Ex Parte Kolb et al

Patent Trial and Appeal Board

Jul 31, 2018

13258029 (P.T.A.B. Jul. 31, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/258,029 09/21/2011
32692 7590 08/02/2018
3M INNOVATIVE PROPERTIES COMPANY
PO BOX 33427
ST. PAUL, MN 55133-3427
UNITED ST A TES OF AMERICA
FIRST NAMED INVENTOR
William Blake Kolb
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.
65185US005 8180
EXAMINER
DAGENAIS-ENGLEHAR, KRISTEN A
ART UNIT PAPER NUMBER
1717
NOTIFICATION DATE DELIVERY MODE
08/02/2018 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 WILLIAM BLAKE KOLB, PETER E. PRICE, and
WILLIAM R. DUDLEY
Appeal2017-009364
Application 13/258,029
Technology Center 1700
Before ADRIENE LEPIANE HANLON, RAEL YNN P. GUEST, and
DONNA M. PRAISS, Administrative Patent Judges.
PRAISS, Administrative Patent Judge.
DECISION ON APPEAL 1
STATEMENT OF THE CASE
Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner's
decision to reject claims 1, 2, 11-15, 17, 21, and 25 as obvious under 35
1 In explaining our Decision, we refer to the Specification filed Sept. 21,
2011 ("Spec."), the Final Office Action dated May 19, 2016 ("Final Act."),
the Appeal Brief filed Dec. 20, 2016 ("App. Br."), the Examiner's Answer
dated Apr. 19, 2017 ("Ans."), and the Reply Brief filed June 19, 2017
("Reply Br.").
2 3M Company is identified in the Appeal Brief as the real party in interest.
App. Br. 3.
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Application 13/258,029
U.S.C. § I03(a) over Kawanishi3 together with secondary references. 4' 5
App. Br. 3-14; Final Act. 1-8.
We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM and enter a new ground of rejection.
The subject matter on appeal relates to a process for producing a
polymer coating. Spec. 1 :29-30. Independent claim 1 is illustrative
( emphasis added to highlight disputed limitations):
1. A process for a polymer coating, comprising, in
sequence:
coating a first solution comprising a polymerizable
material in a solvent on a substrate;
polymerizing a first portion of the polymerizable material
in the solvent to form a polymer gel disposed in a second
solution, wherein only about 30% or less of the solvent from
the first solution is removed prior to polymerizing the first
portion of the polymerizable material to form the polymer gel,
wherein the polymer gel in the second solution has an increased
viscosity over the polymerizable material in the first solution,
and wherein the second solution is partially depleted of the
polymerizable material; and
collapsing the polymer gel by removing greater than
90% by weight of the solvent from the polymer gel.
App. Br. 15 (Claims Appendix).
3 Kawanishi, US 2005/0214453 Al, published Sept. 29, 2005
("Kawanishi").
4 The rejection of claim 1 under 35 U.S.C. § 112(b) as being indefinite was
withdrawn by the Examiner in view of the subsequent amendment of claim
1. Advisory Action dated Aug. 17, 2016, 2.
5 Claim 20 is also pending but does not stand rejected under 35 U.S.C.
§ I03(a) based on Kawanishi in combination with any of the secondary
references of record.
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OPINION
The Examiner concludes that claims 1, 2, 11-15, 17, 21, and 25 would
have been obvious to one of ordinary skill in the art at the time of the
invention for the reasons stated on pages 2-8 of the Final Action.
Appellants argue claims 1, 2, 17, and 25 as a group. App. Br. 5-12.
In accordance with 37 C.F.R. § 4I.37(c)(l)(iv), claims 2, 17, and 25 will
stand or fall together with claim 1 from which they depend. Appellants note
that no grounds of rejection are identified in the Final Office Action for
claim 20, but assert that claim 20, which indirectly depends from claim 1, is
patentable for the same reasons presented with respect to claim 1. Id. at 12.
