Ex Parte Jing et al

Patent Trial and Appeal Board

Oct 31, 2018

13826795 (P.T.A.B. Oct. 31, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/826,795 03/14/2013
32692 7590 11/02/2018
3M INNOVATIVE PROPERTIES COMPANY
PO BOX 33427
ST. PAUL, MN 55133-3427
UNITED ST A TES OF AMERICA
FIRST NAMED INVENTOR
Naiyong Jing
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.
64497US009 7313
EXAMINER
ROBINSON, ELIZABETH A
ART UNIT PAPER NUMBER
1787
NOTIFICATION DATE DELIVERY MODE
11/02/2018 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):
LegalUSDocketing@mmm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte NAIYONG JING
and PEIW ANG ZHU
Appeal2018-000741
Application 13/826,795
Technology Center 1700
Before ADRIENE LEPIANE HANLON, JEFFREY R. SNAY, and
LILAN REN, Administrative Patent Judges.
HANLON, Administrative Patent Judge.
DECISION ON APPEAL
A. STATEMENT OF THE CASE
The Appellants 1 filed an appeal under 35 U.S.C. § 134(a) from an
Examiner's decision finally rejecting claims 1-3, 5, 7-20, and 22. We have
jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
1 Applicant is 3M Innovative Properties Company, which is also identified
as the real party in interest. Appeal Brief dated July 10, 2017 ("App. Br."),
at 1.
Appeal2018-000741
Application 13/826, 795
Independent claim 1 is reproduced below from the Claims Appendix
to the Appeal Brief.
1. A coating composition consisting essentially of:
a) 0.5 to 99 wt.% water;
b) 0.1 to 15 wt.% acicular silica particles ;
c) greater than O to 20 wt.% spherical silica
nanoparticles having an average particle diameter of 100 nm or
less, wherein the sum ofb) and c) is 0.1 to 20 wt.%;
d) an inorganic acid having a pKa of< 5 to reduce the
pH of the coating composition to less than 5;
e) 0 percent by weight of a tetraalkoxysilane coupling
agent and oligomeric forms thereof; and
f) 0 percent by weight of a polymeric binder.
App. Br., Claims Appendix C-1.
The Examiner maintains the following rejections on appeal:
(1) claims 1-3, 5, 7-13, 15-20, and 22 under 35 U.S.C. § I03(a) as
unpatentable over Ohashi et al., 2 either alone or in combination with GB
960, 3 in view of SNOWTEX® product literature4 and Watanabe et al.; 5 and
(2) claim 14 under 35 U.S.C. § I03(a) as unpatentable over Ohashi,
either alone or in combination with GB 960, in view of SNOWTEX®
product literature and Watanabe, and further in view of Li et al. 6
2 US 2006/0093786 Al, published May 4, 2006 ("Ohashi").
3 GB 1 454 960, published November 10, 1976 ("GB 960").
4 Nissan Chemical Industries, Ltd., SNOWTEX® product literature,
https://www .nissanchem.co .jp/ eng/products/materials/ snow _tex.html (last
visited Oct. 15, 2018).
5 US 6,291,535 Bl, issued September 18, 2001 ("Watanabe").
6 US 5,580,819, issued December 3, 1996 ("Li").
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Application 13/826, 795
B. DISCUSSION
1. Rejection (I)
The Examiner finds Ohashi discloses a coating composition
comprising 0.01 to 10% by weight of a combination of moniliform silica
strings (acicular silica) and another form of silica, such as spherical silica.
Final Act. 2 ( citing Ohashi ,r 92 ). 7 The Examiner finds that the silica strings
can be SNOWTEX® OUP which have a diameter of 9-15 nm, a length of
40-100 nm, and a pH of about 2--4, and the spherical silica can be
SNOWTEX® OXS which has a particle size of 5.0 nm. Final Act. 2-3. The
Examiner finds that Ohashi's coating composition may also comprise water,
one or more silanes other than tetraalkoxysilanes, and an acid such as nitric
or hydrochloric acid (i.e., an inorganic acid having a pKa of less than 5 as
recited in claim 1 ). Final Act. 2-3.
