Ex Parte Bonucci et al

Patent Trial and Appeal Board

Oct 13, 2016

13131393 (P.T.A.B. Oct. 13, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/131,393 08/17/2011
72932 7590
Steinfl & Bnmo LLP
155 N. Lake Ave. Ste 700
Pasadena, CA 91101
10/14/2016
FIRST NAMED INVENTOR
Antonio Bonucci
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.
P809-US 5488
EXAMINER
RUMMEL, IAN A
ART UNIT PAPER NUMBER
1785
MAILDATE DELIVERY MODE
10/14/2016 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANTONIO BONUCCI, ROBERTO MACCHI,
and ROBERTO GIANNANTONIO
Appeal2015-004940
Application 13/131,393
Technology Center 1700
Before DONNA M. PRAISS, A VEL YN M. ROSS, and
JEFFREY R. SNAY, Administrative Patent Judges.
ROSS, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellants2 appeal under 35 U.S.C. §134(a) from the Examiner's final
rejection of claims 1, 2, 4, 6-12, and 26. We have jurisdiction under
35 U.S.C. §6(b ).
1 In our Decision below we refer to the Specification filed May 26, 2011
(Spec.), the Final Office Action appealed from mailed February 25, 2014
(Final Act.), the Appeal Brief filed October 3, 2014 (Appeal Br.), the
Examiner's Answer mailed January 28, 2015 (Ans.), and the Reply Brief
filed March 30, 2015 (Reply Br.).
2 Appellants identify the real party in interest as SAES Getters, S.P.A.
Appeal Br. 2.
Appeal2015-004940
Application 13/131,393
We AFFIRM.
STATEMENT OF CASE
The claims are directed to composite material for the protection of
H20 sensitive devices based on surface functionalized nanozeolites
dispersed in a polymeric matrix. Claims Appendix at Appeal Br. 14. Claim
1, reproduced below, is illustrative of the claimed subject matter:
1. A composite material comprising a homogeneous
dispersion of superficially functionalized nanozeolites in a
polymerizable compound, wherein said nanozeolites contain
surface modifying organic groups belonging to the same
chemical class of at least one functional group of the
polymerizable compound, said composite material capable of
being a barrier against H20, wherein functionalization on the
superficially modified nanozeolites comprises aromatic groups.
Claims Appendix at Appeal Br. 14.
REJECTIONS
The Examiner maintains the following rejections from the Final
Office Action: 3
A. Claims 1, 2, 4, 6-8, and 10 stand rejected under 35 U.S.C.
§103(a) as being unpatentable over Vescovi4 in view of
Plachenov. 5 Final Act. 2.
3 Although the Examiner designates Rejections E and F as new grounds for
rejection in the Answer (Ans. 2), these rejections were first presented in the
Final Office Action (Final Act. 3).
4 Vescovi et al., WO 2007/074494 Al, published July 5, 2007 (hereinafter
"Vescovi").
5 Plachenov et al., US 3,704,806, issued December 5, 1972 (hereinafter
"Plachenov").
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B. Claim 9 stands rejected under 35 U.S.C. §103(a) as being
unpatentable over Vescovi and Plachenov and further in
view of Arai. 6 Id.
C. Claims 11 and 12 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Vescovi and Plachenov and
further in view of Banfield. 7 Id.
D. Claims 1, 2, 4, 6, 8, and 10 stand rejected under 35 U.S.C.
§103(a) as being unpatentable over Metz. 8 Id. at 3.
E. Claim 26 stands rejected under 35U.S.C.§103(a) as being
unpatentable over Metz as evidenced by Butler. 9 Id.
F. Claim 26 stands rejected under 35U.S.C.§103(a) as being
unpatentable over Vescovi in view of Plachenov and as
evidenced by Butler. Id.
Appellants seek review of Rejections A-F. Appeal Br. 4. Appellants
present arguments directed to independent claim 1 and dependent claim 26
but, Appellants provide no additional argument as to claims 2, 4, and 6-12
separate from what is argued for claim 1. Appeal Br. 7-11. We focus our
discussion below on claims 1 and 26 (i.e., Rejections A and D-F) to resolve
the issues on appeal.
