Ex Parte Bai et al

Patent Trials and Appeals Board

Sep 6, 2016

13027747 - (D) (P.T.A.B. Sep. 6, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/027,747
31217 7590
Henkel Corporation
One Henkel Way
Rocky Hill, CT 06067
02/15/2011
04/30/2018
FIRST NAMED INVENTOR
Jie Bai
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.
LDEI-120/PCT/US 7388
EXAMINER
DOLLINGER, MICHAEL M
ART UNIT PAPER NUMBER
1766
NOTIFICATION DATE DELIVERY MODE
04/30/2018 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):
rhpatentmail@henkel.com
trish.russo@henkel.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JIE BAI and SHASHI K. GUPTA
Appeal2014-008670
Application 13/027,747
Technology Center 1700
Before ROMULO H. DELMENDO, MONTE T. SQUIRE, and
AVEL YN M. ROSS, Administrative Patent Judges.
ROSS, Administrative Patent Judge.
DECISION ON REMAND
This application on appeal is before the Board on remand from the
U.S. Court of Appeals for the Federal Circuit. In re Bai, Appeal 2017-2313
(Fed. Cir. Jan. 25, 2018).
Appeal2014-008670
Application 13/027,747
BACKGROUND
In a Final Office Action mailed October 2, 2013 ("Final Act."), the
Examiner finally rejected all pending claims as follows:
A. Claims 1, 6-8, 10, and 12-15 stand rejected under
35 U.S.C § 103(a) as unpatentable over Fukuda et al. 1 in
view of Bischof et al. 2 Final Act. 2.
B. Claims 1, 6-8, 10, and 12-15 stand rejected under
35 U.S.C § 103(a) as unpatentable over Santos et al. 3 in
view of Bischof and further in view of Fukuda. Id. at 4.
The Examiner maintained these rejections on appeal. Ans. 2-9.
We entered a final Decision, dated May 6, 2016 ("Decision"),
affirming the rejection of claims 1, 6-8, 10, and 12-15 as unpatentable under
35 U.S.C. § 103(a) for both Rejections A and B. Decision 8 and 11.
Pursuant to a request for rehearing, on September 8, 2016 in a Decision on
Request for Rehearing ("Reh' g Decision"), we declined to modify our
Decision. Decision on Rehearing 9. 4 Appellants appealed to the Federal
Circuit under 35 U.S.C. §§ 141 and 142, requesting reversal of the Board's
decision to affirm the Examiner's rejection of claims 1, 6-8, 10, and 12-15.
The Federal Circuit remanded ("Remand Order") the case for additional
proceedings and to reconsider the case in view of intervening case law. 5 The
1 Fukuda et al., JP 06-100633, published December 4, 1994. References
herein are to the English machine translation, translated on September 14,
2012 ("Fukuda").
2 Bischof et al., US 2006/0003109 Al, published January 5, 2006
("Bischof').
3 Santos et al., WO 03/107427 Al, published December 24, 2003 ("Santos").
4 We incorporate both the Decision and Decision on Rehearing herein.
5 In addition to the intervening case law cited identified by the Federal
Circuit (Remand Order 1-2), we observe that Southwire Company v. Cerro
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Application 13/027,747
appeal of claims 1, 6-8, 10, and 12-15 is now before the Board for further
consideration consistent with the Federal Circuit's remand. We therefore
review the Examiner's Rejections A and B anew.
We affirm the Examiner's Decision rejecting claims 1, 6-8, 10, and
12-15.
ANALYSIS
The primary issue on appeal for both Rejections A and Bis whether
the Examiner made out a prima facie case of obviousness such that the
burden shifted to Appellants to rebut the Examiner's findings. And, if such
a showing has been made, whether Appellants successfully rebutted the
Examiner's prima facie case. We determine that the Examiner has
established a prima facie case of obviousness for Rejection Band because
we determine Appellants failed to provide evidence to rebut that showing or
identify error in the Examiner's rejection, we affirm Rejection B. 6 Our
reasoning follows.
A. Principles of Law
A prima facie case of obviousness is established when the teachings in
the prior art suggest the subject matter of the claims to a person of ordinary
Wire LLC, 870 F.3d 1306 (2017) is an intervening decision that is applicable
to the facts of this Decision on Remand.
