Ex Parte Lee et al

Board of Patent Appeals and Interferences

Jan 16, 2009

10844338 (B.P.A.I. Jan. 16, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte JUNG WOO LEE, MOON BOK LEE
HAE SANG JUN and SANG PIL KIM
____________________

Appeal 2009-0236
Application 010/844,338
U.S. Patent Publication 2005/0118443
Technology Center 1700
____________________

Decided: January 16, 2009
____________________

Before: JAMES T. MOORE, Vice Chief Administrative Patent Judge,
and FRED E. McKELVEY, Senior Administrative Patent Judge,
and MICHAEL P. TIERNEY, Administrative Patent Judges.

McKELVEY, Senior Administrative Patent Judge.

DECISION ON APPEAL

A. Statement of the case 1
Toray Saehan Inc. ("Toray"), the real party in interest, seeks review 2
under 35 U.S.C. § 134(a) of a final rejection (mailed 1 December 2006) of 3
claims 8-11 as being unpatentable under (1) 35 U.S.C. § 112, first paragraph, 4

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for lack of enablement, and (2) 35 U.S.C. § 112, second paragraph, as being 1
indefinite. 2
We have jurisdiction under 35 U.S.C. § 134(a). 3
B. Findings of fact 4
The following findings of fact are believed to be supported by a 5
preponderance of the evidence. To the extent that a finding of fact is a 6
conclusion of law, it may be treated as such. Additional findings as 7
necessary may appear in the Discussion portion of the opinion. 8
Specifications 9
Due to the nature of the prosecution, we refer to two specifications. 10
Specification 1 is the specification as originally filed on 13 May 2004 11
and published as U.S. Patent Publication 2005/0118443 A1 on 2 June 2005. 12
Specification 2 is a substitute specification filed on 13 September 13
2006. 14
The invention 15
In general, the invention relates to a film or sheet comprising a 16
silicone release coextruded polyester film or sheet which is made by 17
applying and drying "special silicone liquid" on at least one surface of the 18
film or sheet. Specification 1, page 2:6-9. 19
According to Specification 1, the silicone liquid preferably comprises 20
(Specification 1, page 3:2-5; page 4:34-37): 21
1. 4 to 30 weight % hexenyl polysiloxane; 22
2. 0.02 to 1 weight % of hydrogen polysiloxane; 23
3. 0.005 to 2 weight % of an "olgano [sic—organo] resin 24
having a vinyl radical; 25

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4. 0.0005 to 0.005 weight % of a chelate platinum catalyst; and 1
5. water and polyvinyl alcohol making up the rest of the silicon 2
liquid. 3
The enablement issue centers around the nature of the "organo resin 4
having a vinyl radical." 5
According to Toray [matter in brackets added]: 6
The organo resin having the vinyl radical controls 7
flexibility of a silicone polymer layer and … [through use of the 8
organo resin having vinyl radicals it] was possible to thereby 9
achieve stabilization in physical properties of the silicone layer. 10
The organo resin having the vinyl radical is a spherical structure 11
with the silicone and oxygen atoms which have a 3-dimensional 12
liking chain and contains the vinyl radical at the end of the 13
structure. When the amount of the organo resin … is below 14
0.005 weight %, flexibility of the polyester and silicone layer 15
was good and thereby solvent resistance was bad, causing 16
[undesirable] rub-off and lowered stabilization for pass-the-17
time. When the amount of [organo resin is] more than 2 weight 18
%, it was not desirable because [1] inhibition of reaction size of 19
hexenyl polysiloxane and hydrogen polysiloxane and [2] 20
excessive inhibition of flexibility of the silicone layer, causing 21
increased release force. 22
Specification 1, page 5:18-26. 23
Insofar as we can tell on this record, Toray seems to have reached its 24
conclusions relating the amount of organo resin to be used in the silicone 25

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release liquid based on what we believe to be actual (as opposed to 1
prophetic) experimental data set out in the specification. 2
For example, Embodiments 1-1 through 1-4 describe testing of 3
solvent resistance and rub-off after thermal ripening [i.e., drying the silicone 4
release liquid] vis-à-vis the amount of organo resin having vinyl radicals. 5
Specification 1, page 6:22 through page 7:last line. 6
Item C of the release liquid composition is an undefined organo resin 7
having vinyl radicals. 8
Moreover, insofar as we can tell, no specific organo resin is described 9
anywhere in Specification 1. 10
The results reported are as follows: 11
12
Embodiment Amount of C Solvent Rub-off 13
Resistance 14
15
1-1 0.03 Very good Very good 16
1-2 0.05 Very good Good 17
1-3 0.02 Very good Very good 18
1-4 0.01 Good Good 19
Each of embodiments 1-1 through 1-4 falls within the claimed organo 20
resin range of 0.005 to 2 weight %. 21
Specification 2 22
There came a time during prosecution when Toray filed a "substitute" 23
specification, i.e., Specification 2. 24
Specification 2 was filed on 13 September 2006. 25
Paragraph 0027 of Specification 2 in part states the following: 26

