Ex Parte Giesenberg et al

Patent Trial and Appeal Board

Aug 31, 2016

12516890 (P.T.A.B. Aug. 31, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/516,890 12/09/2009
29137 7590 09/01/2016
BASF SE
CARL-BOSCH-STRASSE 38
LUDWIGSHAFEN, D67056
GERMANY
FIRST NAMED INVENTOR
Thomas Giesenberg
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.
11123-23574/A/PCT 1884
EXAMINER
MEEKS, TIMOTHY HOWARD
ART UNIT PAPER NUMBER
1715
MAILDATE DELIVERY MODE
09/01/2016 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte THOMAS GIESENBERG, PASCAL HAYOZ,
THOMAS VOGEL, ANDREAS MUHLEBACH, MARKUS
FREY, STEPHAN ILG, RACHEL KOHLI STECK,
LAURENT MICHAU, and FRANCOIS RIME 1
Appeal2015-002498
Application 12/516,890
Technology Center 1700
Before: ROMULO H. DELMENDO, A VEL YN M. ROSS, and
DEBRA L. DENNETT, Administrative Patent Judges.
DENNETT, Administrative Patent Judge.
DECISION ON APPEAL 2
1 Appellants identify CIBA Corporation as the real party in interest. Appeal
Brief filed August 8, 2014 ("App. Br.") 3.
2 In our opinion below, we refer to the Final Action mailed February 20,
2014 ("Final Act.") and the Examiner's Answer mailed October 8, 2014
("Ans.").
Appeal2015-002498
Application 12/516,890
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims
1, 3, 4, 7, 9, 11-19, and 23. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
The claims are directed to a process for modifying the surface of an
inorganic or organic substrate with strongly adhered nanoparticles. Claim 1,
reproduced below and with the relevant terms highlighted, is illustrative of
the claimed subject matter:
1. A process for modifying the surface of an inorganic or
organic substrate with strongly adhered nanoparticles, the
method comprising:
a) subjecting the surface of the inorganic or organic
substrate to plasma, corona discharge, ozonization, high energy
radiation or flame treatment;
b) applying to the substrate surface nanoparticles
containing at least one polymerizable group chemically bonded
to their surface, or mixtures of said nanoparticles with
monomers and/or oligomers, or a solution, suspension or
emulsion containing said nanoparticles without adding a
photoinitiator, wherein the polymerizable group is an
ethylenically unsaturated group; and
c) radiation drying the coated surface using suitable
methods, wherein the radiation applied in the drying step is
from the ultraviolet and/or visible range,
wherein the nanoparticles applied in step b) comprise a
nanoparticle of the formula I,
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Application 12/516,890
(Cl "c (l).,
wherein the core nanoparticle contains an inorganic or
organic material,
a is a number from 1 to na;
b is a number from 0 to nb;
c is a number from 0 to nc;
A and, if present, Band/or Care organic substituents bound to
the core nanoparticle;
A is the organic substituent containing at least one reactive
polymerizable group;
B is an organic substituent containing at least one photoinitiator
moiety;
C is an organic substituent containing at least one functional
group;
where the sum of Ila+ llb +Ile is a number from 1 up to n1,
where n1 is limited by the geometry and surface area of the core
nanoparticle and the steric requirements of the respective
substituents A, B, C, and
wherein the core nanoparticle comprises on its surface
oxygen compounds of the elements Si, Al, In, Ga, Ti, Zn, Sn,
Zr, Fe, Sb; oxygen compounds of one of the elements Si, Al, In,
Ga, Ti, Zn, Sn, Zr, Fe, Sb doped with another of these elements
and/or with phosphorus and/or fluorine; inert metals; or
synthetic organic polymer materials.
App. Br. 28-29 (Claims App'x).
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Appeal2015-002498
Application 12/516,890
Sepeur et al.
("Sepeur")
Dellrup
REFERENCES
US 2004/0237833 Al
WO 2005/090031 Al
REJECTIONS
Dec. 2, 2004
Sept. 29, 2005
Claims 1, 3, 4, 7, 9, 11-19, and 23 stand rejected as unpatentable
under 35 US.C. § 103(a) over Sepeur in view ofDellrup. Ans. 2.
