Ex Parte Boussaad et al

Patent Trial and Appeal Board

May 25, 2016

12961524 (P.T.A.B. May. 25, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/961,524 12/07/2010
23906 7590 05/27/2016
EIDUPONTDENEMOURSANDCOMPANY
LEGAL PATENT RECORDS CENTER
CHESTNUT RUN PLAZA 721/2340
974 CENTRE ROAD, P.O. BOX 2915
WILMINGTON, DE 19805
Salah Boussaad
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.
CL5273USNA 9337
EXAMINER
HILL, NICHOLAS E
ART UNIT PAPER NUMBER
1767
NOTIFICATION DATE DELIVERY MODE
05/27/2016 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):
PTO-Legal.PRC@dupont.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SALAH BOUSSAAD and GLORIA T. WORRELL
Appeal2014-006039
Application 12/961,524
Technology Center 1700
Before TERRY J. OWENS, MICHAEL P. COLAIANNI, and
WESLEY B. DERRICK, Administrative Patent Judges.
COLAIANNI, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134 the final rejection of claims
1-12. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b).
We AFFIRM.
Appellants' invention is directed to filled polyimides that can be used
in films and articles comprising the films (Spec. 1 :5---6).
Claim 1 is illustrative:
1. A filled polyimide polymer comprising:
a continuous polyimide phase containing dispersed closed voids
having an average longest dimension of about 0.1 microns to
about 10 microns and containing substantially amorphous
Appeal2014-006039
Application 12/961,524
carbon, wherein the polyimide is derived from a polyimide
precursor derived from:
i) at least 50 mole percent of an aromatic dianhydride,
based upon a total dianhydride content of the polyimide, and
ii) at least 50 mole percent of an aromatic diamine based
upon a total diamine content of the polyimide.
Appellants appeal the following rejections:
1. Claims 1-3 are rejected under 35 U.S.C. § 103(a) as obvious over
Yamamoto (US 6,387,969 Bl, issued May 14, 2002) in view of
Shelby (US 7,273,894 B2, issued Sept. 25, 2007).
2. Claims 4--9 are rejected under 35 U.S.C. § 103(a) as obvious over
Yamamoto in view of Shelby as evidenced by Eastman (Eastmanâ„¢
cellulose-based specialty polymers, Eastman publication E-325H
(2014) http://www.eastman.com/Literature_Center/E/E325.pdf).
3. Claims 10 and 12 are rejected under 35 U.S.C. § 103(a) as obvious
over Yamamoto in view of Shelby as evidenced by Eastman and
further in view of Krizan (US 2005/0164002 Al, pub. July 28, 2005).
4. Claim 11 is rejected under 35 U.S.C. § 103(a) as obvious over
Yamamoto in view of Shelby as evidenced by Eastman and further in
view of Sawazaki as translated (JP 2001-244380A, pub. Sept. 7,
2001).
5. Claims 1 and 4--12 are provisionally rejected on the ground of non-
statutory obviousness-type double patenting as unpatentable over
claims 1-9 of copending U.S. application 12/961,522.
6. Claims 1 and 4--12 are provisionally rejected on the ground of non-
statutory obviousness-type double patenting as unpatentable over
claims 1, 5-8, and 15-19 of copending U.S. application 12/961,525.
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7. Claims l and 4 are prov1s10nally rejected on the ground of non-
statutory obviousness-type double patenting as unpatentable over
claim 1 ofcopendingU.S. application 12/961,557.
8. Claims 1 and 4 are provisionally rejected on the ground of non-
statutory obviousness-type double patenting as unpatentable over
claim 1 ofcopendingU.S. application 12/961,562.
Regarding the provisional obviousness-type double patenting rejections
(5) to (7), we note that U.S. applications 12/961,522, 12/961,525, and
12/961,557 are abandoned according to the database of U.S. applications
maintained by the United States Patent and Trademark Office. Accordingly,
rejections (5) to (7) are moot. Regarding rejection (8), U.S. application
12/961,562 issued as U.S. Patent 8,668,980 on March 11, 2014.
Accordingly, rejection (8) is no longer a provisional rejection. Because
Appellants have not presented any argument in response to the Examiner's
rejection (8), we summarily affirm the obviousness-type double patenting
rejection (App. Br. 18).
Regarding rejections (1) to (4), Appellants' arguments focus on the
subject matter common to independent claims 1 and 4 (App. Br. 4--18). We
select claim 1 as representative. Accordingly, claims 2-12 will stand or fall
with our analysis of the rejection of claim 1.
FINDINGS OF FACT AND ANALYSES
The Examiner's findings and conclusions regarding Yamamoto and
Shelby with regard to claim 1 are located on pages 2--4 of the Answer. The
Examiner finds that Yamamoto discloses all the limitations of claim 1,
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except for amorphous carbon in the voids (Ans. 2-3). The Examiner finds
that Shelby teaches a film polymer matrix containing an additive polymer
that forms small cavities in the polymer matrix (Ans. 3). The Examiner
finds that Shelby teaches using cellulosic polymers are particularly efficient
additive polymers that disperse well in a polymer matrix. Id. The Examiner
concludes that it would have been obvious to have used Shelby's cellulosic
polymers as the voiding additive in Yamamoto' s composition because
cellulosic polymers are particularly efficient voiding agents due to their
glass transition temperatures and surface tensions and because cellulosic
polymers disperse well in a polymer matrix. Id. The Examiner further finds
that amorphous carbon is the result of decomposing cellulosic polymers,
which Appellants do not dispute. The Examiner finds that once Shelby's
cellulosic polymers are substituted for Yamamoto' s voiding additive, the
amorphous carbon would naturally form when Yamamoto' s material is
heated to decompose the cellulosic polymer (Ans. 3--4, 9-10).
Appellants argue that Yamamoto and Shelby fail to teach a polymer
having void spaces that contain substantially amorphous carbon (App. Br.
5). Appellants contend that Yamamoto teaches removing from the void the
carbon that may form during a decomposition of the void-forming material
so as to form pores in the material. Id. Appellants contend that Yamamoto
