Ex Parte Kimura et alDownload PDFPatent Trial and Appeal BoardDec 28, 201612517467 (P.T.A.B. Dec. 28, 2016) Copy Citation 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. 12/517,467 06/03/2009 Nobuo Kimura 14725/30003 7671 26646 7590 12/30/2016 ANDREWS KURTH KENYON LLP ONE BROADWAY NEW YORK, NY 10004 EXAMINER ROSWELL, JESSICA MARIE ART UNIT PAPER NUMBER 1767 NOTIFICATION DATE DELIVERY MODE 12/30/2016 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): u spto @ keny on .com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte NOBUO KIMURA, HIROMOTO SHIBATA, and KAZUKIHASEGAWA Appeal 2016-000030 Application 12/517,4671 Technology Center 1700 Before KAREN M. HASTINGS, GEORGE C. BEST, and N. WHITNEY WILSON, Administrative Patent Judges. BEST, Administrative Patent Judge. DECISION ON APPEAL The Examiner rejected claims 1, 3—10, 13, 15—17, 19-21, 26—29, and 31 under 35 U.S.C. § 103(a) as obvious. Final Act. (October 6, 2014). Appellants seek reversal of these rejections pursuant to 35 U.S.C. § 134(a). We have jurisdiction. 35 U.S.C. § 6(b). For the reasons set forth below, we AFFIRM. 1 Nippon Soda Co., Ltd. of Tokyo, Japan is identified as the real party in interest. Appeal Br. 1. Appeal 2016-000030 Application 12/517,467 BACKGROUND The ’467 Application describes a polysiloxane-based thin film exhibiting improved surface hardness, substrate adhesion, and moisture resistance. Spec. Tflf 10-11, 14. According to the ’467 Application, these properties result from the addition of an ultraviolet-curable compound to a polysiloxane-based organic-inorganic composite body. Id. at 11. Claim 1 is representative of the ’467 Application’s claims and is reproduced below: 1. An organic-inorganic thin film comprising: a) a condensate of an organosilicon compound represented by Formula I RnSiX4.n I wherein R represents an organic group having a carbon atom directly bonded to Si; X represents a hydroxy group or a hydrolyzable group; n represents 1 or 2, with the proviso that when n is 2, each R may be the same or different, and when 4-n is 2 or more, each X may be the same or different; and wherein the content of the organosilicon compound where R in Formula I represents a group having a vinyl group, is 20 to 100% by weight with respect to the total weight of the organosilicon compound; b) at least one photosensitive compound sensitive to light having a wavelength of 350 nm or less selected from the group consisting of hydrolysates and/or condensates of metal chelate compounds, hydrolysates and/or condensates of metal-organic acid salt compounds, and hydrolysates and/or condensates of metal compounds having 2 or more hydroxy groups or hydrolyzable groups, and/or a compound derived from the photosensitive compound; and c) a cured product of an ultraviolet-curable compound, wherein the content of the cured product of the ultraviolet- curable compound is 50 to 90% by weight with respect to 2 Appeal 2016-000030 Application 12/517,467 the total weight of the condensate of the organosilicon compound, the photosensitive compound, and the cured product of the ultraviolet-curable compound. Appeal Br. (Claims App. I.) REJECTIONS On appeal, the Examiner maintains the following rejections: 1. Claims 1 and 3—10 are rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Saito2 and Kimura.3 Ans. 2. 2. Claims 13, 15, 16, and 26 are rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Saito and Kimura. Ans. 6. 3. Claims 17, 19—21, 27—29, and 31 are rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Saito and Kimura. Ans. 9.4 DISCUSSION Appellants argue for the reversal of the rejections to claims 3—10, 13, 15—17, 19—21, 26—29, and 31 on the basis of limitations present in claim 1. 2 JP 61-043665, published Mar. 3, 1986. We shall follow the Examiner by referring to a translation that was made of the record in this appeal on July 29, 2011. 3 WO 2006/088079, published August 24, 2006. We join the Examiner in citing US 2009/0025610 Al, published Jan. 29, 2009, as the English- language equivalent. 4 Although the Examiner did not include claim 31 in the list of claims rejected, the Examiner provided grounds for the rejection of this claim. Ans. 11—12. We shall follow Appellants by referring to Rejection 3 as including the rejection of claim 31. Appeal Br. 11; see also Ans. 19. 3 Appeal 2016-000030 Application 12/517,467 See Appeal Br. 4—12; Reply Br. 1—8. We, therefore, limit our analysis to the rejection of claim 1. Claims 3—10, 13, 15—17, 19-21, 26—29, and 31 will stand or fall with claim 1. 37 C.F.R. § 41.37(c)(l)(iv) (2013). Rejection 1, Rejection 2, and Rejection 3. On appeal, Appellants present substantially similar arguments for reversal of all obviousness rejections maintained by the Examiner. See Appeal Br. 4—12; Reply Br. 1— 8. We affirm these rejections based upon the factual findings and reasoning set forth in the Examiner’s Answer, which we adopt. We add the following for emphasis. We address Appellants’ arguments in turn. First, Appellants argue that the rejection of claim 1 should be reversed because the ordinary skilled artisan “would not have been motivated to combine [Saito’s] ultraviolet curable compound with [Saito’s] organosilicon compound and [Kimura’s] photosensitive compound to increase the film surface hardnessâ€, Appeal Br. 5, because “the function of the photosensitive compound when added to the organosilane can be blocked by the . . . photo- curable resin.†Reply Br. 3. Appellants further argue that one of ordinary skill in the art would not have combined the teachings in the applied prior art because “the conditions differ between the present invention and Saitoâ€, and, therefore, “the effects produced by the present invention differ from [Saito’s] effects . . . .