Ex Parte Kotani

Patent Trial and Appeal Board

May 9, 2018

13504507 (P.T.A.B. May. 9, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/504,507 07/02/2012 Jun Kotani
38834 7590 05/11/2018
WESTERMAN, HATTORI, DANIELS & ADRIAN, LLP
8500 Leesburg Pike
SUITE 7500
Tysons, VA 22182
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.
P22939USOO 9940
EXAMINER
ROSWELL, JESSICA MARIE
ART UNIT PAPER NUMBER
1767
NOTIFICATION DATE DELIVERY MODE
05/11/2018 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):
patentmail@whda.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JUN KOT ANI
Appeal2017-007800
Application 13/504,507 1
Technology Center 1700
Before ROMULO H. DELMENDO, KAREN M. HASTINGS, and
JAMES C. HOUSEL, Administrative Patent Judges.
HASTINGS, Administrative Patent Judge.
DECISION ON APPEAL
Appellant seeks our review under 35 U.S.C. § 134(a) of the
Examiner's decision rejecting claims 1-9 and 13.
We have jurisdiction over the appeal under 35 U.S.C. § 6(b ).
We AFFIRM.
1 Appellant identifies the real party in interest as KANEKA
CORPORATION (Appeal Br. 2).
Appeal2017-007800
Application 13/504,507
Independent claim 1 below is illustrative of the subject matter on
appeal:
1. A curable composition, comprising:
(I) a vinyl polymer having at least one crosslinkable silyl
group on average,
10 to 1000 parts by weight of (II) a vinyl polymer having
at least one ultraviolet-crosslinkable group on average for each
100 parts by weight of the vinyl polymer (I),
0.01 to 10 parts by weight of (III) an ultraviolet
polymerization initiator for each 100 parts by weight of the
vinyl polymer (II),
0.1 to 10 parts by weight of (IV) an organic acid for each
100 parts by weight of the vinyl polymer (I),
0.1 to 10 parts by weight of (V) a ketimine compound for
each 100 parts by weight of the vinyl polymer (I),
0.1 to 30 parts by weight of a dehydrating agent based on
a total of 100 parts by weight of the vinyl polymer (I) and the
vinyl polymer (II), which is selected from the group consisting
ofhydrolyzable ester compounds and hydrolyzable organic
silicon compounds,
1 to 200 parts by weight of a reactive diluent based on a
total of 100 parts by weight of the vinyl polymer (I) and the
vinyl polymer (II), which is selected from the group consisting
of a monomer having a radical-polymerizable group and an
oligomer having a radical-polymerizable group, and
an antioxidant,
wherein the organic acid (IV) is a fatty acid having 8 or
more carbon atoms and
the ketimine compound (V) is a ketimine compound
obtained by reacting an aminosilane and a ketone.
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Application 13/504,507
The Examiner maintains the following rejection2 :
(a) claims 1-9 and 13 under 35 U.S.C. § I03(a) as being
unpatentable over Hasegawa (WO 2008/041768 Al, published Apr. 10,
2008). The Examiner identifies, and relies on without objection, Hasegawa,
US 2010/0105798 Al; pub. April 29, 2010, as an English language version
of WO 2008/041678 Al (Ans. 2). We are in agreement that US
2010/0105798 Al appears to be an English language equivalent of WO
2008/041678 Al. Therefore, further references to "Hasegawa" will be to US
2010/0105798 Al.
ANALYSIS
Appellant's principal argument on appeal is that Hasegawa discloses a
broad genus of suitable condensation catalysts, such as an organic acid, and
discloses a broad genus of adhesion promoters, such as a ketimine
compound, but does not disclose the specific combination of an organic acid
and a ketimine compound in a curable composition, as recited in claim 1
(Appeal Br. 4--5; Reply Br. 2-3). Citing In re Baird, 16 F.3d 380 (Fed. Circ.
1994), Appellant asserts it would not have been obvious to select the
claimed species from the broad genera of Hasegawa because there is no
teaching of any benefit, preference, or desirability of the claimed species
(Appeal Br. 5-7; Reply Br. 4).
Appellant's arguments are unpersuasive. In re Baird regards a
reference disclosing a generic diphenol formula that encompassed a species
2 We refer to the Specification, filed Apr. 27, 2012 ("Spec."); Final Office
Action, notice emailed Aug. 13, 2015 ("Final Act."), Appeal Brief, filed
Feb. 29, 2016 ("Appeal Br."); the Examiner's Answer, notice emailed Mar.
6, 2017 ("Ans."), and the Reply Brief filed May 1, 2017 ("Reply Br.").
