Ex Parte Xu et al

Patent Trial and Appeal Board

Oct 28, 2016

13106407 (P.T.A.B. Oct. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/106,407 05/12/2011
25108 7590 10/28/2016
CANON NANOTECHNOLOGIES, INC.
PO BOX 81536
AUSTIN, TX 78708-1536
FIRST NAMED INVENTOR
FrankY.Xu
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.
P604C207 5190
EXAMINER
ROSWELL, JESSICA MARIE
ART UNIT PAPER NUMBER
1767
MAILDATE DELIVERY MODE
10/28/2016 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte FRANKY. XU
and MICHAEL N. MILLER
Appeal2015-004853
Application 13/106,407
Technology Center 1700
Before KAREN M. HASTINGS, GEORGE C. BEST, and
N. WHITNEY WILSON, Administrative Patent Judges.
HASTINGS, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellants 1 appeal the Examiner's
decision rejecting claims 5-17 under 35 U.S.C. § 103(a). We have
jurisdiction over the appeal under 35 U.S.C. § 6(b ).
We AFFIRM.
1 The real parties in interest are stated to be Canon Nanotechnologies, Inc.
and Molecular Imprints, Inc. (Br. 1 ).
Appeal2015-004853
Application 13/106,407
Claim 5 is illustrative of the appealed subject matter (emphasis added
to highlight key disputed limitations):
5. A nano-scale fabrication imprinting material comprising:
one or more polymerizable components;
a fluorinated surfactant comprising -CH2CH2CH20-,
-CH( CH3)CH20-, -OCH(CH3)CH2-, -CH(CH3 )CH( CH3)0-, or
a combination thereof; and
a photoinitiator,
wherein, after deposition of the imprinting material in the
form of a droplet on an imprint lithography substrate exposed to
air, the fluorinated surfactant rises to the air-liquid interface of
the droplet, yielding a surfactant-component-rich sub-portion
and a surfactant-component-depleted sub-portion, wherein the
surfactant-component-depleted sub-portion is positioned
between the nanoimprint lithography substrate and the
surfactant-component-rich sub-portion.
(Br. 11, Claims App. 1 ).
The Examiner maintains the following rejections:
(a) claims 5-17 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Palazzotto et al. (US 2004/0122122 Al, published June 24, 2004)
(hereinafter "Palazzotto") in view of Olson (US 3,787,351, issued Jan. 22,
197 4) (hereinafter "Olson"); and
(b) claims 5-12 and 16 are rejected on the ground of nonstatutory
double patenting as unpatentable over claim 10 of Xu et al. (US 7,307,118
B2, issued Dec. 11, 2007) (hereinafter "Xu").
With the exception of claim 15, Appellants' arguments urging reversal
of the obviousness rejection of claims 5-17 focus on limitations common to
independent claim 5 (Br. 2-12). Accordingly, in the absence of arguments
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specific to their patentability, dependent claims 6-14, 16, and 17 stand or
fall with claim 5. 37 C.F.R. § 41.37(c)(l)(iv).
Appellants do not present any explicit argument for reversal of the
nonstatutory double patenting rejection of claims 5-12 and 16. We,
therefore, summarily affirm the Examiner's rejection of claims 5-12 and 16
on the ground of nonstatutory double patenting as unpatentable over claim
10 of Xu.
ANALYSIS
Upon consideration of the evidence on this record and each of
Appellants' contentions, we find that the preponderance of evidence
supports the Examiner's conclusion that independent claim 5 and all of its
dependent claims are unpatentable over the applied prior art and that
Appellants have failed to show that the Examiner erred reversibly. We
sustain the Examiner's§ 103 rejection, listed in (a) above, of all the
appealed claims for essentially the reasons set out by the Examiner in the
Non-Final Office Action and the Answer.
We add the following primarily for emphasis.
The Examiner finds that Palazzotto' s disclosure of a photocurabale
composition discloses all of the elements of claim 5 except that Palazzotto
" ... fails to explicitly teach a fluorinated surfactant of the instant
invention[]" (Non-Final Act. 3). The Examiner finds, however, that Olson
discloses compositions useful for resin composites comprised of a
fluoroaliphatic oligomer (id. (citing Olson 3:20-4:75)). The Examiner
concludes that it would have been obvious for the ordinary skilled artisan to:
add [Olson's] fluoroaliphatic oligomer ... to [Palazzotto's]
curable composition ... and would have been motivated to do
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so, in order achieve a composition having improved mechanical
properties, since such oligomers act in effect as wetting agents in
that they promote the wetting of the fillers or reinforcing
elements by the resin so as to promote a strong and extensive
bond there between and minimize the presence of voids, thereby
improving mechanical properties of the resulting composite, as
suggested by Olson.
(Non-Final Act. 4--5 (citing Olson 2:14--19)).
The Examiner further determines that the language contained in the
wherein clauses of claim 5, which functionally describe the fluorinated
surfactant rising to the air-liquid interface of the composition and the
respective positions of surfactant-component sub-portions thereafter, is a
product-by-process limitation (Non-Final Act. 5).2 Therefore, according to
the Examiner, determination of patentability is based on the product itself
(id.). The Examiner concludes that the proposed combination of Palazzotto
and Olson "would implicitly achieve the fluorinated surfactant rising to the
air-liquid interface of the composition, since Olson teaches employing the
fluorosurfactant in an amount of 0.005 to 5 weight percent of the resin
composition Olson[,]" which overlaps the surfactant range of 0.05%----5% by
2 Although we hold that the limitation at issue is functional, i.e., not a
product-by-process limitation, the burden shifts to Appellants in both
instances to show that the art does not have the claimed functionality.
Where functional characteristics are described or suggested in the prior art,
the burden shifts to the applicant to demonstrate that the prior art does not
possess the claimed functionality. In re Hallman, 655 F.2d 212, 215 (CCPA
