Ex Parte Haider et al

Patent Trial and Appeal Board

Jan 9, 2018

13936383 (P.T.A.B. Jan. 9, 2018)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/936,383 07/08/2013 Karl W. Haider BMS132013US 1038
157 7590
Covestro LLC
1 Covestro Circle
PITTSBURGH, PA 15205
EXAMINER
MURATA, AUSTIN
ART UNIT PAPER NUMBER
1712
NOTIFICATION DATE DELIVERY MODE
01/11/2018 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):
veronica.thompson@covestro.com
US-IPR@covestro.com
laura.finnell @ covestro. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KARL W. HAIDER, STANLEY L. HAGER,
JAIME C. GRUNLAN, and YONG TAE PARK
Appeal 2017-003382
Application 13/936,383
Technology Center 1700
Before DONNA M. PRAISS, CHRISTOPHER L. OGDEN, and
DEBRA L. DENNETT, Administrative Patent Judges.
PRAISS, Administrative Patent Judge.
DECISION ON APPEAL1
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134 from the final rejection of
claims 1-9. Final Act. 2-6; App. Br. 2. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
The subject matter of this appeal relates to a process for preparing
electrically conductive and dissipative polyurethane foams. Spec. 1:7-9.
1 In explaining our decision, we make reference to the Specification filed
July 8, 2013 (“Spec.”), the Final Office Action entered Oct. 28, 2015 (“Final
Act.”), the Advisory Action entered Mar. 3, 2016 (“Adv. Act.”), the Appeal
Brief filed June 28, 2016 (“App. Br.”), the Examiner’s Answer entered Oct.
20, 2016 (“Ans.”), and the Reply Brief filed Dec. 19, 2016 (“Reply Br.”).
Appeal 2017-003382
Application 13/936,383
According to the Specification, polyurethane foams are excellent electrical
insulators, but in certain situations, such as packaging foam for sensitive
electronic components, electrical conductivity or charge dissipation would
be advantageous. Id. at 1:10-15. Claims 1 and 6 are illustrative:
1. A process for preparing a coated polyurethane foam
comprising:
(1) ^providing a polyurethane foam substrate;
(2) applying a layer of a first material to the polyurethane
foam substrate;
(3) rinsing the coated polyurethane foam substrate with
deionized water;
(4) optionally, drying the coated polyurethane foam substrate
with air;
(5) applying a layer of a second material to the coated
polyurethane foam substrate;
(6) rinsing the coated polyurethane foam substrate with
deionized water;
(7) optionally, drying the coated polyurethane foam substrate
with air; and
(8) optionally, repeating the process to form additional
bilayers of coatings on the polyurethane foam substrate;
wherein (i) said first material and said second material are
oppositely charged materials, (ii) one of said first material and
said second material is a charged carbon allotrope which is
selected from the group consisting of
(a) carbon allotropes which are charged by direct
covalent attachment to a cationic group,
(b) carbon allotropes which are charged by direct
covalent attachment to an anionic group,
(c) non-covalent complexes of carbon allotropes with a
surfactant that is cationically charged,
(d) non-covalent complexes of carbon allotropes with a
surfactant that is anionically charged,
(e) mixtures of (a) and (c)
and
(f) mixtures of (b) and (d);
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Application 13/936,383
(iii) the other of said first material and said second material is a
charged polymer, (iv) the resultant coated polyurethane foam
has a surface resistivity of less than or equal to 1012 ohms per
square, and (v) the resultant coated polyurethane foam contains
at least 1% by weight of the coating composition based on
100% by weight of the coated polyurethane foam.
6. The process of Claim 1, wherein said carbon allotropes
comprise multi-walled carbon nanotubes.
App. Br. 9-10 (Claims App’x).
