Ex Parte Sharygin et al

Patent Trial and Appeal Board

Nov 15, 2017

12994284 (P.T.A.B. Nov. 15, 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.
12/994,284 02/10/2011 Andrei Sharygin 08SFS0002-US-PCT 1991
23413 7590 11/17/2017
TANTOR TOT RTTRN T T P
EXAMINER
20 Church Street SABERI, JASPER
22nd Floor
Hartford, CT 06103 ART UNIT PAPER NUMBER
1781
NOTIFICATION DATE DELIVERY MODE
11/17/2017 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):
usptopatentmail@cantorcolbum.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANDREI SHARYGIN, DAVID CLINNIN, KWAN
HONGLADAROM, JAMUNA CHAKRAVARTI, KESHAV GAUTUM,
and MICHAEL MATTHEW LAURIN
Appeal 2015-000743
Application 12/994,284
Technology Center 1700
Before N. WHITNEY WILSON, WESLEY B. DERRICK, and
CHRISTOPHER C. KENNEDY Administrative Patent Judges.
WILSON, Administrative Patent Judge.
DECISION ON APPEAL
Appellants1 appeal under 35 U.S.C. § 134(a) from the Examiner’s
November 20, 2013 decision finally rejecting claims 2—5, 7—19, and 21—25
(“Final Act.”) and maintained in the Examiner’s Answer. We have jurisdiction
over the appeal under 35 U.S.C. § 6(b).
We affirm.
1 Appellants identify the Real Party in Interest as SABIC Innovative Plastics IP
B.V. (Br. 2).
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Application 12/994,284
CLAIMED SUBJECT MATTER
Appellants’ invention is directed to a coated thermoplastic film which is
said to be useful for, inter alia, cell phones, electronic devices, automotive
vehicles, display panels, and lenses (Abstract). Details of the claimed invention
may be found in independent claims 2 and 5, which are reproduced below from
the Claims Appendix:
2. A coated thermoplastic film comprising:
a polymeric film substrate; and
a coating formed from a coating composition that comprises
an aliphatic urethane acrylate; and
an acrylate monomer having at least one acrylate functional
group;
wherein the coating composition is subsequently cured,
wherein the urethane acrylate functionality has a
functionality of 2.5 to 3.5.
5. A coated thermoplastic film comprising:
a polymeric film substrate; and
a coating formed from a coating composition that comprises
an aliphatic urethane acrylate having a functionality of 2.5 to
5.5 acrylate functional groups; and
an acrylate monomer having at least one acrylate functional
group;
wherein the coating composition is subsequently cured;
wherein the urethane acrylate has a tensile strength of 1,000
to 5,000 psi and a glass transition range of 10 to 50°C.
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Application 12/994,284
REJECTIONS
I. Claims 2—5, 7—9, 11, and 242 are rejected under 35 U.S.C. § 102(b)
as anticipated by, or, in the alternative, under 35 U.S.C. § 103(a) as unpatentable
over, Gilmer,3 as evidenced by EBECRYL Concrete FPS.
II. Claims 2, 3, 8, 9, 11, 24, and 25 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Miller.4
III. Claims 10, 12—19, and 21—23 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Gilmer, and further in view of Boven.5
IV. Claims 2, 3, 7—13, 23, and 25 are provisionally rejected on the
grounds of non-statutory double patenting over claims 1—3, 6—13, 15, and 16 of
Application No. 12/166,7846 (“the ’784 Application”).
V. Claims 4, 5, 14—19, 21, 22, and 24 are provisionally rejected on the
grounds of non-statutory double patenting over the ’784 Application in view of
Gilmer, as evidenced by EBECRYL Concrete FPS.
2 Claim 1 was included in a number of the rejections set forth in the Final
Action. However, it was cancelled by an Amendment filed February 19,
2014, and entered by the Examiner on March 13, 2014. Accordingly, we
have omitted reference to claim 1 in the listing of the rejections on appeal.
3 Gilmer, US 2006/0286383 Al, published December 21, 2006.
4 Miller et al., US 2004/0152799 Al, published August 5, 2004.
5 Boven et al., U.S. 2007/0009741 Al, published January 11, 2007.
6 The ’784 Application has not been allowed, and is currently on appeal
before the Patent Trial and Appeal Board.
