3M INNOVATIVE PROPERTIES COMPANYDownload PDFPatent Trials and Appeals BoardOct 18, 20212020006425 (P.T.A.B. Oct. 18, 2021) Copy Citation 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. 15/966,135 04/30/2018 RYAN E. JOHNSON 66024US009 9156 32692 7590 10/18/2021 3M INNOVATIVE PROPERTIES COMPANY PO BOX 33427 ST. PAUL, MN 55133-3427 EXAMINER YOON, TAE H ART UNIT PAPER NUMBER 1762 NOTIFICATION DATE DELIVERY MODE 10/18/2021 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 RYAN E. JOHNSON and BRADLEY D. CRAIG Appeal 2020-006425 Application 15/966,135 Technology Center 1700 Before BEVERLY A. FRANKLIN, JEFFREY B. ROBERTSON, and SHELDON M. MCGEE, Administrative Patent Judges. MCGEE, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant appeals from the Examiner’s decision to reject claims 17–27.1 We have jurisdiction. 35 U.S.C. § 6(b). We affirm. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as 3M Company Appeal Br. 2. Appeal 2020-006425 Application 15/966,135 2 CLAIMED SUBJECT MATTER The claims are directed to compositions containing a resin combined with nanoclusters comprising silica nanoparticles and another metal oxide, and dental mill blocks comprising such compositions. See Supplemental Appeal Br. 3–4 (Claims 17, 23).2 The nanoclusters of each independent claim “have a surface area of at least 65 square meters per gram.” Id. Independent claim 17, reproduced below, is illustrative of the claimed subject matter: 17. A dental mill block comprising a [composition] comprising a resin that comprises a polymerized ethylenically unsaturated group and nanoclusters combined with the resin, wherein the nanoclusters are present in an amount of about 60 percent by weight or greater based upon the weight of the composition, the nanoclusters have a surface area of at least 65 square meters per gram, and the nanoclusters comprise silica nanoparticles and at least one other metal oxide. REJECTIONS The Examiner rejects claims 17–27 under 35 U.S.C. § 103(a) as unpatentable over Wu,3 and separately over the combined disclosures of Kangas4 and Wu.5 See Ans. 3–6. The Examiner additionally rejects claims 2 We refer to the claims listed in the Amended Appeal Brief filed April 13, 2020. 3 Wu et al., US 7,393,882 B2, issued July 1, 2008 (hereinafter “Wu”). 4 Kangas et al., US 7,361,216 B2, issued April 22, 2008 (hereinafter “Kangas”). 5 Wu et al., US 2003/0181541, A1, published Sept. 25, 2003 (hereinafter “Wu ’541”). Wu ̓ 541 is the published application that matured into Appeal 2020-006425 Application 15/966,135 3 17–22 on the ground of obviousness-type double patenting over claims 11 and 15 of US 9,962,245.6 Id. at 7–8. OPINION We review the appealed rejections for reversible error based on the arguments and evidence presented by Appellant. 37 C.F.R. § 41.37(c)(1)(iv); Cf. Ex parte Frye, 94 USPQ2d 1072, 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 [E]xaminer’s rejections”). Obviousness over Wu alone The Examiner finds that Wu teaches or suggests the claimed compositions. Non-Final Act. 3–5.7 Specifically, the Examiner finds that Wu’s dental composition can be a dental mill block comprising a composition comprising the claimed resin and nanoclusters of silica and zirconia present in an amount of 60% by weight or greater, wherein the nanoclusters have a surface area of up to 150 m2/g. Id. US 7,393,882 B2, of record in this appeal. For simplicity, our decision cites to Wu with the understanding that Wu and Wu ʼ541 share the same disclosure. 6 Craig et al., US 9,962,245 B2, issued May 8, 2018. 7 We refer to the detailed rejection set forth in the Non-Final Office Action dated March 28, 2019 (hereinafter “Non-Final Act.”) because the Final Office Action dated June 27, 2019 (hereinafter “Final Act.”) relies on the “reasons of the record.” Final Act. 2. Appeal 2020-006425 Application 15/966,135 4 Appellant argues the rejection of claims 17–27 as a group.8 Appeal Br. 3–4. We, therefore, select claim 17 as representative of the rejected claims, and decide the propriety of the rejection on the basis of claim 17 alone. 