Ex Parte King

Board of Patent Appeals and Interferences

Apr 15, 2010

10793588 (B.P.A.I. Apr. 15, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte ERIC M. KING
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Appeal 2009-003042
Application 10/793,588
Technology Center 1700
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Decided: April 15, 2010
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Before BRADLEY R. GARRIS, MARK NAGUMO, and
KAREN M. HASTINGS, Administrative Patent Judges.

HASTINGS, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1, 3-28, and 30-55. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM-IN-PART.

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BACKGROUND
The invention relates to a photochromic article that may be used as an
optical lens (Spec. 1, para. [0001]), or “can be used in association with
plastic films and sheets, . . . optical switches, display devices and memory
storage devices” (Spec. 2, para. [0004]).
Claim 1 is illustrative:
1. A photochromic article comprising:

(a) a rigid substrate,

(b) a photochromic organic polymeric coating appended to at least a
portion of at least one surface of said substrate, said polymeric coating
comprising a photochromic amount of at least one photochromic material,
and

(c) a transparent layer of a radiation cured composition comprising a
maleimide derivative superposed on said photochromic polymeric coating.

The Examiner relies upon the following prior art references in the
rejection of the appealed claims:
Sakurai US 6,410,611 B1 Jun. 25, 2002
DeRojas US 2002/0136899 A1 Sep. 26, 2002
Faverolle US 6,503,631 B1 Jan. 7, 2003

The Examiner has maintained, and Appellant seeks review of, the
followings rejections under 35 U.S.C. § 103(a):
1) claims 1, 3-10, 14-18, 20-28, 30, 31, 35-43, and 47-55 as being
unpatentable over the combined prior art of DeRojas and Sakurai;
2) claims 11-13, 19, 32-34, and 44-46 as being unpatentable over the
combined prior art of DeRojas, Sakurai, and Faverolle.
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Appellant presents arguments concerning each of the rejections of the
specified claims indicated in 1) and 2) above as a group (Br. 2-5), except
that dependent claims 19 and 20 are argued separately. Thus, in accordance
with 37 C.F.R. § 41.37(c)(1)(vii), we select claims 1, 11, 19, and 20 as the
representative claims on which our discussion will focus.
FIRST ISSUE
The Examiner finds that deRojas describes a photochromic article as
claimed, except that deRojas does not describe a transparent layer of a
maleimide derivative superimposed on the photochromic polymeric coating
thereof. The Examiner relies upon Sakurai which teaches that such coatings
are appropriate for use as “surface finishes”, and accordingly concludes that:
At the time of the invention, it would have been obvious to a
person of ordinary skill in the art to include the maleimide
derivative containing coating of Sakurai on the photochromic
lens of deRojas. The motivation to do so would have been to
create a surface finish on the lens while avoiding the unpleasant
odors given off by large quantities of photoinitiator (Sakurai
Column 1 Lines 6-50).
(Ans. 5).
Appellant argues that the references teach away from the claimed
invention (Br. 6), and that there is no motivation to combine the references
(Br. 7).
Accordingly, the first issue is: Has the Examiner erred in his
conclusion that the combined prior art would have suggested using the
maleimide surface finishing layer of Sakurai on a photochromic article as
exemplified in deRojas?
We answer this question in the negative.

