Ex Parte Furuta et al

Patent Trial and Appeal Board

Jun 9, 2016

12212716 (P.T.A.B. Jun. 9, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/212,716 09/18/2008 Shoji FURUTA
22850 7590 06/13/2016
OBLON, MCCLELLAND, MAIER & NEUSTADT, LLP,
1940 DUKE STREET
ALEXANDRIA, VA 22314
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.
331918USOCONT 1856
EXAMINER
REDDY, KARUNA P
ART UNIT PAPER NUMBER
1764
NOTIFICATION DATE DELIVERY MODE
06/13/2016 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):
patentdocket@oblon.com
oblonpat@oblon.com
ahudgens@oblon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SHOJI FURUTA, MINAKO SHIMADA, KYOUICHI KANEKO,
and KAZUNORI SUGIYAMA1
Appeal2014-004164
Application 12/212, 716
Technology Center 1700
Before JAMES C. HOUSEL, CHRISTOPHER C. KENNEDY, and
JENNIFER R. GUPTA, Administrative Patent Judges.
KENNEDY, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Examiner's
decision to reject claims 1-11 and 13-18. An oral hearing was held on
June 7, 2016. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM.
BACKGROUND
The subject matter on appeal relates to liquid repellent compositions
and associated methods and articles. E.g., Spec. 1 :7-9; Claim 1. Claim 1 is
reproduced below from page 10 (Claims Appendix) of the Appeal Brief:
1 According to the Appellants, the Real Party in Interest is Asahi Glass
Company, Limited. App. Br. 1.
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Application 12/212, 716
1. A liquid repellent composition comprising a copolymer (I) and a
copolymer (II),
wherein the copolymer (I) comprises from 65 to 95 mass% of a
polymerized unit (a) and from 1 to 27 mass% of a polymerized
unit (b) based on the mass of the copolymer (I), wherein
polymerized units of a monomer comprising a polyfluoroalkyl
group having 7 or more carbon atoms are excluded;
the copolymer (II) comprises from 25 to 80 mass% of a
polymerized unit (a) and from 1 to 50 mass% of a polymerized
unit ( c) based on the mass of the copolymer (II);
when a mass ratio of the polymerized unit (a) in the
copolymer (I) to the copolymer (I) is [a1], and a mass ratio of the
polymerized unit (a) in the copolymer (II) to the copolymer (II)
is [a2], [a1]-[a2] 2: 10 (mass%); and
the copolymer (I) and the copolymer (II) are contained in a ratio
of [mass ratio of the copolymer (I)]/[ mass ratio of the copolymer
(II)]=l0/90 to 95/5:
polymerized unit (a): a polymerized unit derived from a
monomer represented by (ZA-Y A)nXA provided that ZA is a
polyfluoroalkyl group having at most 6 carbon atoms, n is 1 or
2, provided that when n is 2, two (ZA-Y A) may be the same or
different, XA is -CR =CH2, -COOCR =CH2, -OCOCR =CH2,
OCH2-N-CR =CH2 or -OCH =CH2 when n is 1, and
=CH(CH2)mCR =CH2, =CH(CH2)mCOOCR =CH2,
=CH(CH2)mOCOCR=CH2 or -OCOCH=CHCOO- when n is 2,
wherein R is a hydrogen atom, a methyl group or a halogen atom,
N is a phenylene group, and m is an integer of from 0 to 4, and
YA is a bivalent organic group or a single bond;
polymerized unit (b ): a polymerized unit derived from a
monomer represented by ZB-XB provided that ZB is a
hydrocarbon group having at least 14 carbon atoms, and XB is
the same as XA; and
polymerized unit ( c): a polymerized unit derived from a
monomer having no polyfluoroalkyl group and having a cross-
linkable functional group.
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Appeal2014-004164
Application 12/212, 716
REJECTIONS ON APPEAL
1. Claims 1, 2, 4-11, and 13-18 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Matsuo et al. (US 5,057,577, issued Oct. 15,
1991) in view ofMaekawa et al. (US 2003/0130457 Al, published July 10,
2003) and Funaki et al. (US 6,646,043 B2, issued Nov. 11, 2003).
2. Claim 3 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Matsuo in view ofMaekawa, Funaki, and Kaijou (US 5,431,852, issued
July 11, 1995).
ANALYSIS
The Appellants argue the claims as a group. We select claim 1 as
representative of the rejected claims, and the remaining claims on appeal
will stand or fall with claim 1.
After review of the cited evidence in the appeal record and the
opposing positions of the Appellants and the Examiner, we determine that
the Appellants have not identified reversible error in the Examiner's
rejections. Accordingly, we affirm the rejections for reasons set forth below
and by the Examiner in the Answer. See generally Ans. 2-11.
