Ex Parte Chen et al

Patent Trial and Appeal Board

Sep 17, 2018

13240834 (P.T.A.B. Sep. 17, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/240,834 09/22/2011
66024 7590 09/19/2018
EASTMAN CHEMICAL COMPANY
200 SOUTH WILCOX DRIVE
KINGSPORT, TN 37660-5147
FIRST NAMED INVENTOR
Wenjie Chen
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.
85557US01 8244
EXAMINER
CAI,WENWEN
ART UNIT PAPER NUMBER
1763
NOTIFICATION DATE DELIVERY MODE
09/19/2018 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):
jlmcglothlin@eastman.com
rlwhite@eastman.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WENJIE CHEN and YINONG MA
Appeal2016-007608
Application 13/240,834
Technology Center 1700
Before BEYERL YA. FRANKLIN, LINDA M. GAUDETTE,
JENNIFER R. GUPTA, Administrative Patent Judges.
GAUDETTE, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner's decision
finally rejecting (1) claims 1-3, 5-7, 18-20, 23, and 24 under 35 U.S.C. § 103(a)
as unpatentable over Chen (US 2008/0268270 Al, published October 30, 2008) in
view of Hashimoto (JP 2008/119927, published May 29, 2008 (machine
translation)), and (2) claims 18, 19, and 24 under 35 U.S.C. § 103(a) as
unpatentable over Hashimoto. We have jurisdiction under 35 U.S.C. § 6(b).
1 This Decision includes citations to the following documents: Specification filed
Sept. 22, 2011 ("Spec."); Final Office Action dated Sept. 5, 2014 ("Final"); Appeal
Brief filed Aug. 11, 2015 ("Appeal Br."), and claims filed with the Supplemental
Appeal Brief dated June 20, 2016; Examiner's Answer dated July 8, 2016
("Ans."); and Reply Brief filed Aug. 10, 2016 ("Reply Br.").
2 Appellants identify the real party in interest as Solutia Inc. Appeal Br. 3.
Appeal 2016-007 608
Application 13/240,834
We AFFIRM and enter a new ground of rejection.
The invention relates to polymer interlayers for use in multiple layer glass
panels that are utilized, for example, in architectural window applications, in the
windows of motor vehicles and airplanes, and in photovoltaic solar panels.
Spec. ,r,r 1-2. Of the appealed claims, claims 1 and 18 are independent, and are
reproduced below.
1. A single layer high-flow interlayer comprising:
poly(vinyl butyral) resin; and
a mixture comprising:
at least one plasticizer selected from the group consisting of:
triethylene glycol di-(2-ethylhexanoate ), triethylene glycol di-(2-
ethylbutyrate ), triethylene glycol diheptanoate, tetraethylene glycol
diheptanoate, dihexyl adipate, dioctyl adipate, hexyl
cyclohexyladipate, diisononyl adipate, heptylnonyl adipate, and
dibutyl sebacate; and
epoxidized vegetable oil;
wherein the interlayer comprises about 15 to about 100 parts
mixture per one hundred parts poly( vinyl butyral) resin, wherein the
mixture comprises about 5 to about 90 parts epoxidized vegetable oil
per one hundred parts poly(vinyl butyral) resin, and wherein the
highflow interlayer has a flow of at least 0.20 mm measured as the
DF135 by a thermo-mechanical analysis apparatus and a glass
transition temperature (T g) of about 30°C to 35°C.
18. A single layer high-flow interlayer comprising:
a poly(vinyl butyral) layer comprising between 2 and 20 parts
epoxidized vegetable oil per 100 parts poly( vinyl butyral) and having
a glass transition temperature of about 35°C or greater, and wherein
the high-flow interlayer has a flow of at least 0.20 mm measured as
the DF135 by a thermo-mechanical analysis apparatus, and wherein
the single layer interlayer is laminated between two rigid substrates.
Appeal Br. 23, 24 (Claims Appendix).
