Thomas CASTLE et al.

Patent Trials and Appeals Board

Sep 29, 2020

2019006177 (P.T.A.B. Sep. 29, 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.
14/106,975 12/16/2013 Thomas Charles CASTLE 066847-06852 (C-897 US) 5441
96610 7590 09/29/2020
Ostrolenk Faber LLP
845 THIRD AVENUE
8TH FLOOR
New York, NY 10022
EXAMINER
HEINCER, LIAM J
ART UNIT PAPER NUMBER
1767
NOTIFICATION DATE DELIVERY MODE
09/29/2020 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):
pat@ostrolenk.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte THOMAS CHARLES CASTLE,
ROBERT LOUIS FINCH, DAVID ALAN PEARS,
MAURICE PRESTON, PENNADAM SHANMUGAM SIVANAND,
BRIAN DAVID YOUNG, and DEREK RONALD ILLSLEY
____________

Appeal 2019-006177
Application 14/106,975
Technology Center 1700
____________
Before MICHAEL P. COLAIANNI, GEORGE C. BEST, and
DEBRA L. DENNETT, Administrative Patent Judges.
BEST, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 36–42, 44–46, 48–68, and 75–77 of
Application 14/106,975. Advisory Act. 1 (January 22, 2019). We have
jurisdiction under 35 U.S.C. § 6.
For the reasons set forth below, we affirm.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies Sun Chemical Corp., as the real party in
interest. Appeal Br. 2.
Appeal 2019-006177
Application 14/106,975
2
I. BACKGROUND
The ’975 Application describes functionalized homopolymers and
copolymers of vinyl alcohol. Spec. ¶ 2. These polymers are said to comprise
one or more aminosilane-containing and/or aminosilanol-containing side
chains attached to the polymer backbone via a reactive coupling group. Id.
The ’975 Application describes a process for preparing such polymers and
their use in coatings, inks, or adhesives. Id. Claim 36 is representative of the
’975 Application’s claims and is reproduced below from the Appeal Brief’s
Claims Appendix.
36. An ink or coating composition comprising a gel-free,
functionalized homopolymer or copolymer of vinyl alcohol
according to the formula:
P–(R)n
where:
P comprises a straight or branched chain polymer
backbone comprising a homopolymer or copolymer of vinyl
alcohol and at least one other monomer, and reactive coupling
groups comprising a ketone-containing or ketoester-containing
functional group;
R comprises side chains attached to the polymer
backbone via the reactive coupling groups that are aminosilane
having one end amine functional group and/or aminosilanol
having one end amine functional group; and
n is the number of side chains ranging from about
1 to about 25 mol% of the polymer backbone; and
clay comprising particles having at least one dimension
that is less than 100 nm;
wherein a weight % ratio of the aminosilane to the keto-
ester reactive coupled vinyl copolymer or homopolymer ranges
from about 1:2 to 1:100.
Appeal Br. App. 7 (emphasis added).
Appeal 2019-006177
Application 14/106,975
3
II. REJECTIONS
On appeal, the Examiner maintains the following rejections:
1. Claims 36–42, 44, 48–58, 62–68, and 75–77 are rejected under 35
U.S.C. § 103(a) as unpatentable over the combination of
Morinaka2 and Kotani,3 as evidenced by Lavoie.4 Answer 3–5.
2. Claims 45 and 46 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Morinaka, Gerow,5 and
Kotani, as evidenced by Lavoie. Answer 6.
3. Claims 59–61 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Morinaka, Farrell,6 and
Kotani, as evidenced by Lavoie. Answer 6.
III. DISCUSSION
After entry of the Final Action, Appellant sought to amend the claims
in the ’975 Application. Amendment After Final (January 9, 2019). The
proposed amendments to the claims were entered on January 22, 2019.
Advisory Act. 1. In these amendments, Appellant, inter alia, amended claim
36 to incorporate the limitations recited in dependent claim 47. Id. at 2.

