Ex Parte Salnikov

Patent Trial and Appeal Board

Feb 7, 2017

12625002 (P.T.A.B. Feb. 7, 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.
12/625,002 11/24/2009 Dmitriy SALNIKOV 64718US005 9391
32692 7590 02/09/2017
3M INNOVATIVE PROPERTIES COMPANY
PO BOX 33427
ST. PAUL, MN 55133-3427
EXAMINER
FUNG, CHING-YIU
ART UNIT PAPER NUMBER
1787
NOTIFICATION DATE DELIVERY MODE
02/09/2017 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 DMITRIY SALNIKOV
Appeal 2015-004495
Application 12/625,002
Technology Center 1700
Before ROMULO H. DELMENDO, DONNA M. PRAISS, and
JENNIFER R. GUPTA, Administrative Patent Judges.
DELMENDO, Administrative Patent Judge.
DECISION ON APPEAL
The Applicant (hereinafter the “Appellant”)1 appeals under 35 U.S.C.
§ 134(a) from a final decision of the Primary Examiner to reject claims 1—8,
10, and 11.2 We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 The Appellant states that the real parties in interest are: 3M Company and
its affiliate 3M Innovative Properties Company (Amended Appeal Brief
filed December 3, 2014, hereinafter “Appeal Br.,” 2).
2 Appeal Br. 2—6; Reply Brief filed March 5, 2015 (hereinafter “Reply Br.,”
2—3); Final Office Action (notice delivered electronically on February 27,
2014), hereinafter “Final Act.,” 2—11; Examiner’s Answer (notice delivered
electronically on January 5, 2015), hereinafter “Ans.,” 2—13.
Appeal 2015-004495
Application 12/625,002
BACKGROUND
The subject matter on appeal relates to a layered construction in which
a surfacing film is provided for a polymeric fiber-reinforced composite, the
surfacing film being selected such that the storage modulus of the composite
bearing the surfacing film is not elevated more than by a specified
percentage relative to the storage modulus of the bare composite
(Specification, hereinafter “Spec.,” 1,11. 13—26).3 According to the
Appellant {id. at 5,11. 3—5), “the ability of the cured composite articles with
surfacing film according to the [Specification] to resist microcracking is
related to elastic (storage) modulus (G’) of the surfacing film.”
Representative claim 1 is reproduced from page 7 of the Appeal Brief
(Claims Appendix, emphasis added), as follows:
1. A layered construction having a storage modulus G’t25 at
25 °C, comprising:
a) a cured polymeric composite having a storage modulus
G’S25 at 25 °C; and
b) a cured surfacing film which comprises a cured
chain-extended epoxy resin bound thereto;
wherein G’t25 is no more than 118% of GyS25\
wherein the cured polymeric composite comprises a
reinforcement component selected from the group consisting of
metal, wood, polymer, carbon particles, carbon fibers, glass
particles, glass fibers, and combinations thereof; and
wherein the cured polymeric composite comprises a
matrix component selected from the group consisting of
polyester, vinyl ester, epoxy, phenolic, polyimide, polyamide,
3 The Specification states that “[e]lastic (storage) modulus (G’) may
be tested by conventional methods, typically Rheometric Dynamic Analyzer
[RDA], torsion mode, as described in the Examples” (Spec. 5,11. 5—7). In
the examples, “RDA test methodology G’ is defined as the elastic (storage)
modulus = cos 8 (x/y) where 8 is a phase angle (phase shift between stress
and strain vectors), x is stress and y is strain” {id. at 16,11. 8—10).
2
Appeal 2015-004495
Application 12/625,002
polypropylene, PEEK, and combinations thereof.
REJECTION ON APPEAL
Claims 1—8, 10, and 11 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Salnikov et al.4 (hereinafter “Salnikov”) in view of Li et
al.5 (hereinafter “Li”), Zamitz,6 and Taylor et al.7 (hereinafter “Taylor”), as
evidenced by Reinshagen et al.8 (hereinafter “Reinshagen”) and Watkins9
(hereinafter “Tech Notes”) (Ans. 2—13; Final Act. 2—11).
