13370426 (P.T.A.B. Jun. 27, 2016)

Ex Parte Tonomura et al

Patent Trial and Appeal BoardJun 27, 2016

13370426 (P.T.A.B. Jun. 27, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/370,426 02/10/2012 Y oichi Tonomura 38834 7590 06/29/2016 WESTERMAN, HATTORI, DANIELS & ADRIAN, LLP 1250 CONNECTICUT A VENUE, NW SUITE 700 WASHINGTON, DC 20036 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. 120172 3980 EXAMINER JACKSON, SHAWQUIA ART UNIT PAPER NUMBER 1626 NOTIFICATION DATE DELIVERY MODE 06/29/2016 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): patentmail@whda.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte YOICHI TONOMURA, TOHRU KUBOTA, and TAKAYUKI HONMA Appeal2014-009309 Application 13/370,4261 Technology Center 1600 Before JEFFREY N. FREDMAN, JOHN G. NEW, and KRISTI L. R. SA WERT, Administrative Patent Judges. SA WERT, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. Â§ 134(a) from the rejection of claim 1 of U.S. Patent Application No. 13/370,426. We have jurisdiction under 35 U.S.C. Â§ 6(b). We affirm the Examiner's rejection but designate our affirmance as a new ground. Appellants identify SHIN-ETSU CHEMICAL CO., LTD. as the real party in interest. Br. 2. Appeal2014-009309 Application 13/370,426 STATEMENT OF THE CASE Claims 1--4 are pending in the present application. Claim 1 is on appeal and stands rejected under 35 U.S.C. Â§ 103(a) for obviousness over Miyazaki2. Claim 1 provides: 1. An amino acid-modified silane compound having the general formula ( 1): .. 4 Ht R Â· ... Â· Â·y)in. Â· ... 1, .â€¢.. , . sÂ·-2 Â·-.Â·.:~. t . . . ............. Â·).Â·Â·Â· -NI ... -(CH1)b-,.,1R n(OR h.,~1â€¢ '\ HÂ· . ,. r:r 0 Â· ... Â· .. Rn ~i .. 1 wherein R 1, R 4 and R5 each are hydrogen or a substituted or unsubstituted, C1-C20 monovalent hydrocarbon group, R2 and R3 each are a substituted or unsubstituted, C1-C20 monovalent hydrocarbon group, R6 is hydrogen, a substituted or unsubstituted, C1-C20 monovalent hydrocarbon group, or carboxyl group, a is 0 or 1, b is an integer of 1 to 10, and n is 0, 1or2. Br. 13. FINDINGS OF FACT (1) 1. The subject matter disclosed in the present application relates to novel amino acid-modified silane compounds. Spec. 1 (11. 15-16). 2. The Specification states that the disclosed amino acid-modified silane compounds have "improved hydrophilic and antifouling properties" and are "useful as paint additives, adhesives, silane coupling agents, 2 Tuyoshi Miyazaki and Yasumi Koinuma, U.S. Patent No. 5,936,703 (Aug. 10, 1999). 2 Appeal2014-009309 Application 13/370,426 textile treating agents, surface treating agents, and the like." Spec. 4 (11. 22-23). 3. Miyazaki discloses alkoxysilane compounds having the general formula (I) (R2)q CH3 I I ,.R 1 ) sÂ· ~'H C'H .,H Nt 'C'H . Â·v ( . C )p - ,_ lC . 2 .Â· 2C . 2: 1 - ( ... 2)n -A CH3 (I} wherein R 1 and R 2 denote --CH3 or --C2Hs and X denotes -Coo- or -S03-, p and n denote an integer of 1 to 3 and q denotes 0 or 1, where p+q=3. Miyazaki (Abstract). 4. Miyazaki states that the disclosed alkoxysilane compounds are "excellent in rendering the surface of a variety of inorganic or organic materials to become hydrophilic" and are "useful as anti-clouding agents, anti-static agents, dyeing promotors, protein adsorption controlling agents, cell adhesion controlling agents or as anti- thrombotics in the field of fibers, optical components, medical materials or inspection and diagnostic drugs." Miyazaki (col. 1, 11. 14--21). 5. Miyazaki states that, prior to their invention, "alkoxysilane compounds which afford hydrophilic properties" were unknown. Miyazaki (col. 1, 11. 35-37). Miyazaki states, however, that betaine was known "as a compound exhibiting superior hydrophilicity." Id. (col. 1, 11. 38-39). 3 Appeal2014-009309 Application 13/370,426 6. A betaine group has the following structure: Â· Br. 5. 7. Miyazaki discovered that compounds containing both alkoxysilane and betaine are "capable of affording hydrophilicity to various materials and give[] superior resistance against hydrolysis." Miyazaki (col. 2, 11. 