Ex Parte Bonucci et alDownload PDFPatent Trial and Appeal BoardOct 13, 201613131393 (P.T.A.B. Oct. 13, 2016) Copy Citation 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"). 2 Appeal2015-004940 Application 13/131,393 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"). 3 Appeal2015-004940 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 4 Appeal2015-004940 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 5 Appeal2015-004940 Application 13/131,393 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, 6 Appeal2015-004940 Application 13/131,393 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- 7 Appeal2015-004940 Application 13/131,393 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. 8 Appeal2015-004940 Application 13/131,393 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. 9 Appeal2015-004940 Application 13/131,393 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. 10 Appeal2015-004940 Application 13/131,393 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 11 Copy with citationCopy as parenthetical citation