6 Because our affirmance of Rejection B disposes of all claims on appeal, we
need not address the Examiner's alternate rejection of the same claims, i.e.,
Rejection A. Cf Beloit Corp. v. Valmet Oy, 742 F.2d 1421, 1423 (Fed. Cir.
1984) (having decided a single dispositive issue, the ITC was not required to
review other matters decided by the presiding officer); accord In re Basel!
Poliolefine Italia SP.A., 547 F.3d 1371, 1379 (Fed. Cir. 2008).
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Application 13/027,747
skill in the art. The prima facie case is a procedural tool and requires the
examiner initially to produce evidence sufficient to support a conclusion of
obviousness. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). Once a
prima facie case is established, the burden shifts to the applicant to provide
rebuttal evidence or argument. Id. A prima facie case of obviousness may
be shown where structural similarities exist between the claimed and prior
art compositions and reason or motivation exists to make the claimed
composition. In re Dillon, 919 F.2d 688, 692 (Fed. Cir. 1990) (en bane)
("the structural similarity between claimed and prior art subject matter,
proved by combining references or otherwise, where the prior art gives
reason or motivation to make the claimed compositions, creates a prima
facie case of obviousness."); In re Best, 562 F.2d 1252, 1255-56 (Fed. Cir.
1977); In re Wilder, 429 F.2d 447, 450 (CCPA 1970). Further,
it is not necessary in order to establish a prima facie case of
obviousness that both a structural similarity between a claimed
and prior art compound (or a key component of a composition)
be shown and that there be a suggestion in or expectation from
the prior art that the claimed compound or composition will have
the same or similar utility as one newly discovered by applicant.
Dillon, 919 F.2d at 693 (emphasis in original). Said another way, "the
statement that a prima facie obviousness rejection is not supported if no
reference shows or suggests the newly-discovered properties and results of a
claimed structure is not the law." Id. (emphasis added). An appellant may
rebut a prima facie case of obviousness by showing the prior art combination
is deficient, that no motivation exists to modify the prior art as suggested by
the examiner, the presence of unexpected results achieved by the claimed
subject matter relative to the prior art, or other objective evidence of
nonobviousness. In re Mayne, 104 F.3d 1339, 1342 (Fed. Cir. 1997); In re
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Application 13/027,747
Geisler, 116, F.3d 1465, 1469--70 (Fed. Cir. 1997); Dillon, 919 F.2d at 692-
93.
B. Rejection B
Based on the facts identified in the Examiner's rejection (Final Act.
4---6), we conclude a prima facie case of obviousness has been shown. The
claims are directed to a curable composition for adhesively attaching one
substrate to another substrate. Spec. i-f 10. Claim 1 requires the curable
composition comprise two separate components----(1) a maleimide-,
nadimide- or itaconimide- compound and (2) a curative component. Appeal
Br. 17. The curative component, which may be present in any amount
subject to the curing characteristic recited in the claim, includes a
metal/carboxylate complex and a peroxide. Id. The Examiner finds, and
Appellants do not dispute, that Santos teaches the identical maleimide-,
nadimide-, or itaconimide- compound claimed. Final Act. 4; compare
Appeal Br. 17 (claim 1) with Santos i-f 48. The Examiner further finds that
Santos teaches "[t]he composition includes a peroxide initiator in an amount
of 0.2 to 2.0 wt%" as well as "a thermally or electrically conductive filler."
Final Act. 4. While Santos teaches a curative component including a
peroxide, Santos does not teach the identical species of peroxide as claimed.
Santos i-f 92. However, Santos describes using peroxy carbonates and
dibenzoyl peroxide as the peroxide initiator. Id. The Examiner also finds
that Bischof, similarly describing curable coating formulations, identifies
di( 4-tert-butylcyclohexyl) peroxidicarbonate as a known alternative to
dibenzolyl peroxide (described in Santos) for use as a free-radical initiator.
Final Act. 5; see also Bischof i-fi-129--31. The Examiner reasons (Final Act.