27-32). DISCUSSION The issue in this case is whether an ordinarily-skilled artisan would have been motivated to modify Miyazaki' s alkoxysilane compound containing a-N+(CH3)(CH3}- moiety to an alkoxysilane compound containing a-N+(CH3)(H}- moiety as required by claim 1. Br. 5. For the following reasons, we affirm the rejection over Iviiyazaki, but enter a new ground of rejection. In the Final Office Action, the Examiner explained that the difference between Miyazaki' s compounds and the claimed compounds is that Miyazaki' s compounds "have two methyl groups bonded to the nitrogen atom whereas the instant compounds could have one hydrogen and one methyl group." Final Off. Act. 6. The Examiner further noted that -N+(CH3)(CH3}- and-N+(CH3)(H}- are considered homologs. Id. Relying on In re Wood, 582 F.2d 638 (CCPA 1978), the Examiner stated that a skilled artisan would have been motivated to replace a methyl group with hydrogen because "hydrogen and methyl are deemed obvious variants and 4 Appeal2014-009309 Application 13/370,426 substituting one for the other is not a patentable modification absent unexpected results." Final Off. Act. 3. In the Answer, the Examiner elaborated that both the claimed invention and the prior art compounds "improve hydrophilic properties of a surface when the surface is treated with the compounds," and that "it is within one of ordinary skill in this particular art to modify the compounds of Miyazaki et al. and prepare more alkoxysilane compounds with improved hydrophilic properties." Ans. 9-10. The Examiner continued: As stated in the pending 103 rejection, it has been established in In re Wood, that the substitution of methyl for hydrogen on a known compound is not a patentable modification absent unexpected or unobvious results and further discusses that hydrogen and methyl are deemed obvious variants. Since it has been established that hydrogen and methyl are deemed obvious variants, one of ordinary skill in the art would assume that the substitution of a methyl for a hydrogen or vice versa would result in two compounds with similar properties or utility. The Examiner's position is also supported by Ex parte Bluestone, 135 USPQ 199 where it was established that the interchange of alkyl and hydrogen is obvious in and of itself and further established that secondary and tertiary amines are interchangeable. Ans. 10. As an initial matter, we agree with Appellants that the Examiner appears to have read In re Wood and Ex parte Bluestone as creating a per se rule that adjacent homologs are always obvious absent a showing of unexpected results. See Br. 7-8. We do not read Wood so broadly. Although the CCP A stated in Wood that "an unexpected property possessed by a compound would be evidence of its unobviousness," 582 F.2d at 642, 5 Appeal2014-009309 Application 13/370,426 that statement does not necessarily mean that a compound is obvious unless it exhibits an unexpected property. Moreover, to the extent that Bluestone sets forth that rule, it is inconsistent with Federal Circuit law. See In re Mayne, 104 F.3d 1339, 1341 (Fed. Cir. 1997) ("[E]ach obviousness determination rests on its own facts."). Turning to the merits of this case, the Federal Circuit has explained that "[ o ]bviousness based on structural similarity ... can be proved by identification of some motivation that would have led one of ordinary skill in the art to select and then modify a known compound (i.e. a lead compound) in a particular way to achieve the claimed compound." Eisai Co. v. Dr. Reddy 's Labs., Ltd., 533 F.3d 1353, 1357 (Fed. Cir. 2008); see also Genetics Inst., LLC v. Novartis Vaccines & Diagnostics, Inc., 655 F.3d 1291, 1304 (Fed. Cir. 2011) (stating that the obviousness inquiry requires "the identification of some reason that would have prompted a researcher to modify the prior art compounds in a particular manner to arrive at the claimed compounds"). Of course, close structural similarity between chemical compounds, such as homologs, may provide the requisite reason or motivation. In re Dillion, 919 F.2d 688, 693 (Fed. Cir. 1990) (en bane). But that motivation must be grounded in the ordinarily-skilled artisan's expectation that, given the close structural similarity, the claimed compounds will have the same properties as the prior-art compounds. Id. Here, Appellants