Bryan Hunt et al.

Patent Trials and Appeals Board

Apr 1, 2022

2021001722 (P.T.A.B. Apr. 1, 2022)

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. 13/392,700 05/10/2012 Bryan V. Hunt 65750US005 7983 32692 7590 04/01/2022 3M INNOVATIVE PROPERTIES COMPANY PO BOX 33427 ST. PAUL, MN 55133-3427 EXAMINER SHUKLA, KRUPA ART UNIT PAPER NUMBER 1787 NOTIFICATION DATE DELIVERY MODE 04/01/2022 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 BRYAN V. HUNT, BRANDT K. CARTER, MAUREEN C. NELSON, THOMAS P. KLUN, JASON S. PETAJA, YIZHONG WANG, and JOEL D. OXMAN Appeal 2021-001722 Application 13/392,700 Technology Center 1700 Before N. WHITNEY. WILSON, MERRELL C. CASHION, JR., and SHELDON M. MCGEE, Administrative Patent Judges. WILSON, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s February 24, 2020 decision to finally reject claims 79-93, which are the only claims pending in the application (“Final Act.”). We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real parties in interest as 3M Company and 3M Innovative Properties Company (Appeal Br. 2). Appeal 2021-001722 Application 13/392,700 2 CLAIMED SUBJECT MATTER Appellant’s disclosure is directed to optical devices comprising at least one optical layer and at least one antistatic layer disposed on a surface of the optical layer (Abstract). The antistatic layer comprises the reaction product of (a) a polymerizable onium salt, and (b) a polymerizable, non- onium, silicone or perfluoropolyether moiety-containing monomer, oligomer, or polymer (id.). Claim 79, reproduced below from the Claims Appendix, illustrates the claimed subject matter: 79. An optical device comprising at least one optical layer and at least one antistatic layer disposed on at least one surface of said optical layer wherein said antistatic layer comprises the reaction product of a reaction mixture comprising: (a) 1 to 99 weight percent of at least one polymerizable ionic liquid onium salt which is a (meth)acryl functional quaternary ammonium salt having a melting point (Tm) below 100°C and comprising an anion selected from the group consisting of alkyl sulfates, methane sulfonates, tosylates, -C(SO2CF3)3, -O3SCF3, -O3SC4F9, and -N(SO2CF3)2; and (b) at least one non-onium acrylate functional silicone polyether; wherein said optical layer is selected from the group consisting of reflective polarizers, brightness enhancement films, and diffuse reflecting polarizing films. REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Chang et al. US 2006/0067638 A1 March 30, 2006 Pokorny et al. WO 2009/029438 A1 March 5, 2009 Yamashita et al. JP 2009-173925 A (translation of record) August 6, 2009 Saruwatari et al. JP 2009-179671 A (translation of record) August 13, 2009 Appeal 2021-001722 Application 13/392,700 3 REJECTIONS 1. Claims 92 and 93 are rejected under 35 U.S.C. § 112, first paragraph as failing to comply with the written description requirement. 2. Claims 79 and 82-93 are rejected under 35 U.S.C. § 103(a) as unpatentable over Yamashita in view of Chang and Pokorny. 3. Claims 80 and 81 are rejected under 35 U.S.C. § 103(a) as unpatentable over Yamashita in view of Chang and Pokorny, and further in view of Saruwatari. OPINION Rejection 1. The Examiner finds that neither claim 92 or claim 93 - each of which recites that the “reaction mixture comprises 1.1 to 2 weight percent of the at least one non-onium acrylate functional silicone polyether” -complies with the written description requirement because the upper limit of 2 weight percent is not supported by the Specification (Final Act. 2-3). The Examiner finds that while Examples 10-13 do describe 1.95 wt% of a non-onium acrylate functional silicone polyether, 2 wt% is not supported (id.). In its Brief, Appellant argues that Examples 10-13 describe the presence of 1.95 wt% of a non-onium acrylate functional silicone polyether, and that this “is appropriately rounded to 2 wt%” (Appeal Br. 4-5). According to Appellant, “[t]he Examiner has failed to provide reasons why a person skilled in the art . . . would not have recognized that the inventor was in possession of the invention as claimed” (Id. at 5). The purpose of the written description requirement is to convey with reasonable clarity to those skilled in the art that, as of the filing date sought, applicant