According to the method disclosed in Ohashi, a dispersion of
moniliform silica strings and spherical silica are mixed with a hydrolyzable
group-containing silane to obtain a mixture and the resulting mixture is
subjected to hydrolysis and dehydration-condensation. Ohashi ,r,r 12, 92.
The Examiner finds that "[p ]rior to hydrolysis and condensation, a silane is
not a polymeric binder [ and t ]he composition of Ohashi [] does not require
an additional polymeric binder." Final Act. 3; see also App. Br., Claims
Appendix C-1 ( reciting, in claim 1, "O percent by weight of a polymeric
binder").
The Examiner finds that Ohashi does not expressly disclose the pH of
the coating composition. Final Act. 3. Nonetheless, the Examiner finds:
7 Final Office Action dated January 20, 2017.
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Application 13/826, 795
As the rate of hydrolysis and condensation is a variable that can
be modified, among others, by adjusting the amount of acid, the
precise amount would have been considered a result effective
variable by one having ordinary skill in the art at the time the
invention was made. . . . Accordingly, one of ordinary skill in
the art at the time the invention was made would have
optimized, by routine experimentation, the amount of acid and
the resulting pH in Ohashi [] to obtain the desired rate of
hydrolysis and condensation ....
Final Act. 3--4 (citing In re Boesch, 617 F.2d 272 (CCPA 1980)).
In the alternative, the Examiner finds that GB 960 discloses a
combination of silica and silane similar to the combination disclosed in
Ohashi. The Examiner finds that GB 960 "teaches that to prevent immediate
gellation of the coating[,] sufficient acid must be added to maintain the pH
in a range from 3-6." Final Act. 4. The Examiner concludes that it would
have been obvious to one of ordinary skill in the art to adjust the pH of
Ohashi' s coating composition to 3---6, which overlaps the claimed range, to
ensure that the composition does not immediately gel. Final Act. 4.
The Appellants argue that "the claimed coating composition
consisting essentially of the recited ingredients necessarily excludes organic
cosolvents." App. Br. 4.
The Appellants' argument is not persuasive of reversible error. We
recognize that Ohashi discloses that exemplary dispersion mediums include
organic solvents. Ohashi, 120. Nonetheless, Ohashi also discloses that
"dispersion mediums include water." Ohashi, 120; see also Ans. 28
(finding that "the coating can but is not required to have an organic solvent,
since the dispersion medium can be water (Paragraph 120)").
8 Examiner's Answer dated September 7, 2017.
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The Appellants argue that "the hydrolysable group-containing silanes
disclosed by Ohashi[] typically cannot be dissolved in water, but instead
react with water." App. Br. 5 (original emphasis omitted). For that reason,
the Appellants argue that "in the working examples, Ohashi disclose the use
of water/ethanol cosolvent mixtures as the dispersion medium to dissolve the
hydrolysable group-containing silane (i.e., tetraethoxysilane[9J)." App. Br. 5.
"[T]he disclosure of a reference is not limited to specific working
examples contained therein." In re Fracalossi, 681 F .2d 792, 794 n.1
(CCPA 1982). With respect to the dispersion medium, Ohashi discloses that
"there is no particular limitation as long as the silica particles can be
substantially stably dispersed therein, and the hydrolyzable group-containing
silane and the below-mentioned additives can be dissolved therein. Specific
examples of dispersion mediums include water . ... " Ohashi ,r,r 119-120
(emphasis added); see also Ans. 4 (finding that Ohashi paragraph 120
"teaches water as a usable dispersion medium (solvent) and does not require
more than one of the listed solvents"). Therefore, the Appellants' argument
is not supported by the record.
Moreover, claim 1 does not expressly exclude the organic solvents
disclosed in Ohashi but rather recites "[a] coating composition consisting
essentially of' specifically enumerated elements. App. Br., Claims
Appendix C-1. "[T]he phrase 'consisting essentially of' limits the scope of a
claim to the specified ingredients and those that do not materially affect the
basic and novel characteristic(s) of a composition." In re Herz, 537 F.2d
9 The Examiner finds, and the Appellants do not dispute, that Ohashi
discloses silanes other than tetraalkoxysilanes. Final Act. 3 ( citing Ohashi
i1 111 ).
