Ex Parte Kuhlmann et al

Patent Trial and Appeal Board

Feb 22, 2016

12430359 (P.T.A.B. Feb. 22, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/430,359 0412712009
123223 7590 02/24/2016
Drinker Biddle & Reath LLP (WM)
222 Delaware A venue, Ste. 1410
Wilmington, DE 19801-1621
FIRST NAMED INVENTOR
Timo Kuhlmann
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.
074033-0207-US-287260 2977
EXAMINER
LEONARD, MICHAEL L
ART UNIT PAPER NUMBER
1763
NOTIFICATION DATE DELIVERY MODE
02/24/2016 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):
IPDocketWM@dbr.com
penelope.mongelluzzo@dbr.com
DBRIPDocket@dbr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte TIMO KUHLMANN, KLAUS MEYER, STEFAN SOMMER,
ERHARD LUEHMANN, and JAN WEIKARD
Appeal2014-005738
Application 12/430,359
Technology Center 1700
Before JEFFREY T. SMITH, KAREN M. HASTINGS, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.
HASTINGS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134 from a final rejection of
claims 1, 2, 4-7, and 10. We have jurisdiction under 35 U.S.C. § 6.
We AFFIRM.
Appellants' 1 invention is best illustrated by independent claim 1,
reproduced below (emphasis added):
1 The real party in interest is stated to be Bayer MaterialScience AG (App.
Br. 2).
Appeal2014-005738
Application 12/430,359
1. A film comprising a radiation-curing coating, wherein
said radiation-curing coating comprises a polyurethane polymer
comprising (meth)acrylate groups and which is obtained from
the reaction of a reaction mixture comprising:
(a) polyisocyanates; and
(b 1) compounds which comprise (meth)acrylate groups
and are reactive towards isocyanates
wherein said radiation-curing coating further comprises
inorganic nanoparticles having an average particle size in the
range of from 1 nm to 200 nm, wherein the weight average Mw
of said polyurethane polymer is in the range of from 250000
g/mol to 350000 g/mol, and
wherein said inorganic nanoparticles are derived from
an aqueous epoxy silane-modified colloidal silica dispersion.
The Examiner maintains the following rejections:
(a) claims 1, 2, 4-7, and 10 rejected under 35 U.S.C. § l 12(a) or
35 U.S.C. § 112 (pre-AIA), first paragraph, as failing to comply with the
written description requirement; and
(b) claims 1, 2, 4-7, and 10 rejected under 35 U.S.C. § 103(a) as
unpatentable over Paulus et al. (US. 6,207,744 Bl, issued March 27, 2001)
(hereinafter "Paulus"), Moe bus et al. (US 2008/0017071 Al, published
January 24, 2008) (hereinafter "Moebus") and Anzures et al. (US
2006/02863 82 Al, published December 21, 2006) (hereinafter "Anzures").
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Application 12/430,359
OPINION2
Rejection under 35 U.S. C. § 112, first paragraph
(written description) (Rejection (a))3
We reverse this rejection.
For an applicant to comply with the 35 U.S.C. § 112, first paragraph,
written description requirement, the applicant's Specification must "'convey
with reasonable clarity to those skilled in the art that, as of the filing date
sought, he or she was in possession of the invention."' Carnegie Mellon
Univ. v. Hoffmann-La Roche Inc., 541F.3d1115, 1122 (Fed. Cir. 2008)
(quoting Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563-64 (Fed. Cir.
1991)). The claimed subject matter need not be described in haec verba in
the Specification in order for that specification to satisfy the description
requirement. In re Smith, 481F.2d910, 914 (CCPA 1973). That is, a claim
need not use the same words as the specification, it is enough that one of
ordinary skill in the art would recognize that the inventor invented what is
claimed. Union Oil Co. of Cal. v. Atlantic Ric/1field Co., 208 F.3d 989, 997
(Fed. Cir. 2000).
The Examiner found the Specification, as originally filed, does not
support the breadth of the recitation "inorganic nanoparticles are derived
from an aqueous epoxy silane-modified colloidal silica dispersion" in
independent claim 1. Ans. 2. According to the Examiner, the only support
2 We rely on the statements of the rejections on appeal as presented in the
Examiner's Answer. Ans. 2-7. Appellants have not indicated in the Reply
Brief of April 7, 2014 that these rejections differ from the rejections
maintained in the Final Action of June 26, 2013. See Reply Brief, generally.
3 We limit our discussion to independent claim 1.
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Appeal2014-005738
Application 12/430,359
for the disputed recitation is the single disclosed commercially available
dispersion BINDZIL® CC40. Ans. 2; Spec. 33.
Appellants argue the Specification discloses two compounds
(BINDZIL® CC40 and y-glycidoxypropyltrimethoxysilane) that reasonably
support the breadth of the disputed language. App. Br. 9; Reply Br. 2-3;
Spec.20,27,33.
Appellants' position that the original disclosure provides adequate
support for the breadth of the recitation "inorganic nanoparticles are derived
from an aqueous epoxy silane-modified colloidal silica dispersion" in
independent claim 1 is reasonable. Given the two disclosed compounds, the
Examiner has not adequately explained why one skilled in the art would not
have understood the breadth of the inorganic nanoparticles encompassed by
the disputed recitation. The Examiner has not adequately explained why the
Specification, as originally filed, would not convey with reasonable clarity
to those skilled in the art that, as of the filing date sought, Appellants were in
possession of the invention.
Accordingly, we reverse the Examiner's§ 112, first paragraph, lack of
written description rejection on appeal.
Prior Art Rejection (Rejection (b))
Independent claim 1 requires a film comprising a radiation-curing
coating comprising inorganic nanoparticles derived from an aqueous epoxy
silane-modified colloidal silica dispersion. 4
4 Appellants do not argue any claim separate from the other. See Appeal
Brief, generally. Accordingly, we select independent claim 1 as
representative of the subject matter before us on appeal. Claims 2, 4-7, and
