Ex Parte Wu

Patent Trials and Appeals Board

Feb 27, 2019

14368118 - (D) (P.T.A.B. Feb. 27, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/368,118 06/23/2014
32692 7590 03/01/2019
3M INNOVATIVE PROPERTIES COMPANY
PO BOX 33427
ST. PAUL, MN 55133-3427
FIRST NAMED INVENTOR
QingWu
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.
68148US004 4281
EXAMINER
CHANG, VICTORS
ART UNIT PAPER NUMBER
1788
NOTIFICATION DATE DELIVERY MODE
03/01/2019 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 QING WU
Appeal 2018-002429
Application 14/368,118
Technology Center 1700
Before MICHAEL P. COLAIANNI, N. WHITNEY WILSON, and
JANEE. INGLESE, Administrative Patent Judges.
INGLESE, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 requests our review under 35 U.S.C. § 134(a) of the
Examiner's decision to finally reject claims 1-5 and 8-11. We have
jurisdiction over this appeal under 35 U.S.C. § 6(b ).
We REVERSE.
STATEMENT OF THE CASE
Independent claim 1 illustrates the subject matter on appeal and is
reproduced below with contested language italicized:
1 Appellant is the applicant, 3M Innovative Properties Company.
Application Data Sheet filed June 23, 2014, 4. According to the Appeal
Brief, the real parties in interest are 3M Company and 3M Innovative
Properties Company. Appeal Brief filed September 6, 2017 ("App. Br."), 2.
Appeal2018-002429
Application 14/368,118
1. A bonding tape composition, based on the total weight of
the bonding tape composition, comprising:
25-75 percent by weight of an acrylate monomer;
20-70 percent by weight of an epoxy resin;
0.001-3 percent by weight of a radical photo-initiator;
3-5 percent by weight of a hydrophobic fumed silica; and
0.02-5 percent by weight of a cationic thermal initiator
which is a trifluoromethanesulfonic acid cationic thermal
initiator.
App. Br. 10 (Claims Appendix) (emphasis added).
The Examiner sets forth the following rejections in the Final Office
Action entered April 10, 2017 ("Final Act."), and maintains the rejections in
the Examiner's Answer entered November 3, 2017 ("Ans."):
I. Claims 1-3, 5, and 8-11 under 35 U.S.C. § I03(a) as
unpatentable over Kinzer2 in view of Aoki 3 and Kaszubski 4; and
II. Claim 4 under 35 U.S.C. § I03(a) as unpatentable over Kinzer
in view of Aoki, 5 Kaszubski, and the Epon Resins Publication 6.
2 US 5,453,450, issued September 26, 1995.
3 US 5,212,252, issued May 18, 1993.
4 US 2005/0211580 Al, published September 29, 2005.
5 The Examiner did not include Aoki as an applied prior art reference in the
rejection of claim 4 in the Final Office Action. Final Act. 4. The Examiner
explains in the Answer, however, that Aoki was "inadvertently missed" in
the Final Office Action, and indicates that Aoki "is now included" in the
rejection of claim 4. Ans. 5. Although Appellant asserts in the Reply Brief
that "the Examiner presents a new ... ground of rejection of claim 4" in the
Answer (Reply Br. 3), we do not address Appellant's assertion because this
matter is reviewable by petition under 3 7 C.F .R. § 1.181, and is therefore not
within the jurisdiction of the Board. Ex parte Frye, 94 USPQ2d 1072, 1078
(BPAI 2010) (precedential).
6 Momentive Specialty Chemicals Incorporated, EPONâ„¢ AND EPI-REZâ„¢
EPOXY RESINS, 1-15 (2013).
2
Appeal2018-002429
Application 14/368,118
DISCUSSION
Upon consideration of the evidence relied upon in this appeal and
each of Appellant's contentions, we reverse the Examiner's rejections of
claims 1-5 and 8-11 under 35 U.S.C. § 103(a) for the reasons set forth in the
Appeal Brief and below.
Claim 1 recites a bonding tape composition that comprises, in part, a
trifluoromethanesulfonic acid cationic thermal initiator.
The Examiner finds that Kinzer discloses a heat-curable epoxy-
acrylate film adhesive (bonding tape) comprising, in part, a thermally-
initiated cationic catalyst system comprising at least one salt of an
organometallic cation of trifluoromethanesulfonate. Final Act. 2-3 ( citing
Kinzer col. 1, 1. 46-col. 2, 1. 65; col. 3, 1. 46-col. 4, 1. 5).
The Examiner finds that Aoki discloses that trifluoromethanesulfonic
acid and trifluoromethanesulfonate are useful cationic polymerization
initiators for epoxy resins. Final Act. 3 (citing Aoki col. 4, 11. 37---64).
The Examiner concludes that because "Aoki specifically teaches" that
"initiators for cationic polymerization of epoxy resins can be in the acid
form or salt form, such as trifluoromethanesulfonic acid, and various
trifluoromethanesulfonate salts (i.e., same as Kinzer's initiator)," it would
