Ex Parte Chung

Patent Trial and Appeal Board

May 31, 2016

13279464 (P.T.A.B. May. 31, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/279,464 10/24/2011
832 7590 06/02/2016
FAEGRE BAKER DANIELS LLP
110 WEST BERRY STREET
SUITE 2400
FORT WAYNE, IN 46802
FIRST NAMED INVENTOR
Daniel C. Chung
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.
WHT0071-0l 2046
EXAMINER
ADKINS, CHINESSA T
ART UNIT PAPER NUMBER
1788
NOTIFICATION DATE DELIVERY MODE
06/02/2016 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):
inteas@faegrebd.com
mickie.potter@faegrebd.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DANIEL C. CHUNG
Appeal2014-009843
Application 13/279,464
Technology Center 1700
Before PETER F. KRATZ, ROMULO H. DELMENDO, and
BRIAND. RANGE, Administrative Patent Judges.
DELMENDO, Administrative Patent Judge.
DECISION ON APPEAL
The Applicant (hereinafter "Appellant") 1 appeals under 35 U.S.C. §
134(a) from a final decision of the Primary Examiner to reject claims 6-17.2
We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 The Appellant states that the Real Party in Interest is "WHITFORD
CORPORATION" (Appeal Brief filed May 19, 2014, hereinafter "Appeal
Br.," 3).
2 Appeal Br. l; Final Office Action mailed January 30, 2014 (hereinafter
"Final Act.").
Appeal2014-009843
Application 13/279,464
BACKGROlJ1'-JD
The subject matter on appeal relates to "articles made of a
fluoropolymer such as polytetrafluorethylene (PTFE) and, in particular,
expanded PTFE ("PTFE") to provide a more hydrophilic surface
characteristic to the article" (Specification, hereinafter "Spec.," i-f 2). Claim
8, the sole independent claim on appeal, is reproduced from page Al of the
Appeal Brief (Claims App.), with key limitations indicated in italicized text,
as follows:
8. An article having a hydrophilic surface characteristic,
compnsmg:
a body formed of expanded polytetrajluoroethylene
(ePTFE), said body having at least one surface with a plurality
of pores;
a particulate filler dispersed within said body at an
amount between 0.03 wt.% and 1.0 wt.% based on the
combined weight of said ePTFE and said filler, at least some of
the particles of said filler being exposed at said surface and
within said pores; and
hydrophilic molecules bonded to said exposed filler
particles, the hydrophilic molecules being exposed to impart a
hydrophilic surface characteristic to said article.
THE REJECTIONS
The Examiner rejected claim 17 under 35 U.S.C. § 112 (pre-AIA),
first paragraph, as follows:
I. Claim 17 as failing to comply with the written description
requirement.
The Examiner rejected claim 6-17 under 35 U.S.C. § 103(a) as
follows:
II. Claims 6-15 and 17 as being unpatentable over Branca et al.
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/"I • ro, lL~ .... ,. 1. • • ro ,..,,.,. , .,. /"I • ro,
~neremaner ··tiranca-T m view or cnou et al. ~neremaner
"Chou").4 (Examiner's Answer entered July 17, 2014,
hereinafter "Ans.," 3---6; Final Act. 5-8.)
III. Claim 16 is rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Branca in view of Chou and further in view
of Freese et al. (hereinafter "Freese"). 5 (Ans. 6-7; Final Act. 8-
9.)
DISCUSSION
I. Written Description Requirement
The Examiner rejected claim 17 under 35 U.S.C. 112, i-f 1, "as failing
to comply with the written description requirement" because, according to
the Examiner, "[t]he claim contains subject matter which was not described
in the specification in such a way as to reasonably convey to one skilled in
the relevant art that ... the inventor(s), at the time the application was filed,
had possession of the claimed invention" (Final Act. 4). Specifically, the
Examiner determined that claim 1 7 includes the following claim limitation,
which the Examiner determined is not supported by the written description,
as filed originally: "wherein said pores extend through said article" (id.).
With regard to this limitation, the Examiner found that although the
Specification of the present application describes "an article including a
body having at least one surface with a plurality of pores" (Spec. i-fi-19-10),
it does not disclose that the pores extend through the article" (Ans. 7).