6 Arai et al., US 5,827,908, issued October 27, 1998 (hereinafter "Arai").
7 Banfield, US 4,637, 197, issued January 20, 1987 (hereinafter "Banfield").
8 Metz et al., US 2008/0014451 Al, published January 17, 2008 (hereinafter
"Metz").
9 Thomas I. Butler & Barry A. Morris, PE based multilayer film structures,
in MULTILAYER FLEXIBLE p ACKAGING (2009) (hereinafter "Butler").
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Application 13/131,393
OPINION
Rejection A- Obviousness (claims 1, 2, 4, 6-8, and 10)
The Examiner rejects claim 1, among others, as obvious over Vescovi
in view of Plachenov. Final Act. 2. The Examiner finds that Vescovi
teaches a composition that provides barrier protection against water that has
"nano-scale porous sorbing material [that] is dispersed in a polymeric matrix
(pg. 3, ln. 18-26)." Office Action mailed July 17, 2013, 4 (hereinafter
"Non-Final Act."). The Examiner further finds "that the sorbent particles
may have their surfaces modified with molecules that have the same
function groups as the polymeric matrix (pg. 5, In. 12-18) and that the
modifying agent may be aromatic, e.g. styrenic groups (pg. 5, In. 29-31 )."
Id. The Examiner acknowledges that Vescovi does not teach the use of a
zeolite but finds that the use of zeolites is "widely known in the art as an
appropriate sorbent material for use in such barrier coatings." Id. And,
according to the Examiner, the teachings of Plachenov render the use of a
zeolite obvious "as doing so would improve the product's performance as a
moisture barrier." Id. at 4--5.
Appellants present several reasons that Vescovi in view of Plachenov
do not render claim 1 unpatentable. To begin, Appellants argue that Vescovi
teaches against use of a zeolite like that of Plachenov and that introducing
zeolites into Vescovi would impermissibly change the principle of operation
of Vescovi. Appellants urge that Vescovi teaches a "central nucleus" that
"serves as a physical nexus of 'anchoring organic radical' and the
'functional group."' Appeal Br. 6. This functional group, according to
Appellants, "chemically fix[ es] water, which expressly is an irreversibly
chemical process" and in contrast to the Plachenov zeolite which "is a
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Application 13/131,393
reversible absorber of water." Id. at 7. Therefore, according to Appellants,
the combination of Plachenov and Vescovi "amounts to impermissible
hindsight reconstruction."
Appellants' arguments are not persuasive of reversible error by the
Examiner. First, and as the Examiner notes (Ans. 3--4), by replacing the
silica particles of Vescovi with the zeolite particles of Plachenov, the gas-
sorbing functional groups would be bonded to the zeolite rather than silica.
Thus, the gas-sorbing capabilities of the functional groups remain and are
"merely augmented" by the additional sorbing function of the zeolite
particles. Id. Therefore, including the zeolite particles of Plachenov in the
gas sorbing composite of Vescovi would not change the principle of
operation of Vescovi. Appellants, in reply, argue for the first time that
"[t]he getter of Vescovi is a sorption composite getter" that requires
permeability to improve the sorption speed while the instant invention is a
humidity barrier that requires impermeability to slow exposure to the active
phase. Reply Br. 3. Appellants have not explained, nor is it apparent, that
these arguments were necessitated by the Examiner's Answer or could not
have been presented in the principal brief. Therefore, these arguments are
untimely and we will not reach arguments presented for the first time in a
reply brief in the absence of good cause. 37 C.F.R. §41.41(b)(2). Moreover,
were we to consider Appellants' argument, Appellants' argument would be
unpersuasive as it is directed to limitations that do not appear in claim 1, i.e.,
claim 1 does not require impermeability. Claims Appendix at Appeal Br.
14.
Second, we are not convinced by Appellants' argument that Vescovi
teaches away from the combination of Vescovi and Plachenov. To teach
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away, a reference must discourage one of ordinary skill in the art from
following the path set out in the reference, or lead that person in a direction
divergent from the path taken by the applicant. In re Gurley, 27 F.3d 551,
553 (Fed. Cir. 1994). Here we find nothing in Vescovi-and Appellants do
not identify any teaching-that would discourage the skilled artisan from
substituting the silica of Vescovi with the zeolite of Plachenov as presented
by the Examiner. As the Examiner explains, "[t]he fact that the water-
sorbing molecules of Vescovi and the water-sorbing zeolite particles of
Plachenov have different mechanisms for sorbing water would not in any
way preclude or teach against their combined use in the same material."