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Application 13/826, 795
549, 551-52 (CCPA 1976) (emphasis added). An Appellant has the burden
of showing the basic or novel characteristics of the claimed invention. In re
De Lajarte, 337 F.2d 870, 874 (CCPA 1964); see also Final Act. 13-14.
In this case, the Appellants do not expressly identify the basic or
novel characteristics of the claimed coating composition. The Appellants
argue that "the present specification discusses deleterious effects expected
from using water/organic solvent mixtures. See, for example, page 4, lines
4--9 of the present specification." App. Br. 4. That portion of the
Specification states:
Although aqueous organic solvent-based coatings of
nanoparticle silica dispersions have been described, such
mixtures of water and an organic solvents may suffer from
differential evaporation rates that result in continuously
changing composition of the liquid phase, which consequently
changes the coating properties; resulting in poor uniformity
and defects. Although surfactants may help the wetting
property of dispersions, they may interfere with interparticular
and interfacial substrate adhesion, and often produce non-
uniform and defect-containing coatings.
Spec. 4, 11. 3-8 ( emphasis added). The Appellants, however, do not identify
the coating properties that are changed by organic solvents or the organic
solvents that are said to change those unidentified coating properties.
Moreover, the Examiner finds that
Appellants' own Examples in Table 4 are in a water/organic
solvent mixture [i.e., water/isopropanol solvent[1°JJ, so the cited
section [(Spec. 4, 11. 4--9)] does not show that the presence of
organic solvent would materially affect the basic and novel
characteristics of the claimed invention.
10 Ohashi discloses that alcohols, including isopropanol, may be used as a
solvent. Ohashi ,r 120.
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Ans. 3. Significantly, the Appellants rely on the results reported in Table 4
to demonstrate that the claimed invention exhibits unexpected results. See
App. Br. 5.
Finally, claim 7 recites "[t]he coating composition of claim 1
containing no organic solvents." App. Br., Claims Appendix C-1 (emphasis
added). "[A] claim in dependent form shall contain a reference to a claim
previously set forth and then specify a further limitation of the subject
matter claimed." 35 U.S.C. § 112, fourth paragraph (2012) (emphasis
added); see also 37 C.F.R. § 1.75(c) (2016) ("One or more claims may be
presented in dependent form, referring back to and further limiting another
claim or claims in the same application."). Thus, it is reasonable to conclude
that the coating composition recited in claim 1 encompasses organic solvents
that do not materially affect the basic and novel characteristics of the coating
composition.
Based on the foregoing, we conclude that claim 1 does not exclude the
organic solvents disclosed in Ohashi.
The Appellants argue that "one of skill in the art would recognize that
the recitation of the pH of the coating solution in claim 1 would be
undefined or meaningless in a water/organic cosolvent (e.g., water/ethanol)
system." App. Br. 4 ( emphasis omitted).
The Appellants, however, do not direct us to any evidence to support
their argument. Moreover, the Appellants' argument is not supported by the
record. Referring to pages 22 and 23 of the Specification, the Examiner
finds that the Appellants disclose adjusting the solution pH in an
isopropanol/water system. Ans. 3. Indeed, the Appellants disclose that in
Examples 34 and 35 (Table 4), "an untreated polyethylene terephthalate
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(PET) substrate was coated (single side) with the indicated 5 wt.% acicular
silica particle compositions at the indicated pH . . . . The coating
composition was a 79:21 weight ratio of isopropanol/water." Spec. 22, 11. 6-
10. The Appellants disclose that "[t]he results of Table 4 indicate that
Snowtex-UP [i.e., a Si02 dispersion] ... becomes stable when the solution
pH is adjusted with either organic acids or inorganic acids." Spec. 23, 11. 3-
5. Thus, the Examiner explains that "it is unclear why Appellants assert that
pH would be undefined or meaningless in a water/organic cosolvent
system." Ans. 3. The Appellants do not offer a response.