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FINDINGS OF FACT (FF)
Findings of fact throughout this opinion are supported by a
preponderance of the evidence.
The Examiner correctly found that deRojas describes a photochromic
article, that may be used as an optical lens, comprising the claimed rigid
substrate and photochromic organic coating, except that deRojas does not
describe a transparent layer of a radiation cured composition comprising a
maleimide derivative superposed on said photochromic polymeric coating
(Ans. 3).
The Examiner also correctly found that Sakurai describes a
transparent coating of radiation cured composition comprising a maleimide
derivative that may be used as a “surface finish” on articles of manufacture
(Ans. 4). Sakurai describes that such coatings avoid the problems of
yellowing and unpleasant odors that may be encountered when using a
coating that uses a large amount of photoinitiator (e.g., col. 1, ll. 50-58).
One of ordinary skill in the art would have been aware that maleimide
surface finishes are transparent (e.g., see Sakurai, col. 59, ll. 65-67) and
accordingly would have predictably been useful in optical applications.
Appellant’s Specification states that “the maleimide derivatives useful
in the present invention can be found at column 4, line 26 through column
12, line 21 of U.S. Patent 6,410,611 B1 [Sakurai].” (Spec. 10, para. [0025]).
No Reply Brief was filed.
PRINCIPLES OF LAW
In assessing whether a claim to a combination of prior art elements
would have been obvious, the question to be asked is whether the
improvement of the claim is more than the predictable use of prior art
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elements according to their established functions. KSR Int'l Co. v. Teleflex,
Inc., 550 U.S. 398, 417 (2007). The analysis need not seek out precise
teachings directed to the specific subject matter of the claim, for it is proper
to take account of the inferences and creative steps that a person of ordinary
skill in the art would employ. Id. at 418.
The test for obviousness is what the combined teachings of the
references would have suggested to those of ordinary skill in the art; one
cannot show non-obviousness by attacking references individually where the
rejections are based on combinations of references. In re Young, 927 F.2d
588, 591 (Fed. Cir. 1991); In re Merck & Co., Inc., 800 F.2d 1091, 1097-98
(Fed. Cir. 1986); In re Keller, 642 F.2d 413, 425 (CCPA 1981).
ANALYSIS
Appellant contends that the references teach away from the claimed
invention (Br. 6) and that there is no motivation to combine the references
(Br. 7), mainly because the photochromic elastomeric film of deRojas
provides abrasion resistance which is important only in an outer coating
layer, and thus there is no reason to add a layer superimposed thereon as
proposed in the rejection. Appellant also contends that Sakurai describes
various applications but nowhere describes that its surface finish coatings
would possess optical properties required for use in the lens of deRojas (Br.
8). These contentions are not persuasive of reversible error for the following
reasons.
A reference “teaches away” when it suggests that the developments
flowing from its disclosures are unlikely to produce the objective of the
Appellant’s invention. See In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994).
There is nothing in DeRojas that suggests that the use of a surface finishing
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layer would have been undesirable. Nor does Appellant point us to any
discussion in Sakurai that would have suggested to one of ordinary skill that
the use of a maleimide surface finish would not have been appropriate for an
optical article.
Furthermore, Appellant has not provided any persuasive technical
reasoning or evidence to support the position that an abrasion resistant
coating is “important only in an outer coating” (Br. 6, emphasis in original).
To the contrary, Appellant admits it is known to use an anti-reflection
coating over an abrasion coating (Spec. 4, para. [0009]); Br. 7).
Accordingly, the Examiner’s position that one of ordinary skill in the
art would have appreciated that a surface finish is generally desirable on the
lens of deRojas is reasonable. One of ordinary skill in the art would have
appreciated that the transparent maleimide surface finish of Sakurai may be
useful in any application wherein such a surface finish is desirable, including
the optical lens of deRojas, with a reasonable expectation of obtaining a
photochromic article with a surface finish that will not yellow and will avoid
unpleasant odors, as noted by the Examiner (Ans. 4). See e.g., KSR, 550
U.S. at 420-421 (one of ordinary skill in the art is “also a person of ordinary
creativity, not an automaton”). The use of a maleimide surface finish
appears to be no more than the predictable use of such a coating for its
established function. KSR, 550 U.S. at 417.
Claim 20
The second issue on appeal is whether Appellant has identified an
error in the Examiner’s determination that the prior art renders obvious the
subject matter of claim 20.
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Appellant contends that “there is no teaching or suggestion in the
references to select the respective coatings such that the photochromic
organic polymer coating is softer than the radiation cured layer comprising
the maleimide derivative, as recited in claim 20.” (Br. 10).
The Examiner has not responded to this argument, and did not
separately address claim 20 in either the final rejection or the Answer
(generally Ans.; Final Rejection mailed 08/06/2007).
Under these circumstances, we are constrained to reverse the
Examiner’s rejection of claim 20.
Claims 11-13, 32-34, and 44-46
The third issue on appeal is whether Appellant has identified an error
in the Examiner’s determination that the applied prior art of deRojas,
Sakurai and Favorelle renders obvious the subject matter of representative
claim 11.
Representative claim 11 requires the addition of “an abrasion resistant
coating superposed on the radiation cured layer comprising the maleimide
derivative” of claim 1.
The Examiner relies upon Faverolle to exemplify the known use of
abrasion resistant coatings and anti-reflection coatings in optical lenses
(Ans. 6). We agree with Appellant that the Examiner has not adequately
explained how combining the teachings of the three applied references
would have led to the claimed invention (Br. 11). Specifically, the Examiner
has failed to explain why one of ordinary skill in this art would have used a
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surface finish as taught in Sakurai on top of the photochromic coating of
deRojas and underneath the abrasion resistant coating required by claim 11.1
Under the circumstances recounted above, it is apparent that the only
teaching or suggestion for modifying the deRojas/Sakurai combination in
such a manner as to achieve the claimed invention is derived from
Appellant’s own Specification rather than the applied prior art. Therefore,
we conclude that the Examiner’s rejection is improperly based upon
improper hindsight reasoning. KSR, 550 U.S. at 421 (The fact finder must
be aware “of the distortion caused by hindsight bias and must be cautious of
arguments reliant upon ex post reasoning”; citing Graham v. John Deere
Co., 383 U.S. 1, 36 (1966) (warning against a “temptation to read into the
prior art the teachings of the invention in issue”)). See also, W.L. Gore &
Assocs., Inc. v. Garlock, Inc., 721 F.2d 1551, 1553 (Fed. Cir. 1983), cert.
denied, 469 U.S. 851 (1984).
Claim 19
The fourth issue on appeal is whether Appellant has identified an error
in the Examiner’s determination that the subject matter of claim 19 is
obvious over the applied prior art.

