Ex Parte Ohishi et al

Patent Trial and Appeal Board

Oct 11, 2017

12995479 (P.T.A.B. Oct. 11, 2017)

United States Patent and Trademark Office
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.
12/995,479 12/01/2010 Michihiro Ohishi 64397US005 1150
32692 7590 10/13/2017
3M INNOVATIVE PROPERTIES COMPANY
PO BOX 33427
ST. PAUL, MN 55133-3427
EXAMINER
ROSE, ROBERT A
ART UNIT PAPER NUMBER
3727
NOTIFICATION DATE DELIVERY MODE
10/13/2017 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 MICHIHIRO OHISHI, YOKO TOGASHI, and
YASUHIKO NAGANO
Appeal 2016-002598
Application 12/995,479
Technology Center 3700
Before MICHELLE R. OSINSKI, JEFFREY A. STEPHENS, and
ERIC C. JESCHKE, Administrative Patent Judges.
JESCHKE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Michihiro Ohishi et al. (“Appellants”)1 seek review under 35 U.S.C.
§ 134(a) of the Examiner’s decision, as set forth in the Final Office Action
dated January 7, 2015 (“Final Act.”), and as further explained in the
Advisory Action dated March 26, 2015, rejecting claims 1—3, 5, and 7—16.
Claims 4 and 6 have been cancelled. We have jurisdiction under 35 U.S.C.
§ 6(b).
We reverse.
1 Appellants identify 3M Innovative Properties Company as the real
party in interest. Appeal Br. 3.
Appeal 2016-002598
Application 12/995,479
BACKGROUND
The disclosed subject matter “relates to an abrasive material product.”
Spec. 1,1. 5. Claims 1,11, and 15 are independent. Claim 1 is reproduced
below, reformatted for clarity, and with emphasis added and bracketed
letters and numbers added to identify certain language:
1. An abrasive material product comprising
[A] a substrate and
[B] an abrasive part having a plurality of
shaped structures projecting from the substrate,
wherein the abrasive part comprises
(1) an upper layer composed of a cured
material of a mixture containing abrasive
particles dispersed in a phenol resin and
(2) a lower layer composed of a cured
material of a binder agent, the binder agent
comprising
[a] a thermosetting epoxy resin
and
[b] a photocurable acrylic
compound wherein the photocurable
acrylic compound comprises a
monofunctional acrylic monomer and
a polyfunctional acrylic monomer.
REJECTION
Claims 1—3, 5, and 7—16 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Ohishi (US 2004/0031205 Al, published Feb. 19, 2004)
and Kendall (US 6,848,986 B2, issued Feb. 1, 2005).
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Appeal 2016-002598
Application 12/995,479
DISCUSSION
Independent claim 1 recites a “binder agent comprising a
thermosetting epoxy resin and a photocurable acrylic compound.” Appeal
Br. 14 (Claims App.). Independent claim 11 recites a “binder agent coating
solution comprising a thermosetting epoxy resin and a photocurable acrylic
compound.” Id. at 15. Independent claim 15 recites a “first binder material
of [a] base portion compris[ing] a thermosetting epoxy resin and a
photocurable acrylic compound.” Id. at 16.
In the Rejection (which addresses all pending claims as a group), the
Examiner relied on Ohishi for certain limitations but stated that “Ohishi is
silent about the use of a two-part binder agent in the lower layer containing a
radiation-curable monomer or oligomer and thermosetting resin.” Final Act.
2. The Examiner found, however, that Kendall “teaches such a combination
radiation and thermal curable binder, and is used in the same location of the
abrasive tool, for supporting the abrasive layer.” Id. at 2—3. According to
the Examiner, “[t]o simply make the lower layer binder in Ohishi of a two-
part radiation-curable monomer or oligomer and thermosetting resin, as
taught by Kendall” would have been obvious for one of ordinary skill in the
art at the time of the invention for certain reasons. Id. at 3.
Regarding claim 1, Appellants argue that “the binder precursor of
Kendall is a singular material that is both thermal-curable and photo­
curable.” Appeal Br. 8 (discussing Kendall, col. 7,11. 42—57). Appellants
contend that “[wjhile the singular binder precursor of Kendall may be
capable of both thermal curing and radiation curing, Kendall does not
disclose ‘adding’ a distinct thermosetting resin (epoxy or otherwise) to a
distinct radiation curable compound.” Id. In the Reply Brief, Appellants
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Appeal 2016-002598
Application 12/995,479
argue that “[a]fter repeated requests throughout prosecution, the Examiner’s
Answer again fails to identify a thermosetting epoxy resin, as claimed, in
either of the cited references.” Reply Br. 3. Appellants rely on the same
argument for independent claims 11 and 15. See Appeal Br. 11, 12.
In the Office Action, the Examiner does not provide any citations to
Kendall or provide any specificity beyond the statements above. See Final
Act. 2—3. In the Answer, the Examiner repeats the findings regarding
Kendall from the Office Action, and adds that Kendall “explicitly suggests]
at column 1, lines 60-65, that the two components can be separate and
distinct compounds, rather than having both functionalities on the same
compound.” Ans. 3.
Having considered the passage cited by the Examiner (and the
surrounding discussion), we agree with Appellants that the Examiner has not
provided sufficient explanation of the findings regarding the “thermosetting
epoxy resin” recited in claims 1,11, and 15. See 37 C.F.R. § 1.104(c)(2)
(2014) (“When a reference is complex or shows or describes inventions
other than that claimed by the applicant, the particular part relied on must
be designated as nearly as practicable. The pertinence of each reference, if
not apparent, must be clearly explained . . . .” (emphasis added)). Although
the discussion highlighted by the Examiner does disclose “[combining
curing mechanisms . . . , for example, by mixing materials with two types of
functionality on one structure or by mixing different materials having one
type of functionality” (Kendall, col. 1,11. 57—61), the Examiner has not
demonstrated that this disclosure explicitly or implicitly requires the
presence or use of a “thermosetting epoxy resin.”
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Appeal 2016-002598
Application 12/995,479
For these reasons, we do not sustain the rejection of independent
claims 1,11, and 15, and also do not sustain the rejection of dependent
claims 2, 3, 5, 7—10, 12—14, and 16.
DECISION
We reverse the decision to reject claims 1—3, 5, and 7—16.
REVERSED
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