BASF Coatings GmbH

Patent Trials and Appeals Board

Sep 7, 2021

2020005558 (P.T.A.B. Sep. 7, 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.
15/316,661 12/06/2016 Maraike AHLF 479817US 2930
22850 7590 09/07/2021
OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P.
1940 DUKE STREET
ALEXANDRIA, VA 22314
EXAMINER
DUMBRIS, SETH M
ART UNIT PAPER NUMBER
1784
NOTIFICATION DATE DELIVERY MODE
09/07/2021 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):
OBLONPAT@OBLON.COM
iahmadi@oblon.com
patentdocket@oblon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARAIKE AHLF, FELIX EICKEMEYER, DANIEL LÖFFLER,
STEPHEN KLOTZ, JÜRGEN FRANK, MYUNG MO SUNG, and
KWAN HYUCK YOON

Appeal 2020-005558
Application 15/316,661
Technology Center 1700

Before ADRIENE LEPIANE HANLON, JEFFREY B. ROBERTSON, and
JEFFREY R. SNAY, Administrative Patent Judges.

ROBERTSON, Administrative Patent Judge.

DECISION ON APPEAL1
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant appeals from the
Examiner’s decision to reject claims 7–13, 15–18, 20, and 21.2 See Appeal

1 This Decision includes citations to the following documents:
Specification filed December 6, 2016 (“Spec.”); Final Office Action mailed
November 4, 2019 (“Final Act.”); Appeal Brief filed April 14, 2020
(“Appeal Br.”); Examiner’s Answer mailed May 22, 2020 (“Ans.”), and
Reply Brief filed July 22, 2020 (“Reply Br.”).
2 We use the term “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies BASF COATINGS GMBH as the real
party in interest. Appeal Br. 2.
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Br. 5. Claims 1–6 and 14 have been withdrawn. Claim 19 has been
cancelled. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
CLAIMED SUBJECT MATTER
Appellant states the invention relates to flexible organic-inorganic
laminates as well as barrier films comprising flexible organic-inorganic
laminates. Spec. 1, ll. 3–5. Claims 7 and 20, the only independent claims on
appeal are reproduced below, and are illustrative of the claimed subject
matter (Appeal Br., Claims Appendix 32, 34–35):
7. A laminate comprising, more than once, a sequence
comprising:
(a) an inorganic layer having a thickness of 0.4 to 4 nm
and
(b) a sulfur-comprising organic layer,
wherein the laminate has a water vapor transmission rate
(WVTR) of less than 10-2 g/m2d when dried at 70 % relative
humidity at 70 °C for 480 h and bent with a radius of 1.5 cm.
20. A laminate comprising, more than once, a sequence
comprising:
(a) an inorganic layer having a thickness of 0.4 to 15 nm
and
(b) a sulfur-comprising organic layer comprising an
organic thiol comprising one or more hydroxyl groups.

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REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
George et al.
(“George”)
US 2010/0178481 A1 July 15, 2010
Mamiya et al.
(“Mamiya ’127”)
JP 2006-321137, English
Translation of Record
Nov. 30, 2006

REJECTIONS
1. Claims 7, 9–13, 15, 20, and 21 are provisionally rejected under
on the ground of non-statutory double patenting as being
unpatentable over claims 7, 9–13, and 15 of Application No.
15/559,497 in view of Mamiya. Final Act. 3–5.
2. Claims 7–13, 15–18, 20, and 213 are rejected under 35 U.S.C.
§ 103 as being unpatentable over George. Final Act. 5–8.

3 We observe, as does Appellant, that the Examiner did not affirmatively
include claim 21 in the statement of rejection. Appeal Br. 29; Reply Br. 15;
Final Act. 5; Ans. 7. However, in the Appeal Brief, Appellant argues
George does not disclose or suggest the limitations of claim 21. Appeal Br.
29. In the Examiner’s Answer, the Examiner was not persuaded by
Appellant’s arguments for the same reasons as addressed for claim 7.
Ans. 15. Because claim 21 recites the same water vapor transmission rate as
recited in claim 7 (Appeal Br. 32, 35), and Appellant substantively
addressed whether George disclosed the limitations of claim 21, we treat
claim 21 as having been rejected over George, and the Examiner’s omission
of claim 21 from the statement of rejection as inadvertent error.
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OPINION
Rejection 1
For the provisional non-statutory double patenting rejection,
Appellant does not argue the substance of the Examiner’s rejection, but
instead contends that because the instant application is the earlier-filed
application relative to the applied application, the rejection can be
withdrawn should Rejection 2 be reversed. Appeal Br. 6; Reply Br. 2.
Because Appellant does not substantively argue Rejection 1 and in
view of our discussion of Rejection 2 infra, we affirm the Examiner’s
rejection of claims 7, 9–13, 15, 20, and 21.

