Ex Parte Dickey

Patent Trial and Appeal Board

Aug 30, 2018

13546930 (P.T.A.B. Aug. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/546,930 07/11/2012 Eric R. Dickey
3528 7590 09/04/2018
STOEL RIVES LLP - PDX
760 SW 9TH A VENUE
SUITE 3000
PORTLAND, OR 97205
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.
39559/901 2401
EXAMINER
SHAH,SAMIR
ART UNIT PAPER NUMBER
1787
NOTIFICATION DATE DELIVERY MODE
09/04/2018 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):
PATLAW@STOEL.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ERIC R. DICKEY
Appeal2017-006368
Application 13/546,930
Technology Center 1700
Before DONNA M. PRAISS, MONTE T. SQUIRE, and
JANEE. INGLESE, Administrative Patent Judges.
SQUIRE, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner's
decision to reject claims 15-24 and 28--41, which constitute all the claims
pending in this application. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 In explaining our Decision, we refer to the Specification filed July 11, 2012
("Spec."); Final Office Action dated September 25, 2015 ("Final Act.");
Advisory Action dated January 21, 2016 ("1st Adv. Act."); Advisory Action
dated July 6, 2016 ("2nd Adv. Act."); Advisory Action dated September 15,
2016 ("3rd Adv. Act."); Amended Appeal Brief filed September 20, 2016
("Appeal Br."); Examiner's Answer dated January 9, 2017 ("Ans."); and
Reply Brief filed March 9, 2017 ("Reply Br.").
2 Appellant identifies Lotus Applied Technology, LLC as the real party in
interest. Appeal Br. 2.
Appeal2017-006368
Application 13/546,930
The Claimed Invention
Appellant's disclosure relates to mixed metal oxide barrier films, such
as a mixture of aluminum, titanium, and oxygen (AlTiO), and processes for
deposition of such films. Spec. ,r 2; Abstract. According to Appellant, the
claimed mixed metal oxide films exhibit improved water vapor transmission
rate (WVTR) over single metal oxide films and nano laminates of two metal
oxides having a similar overall thickness. Abstract; Spec. ,r,r 15, 23.
Claim 15 is illustrative of the claimed subject matter on appeal and is
reproduced below from the Claims Appendix to the Appeal Brief (Claims
App'x, first page) (key disputed claim language italicized and bolded):
15. A barrier layer deposited onto a flexible polymer
substrate, the barrier layer having an overall thickness of
less than 8 nm and comprising an AlTiO mixture, the
barrier layer having a water vapor transmission rate of
less than 5 x 10-4 glmi/day, wherein the AlTiO mixture is
homogeneous.
The References
The Examiner relies on the following prior art references as evidence
in rejecting the claims on appeal:
Padiyath et al., US 2004/0195967 Al Oct. 7, 2004
(hereinafter "Padiyath")
Aylward et al., US 2005/0064152 Al Mar. 24, 2005
(hereinafter "Aylward")
Lu et al., US 2010/0124643 Al May 20, 2010
(hereinafter "Lu")
Badre et al., US 2012/0052395 Al Mar. 1, 2012
(hereinafter "Badre")
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The Rejections
On appeal, the Examiner maintains (Ans. 2) the following rejections3:
1. Claims 15-24 and 28--41 rejected under 35 U.S.C. § 103(a) as
being unpatentable over Lu in view of Aylward and as evidenced by Badre
("Rejection 1 "). Ans. 2.
2. Claims 15, 16, 18, 20, 21, 23, 24, 28, 29, 34, 35, 37, and 40
rejected under 35 U.S.C. § 103(a) as being unpatentable over Padiyath
("Rejection 2"). Ans. 9.
OPINION
Having considered the respective positions advanced by the Examiner
and Appellant in light of this appeal record, we affirm the Examiner's
rejections based on the fact finding and reasoning set forth in the Answer,
Advisory Actions, and Final Office Action, which we adopt as our own. We
highlight and address specific findings and arguments below for emphasis.