Appellants also argue claims 11-15 as a group, but merely rely on the same
arguments presented with respect to claim 1. Id. at 13. Similarly,
Appellants separately address claim 21, but merely rely on the same
arguments presented with respect to claim 1. Id. at 14. Accordingly, we
address the arguments presented with respect to claims 1 and 20 in our
analysis below.
Claim 1
Appellants contend that the Examiner erred in rejecting claim 1 over
the combination of Kawanishi and Foster6 because the Examiner's
underlying fact finding that, during polymerization to reach the semi-cured
state, Kawanishi' s polymerized material necessarily has to go through a
polymer gel state, is not supported by "any technical reasoning whatsoever."
App. Br. 6. Appellants assert that the Examiner's position relies upon a
chemical theory that is not supported by evidence or shown to be well-
6 Foster et al., US 5,854,302, issued Dec. 29, 1998 ("Foster").
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known or common knowledge in the art and that it cannot be supported by
the doctrine of inherency. Id. at 6-7.
Appellants also argue that "the Examiner has not established that the
amount of solvent removed for proper film retention and avoidance of
partially polymerized resin crazing would have been greater than 90% by
weight of the solvent, as recited by claim 1." Id. at 8. Appellants further
contend that a skilled artisan would not have understood the semi-cured
coating layers of Kawanishi to have been a polymer gel as defined by
Appellants' Specification, which requires it be "not self-supporting after
removal of the solvent." Id. at 9 (quoting Spec. 7:7-9). Appellants argue
that Kawanishi's semi-cured layer has "sufficient structure to be embossed"
where the embossing step is between the first processing and the second
processing step to impart an antiglare property, that this teaching is not just
an embodiment, and that a polymeric gel without a self-supporting
polymeric structure would not be useful in Kawanishi's process. Id. at 10.
Appellants additionally argue that the Examiner has not established a
prima facie case of obviousness of claim 1 over Kawanishi in view of Foster
because the references fail to describe or suggest forming a polymeric gel
without a self-supporting polymer network and because "the cited references
fail to recognize or appreciate that partial curing to form a polymer gel can
be used to improve coating quality during subsequent processing steps." Id.
at 11-12.
The Examiner responds that Kawanishi teaches that the concentration
of polymerized material after curing can be 10% polymerized at the lower
end, which would meet the specific definition of polymer gel provided in
Appellants' Specification, namely, "a polymer network that is expanded
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throughout its whole volume by a fluid, but is not self-supporting after
removal of the solvent." Ans. 6. Because the first processing unit of
Kawanishi results in a cured state of "approximately 10-80%," the Examiner
reasons that a skilled artisan would recognize that a semi-cured layer
wherein only 10% of the material is polymerized would collapse upon
removal of the solvent causing the layer to shrink or collapse because "the
removal of the solvent would result in a removal of a particular volume from
the solution of polymerized material, unpolymerized material and solvent,
thereby causing the layer to shrink." Id.
Regarding Appellants' position that a polymer gel would be unable to
hold any shape or structure after collapsing, the Examiner finds that
definition is not supported by the Specification as there is no limitation
regarding the collapsed polymer network's ability to hold a shape. Id. at 6-
7. The Examiner also finds that "Appellant has not made a reasonable or
supported argument as to why behavior during the drying of [Kawanishi' s
semi-cured] layer [i.e. collapsing or shrinking upon removal of the solvent]
would dictate its properties once it is dry." Id. at 7. The Examiner further
finds that the ability of Kawanishi's semi-cured layer to be embossed after
the first or second curing processing unit relates to the hardness provided by
an embodiment and does not teach away from Kawanishi's broader
disclosure or non-preferred embodiments. Id. at 7-8.
In the Reply Brief, Appellants reiterate that the Examiner has not
established a prima facie case of obviousness because (1) the Examiner's
finding that removal of solvent from a solution of polymerized material will
cause the layer to shrink is not supported by evidence and (2) the
combination of Kawanishi in view of Foster does not recognize the problem
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of reducing coating defects as stated in the title of Appellants' disclosure.