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Application 12/994,284
VI. Claims 2—5, 7—12, 14—19, and 21—25 are provisionally rejected
on the grounds of non-statutory double patenting over Application No.
12/338,4627 (“the ’462 Application”) in view of Gilmer.
VII. Claims 2—5, 7—19, and 21—25 are provisionally rejected on the
grounds of non-statutory double patenting over claims 1, 2, and 13—18 of
Application No. 13/530,798 (“the ’798 Application”) in view of Gilmer.
Appellants do not argue Rejections IV and V, stating only that they
intend to file terminal disclaimers to overcome them (Appeal Br. 17).
Accordingly, we summarily affirm these rejections.
DISCUSSION
Appellants have not advanced arguments seeking reversal of
Rejections IV and V (Appeal Br. 17). Accordingly, we summarily affirm
these rejections.
Rejection I. “A prior art reference anticipates a patent claim under
35 U.S.C. § 102(b) if it discloses every claim limitation.” In re
Montgomery, 677 F.3d 1375, 1379 (Fed. Cir. 2012) (citing Verizon Servs.
Corp. v. CoxFibernet Va., Inc., 602 F.3d 1325, 1336—37 (Fed. Cir. 2010)).
In this instance, Appellants contend that “Gilmer fails to disclose or suggest
the technical features of either a functionality of 2.5 to 3.5 ([cjlaim 2) or [] a
tensile strength of 1,000 to 5,000 psi and a glass transition range of 10 to
7 The ‘462 Application been allowed and issued as U.S. Patent No.
8,916,259 on December 23, 2014. Accordingly, the Examiner may wish to
remove the “provisional” designation of the rejection.
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50°C ([cjlaim 5)” and that these features are not inherent in the list of
acrylates recited in Gilmer (Appeal Br. 9). In essence, Appellants assert that
the anticipation rejection rests on an inherency finding in the properties of
the acrylates disclosed by Gilmer, and that Gilmer’s acrylates do not
necessarily have the claimed properties (Appeal Br. 9-10).
As found by the Examiner, Gilmer teaches radiation curable coating
compositions for thermoplastic articles which correspond to the claimed
polymeric film substrate (Final Act. 27, citing Gilmer 11). Gilmer teaches
that the coating comprises a urethane acrylate (see, e.g., 5, 8), and that
one urethane acrylate which may be used is EBECRYL® 265 (Gilmer 132).
Gilmer does not disclose the specific properties of EBECRYL® 265.
However, the specification sheet made of record by the Examiner discloses
that EBECRYL® 265 has a functionality of 3 (within the claimed range of
2.5 to 3.5 (claim 2) or 2.5 to 5.5 (claim 5)), a glass transition temperature of
38°C (within the claimed range of 10 to 50°C (claim 5)), and a tensile
strength of 4,500 psi (within the claimed range of 1,000 to 5,000 psi (claim
5)). Therefore, according to the Examiner, claims 2 and 5 are anticipated by
Gilmer because it discloses every claim limitation when EBECRYL® 265 is
used.
Appellants argue that Gilmer cannot inherently anticipate claims 2
and 5 because it discloses many urethane acrylates, many of which would
not have the required functionality/tensile strength/glass transition
temperature (Reply Br. 2—3). To establish anticipation, every element and
limitation of the claimed invention must be found in a single prior art
reference, arranged as in the claim. Karsten Mfg. Corp. v. Cleveland Golf
Co., 242 F.3d 1376, 1383 (Fed. Cir. 2001). In this instance, we agree with
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the Examiner that Gilmer anticipates claims 2 and 5 because Appellants do
not dispute that the EBECRYL 265 has the claimed properties required to
meet the claim. See, e.g. In re Gleave, 560 F.3d 1331, 1337-38 (Fed. Cir.
2009) (citing Perricone v. Medicis Pharm. Corp., 432 F.3d 1368, 1376 (Fed.
Cir. 2005)). That Gilmer also discloses other embodiments which do not
meet the limitations of the claim does not vitiate the anticipation rejection
based on the disclosure in Gilmer of EBECRYF 265.
