Ex Parte Besson et al

Patent Trial and Appeal Board

Jun 28, 2016

12882100 (P.T.A.B. Jun. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
12/882,100
27569 7590
PAUL AND PAUL
FILING DATE
09/14/2010
06/30/2016
1717 Arch Street Three Logan Square
SUITE 3740
PHILADELPHIA, PA 19103
FIRST NAMED INVENTOR
Sophie BESSON
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
2010-064 2274
EXAMINER
MILLER, MICHAEL G
ART UNIT PAPER NUMBER
1712
NOTIFICATION DATE DELIVERY MODE
06/30/2016 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):
INFO@PAULANDPAUL.COM
claire@paulandpaul.com
fpanna@paulandpaul.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SOPHIE BESSON, MAXIME DURAN, EMMANUEL GARRE,
CAROLE GENTILHOMME, EMILIE VIASNOFF,
CORINNE VICTOR, and THIERRY GAY
Appeal2014-006723
Application 12/882,100
Technology Center 1700
Before PETER F. KRATZ, CHRISTOPHER L. OGDEN, and
MONTE T. SQUIRE, Administrative Patent Judges.
SQUIRE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants 1 appeal the Examiner's final rejection of claims 1-18.
35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6(b ). An oral
hearing was held on June 17, 2016.
For the reasons set forth below, we REVERSE.
1 Appellants identify CertainTeed Corporation as the Real Party in Interest.
App. Br. 1.
Appeal2014-006723
Application 12/882,100
The Claimed Invention
Appellants' disclosure relates to "a process for obtaining a material
comprising a substrate at least part of whose surface and at least one of
whose faces are based on organic compounds, [and whereby] the process is
implemented at atmospheric pressure and without heating the entire
substrate." Spec. 3. Claim 1 is representative of the claims on appeal and is
reproduced below from the Claims Appendix to the Appeal Brief (App. Br.
24, 25):
1. A process whereby a material obtained comprising a
substrate of which at least a part of the surface of at least one
of the faces of the substrate is based on organic compounds,
the process being implemented at atmospheric pressure and
without heating the totality of the said substrate, the process
comprising the following stages:
(a) in immediate proximity to the substrate, creating a
region containing active species of a non-thermal plasma;
(b) into said region injecting at least one precursor of a
chemical element, the at least one precursor being selected
from the group consisting of
(i) precursors of zirconium,
(ii) precursors of aluminum,
(iii) mixtures including at least one precursor of
silicon oxide, and at least one precursor of zirconium,
(iv) mixtures including at least one precursor of
silicon dioxide and at least one precursor of aluminum,
(v) mixtures including at least one precursor of
silicon oxide, at least one precursor of zirconium, and at least
one precursor of aluminum, and
(vi) mixtures including at least one precursor of
zirconium, and at least one precursor of aluminum;
so as to deposit onto at least one face of the said substrate, at
least one part of the surface being based on organic
compounds, a first thin layer able to protect said substrate
against oxidation reactions due to radicals; and
( c) subsequently depositing a second thin layer with
photocatalytic properties onto the first thin layer.
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Application 12/882,100
The References
The Examiner relies on the following prior art in rejecting the claims
on appeal:
Schultz Yamasaki et al., US 6,156,394
(hereinafter "Schultz")
Dec. 5, 2000
Sakatani et al., US 2003/0027704 Al Feb. 6, 2003
(hereinafter "Sakatani")
Krisko et al., US 2005/0137084 Al June 23, 2005
(hereinafter "Krisko")
Gabelnick et al., WO 2006/049865 Al May 11, 2006
(hereinafter "Gabelnick")
Durandeau et al., FR 2857030 Jan. 7,2005
(hereinafter "Saint-Gobain")
The Rejections
On appeal, the Examiner maintains the following rejections:
1. Claims 1, 2, 4, and 6 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Saint-Gobain in view of Gabelnick.
2. Claims 3, 8-12, 14--16, and 18 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Saint-Gobain and Gabelnick in view of
Krisko.
3. Claim 5 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Saint-Gobain and Gabelnick in view of Sakatani.
4. Claim 7 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Saint-Gobain and Gabelnick in view of Schultz.
5. Claim 13 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Saint-Gobain, Gabelnick, and Krisko in view of Schultz.
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Application 12/882,100
6. Claim 17 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Saint-Gobain, Gabelnick, and Krisko in view of Sakatani.
OPINION
Rejection 1
Appellants argue claims 1, 2, 4, and 6 as a group. We, therefore,
select claim 1, the sole independent claim subject to this rejection, as
representative of this group, and the remaining claims stand or fall with
claim 1. 37 C.F.R. § 41.37(c)(l)(iv). The Examiner finds that the
combination of Saint-Gobain and Gabelnick suggests all of claim l's
limitations. Final Act. 3, 4 (citing Saint-Gobain, p. 2, 11. 16-19, 27-32, p. 3,
11. 17, 25, 26; Gabelnick i-fi-f 15, 16, 21, 35, 36).
The Examiner finds that Saint-Gobain discloses nearly all of claim l's
limitations, except that is does not explicitly teach a "non-thermal plasma,"