37 C.F.R. § 41.37(c)(1)(iv). Appellant argues that Wu does not disclose nanoclusters comprising silica nanoparticles and at least one other metal oxide as recited in claim 17. Appeal Br. 3–4. According to Appellant, Wu discloses that the composition is “substantially free of heavy metals” and, thus, would not suggest inclusion of such heavy metals. Id. at 3. Appellant furthermore contends that Wu’s metals “are not metal oxides” as claimed. Id. at 4. This line of argument is unpersuasive. First, Wu allows for up to about 20% of heavy metal in the silica clusters. Wu 5:42–44. The Examiner finds that Wu’s heavy metal would be present in oxide form, as evidenced by Wu’s disclosure of the silica/zirconia clusters of “Filler B.”9 Ans. 8–9 (citing Wu 24:46–47). Appellant does not address this finding with sufficient specificity to reveal error in it. Nor does Appellant dispute that zirconia is a metal oxide. Appeal Br. 3–4; Reply Br. 2. Here, we observe that Appellant’s Specification and the art of record in this appeal indicates that zirconia is indeed a metal oxide. See Spec. 6:5–7 (“[T]he term ‘zirconia’ refers to various stoichiometries for zirconium oxides, most typically ZrO2, and may also be known as zirconium oxide or zirconium dioxide.”); Craig 5:22–24. Thus, Appellant does not persuade us that Wu 8 Appellant erroneously identifies claim 20 as independent, but this claim is dependent from claim 17, while claim 23 is independent. Appeal Br. 3. 9 Wu’s Filler B is described as “nano-sized silica and zirconia particles loosely aggregated as substantially amorphous clusters.” Wu, 22:52–54. Appeal 2020-006425 Application 15/966,135 5 fails to disclose or suggest nanoclusters containing silica nanoparticles and at least one other metal oxide as recited in claim 17. Appellant also argues that Wu discloses “fillers, whereas the claim recites ‘nanoclusters [that] comprise silica nanoparticles and at least one other metal oxide.’” Appeal Br. 4. Appellant points to how the term “nanocluster” is defined in the Specification, i.e., “as ‘an association of nanoparticles drawn together by relatively weak intermolecular forces that cause them to clump together, i.e., to aggregate,’” and asserts that Wu’s fillers “are merely dispersed within the resin.” Id. at 4 n.16 (citing Spec. 3). This argument is unpersuasive because it fails to make any meaningful distinction between Wu’s “Filler B” of aggregated nanoparticles of silica and zirconia and the claimed nanoparticles. See, Wu 22:52–55 (describing Filler B as “[s]ilane-treated, nano-sized silica and zirconia particles loosely aggregated as substantially amorphous clusters . . . prepared in the form of a dry powder.”) (emphases added). Appellant also argues that Wu does not teach or suggest using the claimed nanocluster “surface area of at least 65 square meters per gram” as required by claim 17. Appeal Br. 4–5. In the context of this argument, Appellant argues that “Wu only teaches that the surface area of fillers is up to 150 meters squared per gram.” Id. That argument is unpersuasive for several reasons. First, it again unsuccessfully attempts to distinguish––without sufficient explanation–– Wu’s filler from the claimed nanoclusters. Also, it ignores the well- established body of case law of our reviewing court regarding the obviousness of overlapping ranges. See In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003) (“In cases involving overlapping ranges, we and our Appeal 2020-006425 Application 15/966,135 6 predecessor court have consistently held that even a slight overlap in range establishes a prima facie case of obviousness.”). Here, Wu’s nanoclusters are taught to be “at most about 150 m2/g,” and thus overlap with the claimed range of “at least 65 square meters per gram.” Wu, 6:41–42. In other words, the claim and the prior art have overlapping surface area ranges between 65 and about 150 m2/g. Such overlap is prima facie obvious. Because Appellant fails to identify reversible error in the obviousness