The Examiner finds that Matsuo teaches a water and oil repellant
composition comprising each element of claim 1 except for ( 1) the exclusion
of a monomer comprising polyfluoroalkyl groups having 7 or more carbon
atoms (consistent with the Examiner's Answer, the Appellants' briefs, and
the prior art, polyfluoroalkyl groups will hereafter be referred to as Rf
groups); (2) polymerized unit (b); and (3) the weight percent of monomers in
copolymer (I), i.e., "65 to 95 mass% of a polymerized unit (a) and from 1 to
27 mass% of a polymerized unit (b) based on the mass of the copolymer (I)."
Ans. 2-3.
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Concerning exclusion of Rr groups having 7 or more carbon atoms,
the Examiner finds that Matsuo teaches Rf groups having "from 3 to 21
carbon atoms, more preferably from 6 to 18 carbon atoms," id. at 2-3, and
that Funaki teaches Rf groups having 2 to 20 carbon atoms, including a
specific compound-F(CF2)sCH20COCR=CH2-that falls within the scope
of claim 1 's polymerized unit (a), id. at 4. However, the Examiner
principally relies on Maekawa for teaching the exclusion of Rf groups
having 7 or more carbon atoms. The Examiner finds that Maekawa teaches
a water and oil repellent composition, and that it further teaches the
desirability of Rf groups having at most 6 carbon atoms. Ans. 3-4;
Maekawa ,-r 25 ("The Rf monomer is preferably a compound represented by
the formula (Z-Y)nX wherein an Rf group Z and a polymerizable unsaturated
group X are bonded to each other via a specific bivalent organic group Y.
Here, Z is an RF group having a number of carbon atoms of at most 6 .... "),
,-r 3 8 ("[T]he Rf group is preferably an RF group having a carbon number of
at most 6. And it is most preferably a linear RF group having a carbon
number of from 4 to 6."). In light ofMaekawa's teachings, the Examiner
concludes that "it would have been obvious ... to exclude perfluoroalkyl
group containing monomer having at least 7 carbon atoms, to overcome the
deterioration of coated article by abrasion and prevent loss of flexibility."
Ans. 4.
Concerning polymerized unit (b) and the weight percent of monomers
in copolymer (I), the Examiner finds that Funaki teaches a water and oil
repellent composition "containing polymerized units based on polymerizable
monomer having a perfluoroalkyl group and polymerized units based on
stearyl meth(acrylate) ... which reads on polymerized unit 'b' in instant
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Application 12/212, 716
claim 1." Ans. 4. The Examiner also finds that Funaki teaches weight
percent ranges of the units equivalent to claim l's (a) and (b) units that
overlap the mass percent ranges recited by claim 1. Id. at 4-5. The
Examiner concludes that "it would have been obvious ... to use the
copolymer comprising polymerized unit having an Rf group and stearyl
acrylate in instantly claimed wt%, as copolymer I in the water and oil
repellant composition of Matsuo et al in view of Maekawa et al, for
obtaining a composition that provides more flexible touch and hand." Id. at
5.
The Appellants principally argue that the prior art references do not
teach or otherwise render obvious a composition that specifically excludes
Rf groups having 7 or more carbon atoms. See, e.g., App. Br. 5-8; Reply Br.
1-6.
We disagree. Matsuo teaches that "Rf groups preferably have from 3
to 21 carbon atoms, more preferably from 6 to 18 carbon atoms." Matsuo at
3: 17-19. Funaki likewise teaches that "[ t ]he carbon number of the Rf group
is preferably from 2 to 20, particularly preferably from 6 to 16." Funaki at
2:46--48. Although neither Matsuo nor Funaki expressly state that Rf groups
having 7 or more carbon atoms should be excluded, both teach or suggest
embodiments that would meet that claim limitation. Matsuo, for example,
teaches a composition containing "at least two polymers, wherein at least
one of said at least two polymers is a polymer containing a polyfluoroalkyl
group." Matsuo at Abstract (emphasis added). Matsuo teaches a preferred
polymer containing an Rf group with 5 carbons that falls within the scope of
claim l's "polymerized unit (a)." See Matsuo at 3:23-26 (teaching
CF3(CF2)4CH20COC(CH3)=CH2, where CF3(CF2)4 is ZA, CH2 is YA, and
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Application 12/212, 716
OCOC(CH3)=CH2 is XA). Considering an embodiment in which that
polymer is the only polymer containing an Rf group in Matsuo' s two
polymer composition (and, as noted above, Matsuo expressly teaches that its
composition may include only one Rf group-containing polymer), that
embodiment would exclude Rf groups having 7 or more carbon atoms.