as recited in the claim. Final Act. 3. The Examiner, however, relies on
Gabelnick for teaching this missing limitation. Id. at 4. In particular, the
Examiner finds that Gabelnick teaches a deposition process comprising a
substrate and "creating a region containing active species of a non-thermal
plasma" in immediate proximity to the substrate. Id. (citing Gabelnick
i1i121, 35, 36).
The Examiner concludes that "it would have been obvious to a person
having ordinary skill in the art at the time the invention was made to have
modified the invention of [Saint-Gobain] to include the deposition process
of [Gabelnick]" because "both methods want to deposit optical films onto
substrates wherein at least one portion of the surface being deposited on is
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Application 12/882,100
based on organic compounds and [Gabelnick] teaches process conditions
which are shown to be suitable for the purpose." Final Act. 4.
Appellants argue that "the Examiner has not provided a rational
explanation for the rejection" and that "no prima facie case has been
established" for combining the teachings of Saint-Gobain and Gabelnick to
arrive at the claimed invention. App. Br. 9. In particular, Appellants argue
that "[ t ]here is nothing in either of the cited references, or in their
combination, which would teach, suggest or motivate one of ordinary skill in
the art to employ Gabelnick' s process ... to provide a thin organosilicon
barrier layer on the organic substrate employed in Saint-Gobain's process."
Id. at 15.
We agree with Appellants' argument. Based on the record before us,
we are not persuaded that the Examiner has provided an adequate
explanation or identified sufficient evidence to support the conclusion that it
would have been obvious to one of ordinary skill in the art at the time of the
invention to modify Saint-Gobain 's depos1t10n process to include the process
disclosed in Gabelnick. See In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir.
1992) (holding that the examiner bears the initial burden of establishing a
prima facie case of obviousness).
The Examiner does not adequately explain why one of ordinary skill
would have been motivated to combine the teachings of the cited references
to arrive at the claimed invention. As noted by Appellants (App. Br. 12),
Gabelnick teaches a process for providing an organosiloxane, siloxane, or
silicon oxide layer on a substrate as an adhesive layer, and that the disclosed
adhesive layer does not "function as a barrier coating" or provide the barrier
layer protection properties as described in the Specification and required by
the claims. See Gabelnick, i-f 10, p. 2, 11. 23-28, 30-35. Indeed, as further
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Application 12/882,100
noted by Appellants (App. Br. 12), Gabelnick teaches that the adhesive layer
imparts "increase[ d] gas permeability" to the coated substrate. Gabelnick,
i-f 10, p. 2, 11. 30-35. In light of the prior art's teachings, and considering the
evidence cited and reasons stated by the Examiner, we are not persuaded that
one of ordinary skill in the art would have been motivated to employ
Gabelnick' s process to provide a thin barrier (protective) layer on the
organic substrate employed in Saint-Gobain' s process.
The Examiner also does not persuasively explain or identify sufficient
evidence to support the finding that the combination of Saint-Gobain and
Gabelnick inherently discloses "a first thin layer able to protect said
substrate against oxidation reactions" limitation of claim 1. For a claim
limitation to be found inherently present in the prior art, the limitation must
be either (a) necessarily present, or (b) the natural result of the combination
of elements explicitly disclosed by the prior art. Par Pharmaceutical, Inc. v.
TWI Pharmaceuticals, Inc., 773 F.3d 1186, 1195-96 (Fed. Cir. 2014).
As Appellants point out (App. Br. 12), Gabelnick does not explicitly
or inherently teach or suggest this limitation. Moreover, the Examiner's
conclusory assertion at page 5 of the Answer that, based on Saint-Gobain's
teachings, the "first layer will inherently be capable of protecting the
substrate from oxidation within the scope of the claims as presented,"
without more, is insufficient to sustain the Examiner's obviousness
conclusion and findings in this regard. See In re Kahn, 441 F .3d 977, 988
(Fed. Cir. 2006) (holding "rejections on obviousness grounds cannot be
sustained by mere conclusory statements").
Accordingly, we reverse the Examiner's rejection of claims 1, 2, 4,
and 6 under 35 U.S.C. § 103(a) as unpatentable over the combination of
Saint-Gobain and Gabelnick.
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Application 12/882,100
Rejections 2 through 6
Because claims 3, 5, and 7 each depend from claim 1, and because
each of the Examiner's remaining rejections is based upon the combination
of Saint-Gobain and Gabelnick and the same deficiencies as Rejection 1
discussed above, and because none of the additional cited references or
combinations cure the deficiency, we also reverse Rejections 2 through 6.
DECISION/ORDER
The Examiner's rejections of claims 1-18 are reversed.
It is ordered that the Examiner's decision is reversed.
REVERSED
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