3M INNOVATIVE PROPERTIES COMPANY

Patent Trials and Appeals Board

Dec 2, 2021

2021000532 (P.T.A.B. Dec. 2, 2021)

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.
15/751,575 02/09/2018 Ryan E. Marx 76736US004 2594
32692 7590 12/02/2021
3M INNOVATIVE PROPERTIES COMPANY
PO BOX 33427
ST. PAUL, MN 55133-3427
EXAMINER
JOHNSTON, BRIEANN R
ART UNIT PAPER NUMBER
1766
NOTIFICATION DATE DELIVERY MODE
12/02/2021 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. MARX, JAY R. LOMEDA,
WENDY L. THOMPSON, GEZAHEGN D. DAMTE,
KENT S. TARBUTTON, and ARMIN KAYSER

Appeal 2021-000532
Application 15/751,575
Technology Center 1700
____________

Before MICHAEL P. COLAIANNI, DEBRA L. DENNETT, and
SHELDON M. MCGEE, Administrative Patent Judges.

COLAIANNI, Administrative Patent Judge.

DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–6, 9–13, 18, 33–36, 38, and 39. We
have jurisdiction under 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 and its affiliate 3M Innovative Properties Company. Appeal Br. 2
(entered June 10, 2020).
Appeal 2021-000532
Application 15/751,575

2
Appellant’s invention is directed to polyurethane/urea nanocomposites
comprising modified silicon carbide nanoparticles dispersed within and
covalently bound to a polyurethane/urea polymer (Spec. 1:5–7; Claim 1).
The Specification describes erosion resistant films comprising
polyurethane/urea nanocomposites, which may be bound to an aircraft’s
outer surface on leading edges of helicopter rotor blades, wind turbine
blades, fixed wing aircraft, or the like (Spec. 3:19–25; 9:30–31). According
to the Specification, the described erosion resistant coatings demonstrate
high strength, thermal conductivity, and resistance to erosion by sand and
rain. Id. at 9:27–29.
Claim 1 is representative of the subject matter on appeal:
1. A polyurethane/urea nanocomposite comprising:
a) a polyurethane/urea polymer matrix, and
b) surface modified silicon carbide nanoparticles
dispersed within and covalently bound to a polyurethane/urea
polymer comprising the polyurethane/urea polymer matrix,
wherein
the polyurethane/urea nanocomposite comprises greater
than 32.0% by weight silicon carbide,
the surface modified silicon carbide nanoparticle
comprises a silicon carbide core and a linking group derived
from a first surface modifying agent, wherein the linking group
is covalently bound to the surface of the silicon carbide core
and covalently bound to the polyurethane/urea polymer, and
the linking group is derived from a first surface
modifying agent according to Formula ([I]a):

(R1O)3-Si—R2—N=C=O (Ia)

wherein each R1 is independently selected from -H, -CH3,
-C2H5, -C3H7, -C4H9, and [-]C5H11; and
wherein R2 is selected from bivalent aliphatic or aromatic
groups having a molecular weight of between 14 and 350 which
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are unbranched, branched or cyclic, and which are optionally
substituted and optionally contain heteroatoms.

Appellant appeals the following rejections:
1. Claims 1–4, 9–13, 18, 33–36, 38, and 39 are rejected under 35
U.S.C. § 103 as unpatentable over Quantrille et al. (US
2013/0059987 A1, published Mar. 7, 2013, “Quantrille”) in
view of Marx (US 2011/0159281 A1, published June 30, 2011),
as evidenced by Behnisch et al. (WO 2010/066548 A1,
published June 17, 2010, and relying on a machine translation,
“Behnisch”).
2. Claims 5 and 6 are rejected under 35 U.S.C. § 103 as
unpatentable over Quantrille in view of Marx, and further in
view of Marx et al. (US 2009/0202825 A1, published Aug. 13,
2009, “Marx2”).
Appellant argues subject matter common to independent claims 1 and 18
(Appeal Br.2 3–8; Reply Br. 1). We select claim 1 as representative. 37
C.F.R. § 41.37(c)(1)(iv). Appellant separately argues claim 11 under
rejection (1) (Appeal Br. 7).
FINDINGS OF FACT & ANALYSIS
Rejection (1)
The Examiner’s findings and conclusions regarding the § 103
rejection of claim 1 over Quantrille and Marx, as evidenced by Behnisch, are
located on pages 3–7 of the Final Action.

