Ex Parte II et al

Patent Trial and Appeal Board

Mar 23, 2016

12935072 (P.T.A.B. Mar. 23, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/935,072 11/15/2010
513 7590 03/25/2016
WENDEROTH, LIND & PONACK, LLP,
1030 15th Street, N.W.,
Suite 400 East
Washington, DC 20005-1503
FIRST NAMED INVENTOR
Daizo II
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_0966A 1528
EXAMINER
HUANG, CHENG YUAN
ART UNIT PAPER NUMBER
1787
NOTIFICATION DATE DELIVERY MODE
03/25/2016 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):
ddalecki@wenderoth.com
eoa@wenderoth.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAIZO II, WICHI FUKATANI, and HIROFUMI KITAN0 1
Appeal2014-008737
Application 12/935,072
Technology Center 1700
Before BRADLEY R. GARRIS, ROMULO H. DELMENDO, and
JEFFREY R. SNAY, Administrative Patent Judges.
SNAY, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1-7. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 Appellants identify Sekisui Chemical Co., Ltd. as the real party in interest,
and identify the appeal pending in US 12/934,741 as related. App. Br. 2.
Appeal2014-008737
Application 12/935,072
The subject matter involved in this appeal relates to a laminated glass
interlayer film which includes dispersed zinc oxide particles. Spec. i-f 1. 2 A
copy of claim 1, taken from the Claims Appendix of the Appeal Brief
appears below.
1. An interlayer film for a laminated glass, which comprises:
zinc oxide fine particles containing a trivalent metallic
element and having a silicon compound adhered on a surface of
the zinc oxide fine particles;
a thermoplastic resin;
a dispersant; and
a plasticizer,
said dispersant having a structure represented by the
following general formula (1) and having a HLB value of
8 to 17:
[Chemical formula 1]
OR3
I
R10(R20)n-P-OH (1)
II
0
wherein R1 represents an isobutyl group, an alkyl group
having 5 to 17 carbon atoms or an aryl group having 6 to 14
carbon atoms,
R2 represents an alkylene group having 2 to 5 carbon
atoms,
R3 represents a hydrogen atom or R4(0R5)n-, wherein R4
represents an alkyl group having 5 to 17 carbon atoms or an
aryl group having 6 to 14 carbon atoms, and R5 represents an
alkylene group having 2 to 5 carbon atoms, and
"n" is an integer of 1 or more.
2 We cite to the Specification ("Spec.") filed September 28, 2010, amended
August 22, 2013; Examiner's Answer ("Ans."); and Appellants' Appeal
Brief ("App. Br.") and Reply Brief ("Reply Br.").
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Appeal2014-008737
Application 12/935,072
REJECTIONS
The Examiner rejected the claims as follows: 3
I. Claims 1 and 3-7 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Fukatani, 4 Hatta, 5 and Nair, 6 and evidenced by Pavez
Aranguiz 7 and Hargreaves. 8
II. Claim 2 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Fukatani, Hatta, Nair and Nagatoshi. 9
DISCUSSION
I
With regard to Rejection I, Appellants argue claims 1 and 3-7 as a
group. App. Br. 4--14; Reply Br. 4--7. We select claim 1 as representative
and decide the propriety of Rejection I based on that claim. See 37 C.F.R.
§ 41.37(c)(l)(iv).
The Examiner found that Fukatani discloses a laminated glass
interiayer fiim which includes: zinc oxide fine particles containing a
trivalent metallic element; a dispersant; a plasticizer and a thermoplastic
resin. Ans. 3 (citing Fukatani i-fi-f 12, 17, 27, 32). The Examiner further
3 The Examiner designated each of the rejections set forth in the Examiner's
Answer as a new ground of rejection. Ans. 3. Appellants' Reply Brief
serves as a request to maintain the appeal. 37 C.F.R. § 41.39(b)(2).
4 EP 1 785 404 Al, published May 16, 2007 ("Fukatani").
5 US 2007 /0224340 Al, published September 27, 2007 ("Hatta").
6 US 5,657,931, issued August 19, 1997 ("Nair").
7 US 2004/0077761 Al, published April 22, 2004 ("Pavez Aranguiz").
8 Tony Hargreaves, Chemical Formulation - An Overview of Surfactant-
Based Preparations Used in Everyday Life 79-82 (Royal Society of
Chemistry 2003), http://app.knovel.com/hotlink/toc/id:kpCFAOSBP JI
chemical-formulation ("Hargreaves").