The Examiner maintains,2 and Appellants3 appeal, the following
rejections under 35 U.S.C. § 103:
A. Claims 1-5 and 7-9 as unpatentable over Berbeco4 in view of
Grunlan,5 and Park;6 and
B. Claim 6 as unpatentable over Berbeco in view of Grunlan, Li,7 and
Matyjaszewski.8
2 Claims 1-9 were also rejected under 35 U.S.C. § 112(b) as indefinite for
referring to “the coating composition” without clarifying whether the term
refers to the recited first material, the recited second material, or a
combination of the two. Final Act. 2. We need not reach this rejection
because both the Examiner and Appellants agree that the antecedent basis
issue can be resolved by Examiner’s Amendment to clarify that the term
refers to the bilayer(s) of coating material. Reply Br. 5; Ans. 8; Adv. Act. 2.
3 Appellants are the Applicants, Bayer Materialscience LLC (now named
Covestro LLC) and Texas A&M University System, identified in the Brief
as the real parties in interest. App. Br. 1.
4 US 4,231,901, iss. Nov. 4, 1980 (“Berbeco”).
5 US 2010/0227070 Al, pub. Sept. 9, 2010 (“Grunlan”).
6 Yong Tae Park, et al., High Electrical Conductivity and Transparency in
Deoxycholate-Stabilized Carbon Nanotube Thin Films, 114 J. Phys. Chem.
6325 (2010) (“Park”).
7 Li et al., US 2014/0326600 Al, pub. Nov. 6, 2014 (“Li”).
8 Matyjaszewski et al., US 2003/0185741 Al, pub. Oct. 2, 2003
(“Matyj aszewski”).
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Application 13/936,383
Ans. 2; App. Br. 2. Appellants argue the subject matter of independent
claim 1, and rely on those same arguments for claims 2-5 and 7-9. App. Br.
2-6. In accordance with 37 C.F.R. § 41.37(c)(l)(iv), claims 2-5 and 7-9
will stand or fall together with claim 1.
OPINION
The dispositive issues for this appeal are (1) whether the Examiner
erred in combining the teachings of Grunlan and Park because the references
disclose coatings for substrates with smooth surfaces, and (2) whether the
Examiner erred in finding that Appellants’ evidence does not teach away
from the combination of prior art references. App. Br. 4-8; Ans. 6-8; Final
Act. 3-6.
After review of the arguments and evidence presented by both
Appellants and the Examiner, we affirm the stated rejections.
Obviousness of Claims 1—5 and 7—9
It is the Examiner’s position that Berbeco in view of Grunlan and Park
suggests the subject matter of claims 1-5 and 7-9 for the reasons stated on
pages 3-5 of the Final Action and pages 2—4 of the Answer.
In the Appeal Brief, Appellants argue that the Examiner’s
combination of Grunlan’s teachings with Berbeco is not rational because “all
of the working examples of [Grunlan] are limited to substrates such as
silicon wafers, polystyrene (PS) film substrates, and scoured and bleached
plain-woven cotton fabric.” App. Br. 5 (citing Grunlan 48, Ex. 1).
Similarly, Appellants contend that Park does not disclose foam as a suitable
substrate, but, rather, plastic films such as polyethylene terephthalate (PET),
polystyrene (PS) and polypropylene (PP), glass slides, silicon wafer and
fibers. Id. According to Appellants, “foams typically have an irregular
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Application 13/936,383
surface,” therefore, a skilled artisan would not reasonably expect or
conclude that the coating materials or films formed in Grunlan and Park
would be suitable for coating a foam. Id. Appellants further contend that
Park additionally requires a corona treatment of substrates to oxidize the
surface and improve adhesion that is not required by the claimed process.
Id.
Appellants also argue that Exhibits A9 and B10 would have led “the
skilled artisan to expect that the presence of a surfactant in a coating which
contains carbon nanotubes will isolate and/or separate the carbon nanotube
network, and thereby decrease the conductivity of the coating composition.”
Id. at 6. According to Appellants, Exhibit A teaches it is essential to remove
surfactants because they result in a decrease in film conductivity and Exhibit
B teaches that a surfactant such as DBSA isolates and/or separates the
carbon nanotubes and decreases the conductivity of the coating or film
composition leading the skilled artisan to expect the various negatively
charged and positively charged materials taught by Grunlan and Park to be
unsuitable for coating the foams of Berbeco. Id.
