Ex Parte Sun et al

Patent Trial and Appeal Board

Dec 17, 2018

14430389 (P.T.A.B. Dec. 17, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/430,389 03/23/2015
32692 7590 12/19/2018
3M INNOVATIVE PROPERTIES COMPANY
PO BOX 33427
ST. PAUL, MN 55133-3427
FIRST NAMED INVENTOR
Fuxia Sun
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.
70244US007 1841
EXAMINER
QIAN, YUN
ART UNIT PAPER NUMBER
1732
NOTIFICATION DATE DELIVERY MODE
12/19/2018 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 FUXIA SUN, NAIYONG JING, and XUE-HUA CHEN
Appeal2018-003352
Application 14/430,389
Technology Center 1700
Before LINDA M. GAUDETTE, GRACE KARAFFA OBERMANN, and
MERRELL C. CASHION, JR., Administrative Patent Judges.
GAUDETTE, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner's decision
finally rejecting claims 1-6. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
The invention relates to a method of making a composition that can be used
to form a photocatalytic coating. Spec. 1: 6-7. The photocatalytic coatings are said
1 This Decision includes citations to the following documents: Specification filed
Mar. 23, 2015 ("Spec."); Final Office Action dated May 23, 2017 ("Final");
Appeal Brief filed Oct. 19, 2017 ("Appeal Br."); Examiner's Answer dated Dec.
13, 2017 ("Ans."); and Reply Brief filed Feb. 7, 2018 ("Reply Br.").
2 Appellants are the inventors and 3M Innovative Properties Company, also
identified as the real party in interest. Appeal Br. 3.
Appeal2018-003352
Application 14/430,389
to have self-cleaning properties when exposed to light. Id. at 2:20-21. Claim 1, the
sole independent claim on appeal, is reproduced below:
1. A method of making a coatable composition, the method
compnsmg:
providing a first composition comprising silica nanoparticles
dispersed in an aqueous liquid vehicle, wherein the silica
nanoparticles have an average particle size of less than or equal to 100
nanometers, wherein the first composition has a pH greater than 8;
acidifying the first composition to a pH of less than or equal to
4 using inorganic acid to provide a second composition; and
dissolving at least one metal compound in the second
composition to form the coatable composition, wherein said at least
one metal compound comprises a titanium compound.
Appeal Br. 6 (Claims Appendix).
The claims stand rejected under 35 U.S.C. § I03(a) as follows: (1) claims 1,
2, 5, and 6 over Hager (US 2010/0092765 Al, pub. Apr. 15, 2010); 3 and (2) claims
3 and 4 over Hager in view of Graule (WO 2010/124403 Al, pub. Nov. 4, 2010).
The Examiner finds Hager discloses a method as recited in claim 1, with the
exception that Hager does not teach acidifying the aqueous dispersion of silica
nanoparticles prior to adding the titanium compound. Ans. 4. The Examiner
determines that changing the order of Hager's process steps by adding the titanium
compound after acidification would have been an obvious modification absent a
showing of unexpected results in the claimed order. Id.
3 Claims 1, 2, 5, and 6 were finally rejected under 35 U.S.C. § I02(b) as
unpatentable over Hager. See Final 3. In the Answer, the Examiner explains that
citation to § 102 in the Final Office Action was a typographical error, noting that
the prior Office Action correctly cited 35 U.S.C. § I03(a). Ans. 6-7. The Examiner
withdrew the rejection under§ I02(b) and entered a new ground under§ I03(a).
Ans. 3---6.
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Appeal2018-003352
Application 14/430,389
Appellants cite Specification page 6, lines 6-8, as evidence of criticality in
performing the step of acidifying prior to the step of dissolving the metal
compound. Reply Br. 2. The cited Specification disclosure reads as follows:
"Without wishing to be bound by theory, the present inventors believe that some
agglomeration of the silica nanoparticles occurs as the pH falls, resulting in a
dispersion comprising agglomerated nanoparticles." Spec. 6:6-8. According to
Appellants, "a different result would be expected during agglomeration if titanium
metal ions are already present, as they would be expected to be included in the
agglomerates." Reply Br. 2.
Appellants' argument is not persuasive of reversible error in the Examiner's
conclusion of obviousness. "There is nothing in the instant record which indicates
that the particular order of steps produces results differing in any way from those
which would be brought about if another order of steps were followed." In re
Hampel 162 F.2d 483, 485-86 (CCPA 1947); see also In re Burhans, 154 F.2d
690, 692 ( CCP A 1946) ("Appellant contends that the references taken singly or
together do not teach his characteristic four steps which are new in the art and
which are necessary to obtain the desired result. There is no merit in the point here
in the absence of any proof in the record that the order of performing the steps
produces any new and unexpected results."); In re Gibson, 39 F.2d 975, 976
(CCPA 1930) ("It is conceded that the patent to McIntyre discloses the same
constituents used in substantially the same proportions. The only claimed
difference between appellant and McIntyre is the process or order in which the
constituents are put together .... We think the proper sequence of adding the three
ingredients to obtain the most satisfactory mixture of three constituents is within
the expected skill and judgment of a mechanic and such choice of sequence does
not involve invention in making a mix of the constituents named in McIntyre."
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Appeal2018-003352
Application 14/430,389
(internal quotation marks omitted)). The above-quoted disclosure from page 6 of
the Specification is nothing more than conjecture on the part of the inventors and is
not the type of persuasive evidence required for a showing of unexpected results in
the order of process steps. See In re Lindner, 457 F.2d 506, 508 (CCPA 1972)
( explaining that mere arguments in the brief or conclusory statements in the
specification cannot take the place of objective evidence). We have also reviewed
the Specification in its entirety and agree with the Examiner that the comparison
testing described therein does not provide convincing evidence of unexpected
results in the order of process steps because there is no comparison of the claimed
process to a process in which the metal compound is added to the composition
prior to the addition of acid. See Ans. 10-11; Spec. 11 :26-34:3.
As to Appellants' argument that "a different result would be expected during
agglomeration if titanium metal ions are already present" (Reply Br. 2), we note
the Specification discloses that "the initial composition can further include other
nanoparticles, including, for example, nanoparticles comprising aluminum oxide,
titanium oxide, tin oxide, antimony oxide, antimony-doped tin oxide, indium
oxide, tin-doped indium oxide, or zinc oxide" (Spec. 5 :24--26). That disclosure in
the Specification, which contemplates the presence of titanium metal ions prior to
the addition of acid, undercuts Appellants' argument that a different result would
be expected were the process steps reordered.
Accordingly, for the reasons stated above and in the Answer, we are not
persuaded of reversible error in the Examiner's conclusion of obviousness as to
claim 1, and its dependent claims 2, 5, and 6.
Turning to the rejection of claims 3 and 4, Appellants' arguments in support
of patentability are limited to a contention that Graule does not overcome the
deficiencies in the Examiner's rejection of claim 1 as unpatentable over Hager.
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Appeal2018-003352
Application 14/430,389
Appeal Br. 4. Because we are not convinced of reversible error in the Examiner's
conclusion of obviousness as to claim 1, this argument is unpersuasive.
For the reasons discussed above and in the Answer, we sustain both grounds
of rejection.
The Examiner's decision to reject claims 1-6 is affirmed.
No time period for taking any subsequent action in connection with this
appeal may be extended under 3 7 C.F .R. § 1.13 6( a)( 1 )(iv).
AFFIRMED
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