9 US 2007 /0213437 Al, published September 13, 2007 ("Nagatoshi").
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Appeal2014-008737
Application 12/935,072
found that Fukatani identifies particular dispersants in the form of phosphate
ester polymer surfactants, including poly( oxyethylene) octylphenyl ether
phosphate ester, poly( oxyethylene) nonylphenyl ether phosphate ester, and
poly( oxyethylene) laurylphenyl ether phosphate ester, which the Examiner
found to have structures represented by Chemical Formula 1 in claim 1.
Ans. 3. The Examiner additionally found that one of ordinary skill would
have found it obvious, in light of Hatta, to include a silicon compound on the
surface of the zinc oxide particles in Fukatani. Ans. 4. Appellants do not
dispute the foregoing findings. See App. Br. 4--14; Reply Br. 4--7.
Acknowledging that Fukatani does not specify an HLB value for the
disclosed phosphate ester surfactants, Ans. 4, the Examiner found that it
would have been obvious to one of ordinary skill in the art to select a
dispersant exhibiting an optimal HLB value for Fukatani's disclosed
purpose, which optimization would have yielded an HLB value within
AppeUants' recited range, Ans. 5. In support of that finding, the Examiner
relied upon Nair as an example of a particle dispersion in which suitable
dispersants are selected in part based on their HLB value-in that instance,
dispersants having an HLB value of 8 or more for dispersing certain organic
particles in an aqueous dispersion. Ans. 5 (citing Nair col. 11, 11. 54-64).
Appellants argue that one of ordinary skill in the art would have had
no reasonable expectation of success in adopting Nair's HLB range of 8 or
more for Fukatani's surfactant because Nair discloses different particles
dispersed in a different medium. 10 App. Br. 5-8. That fact, however, does
10 Appellants correctly note that Nair discloses dispersions of certain organic
particles, whereas Fukatani is concerned with dispersion of inorganic
particles. App. Br. 5-6. In response to Appellants' observation, the
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Appeal2014-008737
Application 12/935,072
not negate Nair's conceptual teaching that the HLB value of a given
dispersant was recognized as an important variable in identifying dispersants
having a suitable activity in a given particle dispersion formulation. Neither
does it countervail either the Examiner's underlying rationale that one of
ordinary skill would have sought to optimize Fukatani' s dispersant based on
its HLB value, or the Examiner's finding that such an optimization in
Fukatani would have yielded a dispersant HLB value within Appellants'
recited range. Appellants' argument that Nair's HLB value relates to
different dispersion components is not persuasive of any reversible error
where the Examiner's obviousness determination was based not on Nair's
particular HLB value but on the optimization of HLB in regard to Fukatani's
dispersant.
Neither are we persuaded by Appellants' argument that "one skilled in
the art would have no reasonable expectation of modifying Fukatani with
Nair to provide an interiayer because Nair does not provide that its
Examiner cited Pavez Aranguiz in the Examiner's Answer for the
proposition that dispersants "can be used with both organic and inorganic
particles," and to Hargreaves for the proposition that a surfactant's HLB
value "is a function of the surfactant itself." Ans. 4--5. Appellants dispute
those propositions in their Reply Brief on the bases that Pavez Aranguiz
does not disclose that "all organic and inorganic particles can be utilized
with all dispersants," Reply Br. 4 (emphasis original), and that Hargreaves
"does not provide that a particular surfactant having a particular HLB value
will function identically regardless of the particularly utilized dispersoids
and dispersion mediums [sic]," id. at 6. Because we fully resolve the issues
involved in this appeal based on an alternative obviousness rationale set
forth by the Examiner that does not rely upon Pavez Aranguiz or
Hargreaves, we need not reach Appellants' arguments concerning purported
deficiencies in Pavez Aranguiz and Hargreaves.
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Appeal2014-008737
Application 12/935,072
polymeric dispersant having an HLB value of at least 8 can be used in an
interlayer." App. Br. 9. The Examiner's obviousness determination is not
dependent on Nair's disclosure of an interlayer. Rather, the Examiner relies
on Fukatani for its disclosure of a polymer dispersant contained within a
laminated glass interlayer. Ans. 3. Nair serves as an example of selecting
suitable polymer dispersants based on their HLB value, irrespective of
whether Nair's particle dispersion is a component of an interlayer.