DISCUSSION
The Appellant argues claims 1—8, 10, and 11 together as a single
group (Appeal Br. 3—6). Therefore, we confine our discussion to
representative claim 1, which we select as representative pursuant to
37 C.F.R. § 41.37(c)(l)(iv). As provided by this rule, claims 2—8, 10, and 11
stand or fall with claim 1.
The dispositive issue in this appeal is whether the Examiner presented
a sufficient and reasonable basis upon which to shift the burden to the
Appellant to come forward with evidence to show that Salnikov’s layered
construction, or as modified in view of the other references, would not
necessarily or inherently possess the G’t25 to G’S25 relationship recited in
4 US 2006/0182949 Al, published August 17, 2006.
5 US 2007/0129509 Al, published June 7, 2007.
6 Charles Zamitz, “Epalloy™ 7200 for use as an Accelerator in Elevated
Temperature Cure Epoxy System,” CVC Thermoset Specialties: Technical
Service Report TSR082405-CZ (created March 15, 2005; exact publication
date unknown).
7 US 2002/0182339 Al, published December 5, 2002.
8 US 3,975,322, issued August 17, 1976.
9 Michael J. Watkins, Tech Notes: Comparison of Aliphatic and Aromatic
Epoxy Modifiers, Cypress Chemical Consulting, Inc. (copyrighted 2011,
exact publication date unknown).
3
Appeal 2015-004495
Application 12/625,002
claim 1 (compare Appeal Br. 3—5 and Reply Br. 2—3 with Ans. 7—9 and
Final Act. 6—7). For the reasons discussed below, we discern no reversible
error in the Examiner’s shifting of the burden to the Appellant to show that
Salnikov would not necessarily or inherently possess the G’t25 to G’S25
relationship recited in claim 1. In re Jung, 637 F.3d 1356, 1365 (Fed. Cir.
2011).
It is well-settled that inherency cannot be established by mere
probabilities or possibilities. In re Robertson, 169 F.3d 743, 745 (Fed. Cir.
1999). But “[wjhere ... the claimed and prior art products are identical or
substantially identical, or are produced by identical or substantially identical
processes, the PTO can require an applicant to prove that the prior art
products do not necessarily or inherently possess the characteristics of his
claimed product.” In re Best, 562 F.2d 1252, 1255 (CCPA 1977). Accord In
re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990) (“[W]e conclude that the
Board correctly found that the virtual identity of monomers and procedures
sufficed to support a prima facie case of unpatentability of Spada’s polymer
latexes . . . .”). “Whether the rejection is based on ‘inherency’ under
35 U.S.C. § 102, on ‘prima facie obviousness’ under 35 U.S.C. § 103,
jointly or alternatively,[] the burden of proof is the same, and its fairness is
evidenced by the PTO’s inability to manufacture products or to obtain and
compare prior art products.” Best, 562 F.2d at 1255 (footnote omitted).10
10 In certain portions of the Answer explaining the inherency position, the
Examiner appears to have focused on certain preferred embodiments
described in the Specification (e.g., KANE ACE® MX 120 core shell
toughening agent in unmodified liquid epoxy resin based on bisphenol A
described on page 5, line 31 to page 6, line 1 and page 7, lines 26—28). See,
e.g., Answer, pages 4 and 6—7, discussing Li’s disclosure relating to MX-
120 (Kaneka Corporation) rubber particles in a core-shell structure in an
4
Appeal 2015-004495
Application 12/625,002
We apply these principles to the facts of the present case. Salnikov,
which lists the Appellant as a joint inventor, describes a surfaced polymeric
composite article including a curable composition applied on least a portion
of at least one surface of a curable or cured polymeric composite article
(Abst.; || 17—21). As found by the Examiner (Ans. 2) (citing Salnikov
|| 29-33), Salnikov describes a cured polymeric composite article
comprising reinforcing fibers, such as carbon or graphite fibers, embedded
in a thermosetting resin, such as an epoxy resin. That finding is not disputed
(Appeal Br. 3—5). In addition, the Examiner found that Salnikov discloses
the curable composition (i.e., the surfacing film) to contain, inter alia, epoxy
resin (Ans. 3). Again, that finding is not disputed (Appeal Br. 3—5).