The same is true of Funaki. Funaki teaches "a copolymer (A) which
is a copolymer containing polymerized units based on a polymerizable
monomer having a polyfluoroalkyl group and polymerized units based on
stearyl (meth)acrylate." Funaki at Abstract. Funaki provides a list of Rf
groups and expressly teaches F(CF2)sCH20COCR=CH2, which has 5 carbon
atoms and falls within the scope of claim 1 's "polymerized unit (a)." See
Funaki at 4: 12 (where F(CF2)s is ZA, CH2 is YA, and OCOCR=CH is XA).
Funaki also teaches that its copolymer (A) "may contain one type" of Rf
group. Id. at 4:43-45. Considering such an embodiment in which
F(CF2)5CH20COCR=CH2 is the only Rf group in Funaki's copolymer, that
embodiment would exclude Rf groups having 7 or more carbon atoms.
In addition to the teachings of Matsuo and Funaki, Maekawa
expressly recognizes the desirability of using Rf groups having 6 or fewer
carbon atoms. Maekawa teaches the importance of the melting point of fine
crystals derived from the Rf group in water and oil repellent compositions.
E.g., Maekawa at Abstract. Maekawa's teachings on that topic are similar to
the Appellants' disclosures. Compare Maekawa i-fi-13-11 with Spec. 4:14-
5:2, 12:23-27, 15:14-21. Maekawa, similar to the Appellants'
Specification, teaches that lower melting points result in "soft[ er]" (i.e.,
more flexible) polymers, which are desirable in applications of water and oil
repellent compositions such as coatings on fabrics. E.g., Maekawa i-fi-16, 12.
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Application 12/212, 716
For certain embodiments, in order to achieve desirable melting points,
Maekawa teaches that "[t]he Rf monomer is preferably a compound
represented by the formula (Z-Y)nX wherein an Rf group Z and a
polymerizable unsaturated group X are bonded to each other via a specific
bivalent organic group Y. Here, Z is an RF group having a number of carbon
atoms of at most 6 .... " Id. ,-r 25. Maekawa similarly teaches that "the Rf
group is preferably an RF group having a carbon number of at most 6. And
it is most preferably a linear RF group having a carbon number of from 4 to
6." Id. ,-r 38; see also id. ,-r 27.
While Maekawa also teaches embodiments having polymers that
include Rf groups containing more than 6 carbon atoms, e.g., Maekawa
,-r,-r 26 ("carbon number is preferably from 1 to 20"), 27 (similar),
28 (similar), those teachings do not negate Maekawa's express teaching of
embodiments in which Rf groups having 6 or fewer carbon atoms are
preferred. Cf In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) ("The
prior art's mere disclosure of more than one alternative does not constitute a
teaching away from any of the[] [disclosed] alternatives .... "). Indeed,
Maekawa teaches embodiments that expressly exclude Rf groups having
more than 7 carbon atoms. See Maekawa ,-r 3 8 ("[I]f the carbon number is at
least 7, the melting point of fine crystals will be present and the objective
function will not be developed, and such a monomer is excluded from the
monomer (a) to be employed in the present invention." (emphasis added)).
Thus, Maekawa teaches the use of polymers having Rf groups of 6 or fewer
carbon atoms, and it likewise teaches embodiments that expressly exclude Rf
groups having 7 or more carbon atoms, due to the undesirable crystallinity
properties they may impart to the composition.
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Appeal2014-004164
Application 12/212, 716
In support of their position, the Appellants rely on Matsuo Example 8,
which the Examiner cites for the disclosure of a monomer that meets
claim l's "polymerized unit (c)." App. Br. 5; Reply Br. 4-5; Ans. 2.
Particularly, the Appellants note that the Rf group of Matsuo's Example 8
includes 8 carbon atoms, which is more than the 6 carbon atoms permitted
by claim 1. App. Br. 5-6. That argument is not persuasive. The fact that
Matsuo teaches an embodiment in which the Rf group includes more than
6 carbon atoms does not negate the fact that Matsuo also teaches Rf groups
including 6 or fewer carbon atoms. See In re Mills, 470 F.2d 649, 651
( CCP A 1972) ("[A] reference is not limited to the disclosure of specific
working examples."). Nor does that argument address the Examiner's
reliance on Funaki or Maekawa. See In re Keller, 642 F.2d 413, 426 (CCPA
1981) ("[O]ne cannot show non-obviousness by attacking references
individually where, as here, the rejections are based on combinations of
references.").
The Appellants also argue that, in Funaki, "[t]here is no disclosure or
suggest[ ion] to include stearyl acrylate in a copolymer wherein there is a
specific exclusion of a polyfluoroalkyl group having 7 or more carbon
atoms." App. Br. 7. Funaki, however, expressly teaches a copolymer
containing (1) polymerized units based on a polymerizable monomer having
a polyfluoroalkyl group, and (2) polymerized units based on stearyl
(meth)acrylate. Funaki at Abstract. Funaki expressly teaches that the
polymerizable monomer having a polyfluoroalkyl group may be
F(CF2)sCH20COCR=CH2, which falls within the scope of claim l's
"polymerized unit (a)." Thus, Funaki teaches or suggests a copolymer that
does not include (i.e., excludes) Rf groups having 7 or more carbon atoms.