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Appeal 2016-007 608
Application 13/240,834
New rejection of claims 18-20 and 24
We enter the following NEW GROUND OF REJECTION pursuant to
37 C.F.R. § 4I.50(b):
Claims 18-20 and 24 are rejected under pre-AIA 35 U.S.C. § 112, second
paragraph, or 35 U.S.C. § 112(b ). The preamble of claim 18 recites "[a] single
layer high-flow interlayer comprising." The body of claim 18 recites "wherein the
high-flow interlayer has a flow of at least 0.20 mm ... and wherein the single layer
interlayer is laminated between two rigid substrate" ( emphasis added). With the
exception of this one occurrence in claim 18, the term "single layer interlayer"
does not appear in the original Specification or the current claims. The
Specification discloses that the term "interlayer" generally "designate[ s] a single-
layer sheet or a multilayered interlayer." Spec. ,r 35 (emphasis added). We
conclude the meaning of the term "single layer interlayer" is unclear to one of
ordinary skill in the art upon review of the Specification and, therefore, renders
claim 18 indefinite under pre-AIA 35 U.S.C. § 112, second paragraph, or
35 U.S.C. § 112(b). See Ex parte Miyazaki, 89 USPQ2d 1207, 1211 (BPAI 2008)
(precedential) ("[I]f a claim is amenable to two or more plausible claim
constructions, the USPTO is justified in requiring the applicant to more precisely
define the metes and bounds of the claimed invention by holding the claim
unpatentable under 35 U.S.C. § 112, second paragraph, as indefinite." Claims 19,
20, and 24 are indefinite by virtue of their dependencies from claim 18.
For purposes of our analysis of the rejections under 35 U.S.C. § 103(a), we
interpret "the single layer interlayer" as "the high-flow interlayer."
3
Appeal 2016-007 608
Application 13/240,834
Rejection of claims 1-3, 5-7, 18-20, 23, and 24 under 35 USC§ 103(a)
as unpatentable over Chen in view of Hashimoto
Chen relates to "multiple poly(vinyl butyral) layer interlayers that can be
used in multiple layer glass panel type applications that require a high level of
impact protection." Chen, Abstract. Chen uses the term "interlayer" to refer to
"any thermoplastic construct that can be used in multiple layer glass applications,
such as safety glass in windshields and architectural windows." Id. ,r 15. Chen
discloses that in preferred embodiments the interlayer comprises three poly(vinyl
butyral) layers, the outer layers having a relatively high plasticizer content and an
inner layer having a relatively low plasticizer content. Id. ,r 17. Chen further
discloses that "[t]he composition of the poly(vinyl butyral) layers is such that net
migration of plasticizer from one poly(vinyl butyral) layer to another is negligible
or zero, thereby maintaining the plasticizer differential." Id. ,r 11. "The outer
layers can have, for example, 10-75 [parts per hundred resin parts (phr) 3]
plasticizer, while the inner layer can have, for example, 0-50 phr plasticizer." Id.
,r 19. Chen provides a list of suitable plasticizers for use in the interlayer, and
identifies triethylene glycol di-(2-ethylhexanoate) as preferred. Id. ,r 44. Chen
refers to the same prior art methods as the present inventors for a description of
suitable processes for preparing the poly(vinyl butyral) resin. Compare Chen ,r 48,
with Spec. ,r 38.
Hashimoto relates to an interlayer for glass laminates used, for example, in
automobile windshields. Hashimoto ,r,r 1-3. The interlayer comprises a laminate
of an ethylene-vinyl acetate (EVA) copolymer layer and polyvinyl butyral (PVB)
layer. Hashimoto claim 1. Hashimoto's invention is said to address the problem
of deterioration in an EV A/PVB laminate interlayer caused by plasticizer in the
3 See id. ,r 12.
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Appeal 2016-007 608
Application 13/240,834
PVB layer migrating into the EVA layer. Id. ,r 8. Hashimoto is said to have
discovered that this "shift of a plasticizer could be inhibited by using the plasticizer
which has a predetermined solubility parameter and molecular weight in a PVB
resin layer." Id. ,r 12. Hashimoto discloses that any plasticizer may be used as
long as these predetermined requirements are met. Id. ,r 28. However, Hashimoto
explicitly identifies ether esters, adipic esters, epoxidized soybean oil, and linseed
oil as suitable plasticizers. Id. Hashimoto further discloses the plasticizer is
present in an amount of 20-60 phr. Hashimoto claim 5.