1 Appellant’s description in the Specification that “it has been proposed” to
use an “acrylate-based coating” on a photochromic coating on an optical lens
to protect it before final application of an abrasion resistant coating and an
anti-reflection coating was not relied upon by the Examiner, nor was this
subject matter explicitly admitted as prior art by the Appellant (Spec. 5,
para. [0011]). Accordingly, we decline to consider this possibility on
appeal.

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Claim 19 recites “The article of claim 1 wherein the radiation cured
layer comprising the maleimide derivative is compatible with abrasion-
resistant organo silane-containing coatings.” (Emphasis provided).
Appellant contends that “it cannot be assumed that compatability with
abrasion-resistant organo silane containing coating would be a property
inherent to any of the maleimide-derived coatings of Sakurai” (Br. 14).
Appellant does not provide or rely upon any explicit definition of
“compatibility” (see generally Br.). Indeed, Appellant’s Specification
describes that the maleimide coating may “treated to enhance its receptivity
of and adhesion to the hard coat [i.e., the abrasion resistant coating].”
(Spec. 58, para. [00144]). The plain meaning of “compatibility” is merely
the ability “to exist together with something else” (The Random House
College Dictionary, p. 274, 1973). Appellant’s Specification states that the
maleimide derivatives useful in the present invention are as described in
Sakurai (see FF). Moreover, claim 19 depends from claim 1, not claim 11,
and accordingly does not require the abrasion resistant coating of claim 11 to
be present, nor does it require the specified abrasion-resistant organo silane-
containing coating (which is required in dependent claim 12) to be present.
In light of these circumstances, the weight of the evidence supports
the Examiner’s implicit finding that the maleimide surface finish of Sakurai
when placed on the lens article of deRojas as proposed by the Examiner,
would have been “compatible” with organo silane-containing abrasion
coatings as recited in claim 19. We therefore affirm the Examiner’s
rejection of claim 19 under 35 U.S.C. § 103.
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CONCLUSION
We sustain the Examiner’s § 103 rejection of claims 1, 3-10, 14-18,
21-28, 30, 31, 35-43, and 47-55 as being unpatentable over the combined
prior art of DeRojas and Sakurai, but reverse this rejection as applied to
claim 20.
We reverse the Examiner’s § 103 rejection of claims 11-13, 32-34,
and 44-46 as being unpatentable over the combined prior art of DeRojas,
Sakurai, and Faverolle, but affirm this rejection as applied to claim 19.

ORDER
The Primary Examiner’s decision is affirmed-in-part.
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a).
AFFIRMED-IN-PART

PL Initial:
sld

DEBORAH M. ALTMAN
PPG Industries, Inc.
One PPG Place
Pittsburgh PA 15272