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The organo resin having the vinyl radical is a spherical structure 1
with the silicone and oxygen atoms which have a 3-dimentional 2
linking chain and contains the vinyl radical at the end of the 3
structure, Viz.: 4
5
{The graphic above is a representation of a molecule containing 6
silicon and oxygen atoms linked to a vinyl radical} 7
Upon presentation of this "new" information, the Examiner forthwith 8
entered a new matter rejection. 9
In response to the new matter rejection, Toray maintained that those 10
skilled in the art know that the organo resin has the structure which Toray 11
had now added. 12
In support of its position, Toray cited four documents. 13
1. Hurford, U.S. Patent 5,468,828; 14
2. Chung, U.S. Patent 5,696,211; 15
3. Korean Patent Registration 10-0620956; and 16
4. Kuo, Silicon Release Coatings for the Pressure Sensitive 17
Industry—Overview and Treads. 18
These four documents are said to show the level of skill in the art. 19
Appeal Brief, page 12. 20

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The Korean Patent Registration 1
The Korean Patent Registration is Toray's priority document and is 2
written in Korean. It is not prior art. We decline to give any weight to the 3
Korean Patent Registration. It was apparently cited by Toray to show that 4
an addition to an original Korean patent application along the lines made in 5
the application before us did not meet with resistance in the Korean Patent 6
Office. What the Korean Patent Office may be willing to accept as possible 7
"new matter" is of no concern in the USPTO. 8
Kuo 9
We are not certain when the Kuo article was published. Hence, we do 10
not know if it is prior art which can help support enablement. Cf. In re 11
Glass, 492 F.2d 1228, 1232 (CCPA 1974). For the purpose of deciding the 12
enablement issue before us, we will assume Kuo was published prior to the 13
time Toray filed its application. 14
According to Kuo, "[e]ach type of silicone release coating 15
demonstrates unique release behavior." Page 1. Data in Kuo Fig. 1 is 16
consistent with release behavior being a function of the silicone release 17
coating. 18

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1
{Figure 1 above is a graph showing a "Release Profile 2
of a Hot-Melt Adhesive Tape from Various Silicone 3
Release Coatings" with Peel Force on the vertical axis 4
and Peel Speed on the horizontal axis} 5
Kuo reveals that from a silicone architecture viewpoint, crosslinking 6
density of a polysiloxane is a principal factor affecting release force. Page 2. 7
Kuo goes on to state (page 2): 8
In general, high-crosslinking-density networks yield a rigid 9
hard coating layer, which has a flat release force profile at low 10
to high peeling speeds. In contrast, a low-crosslinking-density 11
network from a higher-molecular-weight polymer has greater 12
flexibility of the polymer chains. It yields a softer, more elastic 13
coating, as shown in Figure 2. The greater flexibility allows 14
more penetration or interaction with the adhesive polymer 15
chains than would occur with a highly cross-linked silicone 16

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coating. The resulting release is initiated at how release force 1
but demonstrates high release force at high-speed peeling. 2
3
{Figure 2 above is a graph of the "Effect of Crosslinking 4
Density on the Release Profile of Silicone Release Coatings" 5
with Peel Force on the vertical axis and 6
Peel Speed on the horizontal axis} 7
According to Kuo (page 3): 8
The release additive, or controlled release additive (CRA), is 9
the other factor affecting the release profile of the silicone 10
formulation. The most widely used high-release additives 11
(HRs) are based on MQ-type silicone resins, shown in Figure 4. 12

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1
{Figure 4 above shows various depictions of a "Silicone 2
Release Coating with Resin Modifier"} 3
The formulas in the upper left-hand and center left show silicone 4
resins with vinyl groups (―CH═CH2). The formula in the center right 5
shows three silicone resins cross-linked through reaction of the vinyl groups. 6
Hurford 7
Hurford describes a release modifier for silicone release compositions 8
which comprises an MQ resin (col. 2:23-26): 9
SiO2 (Q) and R3SiO1/2 (M). 10
See also col. 1:55-57. 11

