Ex Parte MICHEL et al

Patent Trial and Appeal Board

Dec 14, 2018

14900847 (P.T.A.B. Dec. 14, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/900,847 12/22/2015
22045 7590 12/18/2018
Brooks Kushman
1000 Town Center
22nd Floor
SOUTHFIELD, MI 48075
FIRST NAMED INVENTOR
Samuel MICHEL
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.
KURA0142PUSA 1046
EXAMINER
TUROCY, DAVID P
ART UNIT PAPER NUMBER
1718
NOTIFICATION DATE DELIVERY MODE
12/18/2018 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):
docketing@brookskushman.com
kdilucia@brookskushman.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SAMUEL MICHEL and EV A DUDEK 1
Appeal2018-001985
Application 14/900,847
Technology Center 1700
Before ROMULO H. DELMENDO, CHRISTOPHER C. KENNEDY, and
JENNIFER R. GUPTA, Administrative Patent Judges.
KENNEDY, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 11-17 and 19-25. We have jurisdiction under
35 U.S.C. § 6(b). We AFFIRM.
BACKGROUND
The subject matter on appeal relates to impregnating materials for
release papers and associated methods, and, in particular, to impregnation
agents comprising polyvinyl alcohol ("PV A") that contains olefinic double
bonds. E.g., Spec. 1: 18-20; Claim 11. Claims 11 and 17 are reproduced
1 The Appellant is the Applicant, Kuraray Europe GmbH, which is also
identified as the real party in interest. App. Br. 1.
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Application 14/900,847
below from pages 1 and 2 of the Claims Appendix attached to the Appeal
Brief (paragraph breaks and indentation added):
11. An in situ-prepared impregnation agent, obtained by a process
compnsmg
impregnating a cellulose-based material substrate with a
polyvinyl alcohol containing olefinic C-C double bonds,
followed by reacting the polyvinyl alcohol containing olefinic
C-C double bonds with
a silane-group-containing cross-linking agent and
a silicone compound that contains olefinic C-C double
bonds.
1 7. A method for impregnating cellulose-based materials,
compnsmg:
impregnating a cellulose based material with at least one
polyvinyl alcohol containing olefinic C-C double bonds, and
subsequently adding
a silane-group-containing crosslinking agent and
a silicone compound that contains olefinic C-C double
bonds, and
reacting in the presence of a hydrosilylation catalyst.
REJECTIONS ON APPEAL
The claims stand rejected as follows:
1. Claims 17 and 19-25 under 35 U.S.C. § 112(b) as indefinite;
2. Claims 11-17 and 19-252 under 35 U.S.C. § 103 as unpatentable
over Goto (WO 2007/015432 Al, published Feb. 8, 2007) and Koskinen
(WO 2009/147283 Al, published Dec. 10, 2009).
2 The Examiner's Answer does not list claim 25 in the header of the
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Application 14/900,847
ANALYSIS
Rejection 1
The legal standard for definiteness in prosecution is whether a claim
reasonably apprises those of skill in the art of its scope. In re Warmerdam,
33 F.3d 1354, 1361 (Fed. Cir. 1994).
The Examiner concludes that claim 17 is indefinite due to the term
"reacting in the presence of a hydrosilylation catalyst." Ans. 3. In
particular, the Examiner finds the term unclear because "the claims fail to
disclose what components are reacting." Id.
The Appellant argues that "[t]here are only three ingredients added to
the substrate in Appellant's invention," and that a person of ordinary skill
would understand that due to olefinic unsaturation in both the PV A
ingredient and the silicone compound ingredient, and due to "silicon-bonded
hydrogen" in the crosslinking agent, "all of these will react together by
addition of Si-H across the double bonds of the polyvinyl alcohol ... and
across the double bonds of the silicone." App. Br. 4.
