Ex Parte Miura et al

Patent Trials and Appeals Board

Mar 25, 2019

14116103 - (D) (P.T.A.B. Mar. 25, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/116,103 11/06/2013
78198 7590
Studebaker & Brackett PC
8255 Greensboro Drive
Suite 300
Tysons, VA 22102
03/27/2019
FIRST NAMED INVENTOR
Masaki Miura
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.
008100-1 9480
EXAMINER
LAW, NGA LEUNG V
ART UNIT PAPER NUMBER
1717
NOTIFICATION DATE DELIVERY MODE
03/27/2019 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):
info@sbpatentlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MASAKI MIURA, SHINJI SUZUKI,
KINICHI MORITA, TOSHIKAZU KAWAGUCHI,
and KATSUAKI SHIMAZU
Appeal2018-004314
Application 14/116, 103
Technology Center 1700
Before JEFFREY B. ROBERTSON, MICHAEL G. McMANUS,
and JANEE. INGLESE, Administrative Patent Judges.
McMANUS, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner finally rejected claims 1---6 of Application 14/116, 103
under 35 U.S.C. § 103. Final Act. (April 21, 2017), 2---6. Appellant1 seeks
reversal of these rejections pursuant to 35 U.S.C. § 134(a). We have
jurisdiction under 35 U.S.C. § 6(b).
For the reasons set forth below, we REVERSE.
1 The Appellant is the Applicant, U shio Denki Kabushiki Kaisha, which is
also identified as the real party in interest. Appeal Br. 2.
Appeal2018-004314
Application 14/116, 103
BACKGROUND
The present application generally relates to a surface treatment for a
molded article produced from a material containing a cyclic olefin resin.
Spec. ,r 1. The method includes subjecting the surface of the molded article
to irradiation with vacuum ultraviolet light. Id. ,r 13. A fluorine compound
may subsequently be applied to the surface of the molded article in order to
form a "self-assembled monolayer." Id. ,r,r 15 (subpara. 4), 33.
Claim 1 is illustrative of the subject matter on appeal and is
reproduced below:
1. A surface treatment method for a surface of a molded
article produced from a material containing a cyclic olefin resin,
compnsmg:
irradiating a surface of a molded article produced from a
material containing a cyclic olefin resin with vacuum ultraviolet
light in the atmosphere including oxygen gas to introduce
oxygen to the surface of the molded article, and
forming a self-assembled monolayer on the irradiated
surface.
Appeal Br. 7 (Claims App.).
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Appeal2018-004314
Application 14/116, 103
REJECTIONS
The Examiner maintains the following rejections:
1. Claims 1 and 4---6 are rejected under 35 U.S.C. § I03(a) (pre-AIA)
as obvious over Sugiyama et al., 2 in view of Koloski et al. 3 Final
Act. 2-5.
2. Claims 2 and 3 are rejected under 35 U.S.C. § I03(a) (pre-AIA) as
obvious over Sugiyama in view of Koloski and further in view of
Sekihara et al. 4 Id. at 10-12.
DISCUSSION
Rejection 1. The Examiner rejected claims 1 and 4---6 as obvious over
Sugiyama in view of Koloski. Id. at 2-5. In support of the rejection, the
Examiner found that Sugiyama teaches to modify the surface of a resin
containing cyclic olefin polymers. Sugiyama ,r 19. The Examiner further
found that Sugiyama teaches that a resin base material is irradiated with
ultraviolet rays in an inert gas atmosphere containing water vapor. Id. ,r 37.
The Examiner found, however, that Sugiyama does not teach to irradiate the
resin in an atmosphere including oxygen gas as required by claim 1. Final
Act. 4.
The Examiner found that Koloski teaches a method of modifying a
resin surface by exposure to ultraviolet radiation under an oxygen-containing
atmosphere. Koloski ,r 105. The Examiner additionally found that Koloski
2 JP201102109I A, published Feb. 3, 2011 (English Translation)
("Sugiyama").
3 US 2004/0019143 Al, published Jan. 29, 2004 ("Koloski").
4 US 2010/0012255 Al, published Jan. 21, 2010 ("Sekihara").
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Appeal2018-004314
Application 14/116, 103
teaches that irradiation treatment in ambient air is functionally equivalent to
irradiation in an inert gas atmosphere containing water vapor. Final Act. 4.
On this basis, the Examiner determined that a person of ordinary skill in the
art would have had reason to substitute the ambient air environment taught
by Koloski for the water containing inert gas environment taught by
Sugiyama during UV irradiation. Id.
Appellant argues that Koloski does not teach that an inert gas
atmosphere containing water vapor is equivalent to an oxygen containing
environment. Appeal Br. 4. The Examiner relies upon the following
paragraph as teaching such equivalence.
Alternatively, the metal atoms having the ligands cleaved
therefrom can then be exposed to an oxygen or water containing
gas under conditions effective to cause the metal atoms to
assemble into macromolecular networks. An oxygen or water
containing gas or atmosphere is preferably present while
exposing the inorganic molecules ( diffused into the polymer
matrix) to actinic radiation, so that oxidation or hydrolysis can
occur immediately upon cleavage of the ligand from the metal.
Oxygen or water containing gases suitable for use in this process
include: substantially pure oxygen; oxygen mixed with water
and/or an inert gas, like Ar or N2; or ambient air.
Koloski ,r 105. In regard to the last sentence of the paragraph quoted above,
the Examiner determined that "only inert gas is named other than oxygen
gas in that group, thus, it is clear that the 'water containing gases' of
Koloski is intended to be 'water containing inert gas."' Ans. 6. We do not
adopt such interpretation.
The plain meaning of Koloski is that "oxygen mixed with water
and/or an inert gas, like Ar or N2" may include oxygen gas mixed with
water; oxygen gas mixed with an inert gas; or oxygen gas mixed with both
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Appeal2018-004314
Application 14/116, 103
water and an inert gas. Koloski does not teach to irradiate a resin in an inert
gas atmosphere containing water.
Even if Koloski taught to use an inert gas atmosphere containing
water, there is some question as to whether it would teach that such an
environment is equivalent to an atmosphere including oxygen gas. Koloski
teaches that "[ a ]n oxygen or water containing gas or atmosphere is
preferably present while exposing the inorganic molecules ... to actinic
radiation, so that oxidation or hydrolysis can occur immediately upon
cleavage of the ligand from the metal." Koloski ,r 105 ( emphases added).
This indicates that oxidation occurs in oxygen containing environments and
hydrolysis occurs in water containing environments. This further
preponderates against a finding of functional equivalence. Moreover,
Koloski has not been shown to concern the same chemical processes as
Sugiyama. A finding of functional equivalence in one technical context
( such as that of Koloski) does not necessarily require a finding of
equivalence in a separate context.
In view of the foregoing, we determine that Appellant has shown
reversible error in the rejection at issue.
Rejection 2. The Examiner rejected claims 2 and 3 as obvious over
Sugiyama in view of Koloski and further in view of Sekihara. Final Act. 5-
6. Claims 2 and 3 depend from claim 1. Appellant seeks reversal of this
rejection on the same basis as with regard to Rejection 1. Appeal Br. 5. As
we have found such argument to be persuasive with regard to the rejection of
claims 1 and 4---6, we similarly determine that Appellant has shown error
with regard to the reversal of claims 2 and 3.
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Application 14/116, 103
CONCLUSION
The rejection of claims 1 and 4---6 as obvious over Sugiyama in view
of Koloski is reversed. The rejection of claims 2 and 3 as obvious over
Sugiyama in view of Koloski and further in view of Sekihara is reversed.
REVERSED
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