With regards to the second prong of the rejection over Gilmer, namely
obviousness under § 103, Appellants do not dispute that the Examiner has
made out a prima facie case of obviousness, but argue that they have
demonstrated unexpected results sufficient to overcome the prima facie case
of obviousness (see, Appeal Br. 10-12). It is well settled that Appellants
have the burden of showing unexpected results. In re Freeman, 474 F.2d
1318, 1324 (CCPA 1973); In re Klosak, 455 F.2d 1077, 1080 (CCPA
1972). The burden requires Appellants to proffer factual evidence that
actually shows unexpected results relative to the closest prior art, see In re
Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991), and that is
reasonably commensurate in scope with the protection sought by claim 34
on appeal, In re Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983); In re
Clemens, 622 F.2d 1029, 1035 (CCPA 1980); In re Hyson, 453 F.2d 764,
786 (CCPA 1972). The extent of the showing relied upon by Appellants
must reasonably support the entire scope of the claims at issue. See In re
Harris, 409 F.3d 1339, 1344 (Fed. Cir. 2005).
In this instance, as explained by the Examiner (Ans. 7—9), the
purported showing is not commensurate in scope with the claims, which
cover a very broad range of components, such as different aliphatic urethane
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acrylates, and not simply a broad range of properties. Accordingly,
Appellants’ proffer does not bear the weight required to rebut the
Examiner’s prima facie case of obviousness over Gilmer. Further, while
Appellants direct our attention to results and contend that they are surprising
(Appeal Br. 8-12), Appellants do not direct us to any statement in the
Specification or elsewhere attesting to the unexpected nature of the results or
to any persuasive evidence that the results would have been unexpected at
the time of the invention (see generally Appeal Br.). Appellants’
contentions are not sufficient to bear the Appellants’ burden that the results
are not merely superior, but that they are unexpected. See, e.g., Geisler, 116
F.3d 1465, 1471 (Fed. Cir. 1997) (“Geisler made no such assertion [that
results were unexpected] in his application. Nor did Geisler submit any such
statement through other evidentiary submissions, such as an affidavit or
declaration under Rule 132 .. . Instead, the only reference to unexpected
results was a statement by Geisler's counsel. . . that Geisler's results were
‘surprising.’”).
Rejection II. The Examiner finds that Miller teaches compositions
which meet each of the limitations in claim 2, except that the compositions
comprise an acrylate and/or methacrylate functional urethane oligomer with
one to four polymerizable acrylate and/or methacrylate groups, instead of
functionality of 2.5 to 3.5 as recited in the claim (Final Act. 31). The
Examiner finds, however, that the disclosed range of 1—4 overlaps with the
claimed range of 2.5—3.5, and therefore the claimed range would have been
obvious (Final Act. 32, citing In re Woodruff, 919 F.2d 1575 (Fed. Cir.
1990)). Appellants argue that they have shown that the claimed range
provides surprising results, overcoming the prima facie case of obviousness
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and that the Examiner has admitted that Appellants have demonstrated the
criticality of the claimed range (Appeal Br. 12—13).
However, the Examiner finds that the earlier statement that Appellants
had shown criticality was a mistake (Ans. 10). Accordingly, the Examiner
does not find that Appellants have demonstrated the criticality of the claimed
range. We agree with the Examiner (Ans. 9-11), and that Appellants’
attempted showing of unexpected results was not commensurate in scope
with the claims (Ans. 9—11). In particular, the allegedly unexpected results
are based on a composition containing oligomer 3 with an acrylate
functionality of 3, which is not commensurate in scope with the claimed
functionality range of 2.5 to 3.5. Appellants have not demonstrated that the
allegedly superior results stemming from an acrylate functionality of 3
would also apply to acrylate functionalities of 2.5 and 3.5.
In addition, the relied-upon examples (coatings 3 and 7, each of which
use oligomer 3) each use the same oligomer (PHOTOMER 6892) (see,
Specification || 104 and 105 and Tables 1 and 3). Because claim 2 recites
“an aliphatic urethane acrylate” with “a functionality of 2.5 to 3.5,” there are
numerous compounds which might fall within the scope of this limitation.