Reply Br. 3-5. Appellants also argue that the burden of providing
evidentiary support remains with the Examiner and has not shifted to
Applicants. Id. at 4. Appellants further contend that the Examiner has not
given "due patentable weight" to the terms "self-supporting," which
Appellants assert is part of the definition of "polymer gel," and "collapsing,"
which is recited in claim 1. Id.
We review the appealed rejections for error based upon the issues
identified by Appellants and in light of the arguments and evidence
produced thereon. Cf Ex parte Frye, 94 USPQ2d 1072, 107 5 (BP AI 2010)
(precedential) (cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed.
Cir. 2011) ("it has long been the Board's practice to require an applicant to
identify the alleged error in the examiner's rejections")). Essentially for the
reasons stated in the Final Action and the Answer, we are not persuaded by
Appellants that the Examiner reversibly erred in rejecting claim 1 over
Kawanishi and Foster. We add the following primarily for emphasis.
Appellants do not dispute the Examiner's finding (Final Act. 3) that
Kawanishi discloses a process of applying a coating solution to a web or
substrate that is an actinic radiation curable composition on a long support in
a liquid phase including solvent, which is thereafter dried to a prescribed
degree removing a portion of the solvent from the solution after coating the
solution on the substrate. Appellants also do not dispute the Examiner's
finding (Final Act. 3; Ans. 6) that Kawanishi discloses the concentration of
polymerized material after curing, specifically after the first ultraviolet
process where the material can be 10-80% polymerized. Appellants also do
not dispute the Examiner's finding (Ans. 6) that the removal of solvent from
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a solution of polymerized material, unpolymerized material, and solvent
would result in a removal of a particular volume, thereby causing shrinkage.
Appellants do not dispute the Examiner's combination of the teachings of
Kawanishi with the teachings of Foster or that Foster discloses controlling
the initial concentration of monomer in the solvent in a partial
polymerization process to achieve acceptable resins, specifically with
respect to the tendency to craze upon evaporation of the solvent (Final Act.
5). Regarding the meaning of the recited "polymer gel," Appellants do not
dispute the meaning of the term is that provided in the Specification. App.
Br. 9; Spec. 7:7-9. In addition, Appellants concede that "coating defects or
quality" is not recited by the claims. Reply Br. 5.
Appellants' arguments focus on the evidence cited by the Examiner in
support of the finding that Kawanishi's semi-cured material is capable of
collapsing as required by claim 1. Appellants do not dispute the teachings of
Kawanishi and Foster, but, rather, question the capability of Kawanishi's
partially cured polymer to collapse on itself upon the removal of solvent and
thereby meet the definition of polymer gel as set forth in Appellants'
Specification. We are not persuaded by Appellants' arguments because
Appellants do not adequately demonstrate that the Examiner's reasoning
based on Kawanishi's teachings is in error. Specifically, Appellants do not
identify error in the reasoning that the removal of solvent from Kawanishi's
solution of polymerized material, unpolymerized material, and solvent
would result in a removal of a particular volume, thereby causing shrinkage
in the polymer layer. Therefore, the preponderance of the evidence supports
the Examiner's underlying findings and determination that the claims would
have been obvious over the teachings of Kawanishi and Foster.
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We also are not persuaded by Appellants' argument that Kawanishi's
disclosure of embossing layers after curing suggests that Kawanishi' s
polymer material is not a polymer gel (App. Br. 9-10; see Reply Br. 4). The
Examiner's determination (Ans. 8-9) that neither the claim language nor the
Specification provide limitations on what "collapsing" and "self-supporting"
means is supported by the record and not disputed by Appellants. As the
Examiner further notes, the definition of "polymer gel" provided in the
Specification does not suggest the non-self-supporting polymer network is
incapable of holding any shape such as upon embossing. Ans. 9. Appellants
do not direct us to any evidence in this record that discloses how the
collapsed polymer network behaves after the solvent has been removed and
the network collapsed. Rather, the definition provided in the Specification
only addresses the polymer network's behavior during drying, suggesting
simple shrinkage occurs in the layer due to the removal of solvent volume.