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The R group must contain at least one vinyl group (―R'CH═CH2 or 1
―OR'CH═CH2). Col. 2:33-36 and col. 3:47-50. 2
Based on the scope of Hurford claim 1 and the Hurford description in 3
general, it is apparent that a lot of MQ resins are known. 4
Chung 5
Chung also describes and claims MQ resins. 6
According to Chung, conventional MQ resins do not provide industry 7
with solutions to all its requirements. Col. 2:53-55. 8
Chung describes fluorosilicone MQ compositions which are said to 9
have improved release characteristics. Col. 3:33-36. The suitable Chung 10
fluorosilicone compounds have the formula shown at col. 3:45 and include a 11
substantial number of "species" falling within the scope of the formula. 12
Claims 13
Claims 8-11 are on appeal. While claims 9-11 are mentioned 14
separately in the Appeal Brief, the fact is that the appeal turns on enablement 15
with respect to the "organo resin having a vinyl radical", a limitation which 16
appears in all the claims. We therefore reproduce claim 8 [bracketed matter 17
and some indentation added]. 18
8. A silicon release polyester film of a coextruded 19
polyester film or sheet, one surface of the film or sheet being 20
coated with silicone release liquid, and characterized in that: 21
the coextruded polyester film or sheet is coextruded 22
together with PET-I, PET-G or a copolymer thereof so that the 23
PET-I, PET-G or copolymer thereof, comprises an outmost 24

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layer of the surface of the coextruded polyester film or sheet 1
which is silicone-coated, 2
in that the silicone release liquid comprises 3
[1] 4 to 30 weight % of hexenyl polysiloxane, 4
[2] 0.02 to 1 weight % of hydrogen polysiloxane, 5
[3] 0.005 to 2 weight % of organo resin having a 6
vinyl radical, 7
[4] 0.0005 to 0.005 weight % of chelate platinum 8
catalyst, and 9
[5a] water and [5b] polyvinyl alcohol for residual 10
weight %, and 11
in that the organo resin having the vinyl radical, has a 12
spherical shaped structure in which silicon and oxygen atoms 13
comprise a 3-D[imensional] linking ring with the vinyl 14
radical[s] at the end of the linking ring. 15
Examiner's rejections 16
The Examiner withdrew the "new matter" rejection along with another 17
rejection, but maintained two rejections in the Examiner's Answer. 18
(1) Enablement 19
Claims 8-11 have been rejected under 35 U.S.C. § 112 for lack of 20
enablement. 21
The Examiner found that the organo resin is a critical component of 22
Toray's invention. Specification 2, ¶¶ 0027 and 0028; Examiner's Answer, 23
page 3. 24

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The Examiner further found that as filed Specification 1 failed to 1
identify and/or exemplify the organo resin. Examiner's Answer, page 3. 2
The Examiner still further found that in the absence of any 3
identification and/or exemplification of the critical organo resin, a person of 4
ordinary skill in the art would be required to "carryout burdensome 5
experiments to practice the [claimed] invention." Examiner's Answer, 6
page 3. 7
Toray agrees that given the original disclosure some experimentation 8
would be required. Examiner's Answer, page 4; Appeal Brief, page 13, 9
unnumbered lines 16-19 ("some experimentation would be required"). See 10
also Reply Brief, page 1, last paragraph. 11
(2) Indefiniteness rejection 12
Claims 8-11 are also rejected under 35 U.S.C. § 112 as being 13
indefinite. 14
The Examiner found that the claims fail to specify what is being 15
coextruded with the recited polyester layer. Examiner's Answer, page 4. 16
The Examiner therefore concluded that the claims were indefinite. 17
C. Discussion 18
The enablement rejection 19
During examination of a patent when an examiner rejects a claim 20
based on a lack of enablement, the examiner states the reason for the 21
rejection. In re Marzocchi, 439 F.2d 220 (CCPA 1971). The applicant is 22
then required to tell the examiner why the rejection is wrong. 37 C.F.R. 23
§ 1.111(b) (2008). If the examiner agrees, the rejection is withdrawn. If not, 24
a final rejection is entered. On appeal to the Board, an examiner's final 25