In the Response to Argument section of the Answer, the Examiner
maintains that, because the claims themselves do not expressly describe the
components that participate in the reaction, they are unclear. Ans. 8 ("The
mere fact that the catalyst is present does not indicate that all the
components will react because the claims merely require 'reacting in the
presence of a hydrosilylation catalyst."'). The Examiner states: "The claims
rejection but does include claim 25 in the analysis. See Ans. 3, 6. The
Appellant addresses claim 25 in the Appeal Brief. See App. Br. 11.
Accordingly, we consider claim 25 to be subject to the stated rejection.
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provide a blanket 'reacting in the presence of a hydrosilylation catalyst'
without stating what components: all of the components, or only certain
portions of the components are reacting and thus the claims, even if read in
light of the specification, are indefinite." Id. The Examiner also finds that
the Appellant's argument that the reacting components "would be 'clear to
one of ordinary skill in the art' is not supported by factual evidence." Id.
We are not persuaded by the Examiner's rationale. As set forth
above, the Appellant's argument that a person of ordinary skill would
understand what components would react is accompanied by a plausible
technical explanation, i.e., that due to the limited number of components and
the structural features of those components (i.e., olefinic unsaturation and
silicon-bonded hydrogen), "in the presence of a hydrosilylation catalyst, all
of these [components] will react together by addition of Si-H across the
double bonds of the polyvinyl alcohol ... and across the double bonds of the
silicone." App. Br. 4. 3 The Examiner does not dispute that technical
explanation. See Ans. 8. Instead, the Examiner appears to be requiring the
claims to explicitly state what a person of ordinary skill in the art would
have already known. See id. at 8 ("The claims provide a blanket 'reacting in
the presence of a hydrosilylation catalyst' without stating what components:
all of the components, or only certain portions of the components are
reacting and thus the claims ... are indefinite.").
Because "definiteness of the language employed must be analyzed ...
in light of ... the particular application disclosure as it would be interpreted
3 Indeed, the Appellant's explanation is consistent with the Specification
description. Spec. 3 :3-7.
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Application 14/900,847
by one possessing the ordinary level of skill in the pertinent art," In re
Moore, 439 F.2d 1232, 1235 (CCPA 1971) (emphasis added), and the
Examiner does not persuasively establish that a person of ordinary skill in
the art would have found the scope of the claims to be unclear, we reverse
the rejection.
Rejection 2
The Appellant presents separate arguments for claims 11, 13, 21, and
25. 4 We address those claims below. The remaining claims on appeal will
stand or fall with claim 11. See 37 C.F.R. § 4I.37(c)(l)(iv).
Claim 11. The Examiner finds that Goto "discloses an impregnation
agent, obtained by a process comprising reacting polyvinyl alcohol with a
silane-group-containing cross-lining agent and a silicone compound that
contains olefinic carbon double bonds." Ans. 4. The Examiner finds that
Goto "generally discloses PVA but fails to explicitly disclose using a PVA
that contains olefinic carbon double bonds." Id.
The Examiner finds that Koskinen discloses an impregnating agent for
release liners and discloses "improving the bonding between the silicone
component and the paper substrate by using a functional polymer, including
explicitly disclos[ing] PV A that contains olefinic carbon double bonds." Id.
4 For the first time in the Reply Brief, and only in a footnote, the Appellant
raises arguments concerning claim 12 and whether Koskinen is enabled as
relied on by the Examiner with respect to claim 12. See Reply Br. 4 n.1.
The arguments are untimely because they were not presented in the Appeal
Brief, and the Appellant has not attempted to show good cause for
presenting them for the first time in a footnote in the Reply Brief. See
37 C.F .R. § 41.41 (b )(2). We decline to consider new arguments in the
Reply Brief.
