LG CHEM, LTD.

Patent Trials and Appeals Board

Oct 13, 2020

14554984 - (D) (P.T.A.B. Oct. 13, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/554,984 11/26/2014 Sang Uk RYU 29137.01662.US00 7905
30827 7590 10/13/2020
Dentons US LLP
1900 K. Street, N.W.
Washington, DC 20006
EXAMINER
FERRE, ALEXANDRE F
ART UNIT PAPER NUMBER
1788
NOTIFICATION DATE DELIVERY MODE
10/13/2020 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):
mlaip@dentons.com
mlapto@mckennalong.com
paul.fugitt@dentons.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte SANG UK RYU, DONG RYUL KIM, SEUNG LAC MA,
JANG YEON HWANG, and JONG MIN MOON

____________

Appeal 2019-006307
Application 14/554,984
Technology Center 1700
____________

Before CATHERINE Q. TIMM, CHRISTOPHER C. KENNEDY, and
JANE E. 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 final rejection of claims 1, 2, 4–12, and 15–18.2 We have
jurisdiction over this appeal under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to the “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies LG CHEM, LTD. as the real party in
interest. Appeal Brief filed January 28, 2019 (“Appeal Br.”) at 2.
2 Final Office Action entered April 27, 2018 (“Final Act.”).
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CLAIMED SUBJECT MATTER
Appellant claims a gas barrier film. Appeal Br. 6–8. Claim 1, the
sole pending independent claim, illustrates the subject matter on appeal, and
reads as follows:
1. A gas barrier film, comprising:
an organic-inorganic hybrid coating layer comprising a
cured product of a sol-type hydrolyzed composition containing
tetraethoxy orthosilicate and 3-glycidoxypropyl-
trimethoxysilane;
an inorganic layer; and
a protective coating layer including inorganic
nanoparticles surface-modified with an organic silane, the
layers being sequentially stacked on one surface or both
surfaces of a base, wherein:
the inorganic nanoparticles are at least one selected from
the group consisting of alumina nanoparticles, zinc oxide
nanoparticles, antimony oxide nanoparticles, titanium oxide
nanoparticles, and zirconium oxide nanoparticles;
the inorganic nanoparticles are spherical and have a
diameter of 20 to 100 nm; and
the organic silane is 3-glycidoxypropyltrimethoxysilane
or a compound of Formula 1:
[Formula l]
R1mSiX4-m
wherein:
X is the same as or different from each other, and each
independently is hydrogen, halogen, an alkoxy group having 1
to 12 carbon atoms, an acyloxy group, an alkylcarbonyl group,
an alkoxycarbonyl group, or N(R2)2 wherein R2 is hydrogen or
an alkyl group having 1 to 12 carbon atoms;
R1 is the same as or different from each other, and each
independently represents an alkenyl group, an alkynyl group, an
arylalkynyl group, an alkynylaryl group, or an alkylcarbonyl
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group, and has as a substituent an amino group, an amide
group, an aldehyde group, a keto group, a carboxyl group, a
mercapto group, a cyano group, a hydroxyl group, an alkoxy
group having 1 to 12 carbon atoms, an alkoxycarbonyl group
having 1 to 12 carbon atoms, a sulfonic acid, a phosphoric acid,
an acryl group, a methacryl group, an epoxy group or a vinyl
group; and
m is an integer from 1 to 3.

Appeal Br. 27 (Claims App.).
REJECTION
The Examiner maintains the rejection of claims 1, 2, 4–12, and 15–18
under 35 U.S.C. § 103(a) as unpatentable over Lee3 in view of Kim,4
Kwon,5 and Suzuki6 in the Examiner’s Answer entered June 24, 2019
(“Ans.”).
FACTUAL FINDINGS AND ANALYSIS
Upon consideration of the evidence relied upon in this appeal and
each of Appellant’s contentions, we reverse the Examiner’s rejection of
claims 1, 2, 4–12, and 15–18 under 35 U.S.C. § 103(a), for the reasons set
forth in the Appeal and Reply Briefs, and below.
We review appealed rejections for reversible error based on the
arguments and evidence the Appellant provides for each issue the Appellant
identifies. 37 C.F.R. § 41.37(c)(1)(iv); Ex parte Frye, 94 USPQ2d 1072,