was in possession of the invention as now claimed. See Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563-64, Fed. Cir. (1991) “[T]he written Appeal 2021-001722 Application 13/392,700 4 description requirement is satisfied by the patentee’s disclosure of ‘such descriptive means as words, structures, figures, diagrams, formulas, etc., that fully set forth the claimed invention.’” Enzo Biochem, Inc. v. Gen-Probe Inc., 323 F.3d 956, 969 (Fed. Cir. 2002) (quoting Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997)). “In deciding the issue [of written description], the specification as a whole must be considered.” In re Wright, 866 F.2d 422, 425 (Fed. Cir. 1989). “When no such description can be found in the specification, the only thing the PTO can reasonably be expected to do is to point out its nonexistence.” Hyatt v. Dudas, 492 F.3d 1365, 1370 (Fed. Cir. 2007). In this instance, there is no dispute that the Specification supports an upper limit of 1.95 wt%. The question is whether, for purposes of satisfying the written description requirement, 1.95 wt% can be rounded up to 2 wt%. In other words, does an upper limit of 1.95% convey with reasonable clarity to those skilled in the art that, as of the filing date sought, Appellant was in possession of the upper limit of 2 wt% as now claimed. Vas-Cath, 935 F.2d at 1563-64. We determine that it does not. As noted by the Examiner (Ans. 10), Appellant has provided no explanation of why a person of skill in the art would have rounded the 1.95 wt% to 2 wt% and thus considered that the disclosure of Examples 10-13 describes an upper limit of 2 wt%. Thus, we agree with the Examiner that the exemplified weight percentage of 1.95 wt% does not adequately describe an upper limit of 2 wt%. The rejection under § 112, first paragraph, is affirmed. Rejection 2. The Examiner’s findings are set forth at pages 4-6 of the Final Action. The Examiner finds that Yamashita discloses each element of claim 79, except for the use of a non-onium acrylate functional silicone Appeal 2021-001722 Application 13/392,700 5 polyether as a leveling agent- and an optical layer selected from the group consisting of reflective polarizers, brightness enhancing films and diffuse reflecting polarizing films (Final Act. 4-5). The Examiner finds that Chang discloses the use of leveling (or anti-foaming) agents to impart good surface slip characteristics to the resin, and that one such leveling agent is TEGO RAD 2500, which is a non-onium acrylate silicone polyether, as evidenced by Pokorny. The Examiner determines that it would have been obvious to use the TEGO RAD 2500 leveling agent of Chang as the leveling agent in Yamashita’s system to improve the surface slip characteristics.2 Appellant first argues that Yamashita discloses a large list of ionic liquid salts while Chang discloses a dozen possible leveling agents, and that the Examiner: has provided no rationale or guidance as to why one of ordinary sill in the art would select the claimed ionic liquid salts from the lengthy disclosure of Yamashita, or why one of ordinary skill in the art would select TEGO RAD 2500 from the leveling agent list in Chang to combine with the claimed ionic liquid salts. (Appeal Br. 5-6). This argument is not persuasive of reversible error, essentially for the reasons provided by the Examiner (Ans. 10-11). In essence, the Yamashita discloses a combination of an ionic liquid salt and a meth(acrylate)silicone oil level agent, while Chang provides a reason for using the claimed non-onium acrylate functional silicone polyether leveling agent. Thus, the references disclose the specific components needed and, 2 The Examiner finds Pokorny teaches the optical layer and that this modification of Yamashita would have been obvious (Final Act. 5-6). Appellant does not argue this portion of the rejection (see generally Brief). Appeal 2021-001722 Application 13/392,700 6 furthermore, provide a motivation to combine the teachings of the cited art to arrive at the claimed invention. That the references may disclose a number of different options does not make any one specifically named option less obvious than the other. Appellant also argues, inter alia, that the claimed combination of components provides an unexpected and synergistic