5) that because dibenzoyl peroxide and di( 4-tert-butylcyclohexyl)
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peroxidicarbonate are functionally equivalent as cure intitiators, the skilled
artisan would have reason to make the substitution. In re Mayne, 104 F.3d
1339, 1340 (Fed. Cir. 1997) ("Because the applicants merely substituted one
element known in the art for a known equivalent, this court affirms [the
rejection for obviousness]."); In re Fout, 675 F.2d 297, 301(CCPA1982)
("Express suggestion to substitute one equivalent for another need not be
present to render such substitution obvious."). The Examiner further finds
that Fukuda discloses similar maleimide curable compositions and describes
using the same cobalt compounds as claimed as a polymerization catalyst to
allow the composition to cure "at [a] low temperature and excellent
workability at the time of hardening and molding." Final Act. 5. We also
observe that Santos teaches using electrically conductive fillers, including
cobalt fillers, and Dershem1 (incorporated by reference into Santos) states
that "[ v ]irtually all commercially available filler[ s] [are] coated with one or
more lubricants" that may include "stearic and oleic acids." Dershem col. 2,
11. 33-35; Santos i-f 103. Dershem further explains that the lubricants
become chemically bonded to the surface of the metal filler forming a metal
carboxylate salt. Id. col. 2, 11. 40-48; see also id. col 8, 11. 3-7 (identifying
cobalt an electrically conductive filler). In this case, the cobalt filler of
Dershem coated with oleic acid results in cobalt oleate claimed by element
b(l ). See Appeal Br. 17 (claim 1 ). The Examiner further explains that
because each of the variables, the imide monomers, the metal/carboxylate,
and peroxide, are "the same for applicant's invention and the disclosure of
the prior art discussed above," the curing properties recited "would
intrinsically be achieved by a composition with all the claimed ingredients."
Id. at 6.
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Regardless of whether the Examiner erred in relying on inherency for
these properties, we find any such error harmless because the Examiner
made the necessary underlying factual findings to support an obviousness
determination, based on substantial identity, that are supported by the
preponderance of the evidence cited on appeal. See Southwire Company v.
Cerro Wire LLC, 870 F.3d 1306, 1311 (2017). Structural similarity alone
provides a basis to believe that the properties claimed would be expected to
be similar to those in the prior art such that the burden shifts to Appellants to
rebut the prima facie case. Dillon, 919 F .2d at 693. We further note that
Santos itself describes examples cured at 80 QC for 30 minutes (Santos i-fl29)
and further states that the cure initiator is "triggered either by exposure to
temperatures in the range of about 70 QC to about 180 QC," providing
additional support that the curing properties, similar to those claimed, would
be expected in the prior art. Id. i191; In re Peterson, 315 F.3d 1325, 1329
(Fed. Cir. 2003) ("A primafacie case of obviousness typically exists when
the ranges of the claimed composition overlap the ranges disclosed in the
prior art."); see also In re Malagari, 499 F.2d 1297, 1303 (CCPA 1974)
(concluding that a claimed invention was rendered prima facie obvious by a
prior art reference whose disclosed range (0.020-0.035% carbon) overlapped
the claimed range (0.030-0.070% carbon)). Therefore, in light of the
structural similarities between the claimed subject matter and the prior art a
prima facie case of obviousness has been shown by the Examiner thereby
shifting the burden to Appellants. Dillon, 919 F.2d at 692; Best, 562 F.2d at
1255-56.
As an initial matter, the burden having shifted to Appellants, it is
incumbent upon Appellants to rebut the prima facie case of obviousness by
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Application 13/027,747
showing error in the Examiner's combination of references or providing
objective evidence of nonobviousness. Dillon, 919 F.2d at 692-93.
Appellants do not attempt, through objective evidence, to establish any
significance of the claimed curing conditions by showing criticality of the
claimed curing conditions that would have been considered unexpected by a
person having ordinary skill in the art or establishing the claimed properties
are not present in the prior art compositions of Santos. Appeal Br. 13-15;
see generally Reply Br. Instead, Appellants choose to argue against the
Examiner's combination of references. Id.
Appellants argue first, that Santos does not disclose the combination
of a peroxide and metal/carboxylate as claimed and that reliance on Bischof
does not remedy the deficiencies of Santos. Appeal Br. 13-14. Specifically,
Appellants contend that it is irrelevant that functional equivalence may exist
between the species of peroxide initiators of Santos and Bischof because no
motivation exists to combine the two references. Id. at 14.
We are not persuaded by Appellants' arguments. As the Examiner
finds, a person of ordinary skill in the art would have recognized that
dibenzoyl peroxide and di( 4-tert-butylcyclohexyl) peroxidicarbonate are
suitable alternatives for one another for the same purpose, i.e., as free-radical
cure initiators. Final Act. 5; see also Bischof i-fi-1 29-31; Santos i1 91-92.