Appellants' argument therefore lacks persuasive merit.
Appellants further argue that the Examiner's reasoning-that one of
ordinary skill would have found it obvious to optimize the HLB value in
connection with Fukatani's dispersant-was "conclusory." App. Br. 7-8.
We disagree. "[W]here the general conditions of a claim are disclosed in the
prior art, it is not inventive to discover the optimum or workable ranges by
routine experimentation." In re Applied Materials, Inc., 692 F.3d 1289,
1295 (Fed. Cir. 2012)) (quoting In re Aller, 220 F.2d 454, 456 (CCP A
1955)). Here, Appellants raise no substantive dispute that, but for the
claimed HLB value, Fukatani discloses the general conditions of claim 1-
namely, use of a phosphate ester polymer surfactant represented by
Appellants' Chemical Formula 1, for the claimed purpose of dispersing zinc
oxide particles in a thermoplastic resin, with a plasticizer, to form a
laminated glass interlayer film. Compare Ans. 3-5 with App. Br. 4--14,
Reply Br. 4--7. Nair, as discussed, presents additional evidence to support
the proposition that the HLB value represented a known variable indicative
of the activity of a given surfactant, such that identification of an optimal
surfactant for a given purpose based on its HLB value would have
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Appeal2014-008737
Application 12/935,072
constituted routine experimentation. On this record, we are not persuaded
that the Examiner's reasoning was conclusory or otherwise in error.
Appellants additionally argue that one of ordinary skill in the art
would not have found motivation to modify Fukatani' s dispersant to include
the particular limitations recited in connection with R 1, R 4 and "n" of the
recited Chemical Formula 1. App. Br. 10. In response, the Examiner
advised that Fukatani' s poly( oxyethylene) octylphenyl ether phosphate ester
satisfied all of the above-noted R1, R2 and "n" variables in Chemical
Formula 1. Ans. 12. Appellants do not challenge or otherwise dispute the
Examiner's explanation in the Reply Brief. Thus, we are not persuaded of
reversible error in the Examiner's finding that Fukatani's poly(oxyethylene)
octylphenyl ether phosphate ester meets the limitations called for in
Appellants' Chemical Formula 1.
Appellants contend that one of ordinary skill would have had no
reason to seiect the claimed zinc oxide particles from Fukatani' s iist of
possible heat shielding particles, or to select poly( oxyethylene) octylphenyl
ether phosphate ester from Fukatani's list of suitable dispersants, absent
impermissible hindsight. App. Br. 13. With regard to the claimed particles,
Fukatani lists seven preferred particle types for shielding heat. Fukatani 5
i-f 32. Appellants do not dispute the Examiner's finding that Fukatani's listed
aluminum-doped zinc oxide particles satisfy Appellants' recitation of zinc
oxide particles containing a trivalent metallic element as claimed. Compare
Ans. 5 i-f 13 with App. Br. 4--14; Reply Br. 4--7. With regard to the claimed
phosphate ester polymer, Fukatani expressly states that among the disclosed
dispersants, "the phosphate ester type compound is particularly suitable."
Fukatani 4 i-f 20. Appellants do not point us to any evidence that one of
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Appeal2014-008737
Application 12/935,072
ordinary skill would not have been guided by these disclosures in Fukatani
to select the particular zinc oxide particles and phosphate ester polymer
dispersant which Fukatani expressly identifies as suitable for use in the
disclosed laminated glass interlayer. Neither do Appellants present any
evidence or argument of unexpected results attained by selecting the claimed
zinc oxide particles and phosphate ester dispersant. Thus, Appellants'
argument does not persuade us of reversible error in the Examiner's finding
that it would have been obvious to select these materials in Fukatani.
For the foregoing reasons, we sustain Rejection I.
II
Because Appellants present no additional argument specifically
directed to the Examiner's rejection of claim 2 in Rejection II, see App. Br.
14; Reply Br. 7, we also sustain Rejection II.
DECISION
The Examiner's decision is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended 3 5 C.F .R. § 1.13 6.
AFFIRMED
8