Ex Parte Cook et alDownload PDFPatent Trial and Appeal BoardSep 7, 201612640068 (P.T.A.B. Sep. 7, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/640,068 12/17/2009 32692 7590 09/09/2016 3M INNOVATIVE PROPERTIES COMPANY PO BOX 33427 ST. PAUL, MN 55133-3427 FIRST NAMED INVENTOR Jennifer L. Cook 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. 65956US002 8054 EXAMINER BOYLE, ROBERT C ART UNIT PAPER NUMBER 1764 NOTIFICATION DATE DELIVERY MODE 09/09/2016 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): LegalUSDocketing@mmm.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JENNIFER L. COOK, TATSUO FUKUSHI, WERNER M.A. GROOTAERT, and ALAIN VERSCHUERE Appeal2015-003139 1 Application 12/640,068 Technology Center 1700 Before ADRIENE LEPIANE HANLON, TERRY J. OWENS, and LILAN REN, Administrative Patent Judges. REN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants2 appeal under 35 U.S.C. § 134 from a rejection of claims 1, 2, 5-11, 21, and 22. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 Our decision references Appellants' Appeal Brief ("App. Br.," filed October 13, 2014) and Reply Brief ("Reply Br.," filed January 9, 2015), and the Examiner's Answer ("Ans.," mailed November 14, 2014) and Final Office Action ("Final Act.," mailed April 15). 2 The real party in interest is identified as 3M Company (formerly known as Minnesota Mining and Manufacturing Company) of St. Paul, Minnesota and its affiliate 3M Innovative Properties Company of St. Paul, Minnesota. (App. Br. 2.) Appeal2015-003139 Application 12/640,068 CLAIMED SUBJECT MATTER The disclosure seeks to address the "increasing need for higher temperature elastomers that perform adequately at for example, temperatures of 220QC to 330QC." (Spec. i12.) The Specification is directed to "a desire to identify a curing system for partially fluorinated elastomers such as those fluoroelastomers that are based on vinylidene fluoride (often referred to as "FKM" or by their ASTM D 1418-06 designation), which improves the high temperature performance." (Id. i15.) Claim 1, reproduced below, is illustrative of the claimed subject matter: A curable partially fluorinated elastomeric composition compnsmg: (i) a fluoroelastomer comprising interpolymerized units derived from (a) at least one hydrogen containing monomer and (b) at least one nitrile containing monomer, and (ii) a curing agent, wherein the curing agent consists of a peroxide and a coagent, wherein the fluoroelastomer only cures through a nitrile containing cure site and the peroxide and coagent. (App. Br. 10 (Claim Appendix) (emphasis added).) REFERENCES The prior art3 relied upon by the Examiner in rejecting the claims on appeal is: Kaspar US 2003/0018148 Al Jan.23,2003 3 The section 103 rejection based on Kolb (US 2002/0145228 Al, pub. Oct. 10, 2002) has been withdrawn and is therefore not at issue in this appeal. (Ans. 6.) 2 Appeal2015-003139 Application 12/640,068 REJECTIONS Claims 1, 2, 5-11, 21, and 22 stand rejected under 35 U.S.C. §102(b) as being anticipated by Kaspar. (Ans. 2.)4 OPINION Findings of fact throughout this Opinion are supported by a preponderance of the evidence of record. Claim 15 The Examiner finds that Kaspar discloses that in order to "obtain a curable fluoroelastomer, a ... cure site component may be included in the polymerization reaction" and that the "cur[able] site component may comprise a nitrile group-containing cure site monomer." (Kaspar i-fi-160, 61; See also Ans. 2).) The Examiner finds that Kaspar discloses a "curable fluoroelastomer composition" which includes "the curable fluoroelastomer and one or more curatives such as the peroxide and/or one or more catalysts," (Ans. 5) as well as "a coagent ... capable of cooperating with the peroxide to provide a useful cure." (Kaspar i-fi-164, 65; see also Final Act. 2- 3).) Because "[t]he same materials are present in the [sic] Kaspar as the instant claims," the Examiner finds that it is "therefore inherent that the same materials would react in the same manner as claimed since such a property is evidently dependent on the nature of the composition used." (Final Act. 3.) 4 An obviousness rejection of claims 1-2, 5-11, 21, and 22 over Kaspar and Kolb have been withdrawn and not subject to this appeal. (Ans. 6.) 5 Appellants do not present separate arguments for claims 2, 5-11, 21, and 22 and they therefore stand or fall with claim 1. (See App. Br. 5-8.) 