2 We refer to the amended Appeal Brief entered July 1, 2020 (hereinafter
“Appeal Br.”).
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Application 15/751,575

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Claim 1
The Examiner finds that Quantrille teaches the surface modified
silicon carbide nanoparticles and polyurethane components of claim 1, but
does not explicitly disclose the limitations of the linking group covalently
bound to each component (Final Act. 4). Specifically, the Examiner finds
that Quantrille does not teach that the linking group is derived from a surface
modifying agent according to the claimed Formula Ia (id.).
The Examiner finds that Marx teaches the linking group limitations
missing from Quantrille (Final Act. 4–7). The Examiner finds Marx teaches
functionalizing SiO2 with a coupling agent derived from TESPI (3-
triethoxysilylpropylisocyanate) (Ans. 9). The Examiner finds that Marx’s
surface modifying compound TESPI meets the claimed “Formula Ia when
R1=C2H5[ and] R2=(CH2)3, which is a bivalent aliphatic group” of the
requisite molecular weight (id.; Final Act. 4).
The Examiner determines that it would have been obvious to one of
ordinary skill in the art at the time of the invention to have to incorporated
Quantrille’s silicon carbide into the polyurethane matrix by using Marx’s
TESPI surface treatment method because Marx teaches that the method
allows for nanoparticles to be well dispersed, bound in the polyurethane
matrix, and enables an unusually high loading without a large increase in
viscosity of the matrix (Final Act. 4–5).
Appellant argues that one of ordinary skill in the art would not have
combined Quantrille and Marx as proposed by the Examiner (Appeal Br. 3;
see also id. at 4 (contending that “there is nothing in either reference or
Behnisch, to suggest that TESPI would be appropriate for surface
functionalization of SiC where it was previously only used for surface
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Application 15/751,575

5
functionalization of SiO2.”)). Appellant asserts that Marx is silent with
respect to SiC and that there is no reason to substitute Quantrille’s “many
surface modifying compounds” intended for SiC, with Marx’s TESPI
intended for SiO2 (id.; Reply Br. 1). Appellant argues there would have
been no reasonable expectation of success because of the “chemical
differences between SiC and SiO2” fillers (Appeal Br. 4). Appellant
contends that the applied prior art fails to suggest that Marx’s benefits of
“dispersion and viscosity increases” would have been conferred to
Quantrille’s and Behnisch’s SiC nanocomposites (id. at 4–5). Appellant
argues that the Examiner’s reasoning fails to explain why one of ordinary
skill in the art following Quantrille’s disclosure regarding SiC filler would
have desired to increase the loading above 30 wt% based on Marx’s high
loadings for SiO2 filler (id. at 5).
Appellant’s arguments are not persuasive.
Appellant fails to establish reversible error in the Examiner’s findings
that the prior art teaches that TESPI is capable of covalently bonding with
either SiO2 or SiC because: (i) Quantrille’s organosilane coupling agents
have the general structure (RO)3-SiCH2CH2CH2-X, where (RO) is a reactive
group, such as ethoxy, which is capable of covalently bonding with SiC
filler and (ii) Marx’s TESPI possesses the same ethoxy reactive group (Ans.
12–13, 10 (citing Quantrille ¶¶ 31–32)). Appellant provides no evidence
that the ethoxy reactive group on Marx’s TESPI is incapable of bonding
with SiC or would have negatively impacted the capability of surface
modified silicon carbide nanoparticles to become dispersed within and
covalently bound to polyurethane.
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As the Examiner explains, the only difference between Quantrille’s
organosilane coupling agent having the general structure of (CH3CH2O)3-
SiCH2CH2CH2—X and Marx’s TESPI is the (X) organofunctional group,
which reacts with polyurethane (Ans. 12–13). Appellant concedes that
Quantrille’s general structure for an organosilane coupling agent
encompasses TESPI if (X)=isocyanate (Appeal Br. 6; Ans. 10). Moreover,
Quantrille teaches that the organofunctional (X) group in the organosilane
coupling agent’s general structure is not limited to the disclosed examples
(Quantrille ¶ 32 (“Depending on the particular organofunctional group
present, the coupling agent may exhibit a range of different properties, . . .
which may be tailored for a particular polymer system to be used.”)).
Contrary to the Examiner, Appellant questions whether Quantrille’s
broad formula “leads one of ordinary skill to choose [Marx’s] TESPI . . . to
functionalize SiC” (Appeal Br. 6). However, Behnisch evinces that erosion
resistant polyurethane coatings comprising silicon oxide or silicon carbide
are known in the art for use on turbine blades (Final Act. 5). “[I]f a
technique has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar devices in the
same way, using the technique is obvious unless its actual application is
beyond his or her skill.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417
(2007). In DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H.
Patrick Co., 464 F.3d 1356, 1368 (Fed. Cir. 2006), our reviewing Court
stated:
[A]n implicit motivation to combine exists not only when a
suggestion may be gleaned from the prior art as a whole, but
when the “improvement” is technology-independent and the
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combination of references results in a product or process that is
more desirable for example because it is stronger, cheaper,
cleaner, faster, lighter, smaller, more durable, or more efficient.
Because the desire to enhance commercial opportunities by
improving a product or process is universal—and even common-
sensical—we have held that there exists in these situations a
motivation to combine prior art references even absent any hint
of suggestion in the references themselves. In such situations,
the proper question is whether the ordinary artisan possesses
knowledge and skills rendering him capable of combining the
prior art references.
Appellant does not adequately explain why use of Marx’s TESPI to
disperse and covalently bind surface modified silicon carbide nanoparticles
to polyurethane would have been beyond the level of skill in the art or yield
unpredictable results. See KSR, 550 U.S. at 401 (“If a person of ordinary
skill in the art can implement a predictable variation, and would see the
benefit of doing so, § 103 likely bars its patentability.”). Marx explicitly
discloses that “[t]he surface treatment allows the nanosilica to be well
dispersed and bound in the polyurethane matrix[,] . . . enables unusually
high loadings of nanosilica . . . without a large increase in viscosity, [and] . .
. enables bulk polymerization of the polyurethane nanocomposite” (Marx
¶ 6; see also id. ¶ 10 (teaching amounts as high as 90%)). As the Examiner
finds, Quantrille suggests that SiC filler is superior over SiO2 filler in
abrasion resistant coatings (Ans. 11). On this record, one of ordinary skill in
the art would have viewed the benefits conferred by the use of TESPI, which
possesses an ethoxy reactive group, as sufficient reasons to make
Quantrille’s SiC more desirably bonded to and dispersed within
polyurethane in an abrasion resistant coating.
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We affirm the Examiner’s § 103 rejection of claims 1–4, 9, 10, 12, 13,
18, 33–36, 38, and 39 over Quantrille, Marx, and Behnisch.
Claim 11
The Examiner’s findings and conclusions regarding the § 103
rejection of claim 11 over Quantrille and Marx, as evidenced by Behnisch,
are located on page 6 of the Final Action and page 18 of the Answer. The
Examiner finds that Marx teaches that TEPS (n-triethoxypropylsilane) can
be added as an additional organosilane for functionalizing the filler in
abrasion resistant coatings (Final Act. 6).
Claim 11 depends from claim 1 and recites:
wherein the surface modified silicon carbide nanoparticle
additionally comprises a second surface modification group
derived from a second surface modifying agent, wherein the
second surface modification group is covalently bound to the
surface of the silicon carbide core and not covalently bound to
the polyurethane/urea polymer, and wherein the second surface
modification group is a moiety according to Formula (IIb):