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rejection is presumed to be correct and, to secure reversal, the applicant must 1
establish that the examiner erred. Ex parte Yamaguchi, Appeal 2007-4412, 2
slip op. at 5, 23 (Bd. Pat. App. & Int. Aug. 29, 2008) (on appeal, applicant 3
must show examiner erred). See also Ex parte Fu, Appeal 2008-0601, slip 4
op. at 5, 20 (Bd. Pat. App. & Int. Mar. 31, 2008); Ex parte Catan, Appeal 5
2007-0820, slip op. at 3, 21 (Bd. Pat. App. & Int. Jul. 3, 2007); Ex parte 6
Smith, Appeal 2007-1925, slip op. at 4, 9, 23 (Bd. Pat. App. & Int. Jun. 25, 7
2007). 8
The Examiner found that Specification 1, as filed, fails to identify or 9
exemplify a critical element of the claimed invention, viz., an organo resin 10
having a vinyl radical. Examiner's Answer, page 3. Based on the record 11
before him, the Examiner further found that a person of ordinary skill in the 12
art would have to carryout burdensome experiments to practice the 13
invention. Id. 14
Toray's initial salvo against the rejection is that "undue 15
experimentation" is the standard and "undue experimentation" is said to go 16
"way beyond being just "burdensome." Appeal Brief, page 13. Toray goes 17
on to say that "[t]here is nothing that requires the patent specification to be a 18
blueprint or recipe which can be followed blindly thus making life easy." Id. 19
Nevertheless, Toray concedes "some experimentation would be required …" 20
Id. Because the organo resin must have a spherical structure which silicone 21
and oxygen atoms and oxygen atoms which compose a 3-dimensional 22
linking chain and contain the vinyl radicals "at the end of the structure", 23
Toray reasons that experimentation would not be undue. Moreover, counsel 24
for Toray alleges that "in R&D laboratories months of extensive 25

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experimentation wherein hundred of different formulations are prepare[d] 1
and tested, is commonplace." Appeal Brief, page 14. However, an assertion 2
by counsel cannot take the place of evidence in the record. In re Cole, 326 3
F.2d 769, 773 (CCPA 1964) (argument of counsel in a brief does not take 4
place of evidence). Toray fails to support counsel's assertion with evidence 5
related to R&D activities in the field of the claimed invention. 6
The legal principles for evaluating an undue experimentation issue are 7
set out, inter alia, in In re Wands, 858 F.2d 731 (Fed. Cir. 1988). 8
Enablement is not precluded by the necessity for some experimentation, 9
such as routine screening. Id. at 736-37. However, experimentation must 10
not be "undue." Id. at 737. The key word is "undue" not "experimentation." 11
Id. 12
What constitutes undue experimentation in a given case requires the 13
application of reasonableness having due regard for the nature of the 14
invention and the state of the art. Id. at 737: Factors to be considered 15
include (1) the quantity of experimentation necessary; (2) the amount of 16
direction or guidance presented; (3) the presence or absence of working 17
examples, (4) the nature of the invention, (5) the state of the prior art, (6) the 18
relative skill of those in the art, (7) the predictability or unpredictability of 19
the art, and (8) the breadth of the claims. Id. 20
In the appeal before us, the Examiner addressed Factor (3)—the 21
absence of a working example. While superficially Embodiments 1-1 22
through 1-4 appear to be working examples, penetrating analysis shows 23
otherwise. Neither Specification 1 nor Specification 2 identifies any 24
particular organo resin. Rather, the organo resin is identified as item C 25

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which is said to be an "olgano [sic—organo] resin having vinyl radical." 1
Specification 1, page 1, Table 1. Accordingly, in this case one skilled in the 2
art is not given a starting point from which to begin any experimentation. 3
One skilled in the art left to guess what organo resin Toray used in 4
Embodiments 1-1 through 1-4. 5
Why Toray did not describe the organo resin which was actually used 6
in Embodiments 1-1 through 1-4 is unknown. There is something wrong 7
with an applicant presenting experimental data in a specification and failing 8
to state the precise nature of an organo resin used to obtain the experimental 9
data. Whether intentional or inadvertent, withholding the precise nature of 10
the organo resin used in experimental work set out in the specification is not 11
consistent with the objectives of the patent system, particularly where an 12
applicant claims a new use of the organo resin. Factor 3 weighs heavily 13
against Toray in this case. 14
Since Toray failed to identify the precise organo resin used in 15
Embodiments 1-1 through 1-4, we find that it also failed to provide 16
appropriate "direction or guidance" to carry out those embodiments. As 17
noted above, one skilled in the art would have to guess what organo resin 18
Toray used. We find one skilled in the art could not "repeat" Embodiments 19
1-1 through 1-4 and obtain the "results" reported in the data associated with 20
those embodiments. Factor (2) also weights against Toray. 21
There is evidence in the record relevant to Factor (7)—the 22
predictability or unpredictability of the art. Specification 1 states that one 23
object of the invention is to provide a "special" silicone release polyester 24
film that is "suitable for electronic use and other uses requiring uniform 25