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The Examiner finds that Koskinen also "discloses preapplication of the PV A
to the paper (i.e. impregnating the paper with PVA) and then reacting ...
this material with the silicone composition." Id. The Examiner concludes
that, "taking the references collectively, it would have been obvious as
predictable to apply at least one PV A to the paper material and thereafter in
situ prepar[ e] a release agent by react[ing] the PV A with the silicone group
to reap the benefits as specifically articulated by [Koskinen]." Id. The
Examiner identifies the benefits as "an increased durability (i.e. silicone rub-
off prevented) and releasability (i.e. release liner)." Id. at 7; see also id.
at 12 ( stating that the "proposed reason for modification" "is to provide
increased adhesion between the silicone coating and the layer so that silicone
rub-off is prevented.").
The Appellant presents several arguments in opposition to the
rejection, which we address in tum below:
1. The Appellant argues that because the composition of Goto
allegedly includes only small amounts of PVA, "the coating of [Goto] is not
a modified polyvinyl alcohol, but rather is a straight silicone coating." App.
Br. 6.
That argument is not persuasive because the claims do not require any
particular concentration of PVA. See In re Hiniker Co., 150 F.3d 1362,
1369 (Fed. Cir. 1998) ("The invention disclosed in Hiniker's written
description may be outstanding in its field, but the name of the game is the
claim."); In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993) (rejecting
appellant's nonobviousness argument as based on limitation not recited in
claim).
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2. The Appellant argues that Koskinen does not disclose a PVA
containing olefinic C-C double bonds. App. Br. 6.
In the Answer, the Examiner explains that Koskinen "discloses using
alkenyl chains as part of the side or end groups or block ... and thus
reasonably discloses using a PVA with olefinic C-C double bonds."
Ans. 10. That finding is supported by the record. See Koskinen at 5
( disclosing that the "water soluble polymeric backbone may be obtained
from ... polyvinyl alcohol," and that "functional side or end groups or
blocks" may be added to the polymeric backbone), 6 ( disclosing that the side
or end groups may include alkenyl chains). In the Reply Brief, the
Appellant does not dispute that finding, and we discern no basis to reject it.
3. The Appellant argues that there is no motivation to combine Goto
and Koskinen. App. Br. 7. In particular, the Appellant argues that, in Goto,
"it is very important that the silicone NOT react with the polyvinyl alcohol,
because if that were the case (if it did react), then the silicone could not
undergo microphase separation and migrate to form a silicone-rich but
irregular and unevenly distributed coating ... as required by [Goto]." Id.
The Appellant also argues that Goto aims to produce a coating that "is
exceptionally easy to rub off." Id. at 9; see also Reply Br. 3--4. According
to the Appellant, Koskinen' s desire "to firmly anchor the silicone to the
release substrate ... so it thus cannot migrate" is "diametrically opposed" to
Goto. App. Br. 9.
Those arguments are unpersuasive because they are attorney argument
unsupported by evidence or persuasive technical reasoning that is consistent
with the record. See In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974)
("Attorney's argument in a brief cannot take the place of evidence."). The
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Application 14/900,847
Appellant provides no persuasive evidence or explanation as to why the
proposed modification would prevent the composition of Goto as modified
by Koskinen from achieving at least some amount of microphase separation
and silicone migration, particularly in view of the Appellant's position that
Goto includes relatively small quantities of PV A. Additionally, we observe
that, although the Appellant provides several pages of technical discussion
of the prior art references, very few citations are provided, and those that are
provided are given in a nonspecific way. E.g., App. Br. 5 ("[P]lease note
,r [0020] and the following paragraph .... "), 7 ("Please refer to columns 7
and 8 in this regard.").
For example, the Appellant's assertion that Goto desires a coating that
"is exceptionally easy to rub off," see App. Br. 9, is not accompanied by a
citation, and, as the Examiner explains, it is unclear what portion of Goto
supports that assertion, see Ans. 13 ("[T]he examiner can not locate any
suggestion in [Goto] that requires a release coating that is easily rubbed off
or what the scope of easily rubbed off encompasses."). In the Reply Brief,
rather than identifying a specific portion of Goto that supports the
Appellant's position, the Appellant appears to abandon that position and
instead take the position that Goto' s coating is "firmly anchored to the
substrate." See Reply Br. 5. We address that assertion below.
