Ex Parte Auner et al

Patent Trial and Appeal Board

Sep 27, 2016

12995173 (P.T.A.B. Sep. 27, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/995, 173
86012 7590
VLP Law Group LLP
555 Bryant Street
Suite 820
Palo Alto, CA 94301
03/02/2011
09/29/2016
FIRST NAMED INVENTOR
Norbert Auner
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
536701-625PUS 8367
EXAMINER
WU,JENNYR
ART UNIT PAPER NUMBER
1733
NOTIFICATION DATE DELIVERY MODE
09/29/2016 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):
patents@vlplawgroup.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte NORBERT AUNER, CHRISTIAN BAUCH,
GERD LIPPOLD, RUMEN DELTSCHEW,
and SEYED-JA V AD MOHSSENI
Appeal2015-004409
Application 12/995, 173
Technology Center 1700
Before JEFFREY T. SMITH, KAREN M. HASTINGS, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.
SMITH, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134 from a final rejection of
claims 1-10, 14, and 15. We have jurisdiction under 35 U.S.C. § 6.
We AFFIRM-IN-PART.
Appellants' invention is directed to a composition comprising a
halogenated polysilane. App. Br. 2-5. Claim 1 is illustrative of the subject
matter on appeal and is reproduced below:
1. A composition comprising a halogenated polysilane
having at least one direct Si-Si bond, whose substituents consist
Appeal2015-004409
Application 12/995, 173
of halogen or of halogen and hydrogen and in the composition
of which the atomic ratio of substituent to silicon is at least 1: 1,
wherein
a) the halogen is chlorine,
b) the hydrogen content of the polysilane is less than 2
atom-%,
c) the polysilane contains less than 2 mass % short-chain
branched chains and rings for which n=2---6, where n is the
number of Si atoms bound to each other directly, and the
content of branching points of the short-chain fraction relative
to the total composition is less than 1 mass %,
d) the polysilane has a Raman molecular vibrational
spectrum of I100/l132 > 1, where 1100 denotes the Raman intensity
at 100 cm-1 and !132 denotes the Raman intensity at 132 cm-1,
and
e) the 29Si-NMR spectra of the composition has its
significant product signals in the range of chemical shift from +
15 ppm to -7 ppm.
Appellants request review of the Examiner's rejection of claims 1-10,
14, and 15 rejected under 35 U.S.C. § 103(a) as unpatentable over Auner et
al. (WO 2008/009473 A, published January 24, 2008 and using US
2009/0169457 Al, published July 2, 2009 as the English equivalent
("Auner")). 1 App. Br. 5; Final Act. 3; Ans. 2.
1 The Examiner maintained two rejections on the ground of nonstatutory
obviousness-type double patenting in the Final Action. Ans. 2; Final Act. 9-
13. Appellants did not address these rejections. See Appeal Brief,
generally. In addition, the Examiner did not reproduce the rejections in the
Answer. See Answer, generally. We refer these rejections back to the
2
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Application 12/995, 173
OPINION
After review of the respective positions provided by Appellants and
the Examiner, we REVERSE the Examiner's prior art rejection of claims 1,
14, and 15 under 35 U.S.C. § 103(a) for the reasons presented by Appellants.
However, we AFFIRM the Examiner's prior art rejection of claims 2-10 for
the reasons presented by the Examiner.
Claims 1, 14, and 152
We REVERSE.
Claim 1 is directed to a chlorine containing polysilane having less
than 2 mass % short-chain branched chains and rings for which n=2---6,
where n is the number of Si atoms bound to each other directly.
We refer to the Examiner's Final Action for a statement of the
rejection. Final Act. 3-6.
Appellants argue Auner fails to discloses a polysilane containing less
than 2 mass % short-chain branched chains and rings for which n=2---6 as
recited in feature ( c) of claim 1 because Auner discloses a mixture of
polysilanes comprising significant quantities of, among other things, a
branched compound decachloroisotetrasilane along with two other silanes.
App. Br. 8-9; Auner i-fi-12, 9, 24--27. Thus, Appellants argue Auner fails to
disclose a halogenated polysilane as claimed. App. Br. 9.
We agree with Appellants. The Examiner relies on Auner' s Figure 5
and paragraphs 21 and 48 to address feature ( c) of claim 1. Final Act. 4--5.
Examiner to address their appropriateness when jurisdiction returns to the
Examiner.