OPINION
As a first matter, Appellants request reversal of the rejection because
the Final Action did not address claims 3, 16, 17, and 19 and "an opportunity
was never presented by the Examiner to have a clear argument regarding
claims 3, 16, 17, and 19 on the record." App. Br. 9. This is a petionable
matter, not an appealable matter. We note for the record the Interview
Summary of the Examiner-initiated telephone interview on June 30, 2014,
wherein the Examiner explained that the claims were inadvertently omitted
from the statement of the rejection on page 2 of the Final Action, although
the Office Action Summary sheet indicated that these claims were rejected,
and that all limitations of claims 3, 16, 17, and 19 were implied in the cited
references. See Examiner-initiated Interview Summary mailed July 7, 2014.
In the Answer, the Examiner corrected the omission of these claims. Ans. 2.
To the extent that Appellants believe that this correction in the Answer
constituted a new ground of rejection, the proper course of action should
have been the timely filing of a petition pursuant to 37 C.F.R. §§ 41.40(a)
and 1.181-a matter over which we have no jurisdiction.
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Application 12/516,890
Turning to the merits, Appellants' arguments do not reveal any
reversible error in the Examiner's rejection. Appellants tum to the
Specification, which says that there are drawbacks to existing processes,
including the process of the PCT counterpart of the Sepeur reference used by
the Examiner in rejecting the claims. App. Br. 10-11. Appellants assert that
the claimed processes exhibit "superior and highly desirable results, which
Sepeur's process fails to achieve." Id. at 11. However, Appellants offer no
evidence comparing the invention with Sepeur. It is well settled that
arguments of counsel cannot take the place of factually supported objective
evidence. See, e.g., In re Huang, 100 F.3d 135, 139--40 (Fed. Cir. 1996); In
re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984). This argument of
Appellants is unpersuasive.
Appellants contend that the combination of Sepeur with Dellrup fails
to disclose element b) of the claims. App. Br. 11-12. Appellants state that
(1) while Sepeur does discuss a process in which the surface of a substrate is
modified by adhering nanoparticles, Sepeur does not teach or suggest curing
with radiation in the absence of a photoinitiator, and (2) the Examiner relies
on Dellrup to teach curing in the absence of a photoinitiator. Id. at 13-14.
Appellants urge that Dellrup' s disclosure of performing UV curing without a
photoinitiator is limited to Dellrup' s radiation-curable composition and
process, and "it cannot be assumed that removing a photoinitiator from any
UV-curable composition in any process will unequivocally allow for the
intended results to occur as when a photoinitiator is used." Id. at 15.
Appellants make numerous arguments that address, directly or
indirectly, the issue of whether there is reason or motivation to combine
Dellrup with Sepeur. For example, Appellants argue that, although the
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processes in both references can be used in wood applications, "the
objectives and type of compositions taught in each reference are not the
same as or similar to one another at all"3 (id. at 16), and that the references
"have completely different objectives" (id. at 16-17). Appellants also point
out that Dellrup does not teach or suggest nanoparticles. Id. at 17.
According to Appellants, there is "no reason that it would be obvious to
specifically modify Sepeur' s UV-curable coating to remove a photoinitiator
based on the disclosure of Dellrup" (id. at 18); "no reason that one of
ordinary skill in the art would specifically apply the embodiment of Dellrup
which discusses a photoinitiator being optional to the teachings of Sepeur"
(id. at 18-19); "no motivation in either Sepeur or Dellrup to know with
absolute certainty that the modified process would result in predictable and
intended results" (id. at 19); "no portion of Dellrup [that] teaches or suggests
that this radiation permeable layer removes the need for a photoinitiator in
any UV-curable composition" (id. at 23); and "no reason that one of
ordinary skill in the art would even apply this radiation permeable layer of
Dellrup to the UV curable coating of Sepeur, let alone that it would
unquestionably exhibit predictable and intended results" (id.).
The Examiner finds that Sepeur teaches a solvent-based coating
composition comprising radiation curable methacryloxy groups and a large
amount of silica filler that may be cured with UV radiation with a
3 Appellants specifically state that Sepeur' s process creates coatings for
permanent hydrophilization of surfaces with very good adhesion properties,
and the reference discusses using the coating as an anti-fog agent, while
Dellrup teaches that it is not necessary for its composition to show very good
adhesion properties. Id. at 16. Thus, Appellants contend that Dellrup
teaches away from achieving permanent hydrophilization of surfaces with
very good adhesion, as in Sepeur. Id. at 17.