The Examiner also relied on Salnikov’s Examples 1—3 and found that
these examples disclose: “15.0 to 45.3 wt. % of liquid epoxy resins (i.e.
LER) such as EPON 828 and DER 332, and 10 to 13.7 wt.% of EPON
1004F, which is a chain-extended epoxy resin as evidenced by Reinshagen,
col. 6, lines 28 to 34, 0.093 to 4.04 wt.% of CG 1400 and 0 to 2.1 wt.%
OMICURE U52” (Ans. 3) (citing Salnikov || 103, 107, 110—112 and
epoxy resin. To be clear, we emphasize that an applicant need not show that
a product resulting from combining multiple references lacks a characteristic
recited in the claim where that characteristic is attributed to a specified
structural claim limitation missing in the closest prior art. That would
impermissibly require the applicant to compare the claimed invention
against the claimed invention. Cf. In re Tiffin, 443 F.2d 394, 399 (CCPA
1971) (“The examiner’s composite process is appellants’ process, and thus
cannot be compared with it”). But see In re Wiseman, 596 F.2d 1019, 1023
(CCPA 1979) (rejecting the notion that “a structure suggested by the prior
art, and, hence, potentially in the possession of the public, is patentable ...
because it also possesses an [ijnherent, but hitherto unknown, function [i.e.,
characteristic] which they [applicants] claim to have discovered.”).
5
Appeal 2015-004495
Application 12/625,002
Table 1). According to Salnikov (1143), Example 1 was prepared as
described in “Preparation of Cured Joined Structures” (1137), which
employed a nylon fabric-supported adhesive film made using a curable
composition based on polyepoxide resins (e.g., EPON® 1004F or EPON®
828), a toughening modifier, and curing agents flflf 132—133, 137).
Comparing Salnikov’s scope and content with the Appellant’s
disclosure relating to how claim 1 ’s “G’t25 is no more than 118% of G’s25”
limitation is achieved, we discern no meaningful difference. In particular,
the Appellant’s Specification states that “[a]ny suitable surfacing film may
be used which meets the storage modulus requirements recited [in claim 1]”
and that “[i]n some embodiments the curable surfacing film comprises a
curable epoxy resin which may optionally be a chain-extended epoxy resin”
(Spec. 5,11. 28—31). Thus, the Specification would have reasonably
indicated that any curable epoxy resin composition, such as a curable epoxy
composition based on a chain-extended epoxy resin such as EPON® 1004F
(Spec. 7,11. 8—11; Reinshagen col. 6,11. 31—32), would provide the “G’t25 is
no more than 118% of G’s25” characteristic. The Appellant does not direct
us to any facts, such as a description in the Specification indicating that only
certain specific curable epoxy compositions (i.e, those that are not disclosed
in Salnikov) would provide the recited storage modulus characteristic.
Under these circumstances, the Examiner provided an adequate
factual basis upon which to shift the burden to the Appellant to come
forward with evidence to show Salnikov’s curable composition, when
applied on the cured polymeric composite article, would not provide the
“G’t25 is no more than 118% of G’s25” characteristic recited in claim 1.
The Appellant’s failure to satisfy this burden of production is particularly
6
Appeal 2015-004495
Application 12/625,002
pronounced here because, on one hand, the Examiner has no means to obtain
products or carry out experiments while, on the other hand, the Appellant, as
a listed joint inventor in the Salnikov publication, is intimately familiar
with—and is presumed to have access to—the products disclosed in
Salnikov.
For these reasons, we uphold the Examiner’s rejection of claim 1.
SUMMARY
The Examiner’s final decision to reject claims 1—8, 10, and 11 is
affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1).
AFFIRMED
7