2 We limit our discussion to independent claim 1.
3
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Application 12/995, 173
The Examiner asserts Auner' s disclosure of producing high molecular
weight polysilanes by distilling low and medium molecular weights
polysilanes from the high molecular weight polysilanes means that the
resulting product (high molecular weight polysilanes) have less than 2 mass
% of short-chain branched chains and rings as claimed. Final Act. 5. We
find this assertion by the Examiner to be speculatory. The Examiner has not
directed us to any portion of the cited art or presented an adequate technical
explanation that supports the Examiner's determination that the high
molecular weight polysilane of Auner would contain less than 2 mass %
short-chain branched chains and rings for which n=2---6 as claimed. Thus,
we agree with Appellants that the Examiner has not adequately explained
how one skilled in the art would have arrived to the claimed invention from
the disclosure of Auner. Under these circumstances, we cannot conclude
that the Examiner has met the minimum threshold of establishing a prima
facie case of obviousness for the subject matter of claims 1, 14, and 15
under 35 U.S.C. § 103(a). In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir.
1992).
Accordingly, we reverse the Examiner's prior art rejection of claims 1,
14, and 15 under 35 U.S.C. § 103(a) for the reasons presented by Appellants
and given above.
Claims 2-10
We AFFIRM.
Independent claims 2, 5, and 8 and dependent claims 3, 6, and 9 are
directed to compositions comprising halogenated polysilanes where the
halogen substituents of the halogenated polysilanes are bromine, fluorine
4
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Application 12/995, 173
and iodine, respectively. Each of these claims also require specific
characteristics (29Si-NMR spectra and/or Raman intensity) for their
respective composition.
For each of these claims, Appellants argue Auner fails to teach,
disclose, or suggest a specific halogenated substituted polysilane as recited
in the claims and, therefore, Appellants argue Auner cannot inherently
disclose the characteristics also claimed. App. Br. 11-13.
We are unpersuaded by these arguments. In the Non-Final Action of
October 1, 2013 (Non-Final Action),3 the Examiner pointed to where Auner
suggests halogenated polysilanes comprising bromine, fluorine, and iodine
as substituents. Non-Final Act. 8-10; Auner i13. Appellants have not
adequately explained why these disclosed halogenated polysilanes do not
possess the characteristics of the claimed compositions.
With respect to claims 4, 7, and 10, Appellants argue Auner fails to
disclose a hydrogen content of less than 4 atom-%, let alone the criticality of
this range. App. Br. 11-13.
We find this argument also unavailing. With respect to the hydrogen
content of 4%, the Examiner calculated that Auner discloses halogenated
polysilanes having a hydrogen content of less than 13.4%, a range that
overlaps the less than 4% hydrogen concentration as recited in claim 4.
Final Act. 4; Auner i1 3. Appellants have not adequately refuted this
calculation by the Examiner. In addition, as noted by the Examiner,
Appellants have not provided objective evidence demonstrating the
3 The Examiner's appealed Final Action refers to this Non-Final Action for
details regarding the rejection of claims 2, 3, and 5-10. Final Act. 6.
5
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Application 12/995, 173
criticality for the hydrogen content of less than 4% nor for the more
preferred range of less than 2% for that matter. Ans. 4--5.4
Accordingly, we affirm the Examiner's prior art rejection of claims 2-
10 under 35 U.S.C. § 103(a) for the reasons presented by the Examiner and
given above.
ORDER
The Examiner's prior art rejection of claims 1, 14, and 15 under
35 U.S.C. § 103(a) is reversed.
The Examiner's prior art rejection of claims 2-10 under 35 U.S.C.
§ 103(a) is affirmed.
TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l).
AFFIRMED-IN-PART
4 Moreover, the patent to Auner and the instant application share at least one
common inventor. Thus, Auner is Appellants' own prior art and Appellants
are in the best position to explain the reference and distinguish the subject
matter of claims 2-10 from Auner. Appellants have not adequately done so.
6