Rejection 1
Claims 15-18. 20-24. 28. 29. 31-37. and 39-41
Appellant argues independent claims 15, 20, and 23 as a group and
does not present separate arguments for the patentability of claims 16-18,
21, 22, 24, 28, 29, 31-37, and 39--41. Appeal Br. 6. We select claim 15 as
3 The Examiner's§ 112 rejections for lack of written description and
indefiniteness set forth at pages 2-3 of the Final Office Action are
withdrawn by the Examiner at page 2 of the January 21, 2016 Advisory
Action. See also Appeal Br. 5 ("The Examiner withdrew the 35 U.S.C.
§ 112 rejections.").
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Application 13/546,930
representative and claims 16-18, 21, 22, 24, 28, 29, 31-37, and 39-41 stand
or fall with claim 15. 37 C.F.R. § 4I.37(c)(l)(iv).
The Examiner determines that the combination of Lu and Aylward, as
evidenced by Badre, suggests a barrier layer satisfying all of the limitations
of claim 15 and thus, concludes that the combination would have rendered
the claim obvious. Ans. 2-3 ( citing Lu ,r,r 20, 23-25, 28, Fig. 1; Badre
,r 227; Aylward ,r 267).
The Examiner finds that although Lu teaches or suggests the majority
of the limitations of claim 15, including barrier layer 14 deposited on
flexible polymer substrate 12, comprising a homogenous AlTiO mixture,
and having any desired thickness (Lu ,r,r 20, 23-25, 28, Fig. 1 ), the reference
does not explicitly disclose the specific thickness and water vapor
transmission rate recited in the claim. Ans. 2. The Examiner, however,
relies on Aylward for suggesting these missing limitations. Id. at 3.
In particular, the Examiner finds that Aylward discloses that water
vapor transmission rate is decreased by increasing the thickness of the
barrier layer (Aylward ,r 267). Id. at 3. The Examiner determines that
because the water vapor transmission rate is a variable that can be modified
by adjusting the thickness of barrier layer, it would have been considered a
result effective variable by one of ordinary skill in the art at the time the
invention was made. Id.
The Examiner further determines that
one of ordinary skill in the art at the time the invention was
made would have optimized, by routine experimentation, the
thickness of barrier layer including that presently claimed ... to
obtain the desired water vapor transmission rate.
Id. at 3 (citing In re Boesch, 617 F.2d 272 (CCPA 1980)).
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Application 13/546,930
We find that a preponderance of the evidence and sound technical
reasoning support the Examiner's analysis and determination (Ans. 2-3, 13-
17) that the combination of Lu and Aylward, as evidenced by Badre,
suggests all of the limitations of claim 15, and that the combination would
have rendered the claim obvious. Lu ,r,r 20, 23-25, 28, Fig. 1; Badre ,r 227;
Aylward ,r 267.
Appellant argues that the Examiner's rejection should be reversed
because: (1) Lu provides only a "generic disclosure that includes 'titania and
alumina' in a list of possible two-oxide mixtures" (Appeal Br. 7); (2) Lu is
"focused on sodium barriers" and its "example barrier films" are higher in
thickness than the claimed thickness (id.); (3) "the Examiner misinterpreted
teachings in Aylward that would lead one of ordinary skill away from the
claimed invention" (id.); (4) "Aylward does not suggest AlTiO mixtures"
(id. at 8); and (5) Aylward would not provide one of ordinary skill in the art
a reason to modify Lu's barrier layer to function as a moisture barrier (id. at
8). See also Reply Br. 3--4.
We do not find Appellant's arguments persuasive of reversible error
in the Examiner's rejection. Appellant's argument that Lu provides only a
"generic disclosure" that includes titania and alumina in a list of possible
two-oxide mixtures (Appeal Br. 7) is not persuasive because, as the
Examiner correctly points out (Ans. 14), a reference is good for all that it
teaches. The fact that Lu includes titania and alumina among a list of other
possible oxide mixtures, without more, does not take away from the
reference's broad disclosure regarding the use of metal oxide mixtures of
titania and alumina (Lu ,r,r 24--25). See Merck & Co. v. Biocraft
Laboratories, Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) ("That the '813
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patent discloses a multitude of effective combinations does not render any
particular formulation less obvious.").