3 Appeal2015-003139 Application 12/640,068 Appellants acknowledge that Kaspar "may recite each of the claim terms within the four comers of the document" but argue that "[t]he issue at hand is whether or not it was known at the time of filing that one could cure partially fluorinated elastomers comprising nitrile cure sites only with a peroxide/coagent cure system." (App. Br. 3, 6.)3 The Examiner responds that Kaspar expressly discloses a fluoroelastomer which "may include a cure site component" such as "a nitrile group-containing cure site monomer" and that the "curable fluoroelastomer composition will generally include ... peroxide[.]" (Kaspar i-fi-159, 61, 64 (see also Ans. 6-8).) Because Kaspar discloses that "a coagent" "is usually blended with the composition as a part of the curative system ... which is capable of cooperating with the peroxide to provide a useful cure" (id. i165) and that a composition identical to the recited composition which would inherently react in the same manner as recited in claim 1, the Examiner maintains the anticipation rejection. (Ans. 6-8; Final Act. 2-3).) "[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art's functioning, does not render the old composition patentably new to the discoverer." Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1347 (Fed. Cir. 1999). In this 3 In the event that prosecution continues, the Examiner may wish to ensure that the disputed claim term does not include new matter. Appellants direct us to paragraphs 47, and 51-53 of the Specification for support of this disputed limitation. (See App. Br. 2.) These cited portions of the Specification disclose "Examples" of the recited composition, and the record is not clear as to whether these "Examples" support that "the fluoroelastomer only cures through a nitrile containing cure site and the peroxide and coagent" as recited in claim 1. The originally filed claims 1-20 do not appear to include this limitation. 4 Appeal2015-003139 Application 12/640,068 case, Appellants' various arguments that "it was unknown" "at the time of filing that one could cure partially fluorinated elastomers comprising nitrile cure sites only with a peroxide/coagent cure system" (App. Br. 3) cannot show patentability because "a reference may anticipate even when the relevant properties of the thing disclosed were not appreciated at the time." Abbott Labs. v. Baxter Pharm. Products, Inc., 471 F.3d 1363, 1367 (Fed. Cir. 2006). The document entitled "DuPont Performance Elastomers" submitted by Appellants (as "Attachment A," App. Br. 4) in support of the argument that curing nitrile cure sites only with a peroxide/coagent cure system was unknown in the prior art likewise cannot show patentability. Abbott Labs., 471 F.3d at 1367. Instead of presenting factual evidence such as experimental data or scientific literature, Appellants submit a Declaration by Dr. Hintzer which provides only an unelaborated conclusion that the references "neither contemplate nor teach curing partially fluorinated elastomers comprising nitrile containing cure sites only with a peroxide cure system." (Hintzer Deel. i-f 5.)4 Dr. Hintzer does not address, much less dispute the Examiner's finding that Kaspar discloses an identical composition which would inherently react in the manner as recited in claim 1. Dr. Hintzer does not show that Kaspar's composition "do[ es] not necessarily or inherently possess the characteristics of [the] claimed product." See In re Best, 562 F.2d 1252, 1255 (CCPA 1977). No reversible error has been identified in the Examiner's findings with regard to the Declaration. 4 Declaration submitted by Dr. Klaus Hintzer who is a co-inventor of Kaspar, which is assigned to 3M Innovative Properties Company. (See App. Br. 4; Kasper, (73).) 5 Appeal2015-003139 Application 12/640,068 We further note that claim 1 does not recite "a peroxide cure system" which is the term used in the Declaration. (See Hintzer Deel. i-f 5.) The Specification distinguishes a "peroxide cure system" which is "often desirable to include a coagent" from a "peroxide/coagent cure system" on which "the present disclosure" is based. (Compare Spec. i-f 16, with i-fi-1 4, 29.) The record before us is unclear as to how the Declaration defines "a peroxide cure system" and how this undefined term applies to the disputed claim limitation. Appellants argue that Kaspar additionally discloses that "a halogen capable of participation in a peroxide cure reaction" (App. Br. 5) may be an alternative site to the nitrile, but do not explain why the alternative embodiment allows to be ignored the express disclosure of a composition having a nitrile-containing monomer, a coagent and "the peroxide and/or one or more catalysts depending on the type of cure sites" - that is, the cure site may be either a nitrile cure site or a halogen site. (See Kaspar i-fi-163, 64, 65; see also App. Br. 