forms pores in order to provide a lower dielectric constant material (App. Br.
5, 13, 16). Appellants argue that adding amorphous carbon to Yamamoto's
voids would increase the dielectric constant of the material which would run
counter to Yamamoto' s goal of lowering the dielectric constant so that there
would have been no reason to combine Shelby's cellulosic additive with
Yamamoto to form amorphous carbon. Id. Appellants contend that the
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Examiner has misconstrued the references in finding that Yamamoto would
have suggested forming a product with amorphous carbon-containing voids
(App. Br. 7). Appellants contend that Yamamoto teaches to remove the
decomposed carbon by an extraction step. Id.
The Examiner's rejection is based upon Yamamoto teaching an
isolatable intermediate that contains a polymeric continuous phase and a
discontinuous phase comprising carbon upon decomposition of the void-
forming material (Ans. 9). Appellants' only response to the Examiner's
finding is that Yamamoto's intermediate is transient (App. Br. 9).
Appellants do not, however, dispute the Examiner's finding that Yamamoto
teaches an isolatable intermediate (App. Br. generally).
Yamamoto may teach that the decomposed void-forming material that
forms the carbon is ultimately removed, but the polymeric material with the
carbon in the voids is nonetheless taught as an isolatable material that may
be formed using Yamamoto' s process. Yamamoto' s intermediate product
formed during the process yields a product falling within the claimed subject
matter. Stated differently, the claims are not limited solely to a final
product, but include the combination of polyimide and amorphous carbon
that exists during the manufacture to produce an end product. See, e.g.,
Exxon Chem. Patents, Inc. v. Lubrizol Corp., 64 F.3d 1553, 1558 (Fed. Cir.
1995). Yamamoto' s product as modified by Shelby that includes the
claimed combination of polyimide and closed voids filled with amorphous
carbon satisfies the claimed product.
We are unpersuaded by Appellants' argument that there is no reason
to combine Shelby's cellulosic additive with Yamamoto' s polyimide film as
the void forming material because doing so would raise the dielectric
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constant of the polyimide film. The Examiner's reason for the combination
is to provide a better dispersed additive in the continuous phase polymer
(Ans. 3). Therefore, the Examiner has provided a reasonable basis for
combination. Yamamoto' s polyimide film would have a uniform dispersion
of voids formed by the cellulosic additives in the final low dielectric
constant. However, in forming Yamamoto' s end product, the polymer film
with Shelby's dispersed cellulosic void forming material, would include a
polyimide film having voids filled with amorphous carbon by decomposition
of the cellulosic polymer void-forming materials. In other words, the
intermediate product of Yamamoto as modified by Shelby would have
resulted in a filled polyimide film within the subject matter of claim 1.
Yamamoto' s teachings regarding the dielectric constant are directed to the
end product not Yamamoto' s intermediate product.
Appellants argue that Yamamoto is non-analogous art (App. Br. 14).
Appellants contend that Yamamoto is directed to porous articles having
excellent heat resistance and fine cellular structure but a low dielectric
constant whereas the claimed invention is to a coverlay that protects circuit
boards from undesired visual inspection (App. Br. 14).
Claim 1, however, is not limited to a coverlay for circuit boards.
Rather, the claim is directed to a polyimide polymer (claim 1 ). The
Specification describes that the filled polyimide "can be" used as a coverlay
(Spec. 18: 16-19). The Specification includes forming a filled polyimide
film with good mechanical properties as part of the invention useful as
coverlays, but Appellants' field of endeavor is not limited solely to
coverlays. (Spec. 1 :28-30). Indeed, the "field of the invention" is disclosed
as being "filled polyimides that can be used in films and articles comprising
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the films." (Spec. l :5---6). The Specification discloses that the films are
useful as coverlays and have good optical properties.
Accordingly, we find that Appellants' field of endeavor is filled
polyimide films that are composed of voids filled with amorphous carbon.
Yamamoto discloses forming a polyimide film having voids that may
contain carbon as noted supra. Accordingly, the Examiner has established
that Yamamoto is in Appellants' field of endeavor (Ans. 10).
Appellants argue that the Examiner impermissibly used Appellants'
disclosure to understand the teaching of Yamamoto and Shelby (App. Br.
17-18). Appellants contend that Yamamoto never discloses forming closed
voids having amorphous carbon contained therein. Id. Appellants contend
that the Examiner uses hindsight in finding that Yamamoto' s discontinuous
phase means closed voids because Appellants' Specification defines closed
voids on page 6 of the Specification. Id.
The Examiner, however, relies on Yamamoto' s figures which the
Examiner finds to show closed voids constituting a discontinuous phase
(Ans. 11 ). Appellants' definition of closed voids comports with the
Examiner's finding that the ordinary meaning of "closed voids" is "a portion
of a material that forms unconnected, discrete regions." (Ans. 11 ). The
Examiner reasonably finds that Yamamoto' s "discontinuous phase" includes
closed voids according to Appellants' definition and the ordinary meaning of
that claim phrase. Appellants do not respond to the Examiner's findings
regarding Yamamoto' s figures.
On this record, we affirm the Examiner's§ 103 rejections.
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THvIE 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).
DECISION
The Examiner's decision is affirmed.
ORDER
AFFIRMED
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