13142836 (P.T.A.B. Oct. 3, 2017)

Ex Parte Hirano et al

Patent Trial and Appeal BoardOct 3, 2017

13142836 (P.T.A.B. Oct. 3, 2017)

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. 13/142,836 10/18/2011 Seiichi Hirano G0623-915US (DAA19US) 7837 54380 7590 10/05/2017 FLASTER/GREENBERG P.C. 1810 Chapel Avenue West Cherry Hill, NJ 08002 EXAMINER BUIE-HATCHER, NICOLE M ART UNIT PAPER NUMBER 1767 NOTIFICATION DATE DELIVERY MODE 10/05/2017 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): robin.graham@flastergreenberg.com usp @ flastergreenberg.com JEANNE.VALENTINO@FLASTERgREENBERG.COM PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte SEIICHI HIRANO and TSUYOSHI NOGUCHI Appeal 2017-000398 Application 13/142,836 Technology Center 1700 Before TERRY J. OWENS, GRACE KARAFFA OBERMANN, and MICHAEL G. McMANUS, Administrative Patent Judges. OWENS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’ rejection of claims 1, 3—6 and 8—14. We have jurisdiction under 35 U.S.C. § 6(b). The Invention The Appellants claim a crosslinkable fluorine-containing elastomer composition. Claim 1 is illustrative: 1. A crosslinkable fluorine-containing elastomer composition comprising a crosslinkable fluorine-containing elastomer and silicon carbide particles, wherein the silicon carbide particles have a bulk density of not more than 0.15 g/cm3, an average particle size of the silicon carbide particles is not more than 50 nm and a proportion of particles having a particle size exceeding 50 nm is not more than 40%, Appeal 2017-000398 Application 13/142,836 wherein a proportion of particles having a particle size exceeding 100 nm is not more than 2%, and wherein the silicon carbide particles in the fluoride-containing elastomer composition provides a smaller amount of surface contamination in comparison to a composition having the same fluoride-containing elastomer but comprising a silicon carbide filler having a bulk density of 0.17g/cm3 to 0.49 g/cm3 and an average particle size of 40nm to 130nm. The References Huesmann US 2001/0044019 A1 Nov. 22,2001 Nishibayashi US 2005/0070637 A1 Mar. 31, 2005 Peter Majewski et al., Synthesis and characterisation of star polymer/silicon carbide nanocomposites, 434 Mat’l Sci. & Eng’g 360-64 (2006) (hereinafter Majewski). The Rejection Claims 1, 3—6, and 8—14 stand rejected under 35 U.S.C. § 103 over Nishibayashi in view of Majewski and Huesmann. OPINION We reverse the rejection. We need address only the sole independent claim, i.e., claim 1. That claim requires a crosslinkable fluorine-containing elastomer composition comprising silicon carbide particles having an average particle size of not more than 50 nm, not more than 40% of the particles having a particle size exceeding 50 nm and not more than 2% of the particles having a particle size exceeding 100 nm. To meet those claim requirements the Examiner relies upon the combined disclosures of Nishibayashi and Huesmann (Ans. 2-4). Nishibayashi discloses “a crosslinkable elastomer composition, in which the amount of HF generated under high temperature conditions is 2 Appeal 2017-000398 Application 13/142,836 small, heat resistance and processability are improved, the decrease in weight to both NF3 plasma treatment and 03 treatment in the semiconductor manufacturing process is small and generation of foreign substances (particles) in these treatments is suppressed significantly” (11). The composition can comprise crosslinkable elastomer and nonoxide ceramics (114). Silicon nitride, silicon carbide and aluminum nitride are preferable nonoxide ceramics because they provide the effects of large acceleration of the crosslinking reaction and high HF-collecting ability, and when the composition is used as semiconductor manufacturing equipment sealing material, contaminating substances are not generated in the equipment (1178). The nonoxide ceramics can be in the form of fine powder having a preferred particle size of at most 10 pm, and when the crosslinkable elastomer composition is used as semiconductor equipment sealing material the nonoxide ceramics particle size is at most 1 pm, preferably 0.01 to 0.5 pm, so only a small amount of particles is generated (1181). Huesmann discloses “primers and base coats for use with non-stick fluoropolymer coatings” (| 2). The coating composition comprises “(a) inorganic filler of ceramic particles, the particles having an average particle size of 1 micrometer or less and an aspect ratio of not greater than 2.5, (b) adhesion promoter wherein the weight proportion of inorganic filler to adhesion promoter is in the range of 5:1 to 1.7:1 and (c) from 0 to 25 wt. % of a fluoropolymer based on the weight of the composition of the undercoat layer after baking” (| 6). “[T]he particle size distribution is preferably narrow with a monodisperse distribution being most preferred. The particle shape and size distribution are important in order to maximize the packing density of the resulting coating” (| 12). 3 Appeal 2017-000398 Application 13/142,836 The Examiner concludes that “[i]t would have been obvious to one of ordinary skill in the art at the time of invention to try using a monodisperse distribution of particles as per the teachings of Huesmann et al., and the motivation to do so would have been as Huesmann et al. suggests maximizing the packing density [0012] as well as a more homogeneous composition having substantially uniform properties throughout” (Ans. 4). The Examiner does not point to support for the finding that Huesmann would have led to “a more homogeneous composition having substantially uniform properties throughout.” As for the finding that “Huesmann et al. suggests maximizing the packing density [0012]”, that disclosure pertains to a desirable property of an undercoat layer for a nonstick fluoropolymer coating 6, 12). The Examiner does not establish that one of ordinary skill in the art would have considered maximized packing density to be a desirable property of Nishibayashi’s crosslinkable elastomer composition used for making semiconductor manufacturing equipment sealing material and other elastomer products such as diaphragms, tubes, hoses, rubber rolls, laminates and liners flflf 201, 202). Thus, the Examiner has not set forth a factual basis which is sufficient to support a conclusion of obviousness of the Appellants’ claimed invention. See In re Warner, 379 F.2d 1011, 1017 (CCPA 1967) (“A rejection based on section 103 clearly must rest on a factual basis, and these facts must be interpreted without hindsight reconstruction of the invention from the prior art”). Accordingly, we reverse the rejection. DECISION/ORDER The rejection of claims 1, 3—6, and 8—14 under 35 U.S.C. § 103 over Nishibayashi in view of Majewski and Huesmann is reversed. 4 Appeal 2017-000398 Application 13/142,836 It is ordered that the Examiner’s decision is reversed. REVERSED 5