3 Lee et al., KR 10-2009-0074998 A, published July 8, 2009. Appellant
does not contest the Examiner’s reliance in a machine translation of this
reference, which the Examiner entered into the record on April 11, 2017, and
also cited on a PTO-892 form entered April 11, 2017.
4 Kim et al., US 2007/0267135 A1; published Nov. 22, 2007.
5 Kwon et al., US 2012/0135216 A1; published May 31, 2012.
6 Suzuki et al., US 2007/0207298 A1; published Sept. 6, 2007.
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1075 (BPAI 2010) (precedential) (cited with approval in In re Jung, 637
F.3d 1356, 1365 (Fed. Cir. 2011) (explaining that even if the Examiner had
failed to make a prima facie case, “it has long been the Board’s practice to
require an applicant to identify the alleged error in the examiner’s
rejections”)).
We need address only claim 1, the sole pending independent claim.
Claim 1 requires the recited gas barrier film to comprise the following layers
sequentially stacked on one surface or both surfaces of a base: an organic-
inorganic hybrid coating layer, and inorganic layer, and a protective coating
layer including inorganic nanoparticles surface-modified with 3-
glycidoxypropyltrimethoxysilane or a compound of Formula I.
Lee discloses “a multi-layered plastic substrate in which an organic-
inorganic hybrid buffer layer, a gas barrier layer and an inorganic hard coat
layer on which inorganic particles are added are sequentially laminated on a
plastic film.” Lee 2, first full paragraph. Lee discloses that the inorganic
hard coat layer “may be prepared by adding an inorganic particle to a sol-gel
or an organic coating solution,” and then thermally curing the solution. Lee
4, second and third paragraphs.
The Examiner finds that Lee does not disclose that the inorganic
particles included in the hard coating layer are surface modified with an
organic silane, and the Examiner relies on Kwon to address this feature
missing from Lee’s disclosures. Final Act. 4.
Kwon discloses a composition for forming a hard coating film that
includes a polymeric binder resin and organic-inorganic silica particles.
Kwon ¶¶ 1, 14, 17. Kwon discloses forming the organic-inorganic silica
particles by chemically binding an initiator to hydroxyl groups present on
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the surface of silica particles by first reacting an alkoxy silane compound
with the hydroxyl groups to introduce an epoxy group into the hydroxyl
groups, and then reacting a photo or thermal initiator with the epoxy group.
Kwon ¶¶ 18, 19, 32. Kwon discloses that suitable alkoxy silane compounds
include glycidoxypropyltrimethoxysilane, and suitable initiators include azo
compounds. Kwon ¶¶ 26, 33.
Kwon discloses that when the surface-modified organic-inorganic
silica particles are UV or heat cured, the azo groups decompose into radicals
that function as photo or thermal initiators, and chemically bond to reactive
groups on polymers used as the binder resin, grafting the polymers onto the
silica particles. Kwon ¶¶ 17, 28. Kwon discloses that the cured coating
composition forms a hard coating film having superior scratch and abrasion
resistance. Kwon ¶¶ 1, 14.
In view of these disclosures in Kwon, the Examiner concludes that it
would have been obvious to one of ordinary skill in the art to use Kwon’s
surface-modified organic-inorganic silica particles as the inorganic particles
in Lee’s hard coating composition to obtain a hard coating having improved
abrasion and scratch resistance. Final Act. 4.
Appellant argues that the inorganic nanoparticles surface-modified
with an organic silane that is 3-glycidoxypropyltrimethoxysilane recited in
claim 1 include a terminal epoxide moiety. Appeal Br. 16. Appellant argues
that the azo-silica particles disclosed in Kwon do not include a terminal
epoxide group, but instead include a terminal azo group. Id. Appellant
argues that Kwon discloses chemically reacting an epoxide bonded via an
alkoxy silane linker to hydroxyl groups on the surface of silica particles with
an azo compound “to form a bond and link the azo initiator to the silica
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particle.” Id. Appellant argues that one of ordinary skill in the art would not
have removed the azo initiator from Kwon’s azo-silica particles because
Kwon teaches that improved abrasion and scratch resistance of Kwon’s
exhibited by Kwon’s hard coating layer results from chemical bonding of the
azo-silica particles to a binder resin via the azo initiator. Appeal Br. 17.
Appellant’s arguments identify reversible error in the Examiner’s
rejection.
Claim 1 recites a gas barrier film comprising, in part, “a protective
coating layer including inorganic nanoparticles surface-modified with an
organic silane.” Claim 1 further recites that “the organic silane is 3-
glycidoxypropyltrimethoxysilane or a compound of Formula I.” The plain
language of claim 1 thus requires the inorganic nanoparticles included in the
protective coating layer of the claimed gas barrier film to be surface-
modified with 3-glycidoxypropyltrimethoxysilane or a compound of
Formula I.
As discussed above, Kwon discloses forming the organic-inorganic
silica particles described in the reference by reacting an alkoxy silane
compound, such as glycidoxypropyltrimethoxysilane, with hydroxyl groups