have put forth a rational response to the Examiner's prima facie case of obviousness: a skilled artisan would not have expected the claimed compounds to have the same hydrophilic property as Miyazaki' s compounds because Miyazaki teaches that prior art alkoxysilane compounds were known to be hydrophobic and that the combination of alkoxysilane and 6 Appeal2014-009309 Application 13/370,426 betaine created the hydrophilic property. See FF5, FF7. We note that the Examiner did not address how one skilled in the art would have interpreted Miyazaki-that is, whether a skilled artisan would understand Miyazaki as teaching that the betaine group is essential for hydrophilicity. At most, the Examiner stated that "it is within one of ordinary skill in this particular art to modify the compounds of Miyazaki et al. and prepare more alkoxysilane compounds with improved hydrophilic properties." Ans. 10 (emphasis added). We agree, but only because we understand that a person having ordinary skill in the art would recognize that methyl groups are hydrophobic, and would further understand that removing a methyl group would maintain or increase the hydrophilicity of the prior art compounds, retaining the "superior hydrophilicity" desired by Miyazaki. FF5. Put differently, it appears to us that a skilled artisan would expect that the claimed compounds would have similar properties to Miyazaki's compounds. Along with the close structural similarity, this rationale suffices to create a prima facie case of obviousness. Eisai, 533 F.3d at 1357. We acknowledge that this reasoning is not in the record. Thus, we will designate our affirmance as a New Ground of Rejection, in order to provide Appellants with a fair opportunity for further prosecution, if so desired. See In re Kronig, 539 F.2d 1300, 1302 (CCPA 1976) ("[T]he ultimate criterion of whether a rejection is considered 'new' in a decision by the board is whether appellants have had fair opportunity to react to the thrust of the rejection."). We note that the burden of production shifts to Appellants to provide evidence or sound scientific reasoning rebutting the prima facie case. Dillion, 919 F .2d at 692-93. 7 Appeal2014-009309 Application 13/370,426 Finally, we agree with the Examiner that the Declaration filed on July 2, 2013 is not persuasive because it does not compare the rejected claim to the prior art. Ans. 10-11. As the Examiner explained, the Declaration compares Miyazaki's alkoxysilane compound containing a-N+(CH3)(CH3}- moiety (i.e., Formula (A)) to an alkoxysilane compound containing a -N+(H)(H}- moiety (i.e., Formula (B)). But the closest claimed compound (as recited in claim 1) is an alkoxysilane compound containing a -N+(CH3)(H}-moiety. Thus, the Declaration is not persuasive on the issue of obviousness of claim 1. See In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984) ("[A]n applicant relying on comparative tests to rebut a prima facie case of obviousness must compare his claimed invention to the closest prior art.") SUMMARY We affirm the rejection of claim 1under35 U.S.C. Â§ 103(a) over Miyazki, but because our reasoning differs from that of the Examiner, we designate our affirmance as a New Ground of Rejection. TIME PERIOD FOR RESPONSE This decision contains a new ground of rejection pursuant to 3 7 C.F.R. Â§ 41.50(b) (effective September 13, 2004, 69 Fed. Reg. 49960 (August 12, 2004), 1286 Off. Gaz. Pat. Office 21 (September 7, 2004)). Rule 41.50(b) provides "[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review." 37 C.F.R. Â§ 41.50(b) also provides that the Appellants, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise 8 Appeal2014-009309 Application 13/370,426 one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: ( 1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, and have the matter reconsidered by the Examiner, in which event the proceeding will be remanded to the Examiner. . .. (2) Request rehearing. Request that the proceeding be reheard underÂ§ 41.52 by the Board upon the same record .... No time period for taking any subsequent action in connection with appeal may be extended under 37 C.F.R. Â§ 1.136 (a). AFFIRMED, 37 C.F.R. Â§ 41.50(b) 9