2 JP 2003/171600, published June 20, 2003. We follow the Examiner and
Appellant by referring to a machine translation that was made of record in
this appeal on May 26, 2016.
3 US 5,700,560, issued Dec. 23, 1997.
4 US 5,494,961, issued Feb. 27, 1996.
5 US 3,595,740, issued July 27, 1971.
6 US 5,506,011, issued April 9, 1996.
Appeal 2019-006177
Application 14/106,975
4
Appellant argues for reversal of all of the rejections at issue based
upon the limitations in amended claim 36. Appeal Br. 3–6; Reply Br. 2–3.
We, therefore, select claim 36 as representative of the claims subject to this
ground of rejection and limit our discussion to this claim. 37 C.F.R.
§ 41.37(c)(1)(iv).
A. Rejection of claims 36–42, 44, 48–58, 62–68, and 75–77 as
unpatentable under § 103(a) over Morinaka and Kotani, as evidenced
by Lavoie
In rejecting claim 36, the Examiner found that Morinaka’s coating
composition, as modified by Lavoie, describes each component and feature
of the claimed composition, except that Morinaka and Lavoie are silent
regarding including clay in the composition. Answer 3–4. The Examiner,
however, found that Kotani teaches adding clay of the requisite size to a
vinyl alcohol polymer. Id. at 4 (citing Kotani Abstract; 6:18–36; 7:1–11).
The Examiner determined that it would have been obvious to a person
having ordinary skill in the art at the time of invention to add Kotani’s clay
to Morinaka’s polymer. Answer 4. According to the Examiner, the routineer
would have been motivated to do so because Kotani suggests that
introducing “clay into a polymer improves the gas barrier properties.” Id.
(citing Kotani 1:23–41).
Appellant argues that the rejection of claim 1 should be reversed
because the Examiner erred by finding that a person having ordinary skill in
the art would have been motivated to combine Morinaka, as modified by
Lavoie, with Kotani. Appeal Br. 4–5. In particular, Appellant argues that:
(i) the Examiner’s relied upon passage from Kotani teaches “the advantage
of providing packaging with gas barrier properties,” id. at 4 (citing Kotani
1:23–41), and (ii) there is no reason to combine modified Morinaka and
Appeal 2019-006177
Application 14/106,975
5
Kotani because Morinaka’s composition already “provide[s] excellent gas
barrier properties,” Appeal Br. 4. Appellant argues that the Examiner’s
purported motivation to combine is based on providing a redundant
advantage, which is impermissible hindsight reasoning. Id. (citing Kinetic
Concepts, Inc. v. Smith and Nephew, Inc., 688 F.3d 1342 (Fed. Cir. 2012)).
In response, the Examiner argues that, inter alia, Kotani’s clay is not
disclosed as providing “a redundant advantage to crosslinking with a silane
[as] shown in Morinaka.” Answer 7. Rather, the Examiner contends Kotani
teaches that including clay in a resin composition comprising a crosslinked
vinyl alcohol polymer having a good barrier gas property would have been
“additionally advantageous.” Id.
Appellant addresses the Examiner’s argument in its Reply Brief by:
(i) reiterating that the ordinarily skilled artisan “seeking to create a better gas
barrier composition[] would have no reason to combine the features of”
modified Morinaka and Kotani “into a single composition” and (ii) Kotani is
distinguished as it merely describes improving a coating composition
comprising a vinyl alcohol polymer in which the sidechain R is a silane, not
the claimed aminosilane side chain. Reply Br. 2 (citing Kotani 7:45–67).
First, Kotani’s disclosure supports the Examiner’s position that
including clay in a resin comprising a crosslinked vinyl alcohol polymer
would have conferred improved gas barrier properties as compared to the
same resin without clay. For example, Kotani explicitly discloses that “that a
resin composition consisting of . . . a non-film-forming inorganic laminar
compound can be given excellent gas barrier properties by increasing the
aspect ratio of the non-film-forming inorganic laminar compound.” Kotani
2:32–36. We note Kotani teaches that a “non-film-forming inorganic laminar
compound having a large aspect ratio is preferably an inorganic laminar
Appeal 2019-006177
Application 14/106,975
6
compound which can be swollen or [cleaved] with a solvent.” Id. at 5:47–49.
Kotani discloses that the particularly preferred inorganic laminar compounds
are “non-film-forming clay minerals. Id. at 6:19–20 (emphasis added).
We further note that Kotani’s “Table 3 . . . indicates inferior gas
barrier properties” (id. at 14:53–55) for resins comprising crosslinked
polyvinyl alcohol polymers, which exclude an inorganic laminar compound,
as compared to such resins comprising an inorganic laminar compound. Id.
Table 3 (compare oxygen permeability values for Comparative Examples 14
and 15 of 63.06 and 32.82 cc/m2/day/atm, respectively, with the significantly
decreased and desirable oxygen permeability values for Examples 21–25).
Kotani thus teaches that including clay in a coating composition
comprising a crosslinked vinyl alcohol polymer would not have provided a
redundant advantage for the same composition in the absence of clay.7 A
person having ordinary skill in the art, therefore, would have combined
modified Morinaka and Kotani for the reasons set forth by the Examiner.
Second, we are not persuaded that Kotani is distinguished for
describing a coating composition comprising a vinyl alcohol polymer in
which the sidechain R is a silane. See Reply Br. 2. In our view, one of
ordinary skill in the art would have recognized that both Kotani and
Morinaka similarly teach the beneficial use of a coating composition
comprising vinyl alcohol polymer, regardless of whether the crosslinking
agent used is silane or aminosilane. See In re Fritch, 972 F.2d 1260, 1264–
65 (Fed. Cir. 1992) (a reference stands for all of the specific teachings

