Ex Parte Sherman et al

Patent Trial and Appeal Board

Nov 28, 2017

13139313 (P.T.A.B. Nov. 28, 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.
13/139,313 08/24/2011 Audrey A. Sherman 64851US005 9573
32692 7590 11/30/2017
3M INNOVATIVE PROPERTIES COMPANY
PO BOX 33427
ST. PAUL, MN 55133-3427
EXAMINER
ZHAO, XIAO SI
ART UNIT PAPER NUMBER
1712
NOTIFICATION DATE DELIVERY MODE
11/30/2017 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 AUDREY A. SHERMAN, MARK F. ELLIS,
RAMESH C. KUMAR, SONJA S. MACKEY, RICHARD L. PELOQUIN,
and JEFFREY O. EMSLANDER
Appeal 2017-003611
Application 13/139,313
Technology Center 1700
Before MICHAEL P. COLAIANNI, JEFFREY R. SNAY, and
JANE M. INGLESE, Administrative Patent Judges.
COLAIANNI, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2017-003611
Application 13/139,313
Appellants appeal under 35 U.S.C. § 134 of the final rejection of
claims 20-22, 24, 26, 28, and 29. We have jurisdiction over the appeal
pursuant to 35 U.S.C. § 6(b).
We AFFIRM.
Appellants’ invention is directed to bulk polymerization methods to
form silicone-containing polymers (Spec. 1:4—6).
Claim 20 is illustrative:
20. A method comprising:
providing a first reaction mixture comprising:
an mercapto-fimctional silicone;
at least one ethylenically unsaturated monomer;
and
a thermal initiator;
deoxygenating the first reaction mixture;
heating the first reaction mixture to a temperature above
the activation temperature of the thermal initiator;
allowing the first reaction mixture to polymerize under
essentially adiabatic conditions to yield an at least
partially polymerized mixture;
cooling the at least partially polymerized mixture;
adding an additional thermal initiator to the partially
polymerized mixture to form a second reaction mixture;
deoxygenating the second reaction mixture;
heating the second reaction mixture to a temperature
above the activation temperature of the additional
thermal initiator;
allowing the second reaction mixture to polymerize under
essentially adiabatic conditions to form a polymer.
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Application 13/139,313
Appellants appeal the following rejections:
1. Claims 20-22, 24, 26, and 28 are rejected under 35 U.S.C. § 103(a) as
obvious over Kantner (US 5,032,460, issued July 16, 1991) in view of
Ellis (US 5,637,646, issued June 10, 1997).
2. Claim 29 is rejected under 35 U.S.C. § 103(a) as obvious over Zhang
in view of Kantner and Ellis, and Baker (US 2002/0057300 Al, May
16, 2002).
Appellants argue the claims as a group (App. Br. 3—7). We select claim
20 as representative of the group. 37 CFR § 41.37(c)(l)(iv).
FINDINGS OF FACT & ANAFYSIS
The Examiner finds that Kantner discloses the general silicone
monomer polymerization process that includes a thermal initiator and
monomers as recited in claim 20 (Final Act. 3). The Examiner finds that
Kantner fails to teach the polymerization steps disclosed in claim 20 (Final
Act. 3). The Examiner finds that Ellis discloses bulk polymerization for
free-radical polymerizable vinyl monomers under essentially adiabatic
conditions, which achieves several advantages listed at Ellis’ column 4, line
40 to column 5, line 15 such as narrowing the molecular weight distribution
(Final Act. 4). The Examiner concludes that it would have been obvious to
polymerize Kantner’s mercapto-fimctional silicone reaction mixture in the
manner taught by Ellis in order to achieve the advantages of narrowing the
molecular weight distribution, which can degrade coating performance of an
adhesive, and other advantages disclosed by Ellis (Final Act. 4).
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Application 13/139,313
Appellants argue that there is no motivation to combine the teachings
of Kantner and Ellis because Kantner prefers using solution polymerization
that requires a solvent (App. Br. 3). Appellants contend that Kantner’s
teaching regarding use of bulk polymerization to polymerized silicone-
containing monomers and non-silicone containing monomers is qualified by
the requirement that the monomers must have a dielectric constant greater
than 2.5 (App. Br. 5—6).
Appellants contend that three declarations have been filed1 (App. Br.
3). The first declaration by Mark Ellis, inventor of the Ellis reference and
co-inventor of the present application, states that at the time of the invention
Declarant Ellis did not believe that the semi-adiabatic process disclosed in
the Ellis reference would work for mixtures of silicone-based monomers and
non-silicone based monomers because of the monomers’ inherent
incompatibility (App. Br. 3). Appellants argue that the second and third
declarations by Mark Ellis and Ramesh Kumar, a co-inventor on the Kantner
reference and co-inventor of the present application, are identical (App. Br.
3). Appellants contend that the second and third declaration provide data
1 Appellants have not provided copies of the three declarations in the
Evidence Appendix of the Appeal Brief. Our review of the electronic record
has only located two declarations of record. The first declaration by Mark
Ellis is dated January 22, 2015 and corresponds to Appellants’ reference to a
“first declaration.” We located another declaration to Mark Ellis dated
August 13, 2015 which based upon its content corresponds to what
Appellants’ refer to as the “second declaration.” We are unable to locate the
declaration by Ramesh Kumar in the record, which Appellants refer to as the
“third declaration.” However, Appellants state the second and third
declarations are “identical” so our review of the Ellis Declaration dated
August 13, 2015 suffices in considering the evidence and argument that
would have been presented in the Kumar Declaration.