The Examiner responds that Grunlan broadly discloses that foams and
fabrics are suitable substrates for deposition even if it does not include a
specific foam embodiment. Ans. 6. Regarding the teachings of Park, the
Examiner responds that Park is relied upon for teaching how a carbon
9 Jiaping Wang et al., Removal of the Residual Surfactants in Transparent
and Conductive Single-Walled Carbon Nanotube Films, 113 J. Phys. Chem.
17685 (2009) (“Exhibit A”).
10 Jarmila Vilcakova et al., Effect of Surfactants and Manufacturing Methods
on the Electrical and Thermal Conductivity of Carbon Nanotube/Silicone
Composites, 17 Molecules 13157 (2012) (“Exhibit B”).
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nanotube can be functionalized with a charge to make it a charged particle,
specifically teaching non-covalently bonding the charged particle to the
carbon nanotube as required by claim 1. Id. The Examiner also determines
that claim 1 is open ended and does not preclude the possibility of a corona
treatment before deposition of the first or second material. Id. at 7.
Regarding Exhibits A and B, the Examiner finds that Exhibit A
demonstrates how single wall nano tubes (SWNTs) have higher sheet
resistance than the single wall nanotubes treated to have the surfactants
removed and that Exhibit B similarly shows plain carbon nanotubes (CNTs)
having better conductivity than modified CNTs. Id. (citing Ex. A, Fig. 1;
Ex. B, Fig. 6). The Examiner finds that Exhibits A and B do not teach that
having a functionalized charge would destroy the functionality of the prior
art, but, rather, that any increase in resistivity would be an engineering
design tradeoff between (1) lower resistivity, which can be fixed by
additional CNT loading, and (2) improved flame resistance, which is the
expected benefit of Grunlan’s functionalized coating. Id.
In the Reply Brief, Appellants argue that Exhibit A evidences that
“the removal of surfactants is needed to increase the conductivity.” Reply
Br. 2 (citing Ex. A, Figs. 1(a) and 1(b) as showing after treatment to remove
surfactants results in lower resistivity). According to Appellants, a skilled
artisan would conclude that the charged materials disclosed by Grunlan
would result in decreased conductivity of the coating compositions in view
of Exhibits A and B. Id. at 3. Because conductivity would be expected to
decrease, Appellants assert that “the skilled artisan could not reasonably
expect to be able to form a coated polyurethane foam with a surface
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resistivity of less than or equal to 1012 ohms per square” as recited in claim
1. Id.
We review the appealed rejection for error based upon the issues
identified by Appellants and in light of the arguments and evidence
produced thereon. Cf. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)
(precedential) (cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed.
Cir. 2011) (“it has long been the Board’s practice to require an applicant to
identify the alleged error in the examiner’s rejections”)). We find
Appellants’ arguments unpersuasive of reversible error by the Examiner for
the following reasons.
Appellants do not dispute the Examiner’s finding (Final Act. 3) that
Berbeco teaches a process for depositing conductive particles and polymer
to a urethane foam to obtain a resistance of less than 30,000 ohms per square
and having the claimed amount of coating composition. Instead, Appellants
argue that secondary references Grunlan and Park are inapplicable to the
problem of providing electrical conductivity to a polyurethane foam because
they exemplify substrates with smooth surfaces rather than irregular surfaces
typical of foams. Appellants’ argument is unpersuasive for a number of
reasons. First, the examples disclosed in Grunlan do not negate Grunlan’s
teaching regarding a foam substrate because “a reference is not limited to the
disclosure of specific working examples.” In re Mills, 470 F.2d 649, 651
(CCPA 1972) (citation omitted). Rather, a reference may be relied upon for
all that it would have reasonably suggested to one having ordinary skill in
the art. Merck & Co. v. Biocraft Labs., 874 F.2d 804, 807 (Fed. Cir. 1989)
(“That the [prior art] patent discloses a multitude of effective combinations
does not render any particular formulation less obvious.”). As Appellants
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Application 13/936,383
acknowledge and the Examiner finds, Granlan explicitly discloses that its
coating can be applied to a foam substrate. App. Br. 5; Final Act. 3; Ans. 6.
Therefore, the Examiner’s findings as to Grunlan are supported by the
preponderance of the evidence cited in the record.
