).
Appeal 2020-000880
Application 14/442,340

2
The Examiner rejects claims 19–26 and 31–37 as being obvious under
35 U.S.C. § 103(a) over Qiu 20103 and Qiu 2011.4 (See Ans. 3–6.)
Appellant’s Specification is directed to compositions that inhibit the
attachment of organisms to surfaces of objects, called “biofouling.” (Spec.
1:5–8.)
Appellant’s claim 19 recites:
A curable antifouling composition comprising components:

a) at least one fluorinated polymer, wherein each said at least
one fluorinated polymer independently comprises:

at least one divalent group A represented by the formula

wherein R1 independently represents H or methyl, X
independently represents a covalent bond or a divalent organic linking
group, Ll independently represents a covalent bond or a divalent
organic linking group, and Rfl independently represents a monovalent
perfluorinated organic group;

at least one divalent group B represented by the formula

3 International Patent Application Publication WO 2010/080288 A2,
published July 15, 2010.
4 U.S. Patent Application Publication 2011/0027702 A1, published February
3, 2011.
Appeal 2020-000880
Application 14/442,340

3

wherein L2 independently represents a covalent bond or
divalent organic linking group, k represents an integer in the range of
from 1 to 4, R2 independently represents H or an alkyl group having
from 1 to 18 carbon atoms, and f independently represents an integer
in the range of from 3 to 200, inclusive;

at least one divalent group C represented by the formula

wherein L3 independently represents a covalent bond or a
divalent organic linking group, and each Y1, Y2 , and Y3
independently represents a hydrolyzable group or a hydrocarbyl group
having from 1 to 10 carbon atoms, with the proviso that at least one of
Y1, Y2, and Y3 is a hydrolyzable group; and

b) cationic curative.

(Appeal Br. 8–9.) Thus, claim 19 recites a composition comprising a
fluorinated polymer including at least three different divalent cation groups,
A, B, and C, and a cationic curative.
Appellant elected a species of curable antifouling composition with
“AM1 (HFPO-Mar)” as the divalent cation group A, “PEG-Mar” as the
divalent cation group B, “AM4 (Si-Mar)” as the divalent group C, and
triarylsulfonium hexafluoroantimonate as the cationic curative. (See Final
Act. 2–3.)
Qiu 2010 teaches a coating composition that is useful as a hardcoat for
plastic, metal, and ceramic articles for, among other uses, water resistance.
(See Qiu 2010 abstract, 1:28–32, 18:22–23, 21:1–8; see Ans. 4.) A
Appeal 2020-000880
Application 14/442,340

4
composition taught in Qiu 2010 comprises a copolymer prepared from a
mixture comprising (1) an ethyleneically unsaturated hydrolysable silane, (2)
an ethyleneically unsaturated polyoxyalkylene, and (3) an ethyleneically
unsaturated fluorinated polyether, as well as an initiator. (Qiu 2010 1:18–
22; see Ans. 4). Qiu 2010 provides an example with a polymer comprising
HFPO-Mar/PEG-Mar/Si-Mar/CTA in a ratio of 40:20:40:5 prepared along
with an initiator. (See Qiu 2010 28:15-22; see Ans. 4.) The Examiner finds,
and Appellant does not dispute, that Qui 2010 teaches a composition with
monomers of the elected species of divalent cation groups A, B, and C. (See
Ans. 4.)
The Examiner acknowledges that Qiu 2010 does not teach a
composition that includes the claimed cationic curative agent. (See Ans. 4.)
Rather, Qiu 2010 teaches using a different type of curative – a free-radical
initiator. (See Qiu 2010 12:24–25.)
Qiu 2011 teaches a hardcoat composition that can be applied to stone,
ceramic, vinyl, or wood for water resistance. (See Qiu 2011 ¶ 113; see Ans.
4–5.) The composition of Qiu 2011 includes an epoxysilane compound, an
epoxy-functionalized perfluoropolyether acrylate oligomer, and a photoacid
initiator. (See Qiu 2011 abstract; see Ans. 5.) Qiu 2011 teaches that the
initiator can be CYRACURE UVl-6976, which is a triarylsulfonium hexa-
fluoroantimonate salt corresponding to the elected cationic curative agent.
(See Qiu 2011, ¶¶ 95–96; see Ans. 5.) Thus, Qiu 2011 teaches Appellant’s
elected species of cationic curative agent, although it does not teach
compounds from divalent groups A, B, or C.
The Examiner reasons that it is prima facie obvious to combine two
compositions, each taught to be useful for the same purpose, to achieve a
Appeal 2020-000880
Application 14/442,340