3 US 5,094,895, issued March 10, 1992.
4 US 2008/0276497 Al, published November 13, 2008.
5 US 2007 /0272606 Al, published November 29, 2007.
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Application 13/279,464
The Appellant argues that there is written descriptive support in the
Specification of the present application for claim 17 as required under 35
U.S.C. 112, i-f 1, because "Example 2 sets forth a flow rate test which
measures flow rate of an aqueous solution through ePTFE tubes made in
accordance with the claimed invention" (Appeal Br. 5) (citing Spec. i-fi-1 43-
45 as filed). The Appellant also argues that the porous articles of "Examples
2 and 3 .. .include pores that necessarily extend through the articles in order
to allow aqueous solutions to flow through the pores of the articles" (Appeal
Br. 5). The Appellant further provides in footnote 1:
The recitation in claim 17 of the pores extending through the
article is consistent with common definitions of the word
"pore", which typically contemplate extension through an
article or substrate. For example, the Merriam Webster online
dictionary (www.merriam-webster.com) defines "pore" as "a
minute opening especially in an animal or plant; especially, one
by which matter passes through a membrane".
In response to the Appellant's contentions; the Examiner stated that
"[t]he interior portion of the article is not required to have pores within to
allow the flow of an aqueous solution through the article" (Ans. 8). The
Examiner further determined that
[t]he tubing comprising both ePTFE and hydrophilic
fillers (silica) is able to allow an aqueous solution to flow
through the tubing. The flow can be associated with either the
ePTFE or the hydrophilic fillers within the ePTFE.
The examples do not attribute the pores within the tubing to the
flow of aqueous solution. Therefore, it is not certain that the
pores extend through the article (Ans. 7).
We have fully considered the Examiner's position. However, the
Appellant's arguments reveal a reversible error in the Examiner's
determination that claim 17 fails to comply with the written description
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Application 13/279,464
requirement. The ePTFE tubes discussed in the instant Specification extend
through the article itself (Spec. i-f 44). In the Specification, it is taught that
"to measure the relative ability of different materials comprising ePTFE to
pass through the tubing," one end of the ePTFE tube is "closed to prevent
linear flow of the liquid directly through the interior of the tube" (Spec. i-f
44). At a particular pressure, i.e., at a "breakthrough pressure," liquid beads
appear on the surface of the ePTFE tubing. The disclosure that liquid beads
appear on the surface of the ePTFE tubing, when one of the ePTFE tube is
closed, supports the Appellant's position that pores necessarily extend
through the article of the invention as recited in claim 17. Moreover,
because the instant invention is directed towards a filtering medium, i.e., a
filtration system (Spec. i-f 4), the pores within the article must necessarily
extend through the article in order for the instant invention to work properly.
With these understandings, we find that the Examiner has not sufficiently
met her burden of providing reasons why one of ordinary skill in the art
would not consider the description sufficient to support the concept of the
pores extending through the article. See In re Alton 76 F.3d 1168, 1175
(CCPA 1996) (citing In re Wertheim, 541F.2d257 (CCPA 1976) and In re
Oetiker, 977 F.2d 1443 (Fed.Cir.1992), stating "[i]f, on the other hand, the
specification contains a description of the claimed invention, albeit not in
ipsis verb is (in the identical words), then the examiner or Board, in order to
meet the burden of proof, must provide reasons why one of ordinary skill in
the art would not consider the description sufficient.").
For these reasons, we reverse the rejection of claim 17 under 35
U.S.C. § 112, i-f 1, as failing to comply with the written description
requirement.
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11-111. Rejections Based Principally on Branca in view of Chou
The Appellant's arguments focus only on claim 8 (Appeal Br. 6-13).
Therefore, all claims subject to the rejections relying on Branca in view of
Chou stand or fall together with claim 8, which we select as representative.
See 37 C.F.R. § 41.37(c)(l)(iv).