The Examiner finds one of Chen's outer layers meets the limitation of a
single layer interlayer, as recited in appealed claim 1, because it "is part of an
interlayer and encompassed by other layers." Final 3. The Examiner finds Chen
discloses the outer layer comprises PVB resin and a plasticizer such as triethylene
glycol di-(2-ethylhexanoate) ("3GEH") in an amount of 10-75 phr. Id. The
Examiner finds Chen does not teach the use of epoxidized vegetable oil in the
plasticizer mixture. Id. The Examiner finds Hashimoto teaches a single layer
interlayer comprising PVB and a plasticizer, such as epoxidized soybean oil
("ESQ"), in an amount of 20-60 phr. Id. The Examiner determines it would have
been obvious to use a combination of 3GEH and epoxidized vegetable oil as the
plasticizer in Chen's PVB resin because "it is primafacie obvious to combine two
compositions each of which is taught by the prior art to be useful for the same
purpose, in order to form a third composition which is to be used for the very same
purpose." Id. (quoting In re Kerkhoven, 626 F.2d 846,850 (CCPA 1980)); see
also KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007) ("[W]hen a patent
'simply arranges 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, the combination is obvious." (quoting Sakraida v. Ag Pro, Inc., 425
5
Appeal 2016-007 608
Application 13/240,834
U.S. 273,282 (1976))); In re Crockett, 279 F.2d 274,276 (CCPA 1960) ("The
'joint use [ of magnesimn oxide and calcium carbide] is not patentable' where the
prior art teaches 'that both magnesium oxide and calcium carbide, individually,
promote the formation of a nodular structure in cast iron, and it would be natural to
suppose that, in combination, they would produce the same effect and would
supplement each other."'). The Examiner finds the combination would have
resulted in a layer comprising plasticizer in an amount that overlaps the amounts
recited in claims 1 and 18. Final 3. The Examiner further finds the resultant layer
necessarily would have possessed the recited flow and glass transition temperature
(T g) because the "[S]pecification indicates that the properties are the result of
choosing the claimed components in the claimed amounts." Id. at 4; see Spec. ,r 61
("The epoxidized vegetable oil and conventional plasticizer mixture are provided
in the melt at a concentration sufficient to provide the desired performances of
flow, glass transition temperature, clarity, and adhesion of the interlayer. For
interlayers with the combined conventional plasticizer and epoxidized vegetable oil
mixture, the epoxidized vegetable oil is incorporated into the melt with the
conventional plasticizers described above at a concentration of epoxidized
vegetable oil of about 1 to about 100 phr, about 5 to about 90 phr[, etc.] . . . . In
various embodiments, the mixture can comprise about 15 to about 40 parts
conventional plasticizer per one hundred parts poly(vinyl butyral) resin and at least
about 1 part epoxidized vegetable oil per hundred parts poly(vinyl butyral) resin.");
id. ,r 46 (identifying 3GEH as "[a] more preferred [ conventional] plasticizer"); id.
,r 5 8 ("Epoxidized soybean and linseed oils are preferable .... ").
Appellants advance several arguments in support of their contention that the
Examiner failed to establish a prima facie case of obviousness as to independent
claims 1 and 18. See generally Appeal Br. 10-20; see also id. at 21-22 (relying on
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Appeal 2016-007 608
Application 13/240,834
the arguments made for claims 1 and 18 in support of patentability of claims 2, 3,
5-7, 19, 20, 23, and 24). We have fully considered these arguments but determine
the Examiner's fact finding and reasoning in the Final Office Action and the
Answer, which we adopt as our own, is sufficient to support a prima facie case of
obviousness. See Final 2-5; Ans. 3---6. With respect to Appellants' continued
assertion that neither Chen nor Hashimoto discloses a single layer interlayer (see,
e.g., Appeal Br. 18; Reply Br. 5), we add the following.
The preambles of claims 1 and 18 recite "A single layer high-flow interlayer
comprising." "[W]hether to treat a preamble as a claim limitation is determined on
the facts of each case in light of the claim as a whole and the invention described in
the patent." Storage Tech. Corp. v. Cisco Sys., Inc., 329 F.3d 823, 831 (Fed. Cir.
2003)). "[A] preamble is not limiting 'where a patentee defines a structurally
complete invention in the claim body and uses the preamble only to state a purpose
or intended use for the invention."' Catalina Mktg,. Int 'l, Inc. v. Coo/savings.com,
Inc., 289 F.3d 801, 808 (Fed. Cir. 2002) (quoting Rowe v. Dror, 112 F.3d 473, 478
(Fed. Cir. 1997)).
"The high-flow interlayer" is recited in the bodies of claims 1 and 18.