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release capability and that can solve the problem of weakening adhesiveness 1
on a[n] adhesive layer combined with a silicone layer resulting from silicone 2
transfer in the manufacturing process of the film and the problem of bad 3
printing on the surface opposite to the adhesive layer." Specification 1, 4
page 2:13-17. 5
The art made of record by Toray to establish that organo resins having 6
a vinyl radical and a spherical structure are generally known demonstrates 7
that conventional MQ resins do not always provide industry with solutions 8
to its requirements. Chung, col. 2:51-53. An early Hurford patent (based on 9
an application filed in 1994), and the subsequent Chung patent (based on an 10
application filed in 1996), reveal that a variety of MQ resins are known. 11
However, to achieve its objectives, Chung had to use a fluorosilicone. Kuo 12
reveals that different types of silicone coatings have significantly different 13
influences over release force. Kuo, page 1. Kuo also reveals that the degree 14
of cross-linking (achieved presumably through the vinyl groups) is a factor 15
one skilled in the art would consider. Kuo, page 2. 16
The Examiner found that Toray fails to describe the vinyl content of 17
the organo resin. Examiner's Answer, page 5. One skilled in the art would 18
understand that the degree of cross-linking would be a function of the 19
number of vinyl groups, a matter which, in this case, would require further 20
experimentation in order to achieve Toray's objectives. While Kuo states 21
that MQ-type silicone resins are the most widely used, Kuo does not reveal 22
what MQ resin would be used in the context of Toray's invention or to 23
accomplish Toray's objectives. Kuo, page 4. On page 6, Kuo reveals that 24
release is affected by many physical, chemical and testing factors, including 25

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(1) the nature of the adhesive and silicone coating, (2) factors associated 1
with face stock, (3) the lamination and converting process, e.g., coater 2
design, web temperature and speed, and (4) the liner stripping process, i.e., 3
peeling speed and peeling angle. The record suggests that the art is not as 4
predictable as Toray would have us believe. In fact, we find that the art is 5
generally unpredictable art. Factor (7) weighs against Toray. 6
Factor (1) relates to the quantity of experimentation which might be 7
necessary. Kuo suggests various factors which would have to be taken into 8
consideration in designing an experimental program. Toray, of course, did 9
experimental work but did not favor the public or the USPTO with the 10
precise organo resin used to conduct those experiments. While we cannot 11
make explicit findings on the quantity of experimentation which would be 12
necessary, we cannot say that this case involves mere routine 13
experimentation. 14
Toray attacks the Examiner's finding that "burdensome" 15
experimentation would be necessary. The way Toray puts it is "a lot of" 16
does not necessarily mean "undue." Appeal Brief, page 14. We have no 17
trouble whatsoever in finding that in using the language "burdensome" the 18
Examiner meant "undue." We suggest Toray's semantics attack is fully 19
answered by an objective consideration of the evidence which Toray placed 20
in the record. On the record before us, we find that substantial 21
experimentation more likely than not (the preponderance standard) would be 22
necessary to practice the invention defined by the claims on appeal. 23
Factors (5) and (6) relate to the state of the prior art and the relative 24
skill in the art. In this case, the relative skill can be determined from the two 25

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patents and the Kuo article. The prior art reveals that several factors are to 1
be considered and that industry does not always achieve its objectives. For 2
example, Chung found that a fluorinated organo resin was necessary to 3
overcome some prior art problems. 4
Based on the record before us, Toray has not demonstrated that the 5
Examiner erred in making the enablement rejection. 6
We have considered Toray’s remaining arguments and find none that 7
warrant reversal of the Examiner’s enablement rejection. Cf. Hartman v. 8
Nicholson, 483 F.3d 1311, 1315 (Fed. Cir. 2007). 9
The indefiniteness rejection 10
In view of our affirmance of the lack of enablement rejection, we find 11
it unnecessary to reach the indefiniteness rejection. 12
D. Decision 13
Toray has not sustained its burden on appeal of showing that the 14
Examiner erred in rejecting the claims on appeal as being unpatentable for 15
lack of enablement. 16
Upon consideration of the appeal, and for the reasons given herein, 17
it is 18
ORDERED that the decision of the Examiner rejecting 19
claims 8-11 based on lack of enablement is affirmed. 20
FURTHER ORDERED that we do not reach the rejection based 21
on indefiniteness. 22
FURTHER ORDERED that no time period for taking any 23
subsequent action in connection with this appeal may be extended under 24
37 C.F.R. § 1.136(a)(1)(iv) (2008). 25

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AFFIRMED

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