rejection of claim 17, we sustain the Examiner’s rejection, along with the rejection of claims 18–27 not separately argued. Obviousness over Kangas and Wu The Examiner’s findings and conclusions for the additional rejection of claims 17–27 over the combined disclosures of Kangas and Wu is set forth at pages 5–6 of the Non-Final Action mailed March 28, 2019. There, the Examiner finds that Kangas teach dental compositions such as mill blanks having up to 80 % nanofillers by weight. Non-Final Act. 5. The Examiner points specifically to pastes B6 and B9 disclosed by Kangas, which each contain “Filler H,” which the Examiner undisputedly finds is the same as “Filler B” taught by Wu which is discussed supra. Id. The Examiner finds that because Wu discloses that its fillers have a surface area of up to 150 m2/g, Filler B of Wu (and, thus, Filler H of Kangas) would have been expected to have a surface area falling within that range, thus shifting the burden to Appellant to prove otherwise. Id. at 5–6 (citing In re Best, 195 USPQ 430, 433 (CCPA 1977)). Appellant argues the claims subject to this rejection as a group, so we again select claim 17 as representative. As with the obviousness rejection over Wu alone, Appellant again asserts that the claimed surface area for the Appeal 2020-006425 Application 15/966,135 7 nanoparticles is not disclosed. Appeal Br. 5. We reject that argument here for the same reasons identified supra. Namely, it fails to articulate what, if any, structural differences exist between Wu’s fillers and the claimed nanoclusters, and furthermore fails to rebut the prima facie case of obviousness established by the overlapping ranges claimed vis-à-vis the prior art. Appellant also takes issue with the Examiner’s treatment of a Declaration submitted under 37 C.F.R. § 1.132, stating that the Examiner presumes the Declaration “is part of the prior art,” but that “it cannot be used as if it were a prior art reference to show that the claims are obvious.” Appeal Br. 6. That line of argument lacks persuasive merit because the Examiner does not rely on any Declaration evidence in rejecting the claims. See Non-Final Act. 5–6 (articulating the basis of the rejection); Final Act. 3– 4 (discussing Appellant’s reliance on a 132 Declaration and noting that such Declaration has “little probative value” because it “utiliz[es] a method taught by US 6,730,156, not by US 2003/0181541” relied on in the rejection). Rather, the Examiner finds that the prior art discloses the same or substantially the same composition, thereby shifting the burden to Appellant to prove otherwise. See Best, 562 F.2d at 1255. On this point, we emphasize that Appellant’s Reply Brief arguments regarding inherency reflect a misunderstanding of burdens before the Office. Reply Br. 4–5.10 Because the Examiner has identified the same or substantially the same composition in the prior art as that claimed here, it is now Appellant’s burden to demonstrate that the nanoclusters of Kangas and/or Wu do not 10 Because the Reply Brief was not numbered by Appellant, we refer to the consecutively numbered pages. Appeal 2020-006425 Application 15/966,135 8 have the claimed surface area. Best, 562 F.2d at 1255. Because Appellant has failed to do so, Appellant’s inherency arguments are unpersuasive. Because Appellant fails to identify reversible error in the obviousness rejection of claim 17, we sustain the Examiner’s rejection, along with the rejection of claims 18–27 not separately argued. Obviousness-type Double Patenting Rejection Appellant does not challenge the obviousness-type double patenting rejection of claims 17–22. We, therefore, summarily sustain this rejection. CONCLUSION The Examiner’s rejections are affirmed. DECISION SUMMARY Claims Rejected 35 U.S.C. § Reference(s) / Basis Affirmed Reversed 17–27 103(a) Wu 17–27 17–27 103(a) Kangas, Wu ʼ541 17–27 17–22 Obviousness-type Double Patenting 17–22 Overall Outcome 17–27 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED Copy with citationCopy as parenthetical citation