(IIb)

wherein each open valence of the silicon atom of the
second surface modification group is bound to a hydroxyl group
(-OH) or is covalently bound to the surface of the silicon carbide
core through an oxygen atom, chosen independently for each
open valence; and
wherein R4 is selected from aliphatic or aromatic groups
having a molecular weight of between 13 and 350 which are
unbranched, branched or cyclic, and which are optionally
substituted and optionally contain heteroatoms.
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Appellant argues that the Examiner has provided conclusory reasons
for determining that the subject matter for claim 11 is conclusory (Appeal
Br. 7). According to Appellant, the Examiner has provided no reason or
explanation as to why one of ordinary skill in the art would have made the
specific combination recited in claim 11 (id.).
Appellant’s argument is not persuasive because it fails to address the
Examiner’s rejection based on combining Marx’s method to incorporate
Quantrille’s silicon carbide into the polyurethane matrix to allow for
nanoparticles to be well dispersed, bound in the polyurethane matrix, and
enable an unusually high loading without a large increase in viscosity of the
matrix (Final Act. 4–5). Marx’s method includes use of TEPS, which meets
the claimed Formula (IIb) when R4 is an aliphatic group having a molecular
weight of 42 g/mol and the open valences are covalently bonded to the
surface of the nanoparticle (id. at 6). Appellant provides no specific
arguments regarding this combination. The preponderance of the evidence
favors the Examiner’s conclusion that using Marx’s TEPS as an additional
organosilane for functionalizing the filler in Quantrille’s abrasion resistant
polymer would have been obvious.
On this record, we also affirm the Examiner’s § 103 rejection of claim
11 over Quantrille, Marx, and Behnisch.

Rejection (2)
Appellant only argues that Marx2 does not cure the deficiencies of
Quantrille and Marx (Appeal Br. 7–8). Because we do not find Appellant’s
argued deficiencies persuasive of reversible error, we also affirm the
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Application 15/751,575

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Examiner’s § 103 rejection of claims 5 and 6 over Quantrille, Marx, and
Marx2.

CONCLUSION
In summary:
Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/Basis   Affirmed Reversed
1–4, 9–13,
18, 33–36,
38, 39
103 Quantrille, Marx,
Behnisch
1–4, 9–13,
18, 33–36,
38, 39

5, 6 103 Quantrille, Marx,
Marx2
5, 6
Overall
Outcome
1–6, 9–13,
18, 33–36,
38, 39

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