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Appeal2014-005738
Application 12/430,359
We have reviewed each of Appellants' arguments for patentability.
However, we are in agreement with the Examiner that the subject matter of
claim 1 is unpatentable. Accordingly, we sustain the Examiner's prior art
rejection for the reasons explained in the Answer, and we add the following
primarily for emphasis.
We refer to the Examiner's Answer for a complete statement of the
rejection. Ans. 2-7.
Appellants argue the secondary reference to Anzures does not teach
aqueous epoxy silane-modified colloidal silica dispersions. App. Br. 7;
Reply Br. 3.
We are unpersuaded by this argument. The Examiner found Paulus
discloses a scratch resistant film that differs from the claimed invention in
that Paulus does not disclose addition of inorganic nanoparticles to the
aqueous dispersion as claimed. Ans. 3; Paulus col. 3, 11. 35, 53-60, col. 5, 11.
5-60, col. 19-20. The Examiner found Moebus discloses the use of
inorganic nanoparticles in aqueous polyurethane dispersions having binding
agents to make films with improved scratch and abrasion resistance. Ans. 4;
Moebus Abstract, ,-i 7, claim 74. Moebus further discloses as known to
silanised the inorganic nanoparticles used to provide a reactive group
relative to the binding agent. Moebus ,-i,-i 66-67. The Examiner also found
Anzures discloses polyurethane dispersions that include nanoparticles for the
purpose of making films with improved scratch resistance. Ans. 4; Anzures
,-i,-i 6, 19. Anzures additionally discloses the use of a commercially available
10 will stand or fall with independent claim 1. Claims argued separately
will be addressed separately. However, claims 2, 3, 7, 12-14, 16, and 42--45
will stand or fall with independent claim 1.
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Appeal2014-005738
Application 12/430,359
dispersion of nanosilica in epoxy monomers as well as the use of aqueous
nanoparticle dispersions. Anzures iJ 17.
It is well settled that a reference stands for all of the specific teachings
thereof as well as the inferences one of ordinary skill in the art would have
reasonably been expected to draw therefrom. See In re Fritch, 972 F .2d
1260, 1264-65 (Fed. Cir. 1992). Thus, one of ordinary skill would have
reasonably inferred from Anzures' disclosure that the use of inorganic
nanoparticles derived from an aqueous epoxy colloidal silica dispersion in
the film of Paulus would have resulted in improved scratch resistance. One
of ordinary skill would also have reasonably inferred from Moe bus'
disclosure that modifying Anzures inorganic particles to be silanised would
have also resulted in improved scratch resistance in the film of Paulus.
Moreover, the combined teachings of Moe bus and Anzures would have
suggested to the skilled artisan to use any inorganic nanoparticle dispersion
known to provide scratch resistance to films, including Appellants' preferred
BINDZIL ® CC40, described as enhancing mechanical and anti-soil
properties of a film, as a predictable use of a prior art nanoparticle dispersion
for its intended use. See Appeal Br., Exhibit 1 (Product sheet for BINDZIL
® CC40). KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007) (stating
that when assessing whether a claimed invention would have been obvious,
a court must ask "whether the improvement is more than the predictable use
of prior art elements according to their established functions").
Thus, Appellants have not adequately explained why one skilled in
the art, using no more than ordinary creativity, would not have used
inorganic nanoparticles derived from an aqueous epoxy silane-modified
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Appeal2014-005738
Application 12/430,359
colloidal silica dispersion to make scratch resistance films based on the
inferences from the combined teachings of Moe bus and Anzures.
Appellants also argue Examples 2 and 3 of the Specification using
BINDZIL ® CC40 establish unexpected results for the claimed invention by
achieving surfaces with excellent resistances to chemicals at elevated
temperatures up to 80°C on deformed films. App. Br. 7; Spec. 43.
We are also unpersuaded by this evidence for the reasons presented by
the Examiner. Ans. 7-9. In addition, Appellants' Examples 2 and 3 involve
film forming compositions comprising inorganic nanoparticles derived only
from the commercially available aqueous epoxy silane-modified colloidal
silica dispersion BINDZIL® CC40. Spec. 37. Appellants have not
adequately explained why this single inorganic nanoparticle dispersion is
representative of the entire scope of the claimed inorganic nanoparticles.
Moreover, Appellants' Examples 2 and 3 do not provide a comparison
against prior art, much less the closest prior art. Thus, Appellants have not
adequately explained how the data in Examples 2 and 3 demonstrate
unexpected results. See In re Baxter Travenol Labs., 952 F.2d 388, 392
(Fed. Cir. 1991); In re Freeman, 474 F.2d 1318, 1324 (CCPA 1973); In re
Klosak, 455 F.2d 1077, 1080 (CCPA 1972).
On this record, Appellants have not adequately shown, much less
explained, why the evidence relied upon would have been unexpected by
one of ordinary skill in the art or is reasonably commensurate in the scope
with the claims.
Therefore, we affirm the Examiner's prior art rejection of claims 1, 2,
4-7, and 10 under 35 U.S.C. § 103(a) for the reasons presented by the
Examiner and given above.
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Appeal2014-005738
Application 12/430,359
ORDER
The Examiner's rejection of claims 1, 2, 4-7, and 10 under 35 U.S.C.
§ l 12(a) or 35 U.S.C. § 112 (pre-AIA), first paragraph, is reversed.
The Examiner's prior art rejection of claims 1, 2, 4-7, and 10 under
35 U.S.C. § 103(a) is affirmed.
TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 3 7 C.F .R. § 1.13 6( a )(1 ).
AFFIRMED
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