Therefore, testing only a single compound is not sufficient to demonstrate
unexpected results for the claim as written.8 See In re Greenfield, 571 F.2d
8 Appellants argue that the examples are only “exemplary embodiments of
the disclosure and should not be taken as limiting” and that the examples
should be understood as limiting the scope of the claim (Reply Br. 3). While
it is true that the examples do not limit the scope of the claims in this
instance, that is precisely the issue faced by Appellants’ efforts to overcome
the prima facie case of obviousness by showing the criticality of the claimed
components and ranges. Even if the data relied on by Appellants showed
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1185, 1189 (CCPA 1978) (“Establishing that one (or a small number of)
species gives unexpected results is inadequate proof, for ‘it is the view of
this court that objective evidence of non-obviousness must be commensurate
in scope with the claims which the evidence is offered to support.’” (quoting
In re Tiffin, 448 F.2d 791, 792 (CCPA 1971)).
Rejection III. Appellants make two arguments urging reversal of this
rejection. First, Appellants argue again that Gilmer fails to disclose the
claimed functionality of 2.5 to 3.5, and that Appellants have established the
criticality of that limitation (Appeal Br. 14—15). However, these arguments
are not persuasive for the same reasons that they were not persuasive in
connection with Rejection I.
Appellants also argue that there was no motivation for a person of
skill in the art to combine the teachings of Gilmer and Boven. The Federal
Circuit has stated that “rejections on obviousness grounds cannot be
sustained by mere conclusory statements; instead, there must be some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006),
cited with approval in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418
(2007). In this instance, the Examiner finds that a person of ordinary skill in
the art would have been motivated to use Gilmer’s composition to coat
Boven’s multilayer substrate because the resulting coated article would have
improved abrasion and impact resistance, as well as improved toughness
unexpected results, there has been no showing that similarly unexpected
results would happen using a different “aliphatic urethane acrylate,” or an
explanation of why the unexpected results would occur using a different
compound. Thus, the showing is not commensurate in scope with the
breadth of claim 2.
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(Final Act. 38). Appellants argue that because Boven discloses that its
polycarbonate molding material displays high impact strength, a person of
skill in the art would not seek to improve its impact resistance as required
for the rejection. This argument is not persuasive, however, as improving
abrasion and impact resistance would be seen as desirable, even if Boven’s
articles already have high impact strength.
Rejections VI and VII. Appellants’ arguments regarding these
rejections are substantively the same as those regarding Rejection I (namely
that the functionality, tensile strengths, and glass transition temperature
ranges would not have been obvious in view of Gilmer) (Appeal Br. 17—18),
and are unpersuasive for the same reasons.
CONCLUSION
We AFFIRM the rejection of claims 2—5, 7—9, 11, and 24 under
35 U.S.C. § 102(b) as anticipated by or, in the alternative, under 35 U.S.C.
§ 103(a) as unpatentable over, Gilmer, as evidenced by EBECRYL Concrete
FPS.
We AFFIRM the rejection of claims 2, 3, 8, 9, 11, 24, and 25 under
35 U.S.C. § 103(a) as unpatentable over Miller.
We AFFIRM the rejection of claims 10, 12—19, and 21—23 under
35 U.S.C. § 103(a) as unpatentable over Gilmer, and further in view of Boven.
We AFFIRM the provisional rejection of claims 2, 3, 7—13, 23 and 25 on
the grounds of non-statutory double patenting over claims 1—3, 6—13, 15, and 16
of the ’784 Application.
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We AFFIRM the provisional rejection of claims 4, 5, 14—19, 21, 22, and
24 on the grounds of non-statutory double patenting over the ’784 Application
in view of Gilmer, as evidenced by EBECRYL Concrete FPS.
We AFFIRM the provisional rejection of claims 2—5, 7—12, 14—19,
and 21—25 on the grounds of non-statutory double patenting over the ’462
Application in view of Gilmer.
We AFFIRM the provisional rejection of claims 2—5, 7—19, and 21—25
on the grounds of non-statutory double patenting over claims 1, 2, and 13—
18 of the ’798 Application in view of Gilmer.
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
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