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Application 12/212, 716
In any event, as above, this argument fails to address the Examiner's
reliance on Maekawa as providing motivation to exclude Rf groups having 7
or more carbon atoms. See Keller, 642 F.2d at 426.
The Appellants argue that Maekawa teaches Rf groups "having a
carbon number of 1 to 20, preferably from 1 to 12 such that there is no
suggestion to exclude polyfluoroalkyl monomers having from 7 to 20 carbon
atoms." App. Br. 7. That argument is not persuasive because it ignores
other relevant teachings of Maekawa discussed above, including
(1) Maekawa' s teaching of an embodiment that expressly excludes Rf groups
having 7 or more carbon atoms, Maekawa i-f 38, and (2) Maekawa's teaching
of a polymer unit that appears to be identical to one recited by claim 1,
compare Maekawa i-f 25 (teaching (Z-Y)nX) with Appellants' Claim 1
(reciting polymerized unit (a) of (ZA-Y A)nXA, in which n may be 1 ). On this
record, we are persuaded that a preponderance of the evidence supports the
Examiner's finding that the prior art teaches, suggests, or otherwise renders
obvious a liquid repellant composition comprising the features of claim 1,
including the exclusion of Rf groups having 7 or more carbon atoms.
The Appellants also appear to argue that a person of ordinary skill in
the art would not have combined Maekawa with Matsuo because Maekawa
discusses "surface orientation," while Matsuo does not. See App. Br. 7.
That argument, however, fails to provide any basis to reject the Examiner's
finding that a person of ordinary skill in the art would have been motivated
to combine Maekawa with Matsuo to achieve more flexible compositions,
which are desirable in applications such as liquid repellent clothing.
To the extent that the Appellants argue that Maekawa's "second
monomer (b )" does not have an Rf group and Matsuo "fails to specify
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Application 12/212, 716
anything as to secondary monomers in the core polymer," App. Br. 7-8,
those arguments do not show reversible error in the Examiner's rejection
because they fail to address the Examiner's finding that a person of ordinary
skill in the art would have been motivated by Funaki to use a second
monomer that does not have an Rf group, i.e., stearyl (meth)acrylate. See
Keller, 642 F.2d at 426. Maekawa also teaches the use of stearyl acrylate.
See Maekawa i-f 51. Thus, the use of such a secondary monomer in
combination with an Rf polymer, including those of Matsuo, would have
been obvious to a person of ordinary skill in the art.
Finally, we note that the Appellants assert, with no persuasive
explanation, (1) that Matsuo does "not suggest[] two copolymers," (2) that
Matsuo "fails to specify the second monomer for core polymer as having a
hydrocarbon group having at least 14 carbon atoms," and (3) that Matsuo
"fails to describe any properties or amount of any second monomer for the
shell polymer." App. Br. 5; see also Reply Br. 2-3. The Examiner made
specific findings concerning those elements and did not rely on Matsuo
alone for each recited element. See, e.g., Ans. 2-3 (discussing Matsuo's
copolymers and "monomer 'c, "'which is presumably the same as the
"second monomer for the shell polymer" mentioned by the Appellants), 6-7
(discussing Matsuo's copolymers); Final Act. 4 (relying on Funaki for
disclosure of hydrocarbon containing at least 14 carbon atoms), 5
(discussing Matsuo's copolymers I and II). The Appellants' unexplained
arguments provide no basis to reject the Examiner's findings on those
points. See 37 C.F.R. § 41.37(c)(l)(iv) ("A statement which merely points
out what a claim recites will not be considered an argument for separate
patentability of the claim."); see also In re Lovin, 652 F.3d 1349, 1357 (Fed.
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Application 12/212, 716
Cir. 2011) (holding that "the Board reasonably interpreted Rule 41.37 to
require more substantive arguments in an appeal brief than a mere recitation
of the claim elements and a naked assertion that the corresponding elements
were not found in the prior art"); see also Keller, 642 F.2d at 426.
To the extent that the Appellants raise arguments in the Reply Brief
that were not raised in the opening Appeal Brief, e.g., Reply Br. 2
(discussing the "1 to 27 mass%" limitation of claim 1 ), we decline to
consider those arguments because the Appellants have not shown good
cause for reserving them for the Reply Brief. See 3 7 C.F .R. § 41.41 (b )(2 ).
For those reasons, the arguments presented by the Appellants do not
persuade us of reversible error in the Examiner's rejection.
CONCLUSION
We AFFIRM the Examiner's rejection of claims 1-11 and 13-18.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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