Ans. 4.
Third, Appellants conclude that, as a result of the above-arguments,
the Examiner engages in improper hindsight reconstruction. Without more,
we find no reversible error. We find no evidence that the Examiner relies on
impermissible hindsight reasoning as the Examiner's articulated reasons for
combining the teachings of Vescovi and Plachenov are supported by the
prior art disclosures. See, e.g., Sensonics, Inc. v. Aerosonic Corp., 81 F.3d
1566, 1570 (Fed. Cir. 1996). Moreover, Appellants do not identify any
knowledge relied upon by the Examiner that was gleaned only from the
Appellants' disclosure and was not within the level of skill in the art at the
time of the invention. In re McLaughlin, 443 F.2d 1392, 1395 (CCPA
1971 ).
Next, Appellants urge that the combination of Vescovi and Plachenov
would not result in the composite material as claimed in claim 1. Appeal Br.
7. Appellants explain that "[t]he porous matrices taught by Vescovi would
produce a moisture permeability higher than what is provided by Butler,
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regardless of the material chosen, due to the increase of permeability
provided by the matrix, as shown in Childs." Id.
Appellants' arguments fail to apprise us of a reversible error by the
Examiner. First, that the moisture permeability of Vescovi may be higher
than provided in Butler, as argued by Appellants (Appeal Br. 7), is
irrelevant. Claim 1 does not require any level of moisture permeability.
Claims Appendix at Appeal Br. 14. As an unclaimed limitation, it provides
no basis to distinguish the instant claims from the prior art. See In re Self,
671F.2d1344, 1348 (CCPA 1982) ("[A]ppellant's arguments fail from the
outset because ... they are not based on limitations appearing in the
claims."). Rather, claim 1 describes a "composite material capable of being
a barrier against H20." Claims Appendix at Appeal Br. 14. As the
Examiner explained,
[ e ]ven if the material that resulted from replacing the silica
particles of Vescovi with zeolite particles was porous . . . this
would not mean that the material was unsuitable for use as a
barrier material, as zeolite particles bind moisture; indeed, it is
precisely this ability of zeolite particles to bind moisture that
makes them useful in moisture sorbing materials.
Ans. 5. Accordingly, we find no error.
Rejection D - Obviousness (claims 1, 2, 4, 6, 8, and 10)
The Examiner rejects claim 1, among others, as obvious over Metz.
Final Act. 3. The Examiner finds that Metz "teaches a zeolite with a
modified surface dispersed in a resin that the surface-modifying group is
able to polymerize with, and teaches that the polymerizable group may be an
alkoxy group (abstract, i-f[0034])." Non-Final Act. 8. The Examiner
acknowledges that Metz does not teach use of an aromatic surface-
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modifying agent but concludes that it would have been obvious one skilled
in the art at the time of invention "that the surface-modifying agent of Mets
could be virtually any common alkoxy group, including a phenol group and
... understood the importance of selecting an appropriate function al group
based on the intended matrix." Id.
Appellants argue10 that "Metz does not disclose the limitation that
'superficially modified nanozeolites comprises aromatic groups' as in claim
1." Appeal Br. 10. Appellants urge that "Metz teaches 'a leaving group
such as a halide or an alkoxy' (see Metz, par. [0034]). Therefore, the
hypothetical phenoxyl group which replaces an alkoxy of Metz in the above
Office Actions will leave the nanozeolites and become absent from the
composite material thus missing what is required in claim 1." Id. at 9. This
is in contrast to the instant invention where "the aromatic groups of claim 1
are an integral part of the superficially functionalized nanozeolites." Id.
We are persuaded by Appellants' argument that the resulting
composite material of Metz would not meet the limitations of claim 1,
because the aromatic group would "leave" and not result in a modified
nanozeolite comprising an aromatic group. The Examiner's argument that
"Metz also teaches numerous other types of functional groups that would not
leave the particle in the polymerization process" (Ans. 7) is unconvincing.
Notably, the Examiner provides no evidentiary support for this assertion.
10 We note that Appellants, for the first time in reply, argue that the
Examiner has improperly relied upon hindsight reconstruction to modify the
zeolites of Metz with aromatic functional groups, as none are discussed in
Metz. Reply Br. 4. The Examiner provided a nearly identical argument in
the Office Action preceding the Final Office Action. See Non-Final Act. 8.
