Ex Parte Kimura et al

Patent Trial and Appeal Board

Dec 28, 2016

12517467 (P.T.A.B. Dec. 28, 2016)

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
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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.
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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 hardness”, 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 Saito”, 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.
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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).
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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.”) 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.”); 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
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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;
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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
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