Ex Parte Thompson et al

Patent Trial and Appeal Board

Sep 25, 2018

12997939 (P.T.A.B. Sep. 25, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/997,939 12/14/2010
32692 7590 09/27/2018
3M INNOVATIVE PROPERTIES COMPANY
PO BOX 33427
ST. PAUL, MN 55133-3427
UNITED ST A TES OF AMERICA
FIRST NAMED INVENTOR
Wendy L. Thompson
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.
63660US005 1394
EXAMINER
FERRE, ALEXANDRE F
ART UNIT PAPER NUMBER
1788
NOTIFICATION DATE DELIVERY MODE
09/27/2018 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 WENDY L. THOMPSON, WILLIAM J. SCHULTZ,
MICHAEL A. KROPP, JAYSHREE SETH,
DOUGLAS P. GOETZ, and ANDREW M. HINE 1
Appeal2018---000347
Application 12/997,939
Technology Center 1700
Before BEYERL YA. FRANKLIN, WESLEY B. DERRICK, and
LILAN REN, Administrative Patent Judges.
FRANKLIN, Administrative Patent Judge.
DECISION ON APPEAL
1 Appellants identify the real party in interest as 3M Company and its
affiliate 3M Innovative Properties Company.
Appeal2018-000347
Application 12/997,939
Appellants request our review under 35 U.S.C. § I34(a) of the
Examiner's decision rejecting claims 1-5, 10, 12-15 and 23-32. We have
jurisdiction over the appeal under 35 U.S.C. § 6(b ).
STATEMENT OF THE CASE
Claim 1 is illustrative of Appellants' subject matter on appeal and is
set forth below:
1. A composite article comprising
a fiber matrix and
a toughened resin comprising a cured curable
composition, the curable composition
compnsmg
at least one curable resin;
surface modified nanoparticles having a primary particle
size of 50 to 500 nm as measured by transmission electron
microscopy; and
rubber nano-domains having an average size of 10 to 500
nm as measured by transmission electron microscopy, wherein
the rubber nano-domains comprise core-shell rubber
nanoparticles; wherein the surface modified nanoparticles
comprise an organic surface treatment agent derived from
phenyltrimethoxysilane attached to a surface of a substantially
spherical silica core.
The Examiner relies on the following prior art references as evidence
of unpatentability:
Ueda et al.
Baran Jr. et al.
Yamaguchi et al.
Agarwal et al.
us 5,082,732
US 2005/0113489 Al
US 2007/0155882 Al
WO 2007 /025007 Al
2
Jan.21, 1992
May 26, 2005
July 5, 2007
Mar. 1, 2007
Appeal2018-000347
Application 12/997,939
THE REJECTIONS
1. Claims 1-5, 10, 12-14, and 23-32 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Agarwal in view of Baran and
Yamaguchi.
2. Claim 15 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Agarwal in view of Baran and Yamaguchi, and further in
view of Ueda.
ANALYSIS
To the extent that Appellants have presented substantive arguments
for the separate patentability of any individual claims on appeal, we will
address them separately consistent with 37 C.F.R. § 4I.37(c)(l)(vii). We
thus select claim 1 for consideration in this appeal based upon Appellants'
arguments.
Upon consideration of the evidence on this record and each of the
respective positions set forth in the record, we find that the preponderance of
evidence on this record supports the Examiner's findings and conclusion that
the subject matter of Appellants' claims is unpatentable over the applied art.
Accordingly, we sustain each of the Examiner's rejections on appeal
essentially for the reasons set forth in the Final Office Action and in the
Answer.
Rejection 1
We refer to the Examiners' statement of the rejection as set forth on
pages 2-6 of the Answer.
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Appeal2018-000347
Application 12/997,939
Appellants' position is essentially two-pronged: Appellants argue
( 1) that the rationale provided by the Examiner in the rejection for the
combination of Agarwal and Baran is not reasonable and (2) that there is no
rationale to combine Yamaguchi with either Agarwal or Baran. Appeal Br.
6.
With regard to the first prong of argument, we agree with the
Examiner's stated response made on pages 7-8 of the Answer. Therein, the
Examiner states that one skilled in that art would have found it obvious to
have used surface modified nanoparticles in view of the improved surface
uniformity, drying speed, and improved dispensability of the nanoparticles
in solution as taught by Baran.
Appellants argue that because Agarwal does not explicitly teach the
use of nanoparticles in solution, the benefits described in Baran would not
be achievable in the invention of Agarwal for the reasons set for on pages 6-
8 of the Appeal Brief.
However, Appellants do not direct us to evidence in Agarwal in
support of their position that the benefits of improved dispersion described
in Baran would not be achievable in the invention of Agarwal. While Baran
does discuss the benefit as obtained in a process with nanoparticles in
solution, it reasonably follows that aggregation would also be a concern in
Agarwal, which is open to their use in solution or in powder form.
Moreover, Agarwal expressly teaches the use of aqueous dispersions or
emulsions that are combined with epoxy resin prior to removal of solvent.
See, e.g., Agarwal 7, 11. 16-20.
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Appeal2018-000347
Application 12/997,939
The Examiner further states that Yamaguchi teaches that it is
generally preferable to use nanoparticles in solution due to the fact that the
nanoparticles are present as a dispersion and are uniformly dispersed. Ans.