We do not find Appellant's argument that Lu is "focused on sodium
barriers" and the "example barrier films" it discloses are higher in thickness
than the claimed thickness (Appeal Br. 7) persuasive because a reference's
disclosure is not limited to the examples or embodiments it sets forth as
preferred. In re Courtright, 377 F.2d 647, 651 (CCPA 1967) ("[o]ne cannot
ignore the broader, instructive disclosure of a reference at the expense of
reliance only on the specific examples"); see also In re Mills, 470 F.2d 649,
651 ( CCP A 1972) ("[A] reference is not limited to the disclosure of specific
working examples."); Merck, 874 F.2d at 807 ("all disclosures of the prior
art, including unpreferred embodiments, must be considered") (internal
quote and citation omitted).
As the Examiner finds (Ans. 14), although Lu may discuss sodium
barriers and provides examples of barrier films having a range of
thicknesses, paragraph 28 of Lu discloses that the "first coating 14 can have
any desired thickness" and paragraphs 24--25 of Lu disclose the coating 14
comprising a metal oxide mixture of titania and alumina, as claimed.
Appellant's argument that Aylward "would lead one of ordinary skill
away from the claimed invention" (Appeal Br. 7) is not persuasive because
Appellant does not identify sufficient evidence to support it and we will not
read into the reference a teaching away where no such language exists. Cf
DyStar Textilfarben GmbH v. CH Patrick Co., 464 F.3d 1356, 1364 (Fed.
Cir. 2006). Appellant does not direct us to any teaching in Aylward which
discourages one of ordinary skill in the art from a barrier layer comprising
an AlTiO mixture and having the claimed thickness and water vapor
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transmission rate. In re Fulton, 391 F.3d 1195, 1201 (finding that there is no
teaching away where the prior art's disclosure "does not criticize, discredit,
or otherwise discourage the solution claimed"). Rather, as the Examiner
finds (Ans. 3), Aylward discloses that the vapor transmission rate is
decreased by increasing the thickness of the barrier layer. Aylward ,r 267.
Appellant's contention that "Aylward does not suggest AlTiO
mixtures" (Appeal Br. 8) is not well-taken because, as the Examiner explains
(Ans. 14--15), it is premised on what Appellant contends the reference
teaches individually, and not the combined teachings of the cited references
as a whole and what the combined teachings would have suggested to one of
ordinary skill in the art. One cannot show non-obviousness by attacking
references individually where the rejection is based on a combination of
references. See In re Keller, 642 F.2d 413,425 (CCP Al 981 ). As previously
discussed above, the Examiner relies on the Lu reference-not Aylward-
for disclosing the barrier layer "comprising an AlTiO mixture" (see Lu ,r,r
23-25) recitation of the claim.
Appellant's contention that Aylward would not provide one of
ordinary skill in the art a reason to modify Lu's barrier layer to function as a
moisture barrier (Appeal Br. 8) is not persuasive of reversible error in the
Examiner's rejection because it is conclusory. Attorney argument is not
evidence. In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984). Moreover,
we find that the Examiner provides a reasonable basis and identifies a
preponderance of the evidence in the record to evince why one of ordinary
skill would have combined the teachings of the cited references to arrive at
Appellant's claimed invention. Ans. 2-3.
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Appellant fails to direct us to persuasive evidence or provide an
adequate technical explanation to establish why the Examiner's articulated
reasoning for combining the teachings of the prior art to arrive at the claimed
invention lacks a rational underpinning or is otherwise based on some other
reversible error.
Appellant's disagreement with the Examiner's factual findings and
reasoning for combining the references, without more, is insufficient to
establish reversible error. Cf SmithKline Beecham Corp. v. Apotex Corp.,
439 F.3d 1312, 1320 (Fed. Cir. 2006) ("[M]ere statements of disagreement .
. . as to the existence of factual disputes do not amount to a developed
argument.").