Thus, paragraph 108 of Kawanishi, which discloses embodiments where
embossing occurs after the coating layer is either completely cured or semi-
cured to provide antiglare property to the coated polymer film, does not
persuade us that the Examiner erred in rejecting claim 1.
Appellants' argument that neither Kawanishi nor Foster recognized
the problem of reducing coating defects by partially polymerizing a polymer
in a solution before removing a major portion of the solvent from the
solution (Reply Br. 5), also is not persuasive of error. KSR Int 'l Co. v.
Teleflex Inc., 550 US 398, 419-20 (2007) ("In determining whether the
subject matter of a ... claim is obvious, neither the particular motivation nor
the avowed purpose of the patentee controls. What matters is the objective
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reach of the claim. If the claim extends to what is obvious, it is ...
[unpatentable] under§ 103.").
Having identified the pertinent disclosures of Kawanishi and
determining that it would have been obvious to a person having ordinary
skill in the art ( 1) that a semi-cured layer where only 10% of the material is
cured would shrink upon removal of solvent (Ans. 6) and (2) to control the
initial concentration of monomer in the solvent of Kawanishi' s partial
polymerization process to form a film that avoids partially polymerized resin
crazing as taught by Foster (Final Act. 4), the Examiner has established a
prima facie case of obviousness of claim 1 over the combination of
Kawanishi and Foster. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992)
("[T]he examiner bears the initial burden, on review of the prior art or on
any other ground, of presenting a primafacie case ofunpatentability.").
Once a prima facie case of unpatentability has been established, the burden
then shifts to Appellants to overcome the prima facie case with argument
and/or evidence.
On balance, the evidence of record weighs in favor of the Examiner's
conclusion that collapsing the partially cured polymer layer by removing
greater than 90% by weight of the solvent as required by claim 1 would have
been obvious to one of ordinary skill in the art in view of the teachings of
Kawanishi in view of Foster together with the definition of "polymer gel"
provided in the Specification.
Claim 20
Claim 20 depends from claim 17, which in tum, depends from claim
1. Claim 1 7 recites "wherein polymerizing comprises polymerizing using an
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actinic radiation" and claim 20 recites "wherein the actinic radiation
comprises ultraviolet (UV) radiation." App. Br. 16 (Claims Appendix).
Appellants do not dispute the Examiner's fact finding with respect to
claim 17 that Kawanishi "teaches a first ultraviolet processor 43 produces a
semi-cured state or halfway cross-linked state of the coating layer, i.e.
polymerizing using actinic radiation, ultraviolet radiation." Final Act. 5---6
(citing Kawanishi ,r 103). The Examiner's findings are supported by the
record cited in this appeal and are sufficient to establish a prima facie case of
obviousness of claim 20 over the combination of Kawanishi and Foster for
the same reasons set forth in the Final Office Action for claim 1 7. Because
the Examiner addresses the subject matter of claim 20 in the Final Office
Action, but does not identify claim 20 in the statement of the rejection, we
therefore enter a new ground of rejection of claim 20 as obvious over the
combination of Kawanishi and Foster.
CONCLUSION
We affirm the Examiner's decision to reject claims 1, 2, 11-15, 17,
21,and25.
We enter a new ground of rejection of claim 20.
DECISION
The Examiner's decision is affirmed.
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 4I.50(b). This section provides that "[a] new ground of rejection
... shall not be considered final for judicial review."
37 C.F.R. § 4I.50(b) also provides that the Appellants, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
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one of the following two options with respect to the new ground of rejection
to avoid termination of the appeal as to the rejected claims:
( 1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the proceeding
will be remanded to the examiner ....
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record ....
ORDER
AFFIRMED; 37 C.F.R. § 4I.50(b)
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