The Examiner found that Branca describes every limitation of claim 8,
but acknowledged that Branca "fails to teach wherein the article comprises
filler than between 0.03 wt% and 1.0 wt% based on the combined weight of
said ePTFE and said filler and hydrophilic molecules bonded to said exposed
filler particles" (Final Act. 7). To account for the lack of filler in Branca's
porous, expanded polytetrafluoroethylene article, the Examiner relied on
Chou. Specifically, the Examiner found: "Branca and Chou 'both disclose a
polytetrafluoroethylene article having hydrophilic characteristics having a
plurality of voids within the article" (Final Act. 6). Based on this finding,
the Examiner concluded that
it would have been obvious to a person of the ordinary skill in
the art at the time of the invention to incorporate the fillers of
Chou et al. into the pores and on the surface of the article of
Branca et al. in order to improve the adhesion between
polymeric materials in a simple, economic and effective means
(Chou et al., page 1, i-fi-10002, 0006, page 3, i10035) (Final Act.
6).
The Appellant contends that (1) "Chou is not analogous art" because,
unlike Branca or the claimed invention, "Chou discloses 'a method of
improving the adhesion between polymeric materials and adhesives or
primers"' (Appeal Br. 6-7) (citing Chou i10003); (2) "confronted by the
problem of rendering an ePTFE surface more hydrophilic and having
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knowledge of Branca," one of ordinary skill in the art "would have no
reason to consult Chou" (id. at 7); (3) "Branca teaches away from the
present invention" (id. at 10-11); and (4) "the Examiner's stated motivation
to combine Branca and Chou is inapposite" (id. at 11-12).
For the reasons discussed below, the Appellant's arguments,
considered in light of the relied-upon evidence, fail to identify any reversible
error in the Examiner's rejection. In re Jung, 637 F.3d 1356, 1365 (Fed. Cir.
2011).
Non-Analogous Art
The non-analogous art test considers the threshold question whether a
prior art reference is "'too remote to be treated as prior art."' In re Clay, 966
F.2d 656, 658 (Fed. Cir. 1992) (quoting In re Sovish, 769 F.2d 738, 741
(Fed. Cir. 1985)). The two separate tests for determining whether a prior art
reference is analogous are as follows: (i) whether the art is from the same
field of endeavor, regardless of the problem addressed; and (ii) if the
reference is not within the inventor's field of endeavor, whether the
reference is reasonably pertinent to the particular problem with which the
inventor is involved. Clay, 966 F.2d at 658---659.
1. Field of Endeavor Test
The Appellant acknowledges that Branca is analogous art to the
claimed invention as "Branca ... discloses a porous ePTFE composite
article with ... surfaces coated with a perfluoro ion exchange polymer to
render the composite hydrophilic (col. 9, 11. 52-54)" (Appeal Br. 6). But, as
indicated above, the Appellant contends that, unlike Branca or the claimed
invention, "Chou discloses a polymer substrate having a modified surface to
increase the adhesion thereto of polymers or other materials" (id. at 7).
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Application 13/279,464
To the extent that the Appellant is arguing that Chou does not satisfy
the same field of endeavor test, we disagree. The same field of endeavor test
"for analogous art requires the PTO to determine the appropriate field of
endeavor by reference to explanations of the invention's subject matter in
the patent application, including the embodiments, function, and structure of
the claimed invention." In re Bigio, 381F.3d1320, 1325 (Fed. Cir. 2004)
(reference describing a toothbrush found to be in the same field of endeavor
as a claim to a hairbrush based on findings regarding function and structural
similarity).
The Examiner found that "Chou is analogous to the claimed invention
because Chou is directed to a porous polytetrafluoroethylene article having a
filler dispersed within which imparts hydrophilic characteristics to the
article" (Ans. 8-9). These findings are supported by a preponderance of the
evidence.