present on the surface of silica particles to introduce an epoxy group into the
hydroxyl groups, and then reacting a photo or thermal initiator, such as an
azo compound, with the epoxy groups, to bond the initiator to the silica
particles. Kwon ¶¶ 18, 19, 26, 32, 33. Upon completion of this process, the
resulting organic-inorganic silica particles are not surface-modified with 3-
glycidoxypropyltrimethoxysilane, because the epoxy moiety of the 3-
glycidoxypropyltrimethoxysilane is not present in the molecules attached to
the surface of the silica particles, due to reaction of the epoxy group with an
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initiator. Consequently, using Kwon’s surface-modified organic-inorganic
silica particles as the inorganic particles in Lee’s hard coating composition
for forming an inorganic hard coat layer would not result in a protective
coating layer that includes inorganic nanoparticles surface-modified with 3-
glycidoxypropyltrimethoxysilane. Rather, Lee’s particles would be surface-
modified with a molecule including a silane linker and a terminal initiator
moiety, and would not include an epoxy group, as Appellant argues.
The Examiner, however, asserts in the Answer that “surface-
modified” as recited in claim 1 is “much broader in scope than Appellant’s
arguments that the nanoparticles must contain 3-glycidoxypropyl
trimethoxysilane and would encompass embodiments wherein the compound
is further reacted or modified, as disclosed in Kwon.” Ans. 8. According to
the Examiner, “[t]he nanoparticles of Kwon et al. are initially modified with
the silane compound and the silane compound containing nanoparticle is
subsequently reacted with an azo containing compound. The nanoparticles
are therefore effectively ‘surface-modified’ with the claimed silane.” Id.
(citations omitted).
The Examiner, however, does not provide any basis for interpreting
“surface modified with . . . 3-glycidoxypropyl trimethoxysilane” as
encompassing surface modifications in which 3-glycidoxypropyl
trimethoxysilane is not actually present. As Appellant points out in the
Reply Brief (Reply Br. 7), Appellant’s Specification describes preparing the
surface-modified inorganic nanoparticles of Appellant’s invention by
“reacting the organic silane on the surface of the inorganic particle while
hydrolyzed with water and a catalyst.” Spec. ¶ 44; see also Spec. ¶¶ 60–62.
The Specification does not describe subsequently subjecting the resulting
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silane-modified inorganic particles to any further reaction or modification.
Thus, consistent with the disclosures in Appellant’s Specification and the
plain language of claim 1, one of ordinary skill in the art would understand
that the surface-modified inorganic nanoparticles included in the protective
coating layer of the gas barrier film recited in claim 1 contain 3-
glycidoxypropyltrimethoxysilane on their surface.
The Examiner’s interpretation of “surface modified” as
“encompass[ing] embodiments wherein the compound is further reacted or
modified, as disclosed in Kwon” is, therefore, inconsistent with the plain
language of claim 1, and with the disclosures in Appellant’s Specification,
and, consequently, is unduly broad. In re Morris, 127 F.3d 1048, 1054–55
(Fed. Cir. 1997) (“While the Board must give the terms their broadest
reasonable construction, the construction cannot be divorced from the
specification and the record evidence.”); In re Smith Int’l, Inc., 871 F.3d
1375, 1382–83 (Fed. Cir. 2017) (“The correct inquiry in giving a claim term
its broadest reasonable interpretation in light of the specification is not
whether the specification proscribes or precludes some broad reading of the
claim term adopted by the examiner. And it is not simply an interpretation
that is not inconsistent with the specification. It is an interpretation that
corresponds with what and how the inventor describes his invention in the
specification, i.e., an interpretation that is ‘consistent with the
specification.’” (quoting Morris, 127 F.3d at 1054)).
The Examiner also does not set forth a reason for why one of ordinary
skill in the art would have used the intermediate particles produced during
Kwon’s process that include an epoxy group that has not yet reacted with an
initiator as the inorganic particles in Lee’s hard coating composition,
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particularly in view of Kwon’s disclosure that the improved abrasion and
scratch resistance exhibited by Kwon’s hard coating layer occurs as a result
of bonding the surface modified-silica particles to a binder resin via the
initiator.
Thus, on the record before us, the Examiner does not identify any
disclosure in Lee or Kwon, when considered individually or in combination,
which discloses or would have suggested a gas barrier film comprising a
protective coating layer including inorganic nanoparticles surface-modified
with an organic silane that is 3-glycidoxypropyltrimethoxysilane, as required
by claim 1 as we have interpreted it.
We, therefore, do not sustain the Examiner’s rejection of claim 1, and
claims 2, 4–12, and 15–18, which each depend from claim 1, under
35 U.S.C. § 103(a).
CONCLUSION

Claims

35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 2, 4–12,
15–18
103(a) Lee, Kim, Kwon,
Suzuki
1, 2, 4–12,
15–18

REVERSED