Rejection 2
Appellant presents separate arguments with respect to claims 7, 16–
18, 20, and 21 subject to this rejection. See Appeal Br. 7–29. We select
these claims as representative for disposition of this rejection. 37 C.F.R.
§ 41.37(c)(1)(iv)(2019).
Claim 7
The Examiner’s Rejection
In rejecting claim 7 as unpatentable over George, the Examiner found
George discloses a flexible coating that includes at least two layers of
inorganic material other than silica, each having a thickness of 5–100 nm
with a flexibilizing layer interposed between the layers of inorganic material.
Final Act. 5. The Examiner found the minimum thickness of the inorganic
layers of 5 nm disclosed in George does not specifically overlap the upper
limit of 4 nm recited in claim 7. Id. at 6. However, the Examiner
determined that because the ranges are close, a prima facie case of
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obviousness exists, absent an objective showing that there is a patentable
distinction between the claimed thickness of 4 nm and the 5 nm thickness
disclosed in George. Id.
The Examiner also found George discloses water vapor transmission
rates (WVTR) of 1 x 10-4 g/m2d, 5 x 10-5 g/m2d, 1 x 10-3 g/m2d, and also
discloses that a WVTR about 1 x 10-6 g/m2d is desired to achieve required
lifetimes of certain electronic devices. Final Act. 6. The Examiner
acknowledged that George did not expressly disclose the WVTR after
bending. Id. at 7. The Examiner determined that George’s laminates met
the claimed requirement, because George discloses the coated substrate is
flexible to a bending radius of about 2.5 cm or less without forming
significant cracks or other defects, such that one of ordinary skill in the art
would have expected little change in the WVTR after bending or would have
desired to minimize the WVTR as much as possible. Id.

Appellant’s Arguments
Appellant argues that both the thicknesses in George and in instant
claim 7 are “specified to the units position” and as a result, the 4 nm
thickness in George cannot be reasonably considered to be substantially the
same as the 5 nm thickness in claim 7. Appeal Br. 9. Appellant argues that
because George discloses formation of deposits of 0.3 nm per deposition
cycle, such precise control means that the 5 nm thickness itself is precise.
Id. at 9–10. Appellant contends the Examiner has not provided any evidence
or rationale that a skilled artisan would have expected an inorganic layer
having a thickness of 4 nm and an inorganic layer having a thickness of 5
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nm would have the same properties in otherwise identical laminates. Id. at
11–16.
Appellant contends the Declaration of Dr. Giraldo executed on
October 14, 2019 (the “Giraldo Declaration”) provides evidence that
inorganic layers having a thickness of less than 5 nm would have yielded
relatively inferior (different) material properties. Id. at 16–17. Appellant
contends that the Specification provides criticality to the 4 nm thickness by
disclosing that the inorganic layer has a thickness that is “even more
preferably” not more than 4 nm. Id. at 17. Appellant argues the Giraldo
Declaration provides evidence that the thicknesses would not result in
similar properties because at greater thicknesses, the claimed laminate would
be more brittle and have a higher WVTR when bent. Id. at 19–20.
Appellant contends this conclusion is supported by examples in the
Specification. Id. at 20–22.
Appellant contends also that the present results, in particular, that the
laminate of claim 7 has a WVTR of less than 10-2 g/m2d when dried at 70 %
relative humidity at 70 °C for 480 h and bent with a radius of 1.5 cm would
have been unexpected. Appeal Br. 24–26.