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Application 12/516,890
photoinitiator. Ans. 8, Final Act. 2-3 (citing Sepeur iii! 22, 25, 28, and 30).
The coating of Sepeur consists of 10 % to 90% inorganic structures (such as
silica), 5 to 70% hydrophilic side chains, as well as 0-50 % organic side
chains having functional groups such as methacryloxy groups. Id. at 3
(citing Sepeur at if 21 ). The coating in Sepeur may be used for coating wood
and paper. Id. at 2 (citing Sepeur if 28).
The Examiner applies Dellrup as a secondary reference to Sepeur to
find that a solvent-based coating composition comprising the same radiation-
curable methacryloxy groups and a large amount of silica filler may be cured
with UV radiation. Ans. 8. Dellrup teaches a coating that may be formed on
a wood-comprising article from a radiation curable composition comprising
less than 40% or less than 5% of organic solvent or water (Dellrup 7, 11. 21-
27), various radiation curable compounds such as those having
methacryloxy groups (id. at 16, 11. 5-8), and 0-60% of fillers (id. at 18, 11.
21-23) such as silica (id., 11. 9-11) and 1--40% of pigments (id., 11. 25-30).
While the coating in Dellrup may be cured in the presence of a photoinitiator
such as Irgacure 184 (also disclosed in Sepeur ), it is unnecessary in Dellrup,
which states that "UV curing can also be performed without a
photoinitiator." Ans. 3 (citing Dellrup 17, 11. 20 and 23). Dellrup teaches
that compositions comprising up to 60% silica and "a relatively large
amount of pigment" can be cured when a UV-transparent cover on top of the
composition prevents initiated radicals being caught by oxygen in the air.
Dellrup 18, 11. 9-11; 19, 1. 3.
Both Sepeur and Dellrup teach a coating that can be used on wood, is
solvent based, and may comprise the same radiation curable methacryloxy
groups and a large amount of silica filler. Ans. 4.
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The Examiner concludes that one of ordinary skill in the art at the
time of the invention would find it obvious to have cured a coating of Sepeur
et al comprising 10% to 90% silica (an inorganic structure), and 0 to 50 %
methacryloxy-containing side chains with UV radiation without a
photoinitiator by exposing the coating to UV radiation through a UV-
transparent covering, as taught by Dellrup, with the expectation of providing
the desired acceptable curing by preventing initiated radicals being caught
by oxygen in the air. Ans. 4.
Based on the facts before us, Appellants have not shown reversible
error in the Examiner's determination. 4 The Examiner's explanation of the
4 Appellants repeatedly argue their case using terms that impose a burden on
the Examiner beyond that required by law. For example, Appellants suggest
that the Examiner must show that (1) the removal of a photo initiator from
Sepeur must "unequivocally allow for the intended results to occur as when
a photoinitiator is used" (App. Br. 15) (emphasis added); (2) one of ordinary
skill in the art must "kno\~1 \~\rith absolitte certainty that the modified process
would result in predictable and intended results" (id. at 19) (emphasis
added); (3) one of ordinary skill in the art would "unquestionably expect
Sepeur' s UV-curable coating to exhibit the intended and predictable results"
(id.); (4) the "specific embodiment would unquestionably yield predictable
and intended results without a photoinitiator" (id. at 22); and (5) adding the
radiation permeable layer of Dellrup to Sepeur would "unquestionably
ensure that predictable and intended results of Sepeur would be achieved"
(id. at 23). However, to show obviousness, the Examiner must provide
"some articulated reasoning with some rational underpinning to support the
legal conclusion of obviousness." In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006). There is no requirement that the Examiner's findings and conclusion
must be "unequivocal," "unquestionable," or made "with absolute certainty,"
all of which are inconsistent with the preponderance of the evidence
standard, under which we perform reviews. In re Oetiker, 977 F.2d 1443,
1446 (Fed. Cir. 1992). See also In re O'Farrell, 853 F.2d 894, 904 (Fed.
Cir. 1988) (only a reasonable expectation of success-not absolute
predictability-is required to establish obviousness).