5
third composition, also useful for the same purpose, citing In re Kerkhoven,
626 F.2d 846, 850 (CCPA 1980). (See Ans. 5.) Under this principle, the
Examiner reasons that it would have been obvious to one of ordinary skill to
combine the compositions of Qiu 2010 and Qiu 2011 to achieve a
composition suitable as a curable hardcoating agent for application to metal,
plastic, or ceramic substances for water protection and that the resulting
composition would comprise a polymer of the divalent monomers recited in
claim 19 and a photoinitiator, such as triarylsulfonium hexafluoroanti-
monate, as a cationic curative agent. (See Ans. 5–6.)
We are not persuaded by the Examiner’s reasoning. First, as
Appellant argues, the chemistries used by Qiu 2010 and Qui 2011 for curing
are different. (See Appeal Br. 5.) The Examiner fails to explain why one of
ordinary skill in the art would have considered the cationic curative of Qiu
2011 to be useful in curing the polymers of Qiu 2010, which uses a free-
radical initiator. The Examiner does not explain why one of ordinary skill
would have had a reasonable expectation of success in making this change.
Furthermore, we are not persuaded that Kerkhoven is pertinent and
dispositive given the facts before us. In Kerkhoven, a process of preparing a
spray-dried mixture of at least two slurries of different detergent ingredients,
which are independently dried and then mixed before being sprayed
together, was found to be obvious because the slurries were known to be
mixed together in one slurry and then spray-dried as one. See Kerkhoven,
626 F.2d at 847–48. The composition claimed by Appellant, though, is not
merely a collection of four separate ingredients acting independently of each
other. Instead, the divalent groups A, B, and C make up a fluorinated
polymer cured by a cationic curative. As described in the Specification,
Appeal 2020-000880
Application 14/442,340

6
“[c]oating solutions having the compositions reported in Table 2 were
prepared by mixing 3 percent 12 photoacid generator [described as
photoactivated cationic curative] (prepared as a 10% solids solution in S2)
with the polymer solutions P 1 - P7.” (Spec. 22:15–16.) Thus, the
ingredients of the claimed composition do not have the same relationship—
mere coexistence with each other—as the ingredients at issue in Kerkhoven.
Instead, the ingredients of the claimed composition react with each other.
Appellant claims a particular genus of curable antifouling
compositions comprising certain recited ingredients. It is the Examiner’s
burden to show why those of ordinary skill in the art would have had a
reason to combine these particular ingredients.
The Examiner finds further that the compositions of both Qui 2010
and Qui 2011 can comprise a chain transfer agent and both teach 3-mercap-
topropyltrimethoxysilane as a possible chain transfer agent. (Ans. 4–5, 7;
see Qiu 2010 13:24–31; see Qiu 2011 ¶¶ 79, 85.) The Examiner finds that
Qiu 2011 also teaches triarylsulfonium hexafluoroantimonate as an
alternative to the chain transfer agent. (See Ans. 7, citing Qiu 2011 ¶¶ 95–
96.) The Examiner appears to be equating a chain transfer agent with a
cationic curative, stating:
Qiu 2011 and Qiu 2010 both require a chain transfer agent (i.e.
cationic curative) to initiate the curing process. Qiu 2010 teaches said
agent as being a silane such as 3-mercaptopropyltrimethoxysilane (pg
13, Ins 24-31 ). Qiu 2011 also teaches using a chain transfer agent in
the curable coating and also includes 3-
mercaptopropyltrimethoxysilane (pg 13, lns 24-31). Qiu 2011 also
teaches using a chain transfer agent in the curable coating and also
includes 3-mercaptopropyltrimethoxysilane [0085] but also includes
triarylsulfonium hexafluoroantimonate as a suitable alternative
[0095]-[0096].
Appeal 2020-000880
Application 14/442,340

7

(Ans. 7.) Thus, the Examiner appears to be reasoning that Qiu 2011
provides a reason to use triarylsulfonium hexafluoroantimonate as an
alternative to 3-mercaptopropyltrimethoxysilane as a chain transfer agent.
We are not persuaded that Qiu 2011 equates chain transfer agents and
cationic curatives or provides a reason why triarylsulfonium hexafluoro-
antimonate would be considered an alternative to 3-mercaptopropyltrimeth-
oxysilane. Paragraphs 95 and 96 of Qiu 2011, which the Examiner cites,
refer only to photoacid generators and cationic initiators. The Examiner
does not direct us to a discussion of the use of chain transfer agents as
cationic initiators in either paragraph 95 or paragraph 96 of Qiu 2011 and we
note that chain transfer agents are discussed in a separate section of the
disclosure (see Qiu 2011 ¶¶ 77–85).
Furthermore, Appellant’s Specification indicates that chain transfer
agents and curative initiators are used in different reactions to form a curable
composition as claimed. Specifically, chain transfer agents are used in the
preparation of the polymers (see Spec. 21:7–8), whereas cationic curatives
are used in the final preparation of the coating solutions (see id. at 21:15–
16). We are not persuaded without further explanation that a chain transfer
agent can be substituted by a cationic curative agent as the Examiner asserts.
Because the Examiner has not provided a reason why those of
ordinary skill in the art would have combined the ingredients of Qiu 2010
and Qiu 2011 or would have substituted the chain transfer agent of Qiu 2011
with triarylsulfonium hexafluoroantimonate, we are not persuaded that the
claimed curable antifouling composition would have been obvious.
Accordingly, we reverse the Examiner’s rejection under 35 U.S.C. § 103.
Appeal 2020-000880
Application 14/442,340

8
Conclusion
Upon consideration of the record and for the reasons given, we
reverse the Examiner’s rejection.
In summary:
Claims
Rejected
35 U.S.C. § References Affirmed Reversed
19–26,
31–37
103 Qiu 2010, Qiu 2011 19–26, 31–37

REVERSED