However, the complete preamble phrase "single layer high-flow interlayer" is not
recited in the body of either claim. The body of claim 18 also recites "the single
layer interlayer." As noted in the new ground of rejection, above, the term "single
layer interlayer" is indefinite, and we interpret it, for purposes of deciding the prior
art rejections, as referring to the high flow interlayer. Because only the "high-flow
interlayer" portion of the preamble is necessary to provide antecedent basis to
terms in the body of the claim and to give "necessary life, meaning, and vitality to
the claim," Catalina Mktg., 289 F.3d at 808, we decline to interpret claims 1 and
18 as limited by the term "single layer." See TomTom, Inc., 790 F.3d 1315 (Fed.
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Appeal 2016-007 608
Application 13/240,834
Cir. 2015) ("The phrase 'generating and updating data for use in' does not recite
essential structure or steps, or give necessary life, meaning, and vitality to the
claim. It was therefore error for the district court to use an antecedent basis
rationale to justify converting this independent part of the preamble into a new
claim limitation."). We agree with the Examiner (see Ans. 5) that the broadest
reasonable interpretation of claims 1 and 18 encompasses a multilayered interlayer
that includes the recited poly( vinyl butyral) layer as one of the layers. See
Spec. ,r 35 ("The term[] ... 'interlayer,' as used herein, generally may designate a
single-layer sheet or a multilayered interlayer .... In various embodiments ... , a
multilayered interlayer comprises at least two polymer layers (e.g., a single layer or
multiple layers co-extruded)."); original claim 21 ("The interlayer of claim 18,
wherein the interlayer is a multilayered interlayer").
Appellants attempt to rebut the Examiner's prima facie case of obviousness
by relying on comparative testing data in the Specification as evidence of
unexpected results. See Appeal Br. 14--15; Reply Br. 2-5. We address Appellants'
secondary considerations of nonobviousness below.
As shown in Specification Table 1, reproduced below, four interlayers made
in accordance with the invention (DI 1--4) were compared with two conventional
interlayers (CI 1-2).
Sample PVB resin 3GEH ESQ Antiblocking Thickness
(parts) (phr) (phr) agent (phr) (mils)
DI 1 100 30 13 0.0 22
DI2 100 32 9 0.0 22
DI3 100 30 13 0.3 22
DI4 100 32 11 0.3 22
CI 1 100 38 0 0.0 30
CI2 100 38 0 0.3 30
Spec. ,r 83. All six layers were prepared with 100 parts PVB resin. Id. Layers DI 1
and DI 3 were prepared with 30 phr 3GEH and 13 phr ESO. Id. Layers DI 2 and
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Appeal 2016-007 608
Application 13/240,834
DI 4 were prepared with 32 phr 3GEH, and 9 phr and 11 phr, respectively, ESO.
Id. Layers CI 1 and CI 2 were prepared with 38 phr 3GEH. Id. 0.3 phr
antiblocking agent was also added to layers DI 3, DI 4 and CI 2. Id. The
properties of various layers were compared. See generally id. ,r,r 84--101.
Specification Table 2, for example, provides a comparison of layers DI 1, DI 2,
and CI 1. Id. ,r 85. Appellants contend the data in Specification Tables 1 and 2
demonstrates "that interlayers (that are thinner) having the same T g and better flow
can be obtained by combining plasticizer and a flow modifier," i.e., ESO. Reply
Br. 4; see also Appeal Br. 11, 15.
The Examiner lists five reasons why the data in the Specification is not
persuasive of unexpected results. Ans. 2-3. Appellants explicitly address four of
these reasons, arguing they are based on the Examiner's misunderstanding of the
invention and/or unsupported findings. See generally, Reply Br. 2--4. We need not
resolve the dispute between the Examiner and Appellants with respect to the four
reasons addressed by Appellants, because we agree with the Examiner's fifth
reason, i.e., that the evidence is unpersuasive of nonobviousness because the data
in the Specification is not reasonably commensurate in scope with the claims. See
Ans. 3.
Evidence of secondary considerations must be reasonably
commensurate with the scope of the claims. This does not mean
that an applicant is required to test every embodiment within the
scope of his or her claims. If an applicant demonstrates that an
embodiment has an unexpected result and provides an adequate
basis to support the conclusion that other embodiments falling
within the claim will behave in the same manner, this will generally
establish that the evidence is commensurate with scope of the
claims.
In re Kao, 639 F.3d 1057, 1068 (Fed. Cir. 2011) (internal citations omitted). As
explained by the Examiner, the Specification describes the testing of four
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Appeal 2016-007 608
Application 13/240,834
exemplary layers containing 30 or 32 phr of 3GEH and 9, 11, and 13 phr ofESO.