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Application 13/504,507
recited in the claims at issue (In re Baird, 16 F.3d at 382). However, the
formula encompassed "more than 100 million different diphenols," the
reference did not suggest the selection of variables in the formula that would
result in the claimed species, and the reference actually preferred other
species than that claimed (id.). As a result, the court determined the claimed
species was not obvious over the reference (id. at 383).
Here, the Examiner finds Hasegawa discloses a curable composition
that can include, among other things, versatic acid as a curing catalyst and a
ketimine compound obtained by reacting an aminosilane and a ketone as an
adhesion promoter (Ans. 2, 5). Hasegawa discloses a curable composition
including a vinyl polymer having at least one crosslinkable functional group
(referred to as a crosslinkable silyl group), a vinyl polymer having at least
one crosslinkable functional group (referred to as the photo-crosslinkable
group), and a photopolymerization initiator (Hasegawa ,r,r 36-38).
Hasegawa discloses that the curable composition may include a curing
catalyst and an adhesion promoter (id. ,r,r 327-328, and 355). Hasegawa
discloses that various curing catalysts may be used, such as versatic acid (id.
,r,r 329-330) and discloses various examples of adhesion promotors, which
include a ketimine compound obtained by reacting an amino group-
containing silane with a ketone compound (id. ,r,r 355-356).
In view of this, the Examiner correctly finds Hasegawa presents a
situation similar to that in Merck & Co v. Biocraft Labs., 874 F.2d 804 (Fed.
Cir. 1989) (Ans. 6-7). In Merck, a reference was found to disclose more
than 1200 combinations of compounds, including the claimed combination,
but did not highlight the claimed combination as being preferred (Merck,
874 F.2d at 806-807). Nonetheless, the court determined the reference
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Application 13/504,507
taught that any of the combinations would produce a desired formulation (id.
at 807). Specifically, the court stated: "[t]hat the [prior art] patent discloses
a multitude of effective combinations does not render any particular
formulation less obvious" (Merck, 874 F.2d at 807).
As discussed above, Hasegawa discloses its curable composition can
include a curing catalyst and an adhesion promoter. Hasegawa suggests
versatic acid functions as a suitable curing catalyst and a ketimine compound
(i.e., one obtained by reacting an amino group-containing silane with a
ketone compound) functions as a suitable adhesion promoter by explicitly
disclosing versatic acid as an exemplary curing catalyst and the claimed
ketimine compound as an exemplary adhesion promoter. Thus, although a
curable composition including versatic acid and the claimed ketimine
compound is one of many combinations encompassed by Hasegawa's
disclosure, such a combination is still suggested by Hasegawa as one
effective for providing a curable composition. As a result, the Examiner has
set forth a prima facie case of obviousness for claim 1 over Hasegawa.
Appellant further asserts the claimed curable composition presents
unexpected results in terms of moisture curability and ultraviolet ("UV")
curability after storage relative to Hasegawa (Appeal Br. 7; Reply Br. 4--5).
Specifically, Appellant argues Comparative Example 4 in the Specification
correlates to Examples 7 and 9 of Hasegawa, Comparative Example 2 in the
Specification correlates to Examples 1---6, 8, and 10 of Hasegawa,
Comparative Example 3 in the Specification correlates to Example 11 of
Hasegawa, and Comparative Example 1 uses an organic acid as a curing
catalyst and A-1110 as an adhesion promoter (i.e., curing catalyst and
adhesion promoter species disclosed by Hasegawa) (Appeal Br. 7-8).
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Application 13/504,507
Appellant contends that the Comparative Examples had various
problems with moisture or UV curability prior to or after storage but
Examples 1--4 in Appellant's Specification exhibit excellent moisture
curability and UV curability both before and after storage (Appeal Br. 8;
Reply Br. 6-7).
The Examiner correctly finds Examples 1--4 use one organic acid (i.e.,
versatic acid) and one specific ketimine compound (i.e., Sila-Ace S340 from
Chisso Corp.) (Ans. 7; Spec. ,r,r 148-151). However, claim 1 recites an
organic acid that "is a fatty acid having 8 or more carbon atoms" and "a
ketimine compound obtained by reacting an aminosilane and a ketone,"
which encompass organic acids and ketimine compounds other than the sole
organic acid and sole ketimine compound used in Examples 1--4. Therefore,
the asserted unexpected results are not reasonably commensurate in scope
with the claimed invention. See In re Tiffin, 448 F .2d 791, 792 ( CCP A
1971); In re Hiniker, 150 F.3d 1362, 1369 (Fed.Cir.1998).