7-8; Yamaguchi [0044]. The Examiner further states that both Baran and
Yamaguchi recognize the importance of surface modification of
nanoparticle materials in order to improve the homogenous compounding
thereof in polymer compositions. Ans. 8. The Examiner states that the
ability to have a curable product with uniformly dispersed nanoparticles
would be highly important to one of ordinary skill in the art in order to form
a product having the same physical properties throughout the entire
thickness of the composition. Id. The Examiner states that it is well known
in the art that inorganic nanoparticles tend to agglomerate or aggregate,
especially in the presence of liquids which would include the solvents in
which they are provided as well as any uncured polymeric material or other
components which may be mixed to form the curable composition in
Agarwal (e.g. Examples 1-5). Ans. 8. No reply brief is of record addressing
these points raised by the Examiner.
We thus agree with the Examiner that it would have been obvious to
have used nanoparticles in solution and it would further have been obvious
to use surface modified nanoparticles in the composition of Agarwal based
upon the suggestions of the applied art.
With respect to the second prong of arguments, Applicant argues that
the rejection does not include a proper rationale for combining Agarwal and
Baran in view of Yamaguchi with respect to the use of
phenyltrimethoxysilane as a surface modifier for the nanoparticles
of Agarwal. Appeal Br. 8.
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Appeal2018-000347
Application 12/997,939
We agree with the Examiner's stated response made on pages 8-9 of
the Answer. Therein, the Examiner states that Yamaguchi teaches surface
modifiers which are known in the art to improve the dispersibility of
inorganic nanoparticles and notes that phenyltrimethoxysilane is among the
surface modifiers that are preferably used from the standpoint of dispersion
stability. Yamaguchi, ,r [0048]. Ans. 8. The Examiner states that
Yamaguchi teaches using nanoparticles in solution for the benefit of
providing a uniform composition for blending into polymer compounds.
Yamaguchi, ,r [0044]. Ans. 8. The Examiner concludes that it would be
obvious to one skilled in that art to surface modify inorganic nanoparticles
with a compound that is known in the art since the selection of a known
material based on its suitability for its intended purpose is prima facie
obvious. The Examiner states that the teachings in the reference that
phenyltrimethoxysilane is advantageous from the standpoint of dispersion
stability provides additional motivation for selecting the specific compound
as a surface modifier in Agarwal. Ans. 8-9.
With regard to a showing of unexpected results, Appellants' position
is set forth on page 9 of the Appeal Brief. With regard to such a showing,
we note that the burden rests with Appellants to establish (1) that the alleged
unexpected results presented as being associated with the claimed invention
are, in fact, unexpected, (2) that the comparisons are to the disclosure of the
closest prior art, and (3) that the supplied evidentiary showing is
commensurate in scope with the claimed subject matter. See In re Klosak,
455 F.2d 1077, 1080 (CCPA 1972).
Applicant argues that there exists a synergistic effect when using both
core shell rubber nanoparticles and surface modified silica nanoparticles,
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Appeal2018-000347
Application 12/997,939
and refer to their data in Table 4B on page 16 of the Specification, and in
Table 12 on page 22 of the Specification. Appeal Br. 9.
The Examiner responds and states that the data in Table 4B is not
commensurate in scope with the claims because the data does not show
unexpected properties across the entire range of diameters (50-500 nm and
10-100 nm) for either the silica or rubber nanoparticles as presently claimed.
Ans. 9.
Also, the Examiner states that the examples relied upon (in connection
with either Table 4B or Table 12) further use specific relative amounts of
silica and rubber nanoparticles, none of which are presently claimed in the
independent claim and further do not show across the entire range of
dependent claims 24--29. Ans. 9.
We agree with the Examiner's aforementioned position as the data in
Table 4B is limited to Appellants' Example 1 as shown on page 16 in Table
4B of the Specification. With regard to Table 12 on page 22 of the
Specification, the data therein is limited to Appellants' Example 9. Spec.
21-22. Appellant must also explain why the showing is commensurate in
scope with the claimed subject matter. See In re Boesch, 617 F.2d 272,276
(CCPA 1980). Hence, we agree with the Examiners' conclusion that
Appellants' supplied evidentiary showing is not commensurate in scope with
the claimed subject matter.
In view of the above, we affirm Rejection 1.
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Appeal2018-000347
Application 12/997,939
Rejection 2
Appellants do not separately argue Rejection 2 (Appeal Br. 10), and
we thus we affirm Rejection 2 for the same reasons that we affirm Rejection
1.
DECISION
Each rejection is affirmed.
TIME PERIOD
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).
ORDER
AFFIRMED
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