The Appellant broadly defines the field of their invention as a
"method of forming and treating an article made of a fluoropolymer such as
polytetrafluoroethylene ... in particular, expanded PTFE ... to provide a
more hydrophilic surface characteristic to the article" (Spec. i-f 2). The
Appellant teaches that "ePTFE is widely used in the production of
outerwear, sporting wear and equipment, filtration systems, medical devices
and the like" (id. i-f 3). Chou discloses that "[m]any industrial products and
consumer goods are made by adhering two or more parts together" (i-f 4), that
"athletic footwear ... may contain several polymeric layers, in the sole of
the shoe" and that the "adhesion between these layers is critical to the useful
life of the footwear" (id.). Because both the subject matter of the invention
and the subject matter of Chou are drawn to improving the hydrophilic
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Application 13/279,464
properties of outerwear, we determine that the subject matter of the
invention and the subject matter of Chou are in the same field of endeavor.
Thus, we conclude that Chou is analogous art under the same field of
endeavor test.
2. Reasonably Pertinent to the Particular Problem Test
As explained below, a person of skill working with the material of
Branca would seek to improve adhesion between polymeric materials, and
Chou provides a solution for improving adhesion. (See also Final Act. 9-
10.) Thus, Chou is also analogous under the particular problem test..
A Reason to Combine
Though Chou is analogous art to the Appellant's invention, the
Examiner needed to establish separately that a person having ordinary skill
in the art would have had a sufficient reason for combining Chou with
Branca. Here, the Examiner articulated sufficient reason and rational
underpinning to support the obviousness conclusion.
As found by the Examiner (Final Act. 6), Branca teaches an
article having a hydrophilic surface (col. 8, 11. 5-11, 67-
68; col. 9, 11. 1--4) comprising a body formed of ePTFE (col. 8,
11. 5-11), said body is porous (col. 8, 11. 5-11); wherein the
porous body has at least a portion of the exterior surfaces and at
least a portion of its interior pore surfaces are coated with a
polymer and water soluble surfactant in order to provide
hydrophilicity to the article (col. 8, 11. 5-15, 67---68, col. 9, 11. 1-
4).
Branca suggests that the "porous, liquid-permeable composite article
[is] useful as a diaphragm for electrolysis or as a filtering medium" (col. 1,
11. 11-14). Branca's article is described as including "a multilayer structure
of discrete bonded layers of porous, expanded polytetrafluoroethylene
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Application 13/279,464
(ePTFE)," which is rendered hydrophilic (Abst.) (emphasis added).
Consistent with the Examiner's additional findings (Final Act. 7), Chou
teaches that "certain fillers," i.e. silica, "are capable of forming small holes,
depressions or 'microvoids' on the surface of the modified polymeric
materials" that are favorable to adhesion (i-fi-f 35, 37). Chou further states
that the "selection of a filler," in addition to other particle attributes or
characteristics, depend on the desired properties of the modified polymeric
material (i-f 44 ). Chou also teaches that "surfaces of the fillers may be
modified for various reasons" and that a filler such as silica that is already
"hydrophilic in nature" can be "coated with a dispersing agent or
"dispersant," compatibilizer, or other coating, such as tetraethyl
orthosilicate," which provides better adhesive properties to the polymeric
material containing the hydrophilic group (i-fi-f 45--47).
The Examiner further found that "[ d]elamination of a hydrophilic
article is undesired and therefore by improving the adhesion between
polymeric materials prevents or decreases the possibility of such
delamination" (Ans. 10) and that "[t]he hydrophilic nature of the article
would [have] motivate[ d] one to improve adhesion between the layers of the
composite article" (id.).
We detect no reversible error in the Examiner's findings and analysis.
Although Chou is not directed to a diaphragm for electrolysis or a filter
medium as Branca, a person having ordinary skill in the art would have
considered Chou's teachings to facilitate the need for improved adhesion in
Branca. KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007) ("When a
work is available in one field of endeavor, design incentives and other
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Application 13/279,464
markets forces can prompt variations of it, either in the same field or a
different one.").
Here, Chou teaches that "small holes, depressions or 'microvoids' on
the surface of the modified polymeric materials" are favorable to adhesion
(i-fi-f 35, 37). Because delamination of a hydrophilic article is not desirable
and Branca requires bonded polymeric layers (Abst.), we agree with the
Examiner that one of ordinary skill in the art would have been prompted to
"incorporate the fillers of Chou into the pores and on the surface of the
article of Branca in order to improve the adhesion between such polymeric
materials" (Ans. 10-11) (citing Chou, i1i12, 6, 35).