Appellant contends the results provided by Examples 1--4 in the
Specification are commensurate in scope with the claimed invention because
they vary the amount of organic acid and ketimine compound in accordance
with the ranges recited in claim 1 and because one of ordinary skill in the art
would have understood the mechanism they describe in their Appeal Brief
(i.e., the ketimine compound being non-reactive and stable during storage
but its imino group hydrolyzing upon exposure to moisture to produce an
aminosilane and a ketone, with the aminosilane and the organic acid
promoting a condensation reaction of crosslinkable silyl groups) would
apply to other organic acids and ketimine compounds "as long as the organic
acid has a carboxyl group and the ketimine compound is a reaction product
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of an aminosilane and a ketone and has an imino group, based on the
comparison of Example 1 and Comparative Example 1," which
demonstrates an unexpected result and "provides an adequate rationale or
basis to support the conclusion that other embodiments falling within the
claim will behave in the same manner" ( Appeal Br. 9--11 ). Appellant further
argues "the Examiner fails to provide any arguments or evidence in
disputing or rejecting our rationale or basis" (Reply Br. 5). 3
Appellant, however, has not provided evidence or sufficient technical
reasoning to support their assertion that other organic acids and ketimine
compounds encompassed by claim 1 would exhibit the unexpected results
they assert. Appellant's assertion is based upon attorney argument without
supporting factual evidence that the other organic acids and ketimine
compounds encompassed by claim 1 would behave in the same way.
Unexpected results must be established by factual evidence. Attorney
argument does not suffice. See In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir.
1997) ( Attorney argument is not the kind of factual evidence that is required
"to rebut a prima facie case of obviousness.")). The argument that other
organic acids having a carboxyl group and all other ketimine compounds
encompassed by claim 1 would necessarily function in the manner described
also does not rest upon sufficient technical reasoning explaining why this
3 Appellant offers to amend claim 1 to limit the organic acid to eight
compounds if such an amendment would render the 35 U.S.C. § 103(a)
rejection moot (Reply Br. 6). The application, however, is no longer under
the jurisdiction of the Examiner while it is before us on appeal. Therefore,
any amendment will not even be considered for entry until it is returned to
the Examiner for further examination. Moreover, such an amendment would
still encompass organic acids besides the one (i.e., versatic acid) used in
Examples 1--4 in the Specification.
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would be true for the various organic acids and ketimine compounds
encompassed by claim 1.
Moreover, Appellant's Specification does not describe the results
exhibited by Examples 1--4 as "unexpected" and Appellant does not direct us
to any evidence to support their argument that the results would indeed have
been unexpected to one of ordinary skill in the art. See In re De Blauwe,
736 F.2d 699, 704 (CCPA 1984) (Mere argument does not establish that
results are unexpected.).
In addition, it is not clear that the results exhibited by Examples 1--4
demonstrate unexpected results. The Specification states that a cured
product was obtained for Examples 1--4 but that Comparative Examples 1--4
had various issues with ultraviolet and/or moisture curability before or after
storage (Spec. ,r,r 148-155). However, the Specification merely states a
cured product was obtained or not obtained without describing a
methodology for determining the degree of curing or whether a product was
cured or not. Such conclusory statements may not suffice to demonstrate
unexpected results (see De Blauwe, 736 F.2d at 705 ("Mere argument or
conclusory statements in the [S]pecification does not suffice.")).
Appellant further contends the asserted unexpected results
demonstrate a lack of functional equivalence between the curing catalysts
and adhesion promoters disclosed by Hasegawa because the Comparative
Examples, which used curing catalysts and adhesion promoter species
disclosed by Hasegawa, exhibited poor curability (Reply Br. 2-3). This
argument is also unpersuasive. As discussed above, Hasegawa discloses
various curing catalysts and adhesion promoters, including the species
recited in claim 1, and suggests they function to provide a curable
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composition. Indeed, the Specification states that a cured composition was
obtained from Comparative Examples 1--4 either before or after storage via
UV irradiation or without UV irradiation (Spec. ,r,r 152-155). As stated by
the court in Merck, "the fact that a specific [embodiment] is taught to be
preferred is not controlling, since all disclosures of the prior art, including
unpreferred embodiments, must be considered" (Merck, 874 F.2d at 807
(quoting In re Lamberti, 545 F.2d 747, 750 (CCPA 1976)) (emphasis
added)). Thus, to the extent Appellant's Comparative Examples 1--4 may
demonstrate some curing catalysts and adhesion promoters do not work as
effectively as others (i.e., may not be preferable), they nevertheless provide
curable compositions.
Based on the foregoing, the unexpected results asserted by Appellant
are entitled to little weight. A preponderance of the evidence supports the
Examiner's obviousness determination for claim 1.
Appellant does not argue claims 2-9 and 13 separately from claim 1
(Appeal Br. 11 ).
For the reasons discussed above and those set forth in the Examiner's
Answer, we sustain the Examiner's§ 103(a) rejection of claims 1-9 and 13
over Hasegawa.
DECISION
The Examiner's rejection of claims 1-9 and 13 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).
AFFIRMED
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