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Therefore, on this record, we cannot affirm the Examiner's rejection of
claim 1 as obvious over Metz.
Rejection E - Obviousness (claim 26)
Claim 26 depends from claim 1 and additionally requires that "the
composite material is configured to exhibit a permeability of moisture lower
than 10 g mm m-2 day-1 at 25° C and 60% relative humidity." Claims
Appendix at Appeal Br. 16. The Examiner rejects claim 26 as obvious over
Metz as evidenced by Butler. Final Act. 3. The Examiner finds that the
materials taught by Metz would result in a moisture permeability as claimed.
Id. Specifically, the Examiner finds that poly(vinylidene chloride) (PVDC)
taught by Metz has a moisture permeability of 0.04 g mm m-2 day-1
according to Butler.
We reverse the Examiner's rejection of claim 26 as obvious over Metz
for the same reasons discussed above in connection with claim 1 as the
Examiner's error in rejecting independent claim 1 over Metz is not cured by
the rejection of dependent claim 26.
Rejection F - Obviousness (claim 26)
The Examiner rejects claim 26 as obvious over Vescovi in view of
Plachenov as evidenced by Butler. Final Act. 3. The Examiner finds that
although Vescovi does not expressly disclose a specific moisture
permeability lower than 10 g mm m-2 day- 1, as required by the claims,
Vescovi does teach use of polyethylene vinyl alcohol (EVOH) which has a
moisture permeability of 0. 79-1.8 g mm m-2 day-1 according to Butler. Id.
3--4.
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Appellants argue that "Childs teaches that making a material porous
can change the permeability of the material (see Childs, Figure 2)." Appeal
Br. 13. Appellants also contend that "Vescovi discloses that the polymeric
matrix is porous or permeable to the gases to be sorbed (see Vescovi, p. 3,
11. 20-21 )." Id. Thus Appellants urge that "the Examiner could not rely on
the values provided in Butler to determine the permeability of Vescovi." Id.
at 13-14.
Appellants' argument does not convince us of reversible error. The
Examiner finds that the permeability values of EVOH, taught by Vescovi
and evidenced by Butler, are "lower than 10 g mm m-2 day- 1 at 25° C and
60% relative humidity" as required by claim 26. Final Act. 4; Ans. 7
("These values are far lower than the claimed values ... " (emphasis
added)). The Examiner also finds that "the material of Vescovi could
increase in permeability by a factor of 12.5 and remain within the bounds of
the claim." Ans. 7. Moreover, the Examiner notes that Butler discloses
permeability at a higher temperature and humidity than claimed; therefore, if
the humidity and temperature were lowered, so too would the permeability
of the materials. Ans. 8. Thus, explains the Examiner, even if the use of a
zeolite increases the permeability of the composite material, it is "highly
likely" the permeability would remain within the claimed limits. Ans. 8.
Appellants do not dispute or identify any error in these findings by the
Examiner. 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). Accordingly, we sustain the
Examiner's rejection.
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CONCLUSION
The Examiner did not err in rejecting claims 1, 2, 4, 6-8, and 10 under
35 U.S.C. § 103(a) as being unpatentable over Vescovi in view of Plachenov.
The Examiner did not err in rejecting claim 9 under 35 U.S.C. §103(a)
as being unpatentable over Vescovi and Plachenov and further in view of
Arai.
The Examiner did not err in rejecting claims 11 and 12 under
35 U.S.C. § 103(a) as being unpatentable over Vescovi and Plachenov and
further in view of Banfield.
The Examiner did reversibly err in rejecting claims 1, 2, 4, 6, 8, and
10 under 35 U.S.C. §103(a) as being unpatentable over Metz.
The Examiner did reversibly err in rejecting claim 26 under 35 U.S.C.
§ 103 (a) as being unpatentable over Metz as evidenced by Butler.
The Examiner did not err in rejecting claim 26 under 35 U.S.C.
§ 103 (a) as being unpatentable over Vescovi in view of Plachenov and as
evidenced by Butler.
DECISION
For the above reasons, the Examiner's rejection of claims 1, 2, 4, 6-
12, and 26 is affirmed.
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
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