6.) "The anticipation analysis asks solely whether the prior art reference discloses and enables the claimed invention, and not how the prior art characterizes that disclosure or whether alternatives are also disclosed." Hewlett-Packard Co. v. Mustek Sys., Inc., 340 F.3d 1314, 1324 n.6 (Fed. Cir. 2003). No reversible error has been identified in the Examiner's findings with regard to Kaspar's alternative halogen embodiment. In support of their arguments, Appellants cite to Net Money IN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1370 (Fed. Cir. 2008) but do not show what Kaspar's composition might be and how it is not "arranged or combined in the same way as in the claim." (See App. Br. 6.) To the extent that Appellants equate the "arrangement" of a composition with the curing 6 Appeal2015-003139 Application 12/640,068 behavior of the composition, Appellants do not argue that Kaspar's composition would not inherently react in the manner as recited in claim 1. See Best, 562 F.2d at 1255 ("Where ... the claimed and prior art products are identical or substantially identical ... the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product). Given that a material and its properties are inseparable, no reversible error has been identified in the Examiner's finding. In re Papesch, 315 F.2d 381, 391(CCPA1963). Appellants also argue that because the Examiner states that "Applicant has provided evidence that the term 'coagent' is a term of the art that falls outside the scope of the 'catalysts' discussed in the prior art," the Examiner erred in finding that "the catalyst of Kaspar [] falls within the scope of the claimed 'coagent. "' (Reply 3. )5 First, we note that this statement merely indicates the Examiner's acknowledgment of Appellants' submission and not necessarily the Examiner's agreement with Appellants' • ' ' '. / • .. • ' "' \. h mterpretanon. ~Aav. Act. Lr Second, the extrinsic evidence submitted by Appellants is "an excerpt from the textbook 'Peroxide Vulcanization of Elastomers "' said to support the position that the scope of the claimed "coagent" excludes catalysts. (Id.) The record before us, however, does not explain why Appellants - being the drafter of the Specification - did not include this evidence or an express definition of the term "coagent" at the time of the filing. Appellants also do not address the intrinsic evidence of the Specification as extrinsic evidence alone "is unlikely to result in a reliable interpretation of patent claim scope 5 Because the Reply Brief is not paginated, we provide our own page numbers. 6 Advisory Action dated July 18, 2014 ("Adv. Act."). 7 Appeal2015-003139 Application 12/640,068 unless considered in the context of the intrinsic evidence." See Phillips v. AWH Corp., 415 F.3d 1303, 1319 (Fed. Cir. 2005). Third, the issue of whether a coagent includes a catalyst aside, Appellants do not explain why the purported distinction identifies reversible error in the Examiner's finding that Kaspar's composition is identical to that recited in claim 1 (i.e., having a nitrile-containing monomer and "curatives such as the peroxide and/or one or more catalysts" whereas "the curative system" may include "a coagent"). (Kaspar i-fi-161, 64, 65; see Ans. 9-10.) No reversible error has been identified here. We further note that Appellants appear to have also raised additional arguments including: ( 1) Kasper does not "indicate that a nitrile cure site monomer in a partially fluorinated elastomer can be cured with a peroxide and coagent" (App. Br. 6); (2) Kaspar "neither contemplate[s] nor teaches curing partially fluorinated elastomers comprising nitrile containing cure sites only with a peroxide cure system" (id. at 4 (citing Hintzer Deel.)); (3) Kaspar "does not suggest that nitrile-containing cure sites can be cured with peroxide" (App. Br. 7); and (4) Kaspar "has not been shown to teach or suggest that a cure of the partially fluorinated elastomer with peroxide can occur without a halogen cure site." (Reply 2). Because these additional arguments are not based on the disputed limitation recited in claim 1 -that is, "wherein the fluoroelastomer only cures through a nitrile containing cure site and the peroxide and coagent," "[A]ppellant's arguments fail from the outset because ... they are not based on limitations appearing in the claims." In re Self, 671 F.2d 1344, 1348 (CCPA 1982). 8 Appeal2015-003139 Application 12/640,068 DECISION The Examiner's rejection of claims 1, 2, 5-11, 21, and 22 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). See 37 C.F.R. § 1.136(a)(l )(iv). AFFIRMED 9 Copy with citationCopy as parenthetical citation