improvement in performance of the claimed devices -- in particular their antistatic properties - in comparison to the prior art, and that these unexpected results in performance show the non-obviousness of the claims (Appeal Br. 6-10). It is well settled that Appellants have the burden of showing unexpected results. In re Freeman, 474 F.2d 1318, 1324 (CCPA 1973); In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972). Such burden requires Appellants to proffer factual evidence that actually shows unexpected results relative to the closest prior art, see In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991), and that is reasonably commensurate in scope with the protection sought by the claims on appeal, In re Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983); In re Clemens, 622 F.2d 1029, 1035 (CCPA 1980); In re Hyson, 453 F.2d 764, 786 (CCPA 1972). The extent of the showing relied upon by Appellants must reasonably support the entire scope of the claims at issue. See In re Harris, 409 F.3d 1339, 1344 (Fed. Cir. 2005). In this instance, the Examiner finds that the declarations and data submitted on behalf of Appellant “establishes surprising synergy provided by 1 to 99 wt% (meth)acryl functional quaternary ammonium salt ionic liquid and specific amount, i.e. 0.1 to 5 wt%, of non-onium acrylate functional silicone polyether” (Ans. 12). However, the Examiner also finds Appeal 2021-001722 Application 13/392,700 7 there is no data to support a wider range of the non-onium acrylate functional silicone polyether (see, e.g., id.). Appellant does not dispute this finding. Other than claims 92 and 93, the claims do not limit the amount of the non-onium acrylate functional silicone polyether in the composition. Therefore, we agree with the Examiner that the showing of unexpected results, while it might have been persuasive for claims limited to 0.1-5 wt% of the acrylate functional silicone polyether, is not commensurate in scope with the claims currently on appeal. Therefore, notwithstanding the data and evidence provided in the declarations proffered by Appellant, the preponderance of the evidence of record supports the Examiner’s determination of obviousness for claims 79 and 82-91. However, for claims 92 and 93, which recite a limited range for the amount of the acrylate functional silicone polyether, Appellant has provided adequate evidence to support a determination of non-obviousness. Accordingly, we reverse the rejection of those claims. Rejection 3. With respect to Rejection 3, Appellant argues that the reasons provided by the Examiner as to why a person of skill in the art would have combined the teachings of Saruwatari with those of Yamashita, Chang, or Pokorny are insufficient because the advantages that are said to be obtained by using Saruwatari’s compounds are already described as having been achieved by Yamashita (Appeal Br. 11). However, as explained by the Examiner (Ans. 14), and not disputed by Appellant, it would have been obvious to use Saruwatari’s onium salt in Yamashita’s composition to further improve the transparency, compatibility with resin or solvent, heat resistance, moisture resistance, and resistance to bleeding out. Appeal 2021-001722 Application 13/392,700 8 Moreover, to the extent that Saruwatari’s compounds provide no additional benefit over Yamashita’s compounds, then using them would have been a simple substitution of one known element for another and, therefore, obvious. KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 416-417 (2007) (“the simple substitution of one known element for another” or “the mere application of a known technique to a piece of prior art ready for the improvement” generally will be obvious unless the substitution or the application of the known technique would have been beyond the level of ordinary skill in the art). Accordingly, we determine that Appellant has not demonstrated reversible error in Rejection 3. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 92, 93 112 Written Description 92, 93 79, 82-93 103(a) Yamashita, Chang, Pokorny 79, 82-91 92, 93 80, 81 103(a) Yamashita, Chang, Pokorny, Saruwatari 80, 81 Overall Outcome 79-93 Appeal 2021-001722 Application 13/392,700 9 TIME PERIOD FOR RESPONSE 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