1981 ). "Where ... the claimed and prior art products are identical or
substantially identical, or are produced by identical or substantially identical
processes, the PTO can require an applicant to prove that the prior art
products do not necessarily or inherently possess the characteristics of his
claimed product." In re Best, 562 F.2d 1252, 1256 (CCPA 1977).
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weight of the composition disclosed in the Specification (id. at 6 (citing
Olson 5:67-71); see also Spec. i-f 61).
Appellants argue that Olson is not a proper reference for use in an
obviousness rejection for two reasons (Br. 3). First, Appellants argue that
"Olson is not the same field of endeavor as the claimed invention" because
Olson is directed to "'shaped articles of self-supporting structural filled or
reinforced resin composites'" (id. (citing Olson 1: 19-20) ), whereas
Appellants' claimed invention is directed to "'a nano-scale fabrication
imprinting material[]"' (Br. 3). Second, according to Appellants, Olson is
not reasonably pertinent to the problem faced by Appellants because "[t]he
nano-fabrication imprinting material of the instant invention ... does not
include fillers or reinforcing elements[]" as taught by Olson (id. at 4).
Appellants' position is that "the fillers of 0 Ison . . . [are] incompatible with
an imprinting material for nanoscale fabrication of structures" (id. at 4--5).
Appellants' arguments, however, are not persuasive because the
recitation of "a nano-scale fabrication imprinting material" in the preamble
of claim 5 is merely an intended use limitation, which does not further limit
the claimed subject matter. See, e.g., Pitney Bowes, Inc. v. Hewlett-Packard
Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999) (explaining that ifthe body of the
claim fully sets forth the complete invention and the preamble offers no
distinct definition of any of the limitations, but merely states the purpose or
intended use of the invention, then the preamble is of no significance to
claim construction).
Furthermore, we discern no reversible error in the Examiner's
reasoned determination that the ordinary skilled artisan would have been
motivated to combine Olson's fluoroaliphatic oligomer with Palazzotto's
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curable composition when such oligomers act as wetting agents to promote
the wetting of fillers. Appellants' arguments are not persuasive because
"motivation to modify a prior art reference to arrive at the claimed invention
need not be the same motivation that the patentee had." Alcon Research,
Ltd. v Apotex Inc., 687 F.3d 1362, 1368 (Fed. Cir. 2012) (citing KSR Int'!
Co. v. Teleflex, Inc., 550 U.S. 398, 406, 420 (2007) (stating that it is error to
look "only to the problem the patentee was trying to solve")). Indeed,
Palazzotto teaches use of inert fillers as an adjuvant for its curable
composition (see Palazzotto i-f 77).
Given the similarity in the Examiner's modified composition as taught
by the prior art to Appellants' composition comprising polymerizable,
fluorinated surfactant and photoinitiator components as claimed, we
determine that the Examiner was justified in concluding that the composition
of Palazzotto in view of Olson renders claim 5 obvious. The Examiner's
modified composition would reasonably be believed to exhibit the claimed
effects and physical properties (e.g., Ans. 5-8 (finding that the Specification
exemplifies (i-fi-f 84--88) and Olson teaches (8:67-70) employing the
surfactant in an amount of 0.5 wt.%.)). See, e.g., In re Spada, 911 F.2d 705,
708 (Fed. Cir. 1990) ("[W]hen the PTO shows sound basis for believing that
the products of the applicant and the prior art are the same, the applicant has
the burden of showing that they are not. In re King, 801 F.2d 1324, 1327,
231USPQ136, 138 (Fed. Cir. 1986); In re Ludtke, 441F.2d660, 664, 169
USPQ 563, 566 (CCPA 1971).").
With respect to separately argued claim 15, the Examiner
acknowledges that Palazzotto is silent regarding the requisite viscosity
limitation of less than about 20 cP at room temperature (Non-Final Act. 6).
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According to the Examiner, however, the applied prior art "teaches all of the
claimed reagents, claimed amounts, and substantially similar processes" (id.
at 7; see also Ans. 3-9) and the composition described in the Specification
exhibits a viscosity of less than 20 cP (see Spec. i-fi-129, 51 ). Thus, the
Examiner concludes that "the claimed effects and physical properties, i.e.[,]
viscosity of the composition at room temperature, would implicitly be
achieved by a composition with all the claimed ingredients[]" (Non-Final
Act. 7).
On the other hand, Appellants assert that the Examiner has not
provided sufficient rationale or evidence demonstrating "that the claimed
viscosity is necessarily present based on the disclosure of Palazzotto[]"
Br. 9. Appellants' arguments, however, are not persuasive because the
Examiner has provided a reasonable determination that the composition of
Appellants and the prior art composition as modified in an obvious way are
the same. See, e.g., In re Spada, 911 F .2d at 708.
Appellants have not shown the Examiner erred in the obviousness
determination of the subject matter of claims 5-17 over the applied prior art.
Appellants have not specifically refuted the Examiner's determination that
all components of independent claim 5 and separately argued dependent
claim 15 are disclosed by the combination of Palazzotto and Olson (Non-
Final Act. 3-7; Ans. 3-9), such that Palazzotto's curable composition is
capable of the claimed functions if combined with Olson's fluoroaliphatic
oligomer (id., Br. generally).
Accordingly, we affirm the Examiner's§ 103 rejection of the claims
on appeal.
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Application 13/106,407
DECISION
The Examiner's§ 103 and nonstatutory double patenting rejections
are 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).
AFFIRMED
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