Discussion
After our review of the record as whole, we are not persuaded by
Appellant’s arguments that the 5 nm thickness for the inorganic layers
disclosed in George cannot be considered to be substantially the same as the
4 nm thickness for the inorganic layers recited in claim 7. In particular, we
are not persuaded by Appellant’s arguments or the statements in the Giraldo
Declaration regarding the alleged precision of the 5 nm thickness in George
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as a reason for distinguishing the 4 nm lower limit in claim 7. Giraldo Decl.
¶¶ 7, 8. Although Appellant contends one of ordinary skill in the art would
have expected a difference in WVTR between laminates containing
inorganic layers having a thickness of 5 nm versus a thickness of 4 nm, we
are of the view that the weight of the evidence does not support Appellant’s
position for the WVTR as recited in claim 7. In this regard, we emphasize
the express language of claim 7 that “the laminate has a water vapor
transmission rate (WVTR) of less than 10-2 g/m2d when dried at 70 %
relative humidity at 70 °C for 480 h and bent with a radius of 1.5 cm.”
George does not disclose any issues with inorganic material layers at
the lower end of the range of inorganic material thickness. George discloses
that for multilayer structures including inorganic layers, “the thickness of the
individual inorganic layers has been limited to ≤100 Å because these
inorganic layers become brittle at large thicknesses and can crack when the
plastic substrate is flexed.”4 George ¶ 7. Thus, while George identifies an
upper threshold for thicknesses of inorganic layers that lead to disadvantages
in the resulting multilayer structure, George provides evidence that inorganic
layers at lower thicknesses would not be expected to exhibit the same
disadvantages if under the threshold discussed above. In other words,
Appellant’s position that inorganic layers having a thickness difference of 1
nm between 4 nm and 5 nm would be expected to have WVTRs that are not

4 100 Angstroms equals 10 nanometers. We also understand from the
Giraldo Declaration that there may be a possible inconsistency between the
use of Angstroms and nanometers in George. Giraldo Decl. ¶ 8. However,
even if George intended this disclosure to read nanometers instead of
Angstroms, our discussion would be the same.
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substantially the same after bending with a radius of 1.5 cm does not appear
to be supported by George.
In addition, Appellant contends Examples 2.2 and 3 provide technical
reasoning to support a difference between laminates that is due to the
thickness of the inorganic layers. Appeal Br. 20–22. Appellant’s arguments
rest on the difference in WVTR between Examples 2.2 and 3, but Appellant
relies on the WVTR after bending with a radius of 0.5 cm. Appeal Br. 21–
22. As discussed above, the bending radius recited in claim 7 is 1.5 cm, and
at that radius, the WVTR between Examples 2.2 and 3 is substantially the
same. Spec. 14, Ex. 2.2 (< 2 x 10-6 g/m2d), Ex. 3 (2 x 10-6 g/m2d), see
Appeal Br. 21.
Thus, weighing George’s disclosure and the results in the
Specification discussed above against Appellant’s arguments and the
statements in the Giraldo Declaration, we are of the view that the weight of
the evidence favors the Examiner’s rationale that laminates containing
inorganic layers with a thickness of 5 nm and laminates containing inorganic
layers having a thickness of 4 nm would not produce WVTRs that are
patentably distinct from the WVTR that is recited in claim 7.
As to Appellant’s argument that the Specification provides criticality
to the 4 nm thickness for the inorganic layer, we are not persuaded that the
disclosure in the Specification provides support for the argued criticality.
That is, the Specification’s disclosure of “preferable” ranges for the
inorganic layer thickness does not indicate that an inorganic layer having a
thickness of not more than 4 nm is critical in order to obtain the recited
WVTR up to the limit of 10-2 g/m2d in claim 7. Spec. 7, ll. 34–41. Indeed,
the Specification broadly discloses “[a]ccording to the present invention the
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inorganic layer has a thickness 0.4 to 15 nm.” Id. at 7, l. 34. In this regard,
we are not persuaded by the discussion in the Giraldo Declaration, which
while asserting the criticality of the 4 nm thickness, does not address the
WVTR in claim 7. Giraldo Decl. ¶¶ 11–14. Moreover, Examples 2.2 and 3
appear to expressly contradict the statements in the Giraldo Declaration
because, as explained above, the WVTR at the claimed bending radius for
the laminates of Examples 2.2 and 3, which according to Appellant differ
only in the thickness of the inorganic layer (Appeal Br. 20–21), are
substantially the same.
We are also not persuaded by Appellant’s arguments that the WVTR
in claim 7 “would have been entirely unexpected” and “the claim is
necessarily and precisely limited to those combinations having the claimed
property.” Appeal Br. 24–25. We observe that as support for the WVTR
limitation in claim 7, Appellant points to the Specification “page 1, lines 22–
29, in view of page 7, lines 10–24; and Examples described on pages
11–14.” Appeal Br. 2–3. Page 7 of the Specification states: “Generally, a
laminate is regarded as having a low permeability for small molecules if the
WVTR is smaller than 10-2 g/m2d, preferably 10-4 g/m2d, more preferably
10-5 g/m2d, in particular 10-6 g/m2d.” The Examples described as
“inventive” (Examples 1, 2.1–2.3, 3, 8, 9) have WVTRs that are not
commensurate in scope to the 10-2 g/m2d WVTR recited in claim 7. Spec.
14, Ex. 2.2 (< 2 x 10-6 g/m2d), Ex. 3 (2 x 10-6 g/m2d), Examples 8 and 9 (<1
x 10-6 g/m2d). Moreover, claim 7 broadly recites an “inorganic layer having
a thickness of 0.4 to 4 nm” and a “sulfur-comprising organic layer” and
Appellant has not sufficiently explained how such broad recitations are
commensurate in scope to the claimed WVTR property.
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Accordingly, we affirm the Examiner’s rejection of claim 7.