have been obvious to one of ordinary skill in the art at the time of the
invention "to alternately use a functionally equivalent initiator (result
effective as an initiator) in the acid form (trifluoromethanesulfonic acid) as
the initiator for Kinzer's adhesive film." Ans. 6.
A preponderance of the evidence relied upon in this appeal does not
support the Examiner's conclusion of obviousness, however, for reasons
expressed by Appellant (App. Br. 6; Reply Br. 2) and discussed below.
3
Appeal2018-002429
Application 14/368,118
Kinzer discloses a stabilized curable adhesive prepared from a
formulation that comprises, in part, a thermally-initiated cationic catalyst
system comprising at least one salt of an organometallic cation. Col. 1, 11.
46-66. Kinzer discloses that the organometallic cation salt is composed of
substituted and unsubstituted aromatic compounds having a benzene or
cyclopentadienyl nucleus, a transition metal atom, and an anion, such as
trifluoromethanesulfonate. Col. 6, 1. 42---col. 7, 1. 62.
Aoki discloses cationic polymerization initiators suitable for curing
glycidyl-terminate epoxy resins, such as bisphenol A epoxy resins, that
include Bronsted acids such as trifluoromethanesulfonic acid; and
trifluoromethanesulfonates of a primary, secondary, or tertiary amine, such
as diethylamine trifluoromethanesulfonate, triethylamine
trifluoromethanesulfonate, and dimethylaniline trifluoromethanesulfonate.
Col. 4, 11. 37---64.
As best understood, the Examiner's rejection is premised on a finding
that the trifluoromethanesulfonate cationic polymerization initiators
disclosed in Aoki are the "same as" the organometallic cation salt thermal
initiators disclosed in Kinzer. Ans. 6. The Examiner also finds that the
trifluoromethanesulfonic acid cationic polymerization initiators disclosed in
Aoki are functionally equivalent to the primary, secondary, or tertiary amine
trifluoromethanesulfonate cationic polymerization initiators disclosed in
Aoki. Final Act. 3; Ans. 6. Based on the asserted identity of Aoki's
primary, secondary, or tertiary amine trifluoromethanesulfonate cationic
polymerization initiators and Kinzer's organometallic cation salt thermal
initiators, the Examiner determines that it would have been obvious to
substitute Aoki' s trifluoromethanesulfonic acid cationic polymerization
4
Appeal2018-002429
Application 14/368,118
initiators for Kinzer' s organometallic cation salt thermal initiators, due to the
functional equivalence of Aoki's trifluoromethanesulfonic acid cationic
polymerization initiators and Aoki's primary, secondary, or tertiary amine
trifluoromethanesulfonate cationic polymerization initiators. Id.
The Examiner, however, does not establish that the primary,
secondary, or tertiary amine trifluoromethanesulfonate cationic
polymerization initiators disclosed in Aoki are the "same as" the
organometallic cation salt thermal initiators disclosed in Kinzer. The
Examiner does not address the structural differences between these two
types of initiators, and explain why, despite those differences, one of
ordinary skill in the art nonetheless would have considered them to be the
"same." Nor does the Examiner address the differences in the compounds
cured by each type of initiator-the acrylate and/or methacrylate monomers
and epoxy functional monomers cured by Kinzer's initiator, and the
glycidyl-terminate epoxy resins, such as bisphenol A epoxy resins, cured by
Aoki's initiator.
Accordingly, although Aoki' s trifluoromethanesulfonic acid cationic
polymerization initiators may be functionally equivalent to Aoki's primary,
secondary, or tertiary amine trifluoromethanesulfonate cationic
polymerization initiators, the Examiner does not provide a sufficient factual
basis to establish that the combined disclosures of Kinzer and Aoki would
have suggested substituting Aoki' s trifluoromethanesulfonic acid cationic
polymerization initiator for Kinzer' s organometallic cation salt thermal
initiator to one of ordinary skill in the art at the time of the invention, such
that the skilled artisan would have arrived at a bonding tape composition
5
Appeal2018-002429
Application 14/368,118
comprising trifluoromethanesulfonic acid cationic thermal initiator, as
required by claim 1.
We accordingly do not sustain the Examiner's rejection of claim 1
under 35 U.S.C. § 103(a), and also the rejection of claims 2-5 and 8-11,
which each depend from claim 1.
DECISION
We reverse the Examiner's rejections of claims 1-5 and 8-11 under
35 U.S.C. § 103(a).
REVERSED
6