7 We, furthermore, agree with the Examiner that the additional advantages
conferred by Kotani’s clay distinguish the instant case from our reviewing
Court’s holding in Kinetic Concepts. See Answer 7.
Appeal 2019-006177
Application 14/106,975
7
thereof as well as the inferences one of ordinary skill in the art would have
reasonably been expected to draw therefrom). Appellant, therefore, does not
identify reversible error in the Examiner’s determination that it would have
been obvious to one of ordinary skill in the art at the time of the invention to
have added Kotani’s clay to Morinaka’s polymer.
In view of the foregoing, we determine that the Examiner did not
reversibly err in rejecting claim 36, as amended, as unpatentable over
Morinaka with Kotani, as evidenced by Lavoie. Accordingly, we also affirm
the rejection of claims 37–42, 44, 48–58, 62–68, and 75–77, which depend
from claim 36.
B. Rejection of claims 45 and 46 as unpatentable under § 103(a)
over Morinaka, Kotani, as evidenced by Lavoie, and Gerow
Appellant argues that the rejection of claims 45 and 46 as
unpatentable over the combination of Morinaka, Kotani, as evidenced by
Lavoie, and Gerow should be reversed for the reasons set forth in arguing
for reversal of the rejection over the combination of Morinaka with Kotani,
as evidenced by Lavoie. See Appeal Br. 6 (“Gerow does not cure the
aforenoted deficiencies of the reference combination cited against claim
36.”).
For the reasons set forth above, we have affirmed the rejection of
independent claim 36 as unpatentable over the combination of Morinaka,
Kotani, as evidenced by Lavoie. We, therefore, also affirm the rejection of
claims 45 and 46 as unpatentable over the combination of Morinaka, Kotani,
as evidenced by Lavoie, and Gerow.
Appeal 2019-006177
Application 14/106,975
8
C. Rejection of claims 59–61 as unpatentable under § 103(a) over
Morinaka, Kotani, as evidenced by Lavoie, and Farrell
Appellant argues that the rejection of claims 59–61 is unpatentable
over the combination of Morinaka, Kotani, as evidenced by Lavoie, and
Farrell should be reversed because the Examiner has not established a prima
facie case of obviousness with respect to independent claim 36. Appeal Br.
6. As discussed above, we have affirmed the rejection of claim 36. We,
therefore, also affirm the rejection of claims 59–61.
IV. CONCLUSION
In summary:
Claims Rejected 35 U.S.C. §  Basis Affirmed Reversed
36–42, 44, 48–58,
62–68, 75–77 103(a) Morinaka, Kotani, Lavoie
36–42, 44,
48–58, 62–
68, 75–77

45, 46 103(a) Morinaka, Kotani, Lavoie, Gerow 45, 46
59–61 103(a) Morinaka, Kotani, Lavoie, Farrell 59–61
Overall Outcome
36–42, 44–
46, 48–68,
75–77

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).
AFFIRMED