†Id. This argument is not persuasive because, inter alia, claim 1 is drawn to a thin-film composition. Appellants admit that “the amount of a . . . photo-curable compound in the present invention is the same as the amount in Saito.†See id. at 4; see also Ans. 13; Saito p.3,11. 4—8. Claim 1, furthermore, does not specify an amount of the organosilicon compound. 4 Appeal 2016-000030 Application 12/517,467 Thus, in the instance the organosilicon compound is employed in a small amount, the amount of the photosensitive compound would not be greatly reduced. Likewise, Appellants’ argument distinguishing the claimed invention’s “effects†from Saito’s is also not persuasive because the effects of the thin-film composition are not claimed. “Many of appellant’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). “A person of ordinary skill is also a person of ordinary creativity, not an automaton.†KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007). The Examiner found Kimura teaches that it is beneficial to use the claimed Markush group of photosensitive metal compounds with organosilane containing film forming coating compositions, in order to simultaneously achieve high surface hardness and excellent substrate adhesion. Ans. 12—13 (citing Kimura 6—7, 14, 27, 37). The Examiner further found that Saito teaches a coating composition comprised of an organosilicon compound, a UV curable compound resin, and a photoinitiator. Ans. 2—3 (citing Saito p.2, claim 1; p.8,11. 1-8; p.39, Table 1, S-10; p.8,1. 21-p.9,1. 13; p.9,11. 19- 24). Furthermore, as set forth above, Appellants do not dispute that Saito teaches use of the UV curable compound resin in an amount from 57—86 % by weight of the total composition, which falls within the claimed range. See, e.g., In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003) (a prima facie case of obviousness typically exists when the ranges of a claimed composition overlap the ranges disclosed in the prior art); In re Harris, 409 F.3d 1339, 1341 (Fed. Cir. 2005); In re Boesch, 617 F.2d 272, 275 (CCPA 1980). 5 Appeal 2016-000030 Application 12/517,467 The Examiner relied upon these findings to determine that a person of ordinary skill in the art at the time of the invention would have added Kimura’s photosensitive compound to Saito’s coating composition in order to achieve high hardness at the thin-film’s surface, while achieving high substrate adhesion. Ans. 14 (citing Kimura 114). Appellants have not identified reversible error in the Examiner’s determination that adding an ultraviolet-curable compound to a polysiloxane-based organic-inorganic composite body involves the use of a known method to accomplish a predictable result. Such improvements would have been obvious. See KSR, 550 U.S. at 416 (“The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.â€) This is especially true when, as here, the prior art describes a reason for making the modification. See Ans. 4—5, 12—13, 15. Second, Appellants further argue that unexpected results in Examples 1, 8, 17, 19, and 22 of the Specification sufficiently rebut any established prima facie case. Appeal Br. 8—10; Reply Br. 4—5. According to Appellants, the record evidence demonstrates that “even though the content of the photosensitive compound and the condensate of the organosilicon compound ranges from 22.5 to 33.2% by weight, the surface hardness remains unexpectedly high at 7H and 8H.†Appeal Br. 6. Unexpected results must be established by clear and convincing evidence. In re Heyna, 360 F.2d 222, 228 (CCPA 1966) (“It was incumbent upon appellants to submit clear and convincing evidence to support their allegation of unexpected property.â€); see also McClain v. Ortmayer, 141 U.S. 419, 429 (1891) (conclusive evidence needed to establish new function). For the reasons stated by the Examiner in the Answer, Appellants 6 Appeal 2016-000030 Application 12/517,467 have not met their burden in providing clear and convincing evidence of unexpected results. See Ans. 14—15. The claimed invention is broad compared to the Specification’s exemplified embodiments. For example, Appellants only tested four different photosensitive compounds, two different organosilicon compounds, e.g., vinyltrimethoxysilane and a vinyltrimethoxysilane/3 -methacryloxypropyltrimethoxysilane mixture, and only one UV curable compound, e.g., urethane acrylate oligomer, while the claimed invention requires any organosilicon compound of the instant generic formula I, any photosensitive compound that is a hydrolysate and/or condensate of metal chelate compounds, metal-organic acid salt compounds, [Jmetal compounds having 2 or more hydroxy or hydrolyzable groups, [or a compound derived from the photosensitive compound,] employed in any amount, and any cured product of an ultraviolet curable compound. Id. at 15. Accordingly, Appellants’ assertion of unexpected results is unconvincing. “[T]he existence of overlapping or encompassing ranges shifts the burden to the applicant to show that his invention would not have been obvious.†In re Peterson, 315 F.3d at 1330. Appellants have not met this burden. We, therefore, affirm the Examiner’s rejections of: (i) claims 1 and 3— 10 as unpatentable over the combination of Saito and Kimura; (ii) claims 13, 15, 16, and 26 as unpatentable over the combination of Saito and Kimura; 7 Appeal 2016-000030 Application 12/517,467 and (iii) claims 17, 19—21, 27—29, and 31 as unpatentable over the combination of Saito and Kimura. CONCLUSION For the reasons provided in the Examiner’s Answer, and above, we affirm the rejections of claims 1, 3—10, 13, 15—17, 19-21, 26—29, and 31 of the ’467 Application. 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 8 Copy with citationCopy as parenthetical citation