Ex Parte Chen et alDownload PDFPatent Trial and Appeal BoardSep 17, 201813240834 (P.T.A.B. Sep. 17, 2018) Copy Citation 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). 2 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. 4 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 6 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. 7 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 8 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 9 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. 10 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. 11 Appeal 2016-007 608 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 Copy with citationCopy as parenthetical citation