Ans. 3. Claim 1, however, is not limited to the combination of 3GEH and ESO,
but recites a mixture of epoxidized vegetable oil and at least one plasticizer
selected from a group of ten plasticizers. See id. Moreover, claim 1 broadly
recites that the mixture may be present in an amount of 15 to 100 phr, and the
epoxidized vegetable oil may be present in the mixture in an amount of 5 to 90 phr.
See id. Appellants have not identified persuasive evidence to support a finding that
other untested embodiments falling within the scope of the claims reasonably
would be expected to behave in the same manner as the four tested layers.
Appellants' data is even less persuasive of patentability of claim 18, as this claim
requires only PVB and 2 to 20 phr epoxidized vegetable oil. We additionally note
Appellants' assertion that "[t]he use of PVB, an epoxidized vegetable (plant) oil
and a conventional plasticizer creates synergy between the components allowing
the flow of the interlayer to be increased without sacrificing other characteristics
typically associated with an increased flow" (Appeal Br. 10 (emphasis added)) is
unpersuasive because it is not supported by the Specification which identifies the
conventional plasticizer as an optional component of the alleged synergistic
combination of thermoplastic resin and epoxidized vegetable oil (see Spec. ,r 34,
Abstract).
In sum, having considered the evidence in this appeal record, including
Appellants' evidence of unexpected results, we determine a preponderance of the
evidence supports the Examiner's conclusion that claims 1-3, 5-7, 18-20, 23, and
24 are unpatentable under 35 U.S.C. § 103(a) as obvious over Chen in view of
Hashimoto.
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Appeal 2016-007 608
Application 13/240,834
Rejection of claims 18, 19, and 24 under 35 US.C. § 103(a)
as unpatentable over Hashimoto
The Examiner finds Hashimoto teaches a single layer interlayer comprising
PVB and a plasticizer, such as ESO, in an amount of 20-60 phr. Final 6. The
Examiner finds the ESQ content in Hashimoto' s interlayer overlaps the "between 2
and 20" phr epoxidized vegetable oil content of the claim 18 PVB layer. Id. The
Examiner finds Hashimoto' s interlayer comprising PVB and ESQ necessarily
would have possessed the recited flow and glass transition temperature because the
"[S]pecification indicates that the properties are the result of choosing the claimed
components in the claimed amounts." Id.
Appellants argue that Hashimoto does not disclose a single layer high-flow
interlayer as claimed, but teaches a multiple layer interlayer that includes a PVB
layer and an EV A layer. Appeal Br. 21. This argument is not persuasive for the
reasons explained by the Examiner in the Answer: "[C]laim 18 does not exclude
an ethylene vinyl acetate layer, the use of ESQ as plasticizer for PVB does not rely
on the presence of EV A layer. The multilayer of Hashimoto not having the
claimed flow or Tg does not mean the polyvinyl butyral layer of Hashimoto does
not have the claimed flow or Tg." Ans. 6; see discussion regarding the preamble
supra pp. 7-8.
To the extent Appellants rely on the data in the Specification as evidence of
unexpected results, we do not find this evidence persuasive for the reasons stated
above in connection with the rejection based on Chen in view of Hashimoto.
Appellants do not present separate arguments in support of patentability of
claims 19 and 24. See Appeal Br. 21-22. Accordingly, we sustain the rejection of
claims 18, 19, and 24 under 35 U.S.C. § 103(a) as obvious over Hashimoto for the
reasons stated in the Final Office Action and the Answer.
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Application 13/240,834
ORDER
We AFFIRM the following rejections under 35 U.S.C. § 103(a):
1. claims 1-3, 5-7, 18-20, 23, and 24 as unpatentable over Chen in view
of Hashimoto;
2. claims 18, 19, and 24 as unpatentable of Hashimoto.
Pursuant to 37 C.F.R. § 4I.50(b), we enter a new ground of rejection of
claims 18-20 and 24 under pre-AIA 35 U.S.C. § 112, second paragraph, or
35 U.S.C. § 112(b ).
37 C.F.R. § 4I.50(b) provides that Appellants, WITHIN TWO MONTHS
FROM THE DATE OF THE DECISION, must exercise one of the following two
options with respect to the new ground of rejection to avoid termination of the
appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence
relating to the claims so rejected, or both, and have the
matter reconsidered by the examiner, in which event the
proceeding will be remanded to the examiner ....
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same
record ....
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 )(iv).
AFFIRMED;
37 C.F.R. § 4I.50(b)
12