Consistent with the Examiner's rejection, both Goto and Koskinen are
concerned with, inter alia, the releasability characteristics of the coating.
E.g., Goto ,r 20 (mentioning "excellent releasability"); Koskinen at 1 :9-10
( observing that silicone coatings "have been used for enhancing release
properties of a substrate, such as a paper, film or a plastic coated paper
substrate"). Thus, it is not clear that Goto and Koskinen are "diametrically
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Application 14/900,847
opposed" in a way that would negate the reasons to combine identified by
the Examiner. On this record, the Appellant's attorney argument does not
persuade us of reversible error in the Examiner's rejection. See In re Jung,
637 F.3d 1356, 1365 (Fed. Cir. 2011) ("[I]t has long been the Board's
practice to require an applicant to identify the alleged error in the examiner's
rejections .... ").
As mentioned briefly above, in the Reply Brief, the Appellant notes
that, in the Answer, the Examiner identifies enhanced anchoring of the
release coating to the substrate as an additional motivation to combining the
references, and the Appellant argues that Goto' s coating is "already firmly
anchored to the substrate" and therefore does not need to be modified as
proposed by the Examiner. See Reply Br. 4--5. The portions of Goto relied
on by the Appellant describe "repeated[] use[]," see id., but the Appellant
provides no evidence that a person of ordinary skill in the art would not have
believed adhesion and durability could be further improved, such as by
combination with Koskinen, which expressly discloses "a release liner
composition in which the adhesion of silicone has been improved." See
Koskinen at Abstract. Even assuming a person of ordinary skill in the art
would not have been motivated to achieve improved adhesion of the coating
to the substrate in Goto, that would fail to establish reversible error in the
rejection because, as explained above, the Examiner identifies other benefits
associated with the proposed combination. See Ans. 7 (identifying increased
releasability of the liner as benefit expected from proposed combination).
Accordingly, the argument raised in the Reply Brief does not persuade us of
reversible error in the Examiner's rejection.
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4. The Appellant argues that, in Goto, there is no chemical reaction
between the polyvinyl alcohol and the silicone, and that Goto describes only
an emulsion. App. Br. 8.
That argument is not persuasive because it addresses Goto
individually and fails to allege that there would be no reaction when Goto is
combined with Koskinen as proposed by the Examiner. See In re Keller,
642 F.2d 413,426 (CCPA 1981) ("[O]ne cannot show non-obviousness by
attacking references individually where, as here, the rejections are based on
combinations of references.").
5. The Appellant argues that unexpected results support a conclusion
of nonobviousness. See App. Br. 10-11.
The burden of establishing that unexpected results support a
conclusion of nonobviousness rests with the Appellant. In re Huang, 100
F.3d 135, 139 (Fed. Cir. 1996). The Appellant has not carried its burden in
this case because the Appellant fails to establish that the alleged unexpected
results are commensurate in scope with the claims. See In re Peterson, 315
F.3d 1325, 1329-31 (Fed. Cir. 2003). Here, the relied-upon examples use
only a single PV A having olefinic C-C double bonds. See Spec. 7.
Claim 11, however, permits the use of any PV A containing olefinic C-C
double bonds. "Establishing that one ( or a small number of) species gives
unexpected results is inadequate proof, for 'it is the view of [the CCPA] that
objective evidence of non-obviousness must be commensurate in scope with
the claims which the evidence is offered to support.'" In re Greenfield, 571
F.2d 1185, 1189 (CCPA 1978) (quoting In re Tiffin, 448 F.2d 791, 792
( CCP A 1971) ). The Appellant provides no persuasive argument or evidence
that the single PV A used in the examples is representative of the full scope
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of PV As encompassed by claim 11. See App. Br. 10. Accordingly, on this
record, we are not persuaded by the Appellant's argument that unexpected
results support a conclusion of nonobviousness.