Finally, the Appellants argue that GB 960 "fails to provide that which
is missing from Ohashi." App. Br. 6. To the extent that the Appellants are
arguing that GB 960 fails to cure the deficiencies in Ohashi in the
obviousness rejection of claim 1, for the reasons discussed above, there are
no deficiencies in Ohashi that require curing by GB 960.
In an attempt to rebut the prima facie case of obviousness, the
Appellants argue that the claimed coating composition exhibits unexpected
results. App. Br. 5---6. The Appellants direct out attention to the results in
Tables 4, 5, and 6 and Comparative Examples C5, C6, C7, C8, and C12 for
support. App. Br. 5---6.
The Appellants' evidence, however, is not commensurate in scope
with the claims. See In re Tiffin, 448 F.2d 791, 792 (CCPA 1971)
("objective evidence of non-obviousness must be commensurate in scope
with the claims which the evidence is offered to support"). The Appellants
rely on two coating compositions in Table 4 to show that "the pH confers
stability to the aqueous dispersion." App. Br. 5. The Appellants rely on two
coating compositions in Table 5 to show that the claimed coating
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Application 13/826, 795
compositions are more durable than coatings from basic dispersions and rely
on two coating compositions in Table 6 to show that "coating from a low pH
dispersion resulted in lower receding contact angles than those from higher
pH dispersions." App. Br. 5.
The Examiner finds that "the data is not commensurate in scope with
the claims, since there is no spherical silica present as is required by the
claims" and "the data is presented for only a single type and amount of
acicular silica, while the claim is directed to a much broader weight
percentage of any type of acicular silica particle." Final Act. 9, 10-11
(emphasis added); see also Ans. 4---6 (finding that the data is not
commensurate in scope with the claims for the same reasons provided in the
Final Office Action).
Moreover, the Examiner finds "there is no data presented in Table 5 to
show durability." Final Act. 10; Ans. 5. Indeed, the data reported in Table 5
is directed to "cleanability" (Spec. 23), and the Appellants do not direct us to
any evidence showing a relationship between cleanability and durability.
As for comparative examples C5, C6, C7, C8, and C12, the
Appellants do not explain, in any detail, why those comparative examples
are the closest prior art. See In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir.
1984) ("an applicant relying on comparative tests to rebut a prima facie case
of obviousness must compare his claimed invention to the closest prior art").
Finally, to the extent that the coating compositions relied on by the
Appellants in Tables 4, 5, and 6 exhibit improved results compared to
examples C5, C6, C7, C8, and C12, the Appellants do not direct us to any
evidence establishing that those improved results would have been
unexpected by one of ordinary skill in the art at the time of the Appellants'
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invention. See In re Freeman, 474 F.2d 1318, 1324 (CCPA 1973) (in order
for a showing of "unexpected results" to be probative evidence of non-
obviousness, the applicant must establish that the difference between the
results obtained through the claimed invention and those of the prior art
would not have been expected by one skilled in the art at the time of
invention).
On balance, a preponderance of the evidence weighs in favor of the
Examiner's conclusion of obviousness. For that reason, the obviousness
rejection of claims 1-3, 5, 7-13, 15-20, and 22 is sustained. 11
2. Rejection (2)
The Appellants do not direct us to any error in the Examiner's factual
findings or legal conclusions as to Li. Rather, the Appellants argue that Li
"fails to provide that which is missing from Ohashi." App. Br. 7. To the
extent that the Appellants are arguing that Li fails to cure the deficiencies in
Ohashi in the obviousness rejection of claim 1, for the reasons discussed
above, there are no deficiencies in Ohashi that require curing by Li.
Therefore, the obviousness rejection of claim 14 is sustained.
C. DECISION
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)(l )(iv).
AFFIRMED
11 The Appellants do not present arguments in support of the separate
patentability of any of dependent claims 2, 3, 5, 7-13, 15-20, and 22.
10