Ex Parte Kwon et al

Patent Trial and Appeal Board

Mar 22, 2013

11339976 (P.T.A.B. Mar. 22, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/339,976 01/26/2006 O Bum Kwon 9470-12 7630
20792 7590 03/22/2013
MYERS BIGEL SIBLEY & SAJOVEC
PO BOX 37428
RALEIGH, NC 27627
EXAMINER
FEELY, MICHAEL J
ART UNIT PAPER NUMBER
1761
MAIL DATE DELIVERY MODE
03/22/2013 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte O BUM KWON,
WON BUM JANG, and SUN YUL LEE
____________

Appeal 2011-013265
Application 11/339,976
Technology Center 1700
____________

Before ROMULO H. DELMENDO, GRACE KARAFFA OBERMANN,
and DONNA M. PRAISS, Administrative Patent Judges.

OBERMANN, Administrative Patent Judge.

DECISION ON APPEAL
Appellants seek relief from the final rejection of claims 8-14, 23-28,
30, 34-36, and 40-43 directed to a thermosetting one solution-type
composition for a protective film for a color filter.
We AFFIRM.
Appeal 2011-013265
Application 11/339,976

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Claim 8 illustrates the subject matter on appeal and reads as follows:
8. A thermosetting one solution-type composition for a protective
film for a color filter, comprising:

(i) a self-curable copolymer consisting essentially of

a) a repeating unit of Formula I in an amount in a range of about
5 to about 45 mol %, wherein Rl is hydrogen or alkyl; and

b) one or more of the repeating units of Formulae II, III and IV,
wherein each of the repeating units of Formula II, III and IV, if present, is
present in an amount in a range of about 20 to about 85 mol %, wherein R2,
R3 and R4 are each independently hydrogen or alkyl, and p is a positive
integer; and

(ii) an organic solvent.

Appellants argue the pending rejected claims as a group. App. Br. 7.
We select claim 8 as representative of the group. Our analysis of claim 8 is
dispositive of all issues raised in this appeal. Claims 9-14, 23-28, 30, 34-36,
and 40-42 stand or fall with claim 8. 37 C.F.R. § 41.37(c)(1)(vii).
Appeal 2011-013265
Application 11/339,976

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The Examiner rejects claim 8 under 35 U.S.C. § 102(b) as anticipated
by, or in the alternative, under 35 U.S.C. § 103(a) as unpatentable over,
Ueda (US 2002/0172873 A1, published November 21, 2002).1
This appeal turns on the correct construction of the term “consisting
essentially of” that appears in part (i) of claim 8 and, in particular, whether
the additional monomers disclosed in Ueda have been shown to materially
affect the basic and novel characteristics of the copolymer recited in the
claim. The location of the term within part (i) of the claim strongly suggests
that it modifies only the “self-curable copolymer[.]” The claim itself thus
supports the Examiner’s conclusion that the term “consisting essentially of”
modifies only the “self-curable copolymer” of part (i) of claim 8. Ans. 15.
In view of that claim construction, the Examiner correctly concludes
that “the transitional phrase ‘consisting essentially of’ limits the scope of
self-curable copolymer (i) to the” components identified in part (i) of
claim 8 “‘and those that do not materially affect the basic and novel
characteristic(s)’ of self-curable copolymer (i).” Id. at 15-16 (emphasis
omitted). Based on the finding that the record evidence fails to clearly
identify the basic and novel characteristics of the Appellants’ self-curable
copolymer, we find no prejudicial error in the Examiner’s conclusion that

1 Appellants raise no objection to the Examiner’s further rejection of
claims 8-14 and 34-36 for nonstatutory obviousness-type double patenting.
Ans. 13-14. We summarily affirm that rejection because Appellants waive
any objection thereto. See generally App. Br. (raising no arguments
contesting the double patenting rejection); cf. Hyatt v. Dudas, 551 F.3d
1307, 1314 (Fed. Cir. 2008) (explaining that a ground of rejection is waived
when an applicant fails to contest the rejection and that the Board is free to
affirm such an uncontested rejection without considering the merits).
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Application 11/339,976

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“the scope of self-curable copolymer (i) is open to other monomers, so long
as it remains self-curable.” Id.
The Examiner finds that Ueda discloses “a thermosetting one
solution-type composition for a protective film for a color filter” that
includes “a self-curable copolymer” with the repeating units required by part
(i) of claim 8, as well as constituent units of methacryloyl groups, namely,
“monomers (1)(a2), (2)(bl) & (2)(b2), and optional monomers (4) & (5),” and an
inorganic solvent that meets part (ii) of claim 8. Id. at 6-7, 11 (citing Ueda,
Abstract; ¶¶ [0010]-[0021], [0029], [0032], [0042]-[0045], [0049], [0078];
see Ueda ¶¶ [0023], [0027] (further describing the methacryloyl groups).
These findings stand unchallenged by Appellants. App. Br. 7-11.
Regarding Ueda’s addition of methacryloyl units in the copolymer,
the Examiner finds that “the copolymer appears to remain self-curable when
these repeat units are present[.]” Ans. 11 (citing Ueda ¶¶ [0048]-[0049]).
Appellants respond that “the teachings of Ueda” as well as “the knowledge
of the skilled artisan” instruct that “Ueda’s methacryloyl monomers would
materially affect the basic and novel characteristics of the recited
copolymers.” App. Br. 8. For support, Appellants argue about a property of
the overall composition. According to Appellants, “Ueda describes that
when the methacryloyl content” of the copolymer “is less than 5% by mole,
the photocurability of the composition is low and the effect of improving
coating adhesion and resist properties is small.” App. Br. 8 (emphasis
added). Appellants further argue that a skilled artisan would understand that
Ueda’s methacryloyl “groups would have a similar effect, at concentrations
of 5 to 95 mole % in compositions such as those recited in the pending
claims.” Id. (emphasis added). These factual assertions are unsupported by
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Application 11/339,976

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any objective evidence and, therefore, are unconvincing. Appellants provide
no substantiated reason, and it is unclear to us, why the presence of
methacryloyl groups in the copolymer would lower the photocurability of
the specified composition when present in the copolymer at the higher
concentrations of 5 to 95 mole % disclosed in Ueda. App. Br. 8.
In any event, Appellants’ argument is focused on properties of the
“composition” (such as photocurability, adhesion, and resist) that may be
affected by the presence of methacryloyl units in the copolymer. Id.
Appellants argue that Ueda’s “copolymer is present in a thermosetting one
solution-type composition for a protective film for a color filter” and the
“methacryloyl subunits” of that copolymer affect properties of the
composition, namely, “planarity, adhesiveness, transmittance, film strength
and heat resistance.” App. Br. 8 (emphasis omitted). But Appellants direct
us to no persuasive evidence establishing that the additional monomers
disclosed in Ueda materially affect the basic and novel characteristics of the
copolymer in such a way that the overall one solution-type composition is
materially affected. Indeed, Ueda discloses a color filter with a protective
layer, as required by claim 8. Ueda, Abstract.
On this record, the Examiner makes out a prima facie case that the
subject matter of claim 8 would have been obvious over the applied art.
Appellants come forward with no persuasive evidence or argument rebutting
that prima facie case, therefore, we affirm the decision of the Examiner
rejecting claims 8-14, 23-28, 30, 34-36, and 40-43.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
Appeal 2011-013265
Application 11/339,976

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kmm