Second, Appellants’ argument is unpersuasive because it distinguishes
the Park reference individually instead of addressing the Examiner’s
rejection over the combination of Park with Berbeco and Grunlan. See In re
Keller, 642 F.2d 413, 426 (CCPA 1981) (One cannot show nonobviousness
by attacking references individually where the rejections are based on
combinations of references.); In re Merck & Co., 800 F.2d 1091, 1097 (Fed.
Cir. 1986). Appellants do not dispute the Examiner’s finding (Final Act. 4;
Ans. 6) that Park evidences that it was known how to functionalize a carbon
nanotube with a charge to make it a charged particle by non-covalently
bonding the charged particle to the carbon nanotube. Therefore, the
Examiner’s findings as to Park are also supported by the preponderance of
the evidence cited in this appeal.
Appellants’ argument that Exhibit A evidences that “the removal of
surfactants is needed to increase the conductivity” is also unpersuasive
because it does not negate the prior art teachings that a coating containing
carbon nanotubes provides conductivity and flame resistance to a substrate.
Indeed, Appellants merely assert that Exhibits A and B evidence an increase
in conductivity when surfactants are removed, not an elimination of the
conductivity functionality when surfactants are present. See Ans. 7
(“combining the GRUNLAN reference does not destroy the function of the
prior art merely by having a functionalized charge.”). Appellants do not
dispute the Examiner’s finding that any reduction in conductivity (lower
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Application 13/936,383
resistivity) can be fixed by additional CNT loading and that improved flame
resistance taught by Grunlan would present an engineering design tradeoff
with lower resistivity (Ans. 7). As the Examiner finds, Park evidences that
the material used in Grunlan is conductive (Final Act. 4). Indeed, Park,
which discloses functionalized carbon nanotubes and surfactant, is entitled
“High Electrical Conductivity and Transparency in Deoxycholate-Stabilized
Carbon Nanotube Thin Films” and discloses data to support such electrical
conductivity. See, e.g., Park Fig. 9. Therefore, we are not persuaded by
Appellants’ argument that Exhibits A and B evidence that the Examiner’s
combination of references does not disclose or suggest a surface resistivity
of less than or equal to 1012 ohms per square as required by claim 1.
Third, Appellants’ argument is not persuasive because Appellants do
not dispute or adequately rebut the Examiner’s finding that it would have
been obvious to combine the teachings of Grunlan for the benefit of flame
resistance. Final Act. 4; Ans. 3. The Examiner’s finding regarding the
benefit of flame resistance resulting from Grunlan’s coating is supported by
the evidence. Grunlan 9.
For the foregoing reasons, we affirm the Examiner’s rejection of
claims 1-5 and 7-9 under 35 U.S.C. § 103(a).
Obviousness of Claim 6
It is the Examiner’s position that Berbeco in view of Grunlan, Park,
Li, and Matyjaszewski suggests the subject matter of claim 6 for the reasons
stated on pages 5-6 of the Final Action and page 5 of the Answer.
In the Appeal Brief, Appellants reiterate that Exhibits A and B support
their position that a skilled artisan would not have expected the claimed
coating composition on polyurethane foams to have a surface resistivity of
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1012 ohms per square. App. Br. 8. Appellants further argue that the Li and
Matyjaszewski references do not teach combining carbon nanotubes with a
surfactant and a charged polymer without negatively affecting the surface
resistivity. Id. That is, Appellants’ argument is that Li and Matyjaszewski
do not negate the teachings of Exhibits A and B.
Because we are not persuaded by Appellants’ arguments that Exhibits
A and B evidence error in the Examiner’s rejection of claim 1 over the
combination of Berbeco, Grunlan, and Park as discussed above, we likewise
are not persuaded of reversible error by the Examiner in rejecting claim 6
over the combination of the same references plus additional secondary
references.
For the foregoing reasons, we affirm the Examiner’s rejection of
claim 6 under 35 U.S.C. § 103(a).
Conclusion
The Examiner’s rejections under 35 U.S.C. § 103 are 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)(l)(v).
AFFIRMED
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