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Application 13/139,313
showing that if a person attempted to make the polymers of the present
application by the method of Kantner (i.e., standard bulk polymerization),
the polymerization is incomplete and does not give the desired polymers
(App. Br. 3—4). Appellants argue that Ellis’ semi-adiabatic polymerization
method is a specialized bulk polymerization technique that uses specialized
conditions and is not therefore generally applicable to all monomer
combinations, which is allegedly supported by the first Ellis Declaration
(App. Br. 4). Appellants contend that the second declaration by Mark Ellis
demonstrates that using the materials of the present application in the bulk
polymerization process of Kantner would not work (App. Br. 6).
Appellants’ arguments are not persuasive. Appellants concede that
Kantner teaches that bulk polymerization may be used to polymerize
silicone-containing monomers and non-silicone containing monomers (App.
Br. 6). Appellants argue that the Examiner’s reason to combine the
teachings of Ellis and Kantner is undercut by Kantner’s restraint on the
monomers having a particular dielectric constant greater than 2.5, and
Kantner’s preference for using solution polymerization coupled with the
evidence in the second Ellis Declaration filed August 13, 2015 that shows
that Kantner’s process would not work with the monomer combinations used
in the present invention (App. Br. 4, 6). However, Kantner’s solution
polymerization process has the same restraint on the dielectric constant (i.e.,
greater than 2.5) of solvents used in the process (Kantner, col. 17,11. 52—63).
Kantner’s requirement that the monomers or solvent used have a dielectric
constant greater than 2.5 ensures homogeneity in the polymerization mixture
(Kantner, col. 17,11. 52—63; col. 18,11. 31—37). In other words, Kantner’s
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restraint on the dielectric constant is not limited solely to the bulk
polymerization method as Appellants appear to argue.
Kantner may prefer using solution polymerization, but that does not
teach away from using non-preferred bulk polymerization to polymerize
mercapto-fimctional silicone and an ethylenically unsaturated monomer.
Ellis discloses using bulk polymerization with the steps recited in the claim
in order to prevent temperature gradients that broaden the molecular weight
distribution (Ellis, col. 4,11. 38-54; col. 5,1. 15 to col. 6,1. 46). The
Examiner has established that it would have been obvious to use Ellis’ bulk
polymerization steps in Kantner’s bulk polymerization process for mercapto-
fimctional silicone and ethylenically unsaturated monomers in order to
control the molecular weight distribution.
The first declaration by Mark Ellis may indicate his view that using
silicone polymers in the Ellis bulk polymerization method did not occur to
him because of the monomer incompatibility (Ellis Declaration dated
January 22, 2015, 2). Declarant Ellis’ statement is undercut by Kantner’s
disclosure that bulk polymerization of silicone-containing monomers and
non-silicone containing monomers may be achieved so long as the dielectric
constant of the monomers individually or collectively is maintained above
2.5 (Kantner, col. 18,11. 24—56). Kantner teaches that the dielectric constant
requirement is required to address the incompatibility issue between the
monomers. The Examiner finds that the dielectric constant requirement
would not have taught away from using bulk polymerization to form
Kantner’s polymers (Ans. 5).
Appellants’ second (and third) declaration allegedly shows that if the
materials used in the present application are used in Kantner’s bulk
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polymerization process, the process does not proceed to completion because
the mixture becomes too viscous. Appellants contend that it was surprising
that they could use silicone-containing monomers and non-silicone
monomers in a bulk polymerization process (App. Br. 5). The Examiner
finds that Appellants’ evidence in the declarations are not commensurate in
scope with the claim (Ans. 6). Appellants’ evidence in the second
declaration is limited to a single composition. In contrast, claim 20 broadly
recites that the mixture comprises “a mercapto-fimctional silicone, at least
one ethylenically unsaturated monomer, and a thermal initiator.” Claim 20
places no limit on the amounts of the various components of the mixture
either. Accordingly, Appellants’ narrow showing is not commensurate in
scope with the claim. We are not persuaded that Appellants’ evidence
established unexpected results, much less unexpected results over the range
of compositions included in claim 20.
Moreover, it is unclear if Appellants’ Example 6 from the
Specification that was used in the second declaration satisfies Kantner’s
requirement that the dielectric constant of each of the monomers, or the
collective dielectric constant of each of monomer compositions that
compose the mixture, is greater than 2.5. The second declaration does not
disclose the dielectric constants of the various materials used in the
composition. Accordingly, it is not possible to say based on the evidence of
record that using Kantner’s bulk polymerization would not work with the
myriad of compositions included in the claims that include monomers that
have dielectric constants greater than 2.5 and which are taught by Kantner.
On this record, we affirm the Examiner’s § 103 rejections of record.
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DECISION
The Examiner’s decision 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). See 37 C.F.R.
§ 1.136(a)(l)(iv).
ORDER
AFFIRMED
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