Lastly, Appellant argues that the claimed invention yields unexpected
results. Appeal Br. 8-11. See also Reply Br. 4--5. In particular, relying on
Example 1 and Figure 1 of the Specification, Appellant contends that "it was
surprising that such thin mixed AlTiO films could be made that are such
effective moisture barriers." Appeal Br. 8-9.
This argument is not persuasive. In attempting to overcome a prima
facie case of obviousness by showing unexpected results, the burden rests
with Appellant to establish (1) that the alleged unexpected results presented
as being associated with the claimed invention are, in fact, unexpected, (2)
that the comparisons are to the disclosure of closest prior art, and (3) that the
supplied evidentiary showing is commensurate in scope with the claimed
subject matter. See In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972).
Based on the fact-finding and for the well-stated reasons provided by
the Examiner at pages 15-16 of the Answer and pages 2-3 of the January
21, 2016 Advisory Action, we concur with the Examiner's determination
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that Appellant's alleged showing of unexpected results is not commensurate
in scope with the claims. In particular, as the Examiner explains (Ans. 15-
16), because the evidence Appellant relies upon for showing unexpected
results includes only data for samples having thicknesses ranging from
2.2 nm to 5.5 nm, Appellant has not provided data sufficient to show that the
alleged unexpected results occur over the entire claimed range of "less than
8 nm."
Appellant's assertions that "it was surprising that such thin mixed
AlTiO films could be made that are such effective moisture barriers"
(Appeal Br. 8-9) and "[i]t was unexpected that homogeneous AlTiO films
would have an excellent WVTR at thinner films than possible with pure
alumina and pure titania" (Reply Br. 5) are conclusory and, without more,
insufficient to establish unexpected results. De Blauwe, 736 F.2d at 705 ("It
is well settled that unexpected results must be established by factual
evidence. Mere argument or conclusory statements in the specification does
not suffice.").
Claims 19. 30. and 38
Appellant presents separate argument for the patentability of
dependent claims 19, 30, and 38 as a group. Appeal Br. 11. We select claim
19 as representative and claims 30 and 38 stand or fall with claim 19.
37 C.F.R. § 4I.37(c)(l)(iv). Claim 19 depends from claim 15 and further
recites "wherein the barrier layer has an alumina to titania mole ratio in the
range of 1: 1 to 1:3." Claims App'x, first page.
Appellant argues that the Examiner's rejection of claim 19 should be
reversed for the same reasons as claim 15 previously discussed above.
Appeal Br. 11. We do not find this argument persuasive of reversible error
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for the same reasons previously discussed above in affirming the Examiner's
rejection of claim 15.
Appellant further argues that the Examiner's rejection of claim 19
should be reversed because the Examiner erred "by improperly concluding
that the data showing unexpected results is not commensurate in scope with
the claims." Appeal Br. 11. In particular, Appellant contends that "the
Examiner improperly concluded that experiments conducted at a 3: 1 ratio, a
1: 1 ratio, and a 1 :3 ratio were not representative of the claimed ratio of 1: 1
to 1: 3 . " Id. at 11.
We do not find this argument persuasive of reversible error in the
Examiner's rejection of claim 19 for reasons analogous to those previously
presented above regarding Appellant's failure to show unexpected results
with respect to claim 15. As such, based on the fact-finding and reasoning
provided by the Examiner at page 1 7 of the Answer and pages 2-3 of the
January 21, 2016 Advisory Action, we concur with the Examiner's finding
that the data Appellant relies upon for showing unexpected results is not
commensurate in scope over the entire claimed mole ratio range of" 1: 1 to
1: 3" and claimed thickness range of "less than 8 nm."
In particular, as the Examiner explains (Ans. 17), although Example 3
of the Specification discloses barrier films with 3: 1 and 1 :3 molar ratios of
alumina and titania, there is insufficient data provided to show that the
alleged unexpected results occur for films having a mole ratio of 1 :2 and
over the entire claimed thickness range of less than 8 nm. Appellant's
assertion that "the thickness of the Example 3 films was comparable to the
Example 1 films" (Reply Br. 6), without more, is insufficient to satisfy
Appellant's evidentiary burden in this regard. De Blauwe, 736 F.2d at 705.