Appellants do not dispute these findings by the Examiner. See Appeal Br.
13-15. We therefore adopt these findings as fact. Cf In re Kunzmann, 326
F.2d 424, 425 n.3 (CCPA 1964) (a finding not shown by the Appellant to be
erroneous may be accepted as fact). And, as functional equivalents, an
express suggestion to substitute one equivalent for another need not be
present. Fout, 675 F.2d at 301; Mayne, 104 F.3d at 1340 ("Because the
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applicants merely substituted one element known in the art for a known
equivalent, this court affirms [the rejection for obviousness]."); KSR Int 'l
Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007) ("'simply arrang[ing] old
elements with each performing the same function it had been known to
perform' and yields no more than one would expect from such an
arrangement."). Therefore, Appellants' arguments regarding the reason to
combine Santos and Bischof, fail to identify a reversible error in the
Examiner's rejection.
Next Appellants urge that Fukuda fails to cure the deficiencies of
Santos and Bischof. Appeal Br. 14. In particular, Appellants argue that the
thermosetting resin of Fukuda includes a side chain reactive group that
would affect the curing properties and performance of the cured material.
Id. 14--15. Therefore, Appellants urge that "one of ordinary skill in the art
would not have had reason to look to Fukuda for guidance as to the
preparation of maleimide-, nadimide- and/or itaconimide-based
thermosetting resins which cure via polymerization through the cyclic
double bond of the nadimide monomer." Id. at 15.
Appellants' argument reveals no reversible error by the Examiner.
Fukuda teaches a similar curable composition to that of the instant claims
including both a maleimide component and a curative component. Fukuda
i-fi-f 15, 18-19. The curative component of Fukuda, like the instant claims,
includes a peroxide and a metallic compound, which may be an organic
carboxylic acid salt of cobalt, for curable compositions useful as adhesion
materials. Fukuda i-fi-f 12, 18-19 and claim 3. Rejection B relies upon
Fukuda for the limited teaching of a curing component, in particular the
metal carboxylic acid salt (corresponding to component b ( 1) of the instant
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claims), and not an imide- compound, having an additional reactive group.
Final Act. 5---6. Rather, the Examiner relies on Santos for teaching the
imide- component of the combination, forming the basis of Rejection B,
which does not possess the reactive groups Appellants contend would
impact the properties and performance of the resulting compound. Further,
Appellants provide no evidence or argument beyond the bare statement that
"one of ordinary skill in the art would expect that the incorporation of an
additional reactive group on the nadimide backbone would substantially alter
both the curing properties ... and the ultimate performance properties of the
resulting cured material." Appeal Br. 15. Missing from Appellants'
argument is any explanation of why or how the presence of the side chain on
the nadimide of Fukuda would dissuade the skilled artisan from utilizing the
metal/carboxylate complex of Fukuda, known to be useful in similar curable
compositions. Therefore, and without more, such attorney argument has low
probative value as it is not evidence. See In re Geisler, 116 F.3d 1465, 1470
(Fed. Cir. 1997); In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974). Nor
can such argument take the place of evidence lacking in the record.
Meitzner v. Mindick, 549 F.2d 775, 782 (CCPA 1977). Moreover, the
Examiner explains that the skilled artisan would have reason to combine
Santos with the cobalt compounds of Fukuda "because Fukuda teaches that
they allow cure at low temperature and excellent workability at the time of
hardening and molding as well as other advantages." Final Act. 5-6 (citing
Fukuda i-fi-f 11 and 77). We discern no error in the Examiner's reasoning.
We also note, as discussed above, that Santos itself-through the
incorporation of Dershem---describes the claimed metal/carboxylate
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complex. Supra p. 5-6. Therefore, we do not find Appellants' contentions
persuasive of reversible error.
Finally, Appellants urge that "it is improper for the Examiner to rely
upon a phantom composition, especially one that is not suggested by the
applied references, to account for the real world properties of the claimed
composition." Appeal Br. 15. For the reasons discussed above (supra
pp. 3-7), i.e., the structural similarity between the curable composition of
Santos to those as claimed, Appellants' arguments are unpersuasive of
reversible error. Dillon, 919 F .2d at 693.
DECISION
For the above reasons, the Examiner's rejection of claims 1, 6-8, 10,
and 12-15 (Rejection B) is affirmed.
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(l).
AFFIRMED
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