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Application 12/516,890
reasons a person of ordinary skill in the art would have had to combine the
prior art teachings is sufficient when an allowance is made for "the
inferences and creative steps that a person of ordinary skill in the art would
employ." KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). "As long
as some motivation or suggestion to combine the references is provided by
the prior art taken as a whole, the law does not require that the references be
combined for the reasons contemplated by the inventors." In re Beattie, 974
F.2d 1309, 1312 (Fed. Cir. 1992)."); see also Cross Med. Prods., Inc. v.
Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1323 (Fed. Cir. 2005)
("One of ordinary skill in the art need not see the identical problem
addressed in a prior art reference to be motivated to apply its teachings.").
The Examiner having shown prima facie obviousness, the burden of
going forward shifts to Appellants. In re Piasecki, 745 F.2d 1468, 1472
(Fed. Cir. 1984). Here, Appellants seek to rebut the prima facie case by
showing unexpected results. App. Br. 25.
Appellants argue that "the present specification provides that 'a strong
and durable adhesion of functionalized nanoparticles on the substrate may be
achieved without application of further photo initiators to the substrate, even
in the absence of any photo initiators and/or monomers'." App. Br. 25
(citing Spec. 2, 11. 10-12) (emphasis added). Appellants then point to
Examples Al and A2 in the Specification, and related Figures 1 and 2, as
evidence that "the presently recited processes achieve advantageous results,
which are superior to existing processes known in the art that use a
photoinitiator, such as Sepeur and Dellrup." Id. Appellants' results purport
to show superiority, not necessarily the required "surprising and unexpected
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results," of Example Al over Example A2, but, as the Examiner found, both
examples represent the claimed invention. See Ans. 8.
For a showing of "unexpected results" to be probative evidence of
non-obviousness, Appellants must first establish that there actually is a
difference between the results obtained through the claimed invention and
those of the prior art. See In re Klosak, 455 F .2d 1077, 1080 (CCP A 1972)
(emphasis added). Appellants must also establish that those results are
actually obtained through their invention. See id. Appellants have only
demonstrated superiority of one embodiment of the claimed invention over
another, thus failing to establish evidence of unexpected results over the
prior art.
Example Al of the Specification discloses results obtained from a
preparation of nanoparticles without any photoinitiator. Spec. 80, 11. 3-5.
Example A2 discloses results obtained from a preparation in which a
photoinitiator is bound to the nanoparticles. Id. at 78, 11. 1-3. Both Example
Al and A2 are covered by the claims, as neither has an added photoinitiator,
but Example A2 includes a photoinitiator as claimed in step c ), substituent B
("B is an organic substituent containing at least one photoinitiator moiety").
App. Br. 6. Appellants' results thus compare one embodiment of the
claimed invention with another embodiment of the claimed invention, but do
not compare the claimed invention with the closest prior art, as required. In
re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991) ("[W]hen
unexpected results are used as evidence of nonobviousness, the results must
be shown to be unexpected compared with the closest prior art.").
Unexpected results must also be "commensurate in scope with the
degree of protection sought by the claims on appeal." In re Harris, 409 F.3d
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1339, 1344 (Fed. Cir. 2005); see also in re Graselli, 713 F.2d 731, 743 (Fed.
Cir. 1983) (It is well settled "that objective evidence of non-obviousness
must be commensurate in scope with the claims which the evidence is
offered to support."). Appellants "unexpected results" differentiate between
two embodiments of the claims, but do not distinguish the claimed invention
from the prior art. Appellants thus fail to establish a nexus between the
merits of the claimed invention and the evidence offered, as there is no
distinction offered from the prior art. See Stratojlex, Inc. v. Aeroquip Corp.,
713 F.2d 1530, 1539 (Fed. Cir. 1983) ("A nexus is required between the
merits of the claimed invention and the evidence offered, if that evidence is
to be given substantial weight enroute to conclusion on the obviousness
issue.")
Appellants fail to show evidence of unexpected results that would
rebut the Examiner's determination that a prima facie case of obviousness
exists.
The Examiner did not err in finding the claims obvious over Sepeur in
view of Dellrup.
DECISION
For the above reasons, the Examiner's rejection of claims 1, 3, 4, 7, 9,
11-19, and 23 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)(l )(iv) (2009).
AFFIRMED
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