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Accordingly, we affirm the Examiner's rejection of claims 15-24 and
28--41 under 35 U.S.C. § 103(a) as obvious over the combination of Lu and
Aylward, as evidenced by Badre.
Rejection 2
In response to the Examiner's Rejection 2, Appellant argues
independent claims 15, 20, and 23 as a group and does not present separate
argument for the patentability of claims 16, 18, 21, 24, 28, 29, 34, 35, 37,
and 40. Appeal Br. 12. We select claim 15 as representative and the
remaining claims subject to this rejection stand or fall with claim 15.
37 C.F.R. § 4I.37(c)(l)(iv).
Appellant argues that the Examiner's rejection should be reversed
because (1) "Padiyath does not teach or suggest a 'homogeneous mixture"'
(Appeal Br. 14); (2) "the present Specification discloses unexpected results
for the claimed thickness ranges" (id.); (3) "[ o ]ne of ordinary skill in the art
would not be led by Padiyath to arrive at the claimed thin barrier films with
surprisingly low WVTR" (id.); and (4) the Examiner's findings regarding
Padiyath's thin barrier film having the claimed WVTR is "contrary to the
teaching Examiner relied upon from Aylward" (id.).
We do not find Appellant's arguments persuasive of reversible error
in the Examiner's rejection based on the fact-finding and for the well-stated
reasons provided by the Examiner at pages 9-11 and 17-19 of the Answer.
On the record before us, we find that a preponderance of the evidence
and sound technical reasoning support the Examiner's analysis and
determination (Ans. 9-11, 17-19) that Padiyath teaches or suggests a barrier
layer satisfying all of the limitations of claim 15, and that the reference
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would have rendered the claim obvious. Padiyath, Abstract, ,r,r 32, 33, Fig.
1, claims 1 and 4.
Appellant's contention that Padiyath does not teach or suggest a
homogeneous mixture (Appeal Br. 14) is unpersuasive because, as the
Examiner finds (Ans. 17), paragraph 32 of Padiyath discloses a barrier layer
comprising a mixture of aluminum oxide and titanium oxide. Although
Padiyath does not explicitly state that the mixture is homogenous, the
reference does teach the aluminum oxide and titanium oxide mixture being a
"combination thereof." Id. ,r 32; see also In re Preda, 401 F.2d 825, 826
(CCP A 1968) ("[I]n considering the disclosure of a reference, it is proper to
take into account not only specific teachings of the reference but also the
inferences which one skilled in the art would reasonably be expected to draw
therefrom."). Moreover, as the Examiner finds (Ans. 18), and contrary to
what Appellant argues, Padiyath does not teach or suggest that the aluminum
oxide and titanium oxide mixture is anything other than a homogenous
mixture.
Because Appellant's argument that "the present Specification
discloses unexpected results for the claimed thickness ranges" (Appeal Br.
14) relies on the same evidence previously presented and discussed above in
response to the Examiner's Rejection 1, we do not find it persuasive of
reversible error for the same reasons previously discussed above in affirming
Rejection 1.
Appellant's assertion that "[ o ]ne of ordinary skill in the art would not
be led by Padiyath to arrive at the claimed thin barrier films with
surprisingly low WVTR" (Appeal Br. 14) is not persuasive of reversible
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error because it is conclusory and Appellant does not provide an adequate
technical explanation to support it. De Blauwe, 736 F.2d at 705.
Appellant's comments at pages 14--15 of the Appeal Brief regarding
the Examiner's findings with respect Padiyath's teachings being contrary to
the teaching the Examiner relied upon from Aylward are equally
unpersuasive because they too are largely conclusory and Appellant does not
adequately explain how the Examiner's findings are actually contrary to
Aylward's teachings.
Accordingly, we affirm the Examiner's rejection of claims 15, 16, 18,
20, 21, 23, 24, 28, 29, 34, 35, 37, and 40 under 35 U.S.C. § 103(a) as
obvious over Padiyath.
DECISION/ORDER
The Examiner's rejections of claims 15-24 and 28--41 are affirmed.
It is ordered that the Examiner's decision is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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