Claims 16–18
Appellant contends George does not disclose or suggest a barrier film
comprising a laminate having a WVTR as in claims 16–18. Appeal Br. 26–
28. Regarding claim 16, Appellant specifically contends George does not
disclose the WVTR before bending, or how to improve WVTR of the
claimed range after bending. Id. at 27.
Claim 16 recites “[t]he barrier film according to claim 11, which has a
WVTR of less than 10-5 g/m2d when dried at 70 % relative humidity at 70 °C
for 480 h.” Appeal Br. 34. We observe that to the extent Appellant’s
argument relies on a WVTR of less than 10-5 g/m2d after bending, such
argument is not persuasive, because claim 16 does not recite any particular
WVTR after bending, and as such claim 16 is only limited to a WVTR of
less than 10-2 g/m2d when bent with a radius of 1.5 cm as recited in claim 7.
To the extent Appellant’s argument is based on George’s lack of express
disclosure of WVTR after bending, we are not persuaded for the same
reasons as discussed above with respect to claim 7.
As to Appellant’s argument that George’s disclosed WVTR of 1 x 10-6
g/m2d (George ¶ 4) is merely a desired value and George does not exemplify
any WVTR within the WVTR range recited in claim 16 (Appeal Br. 27), we
are not persuaded because Appellant does not adequately explain why one of
ordinary skill in the art would not have been able to achieve such desired
values based on George’s disclosure. In this regard, the disclosure of a
reference may be relied upon for all it contains, and is not limited to what is
disclosed in the examples. In re Heck, 699 F.2d 1331, 1332-33 (Fed. Cir.
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1983) (quoting In re Lemelson, 397 F.2d 1006, 1009 (CCPA 1968)). See
Ans. 14.
For claims 17 and 18, Appellant merely identifies the limitations of
the claims and generally contends George does not disclose or suggest the
claims. Appeal Br. 26–27. To the extent Appellant’s arguments depend on
the position that George does not render the laminates of claim 7 obvious,
we are not persuaded by Appellant’s arguments for the reasons discussed
above. Appellant does not meaningfully address the Examiner’s rationale
for rejecting claims 17 and 18, which is based on the substantially identical
structure of George’s laminates and further on George’s disclosure that the
coated substrates are taught to be flexible to a bending radius of about 2.5
cm or less without forming significant cracks or other defects. Final Act.
7–8; George ¶ 25. Accordingly, we are not persuaded by Appellant’s
arguments with respect to claims 17 and 18.
Therefore, we affirm the Examiner’s rejection of claims 16–18.

Claims 20 and 21
Claim 20 is reproduced above.
Appellant contends George does not disclose the laminate recited in
claim 20 because it does not disclose the WVTRs of the example laminates
in the Specification before and after bending. Appeal Br. 28–29.
We are not persuaded by Appellant’s arguments. Appellant’s
argument is not commensurate in scope with claim 20. Claim 20 only
generally recites laminates having an inorganic layer with a wide range of
thicknesses between 0.4 to 15 nm and a sulfur-comprising organic layer with
organic thiol, and does not recite any particular WVTR. Thus, Appellant’s
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contentions regarding particular WVTRs from examples in the Specification
do not distinguish claim 20 from the laminates disclosed in George. See
Ans. 14–15.
Regarding claim 21, which depends from claim 20 and recites a
similar WVTR as discussed above with respect to claim 7, although
Appellant contends George does not disclose the laminate of claim 20
having the WVTR recited in claim 21, Appellant does not substantively
address the Examiner’s explanation that George discloses organic thiols
(Final Act. 5) or the Examiner’s reliance on the same rationale as discussed
for claim 7 as to why the WVTR in the claim would have been obvious over
George (Ans. 15).
Accordingly, we affirm the Examiner’s rejection of claims 20 and 21.
DECISION SUMMARY
In summary:
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
7, 9–13, 15,
20, 21
Nonstatutory double
patenting
Application No.
15/559,497, Mamiya
7, 9–13, 15, 20,
21

7–13, 15–
18, 20, 21
103 George 7–13, 15–18,
20, 21

Overall
Outcome
7–13, 15–18,
20, 21

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