For these reasons, we hold that there was sufficient reason to combine
Chou with Branca.
Whether Branca teaches away from the present invention
Another principal issue in this appeal is whether the Appellant
identified reversible error in the Examiner's determination that Branca does
not teach away from the present invention.
In Branca, "prior techniques of forming PTFE articles are discussed,
such as combining PTFE with a filler, followed by forming the mixture into
a sheet and then removing the filler" (Appeal Br. 10) (citing Branca col. 2,
11. 51---65). According to the Appellant (Appeal Br. 10), as the filler is
removed "a large percentage of the structure is removed to provide the
necessary porosity" thereby forming a "finished diaphragm [that] is
inherently weak" (Branca col. 2, 11. 63---65). The Appellant argues that
because "the finished diaphragm is inherently weak" (Appeal Br. 10),
Branca teaches away from the present invention because one of ordinary
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skill in the art would not have been motivated to "incorporate fillers into the
ePTFE sheets or layers of the Branca composite articles" (Appeal Br. 10).
The Appellant further argues that
any incorporated fillers into the exposed surfaces of the
article, such as taught by Chou, would provide non-uniformities
in the overall ePTFE structure which would not be desired in
the Branca article, which advantageously includes a "uniform
microstructure" to provide "uniformity of structure" (Branca,
col. 10, 11. 11 and 20) (Appeal Br. 10).
We agree with the Examiner's finding that Branca does not teach
away from the addition of a filler to an ePTFE article. In the prior art
discussed in Branca's "BACKGROUND OF THE INVENTION," certain
sacrificial fillers are removed by dissolving it or decomposing it to form
pores and, according to Branca, "the finished diaphragm is inherently weak"
(col. 2, 11. 51---65). That disclosure, however, does not teach away from
Chou's technique, which does not involve sacrificial fillers of the type
discussed in Branca' s discussion of other prior art. In Chou, the fillers
create holes or voids in a polymer substrate and are not removed from the
polymer (i-fi-f 2, 7). Chou's particulate filler used is a metal oxide, i.e.
aluminum oxide, zinc oxide or fumed silica (i-fi-f 36, 37). Therefore, the
Examiner correctly found that starch, the sacrificial filler of Branca, is
different than the "filler particle disclosed in Chou and the claimed
invention" (Ans. 10). Because "[Branca] does not teach away from the
incorporation of the metal oxide which remains within the polymeric
material," we agree with the Examiner that one having ordinary skill in the
art "would [have] look[ ed] to incorporate the metal oxide of Chou et al. into
the pores and on the surface of the article of [Branca] in order to improve the
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adhesion between polymeric materials in a simple, economical and effective
means" (Ans. 9-10) (citing Chou i-fi-12, 6, i135).
Branca teaches providing a hydrophilic surface to an expanded PTFE
(col. 8, 11. 11-14 ). Incorporation of the filler of Chou is expected to make the
Branca article more hydrophilic. Although the Appellant believes that the
incorporation of a filler such as silica as taught by Chou would be expected
to cause a lack of "uniformity of structure" (Appeal Br. 10), especially when
the fillers are known to form small holes, depressions or "microvoids" on the
surface of the modified polymeric material (Chou i135) and when the
"selection of a filler ... and the size distribution of the filler depend on the
desired properties of the modified polymeric material" (id. i1 45), the
Appellant fails to direct us to evidence indicating that one of ordinary skill
would not have appreciated that the filler can be selected not only to make
the modified polymeric material hydrophilic and/or to improve adhesion of
the modified polymeric material, but to also create an ePTFE having
"uniform microstructure" to the ePTFE.
The Appellant has not identified reversible error with regard to the
Examiner's determination that Branca does not teach away from the present
invention. We therefore affirm the rejections of claims 6---1 7.
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survnvIARY
For these reasons and those set forth in the Examiner's Answer, the
Examiner's final decision to reject claims 6-17 under 35 U.S.C. § 103(a) is
affirmed.
No time period for taking any subsequent action in a connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l ).
AFFIRMED
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