We affirm the Examiner's rejection of claim 11. See Jung, 637 F .3d
at 1365.
Claims 13 and 21. Claims 13 and 21 narrow the PVA to a particular
structure having between 100 and 3,000 monomer units. The Examiner
makes the following findings and conclusions concerning the subject matter
of claims 13 and 21:
[Goto] discloses PV A with a degree of polymerization within
the range and overlapping the range as claimed and thus makes
obvious such. As for the requirement of the specific olefinic
carbon double bonds as claimed. This is made obvious by
[Koskinen] at page 6, lines 6, stating the functional groups may
be C 1---C20 Alkenyl chain and thus taking this teaching it would
have been obvious to have selected C2 alkenyl as such is
explicitly taught as operable and reasonable expectation of
predictable results will flow from [Koskinen].
Ans. 5; Final Act. 7 (same).
The entirety of the Appellant's argument concerning claims 13 and 21
is as follows: "There is no disclosure in either reference of any compound
similar to that of the polyvinyl alcohol containing conjugated unsaturation of
Formula 1, as present in claims 13 and 21, nor is there any teaching or
suggestion for the use of such compounds. Thus, these claims are separately
patentable." App. Br. 11.
That argument is unpersuasive because it is essentially a naked
assertion that the prior art does not disclose the claimed subject matter, and
it fails to meaningfully address or identify error in the Examiner's specific
findings and conclusions. See Jung, 637 F.3d at 1365; In re Lovin, 652 F.3d
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1349, 1357 (Fed. Cir. 2011) ("[T]he Board reasonably interpreted
Rule 41.3 7 to require more substantive arguments in an appeal brief than a
mere recitation of the claim elements and a naked assertion that the
corresponding elements were not found in the prior art."). We affirm the
Examiner's rejection of claims 13 and 21. 5
Claim 25. According to the Appellant, claim 25 "requires that the
polyvinyl alcohol containing olefinic unsaturation be first applied to a paper
substrate and then dried, following which the silicone components are
applied, dissolved in organic solvent," and the Appellant asserts that Goto
does not disclose such a process. See App. Br. 11.
That argument is not persuasive because it attacks Goto individually
and does not meaningfully address the Examiner's rejection. As set forth
above, the Examiner finds that Koskinen "discloses preapplication of the
PVA to the paper (i.e. impregnating the paper with PVA) and then
reacting ... this material with the silicone composition." Ans. 4. The
Examiner also finds that Koskinen discloses "drying the PV A after
application and prior to silization," and that Goto "discloses organic solvent
and application as in a solution and curing, i.e. crosslinked." Id. at 6. The
Examiner concludes that, "taking the references collectively, it would have
been obvious as predictable to apply at least one PV A to the paper material
and thereafter in situ prepar[e] a release agent by react[ing] the PVA with
5 We decline to consider the Appellant's new arguments concerning
claims 13 and 21 raised for the first time in the Reply Brief. See Reply
Br. 6-7. We also decline to consider the Appellant's new arguments
concerning the Examiner's rejection of claim 23, see id. at 7, which was not
addressed by the Appellant in the Appeal Brief. See 37 C.F.R.
§ 41.41 (b )(2).
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the silicone group to reap the benefits as specifically articulated by
[Koskinen]." Id. at 4. The Appellant fails to meaningfully address or
otherwise show error in the Examiner's relevant findings and conclusions.
The Appellant's assertion that Goto "clearly teach[es] away from the
subject matter of claim 25" because it does not specifically teach the recited
method is likewise unpersuasive because the Appellant fails to identify any
portion of Goto that "criticize[s], discredit[s], or otherwise discourage[s] the
solution claimed." See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004).
"The prior art's mere disclosure of more than one alternative does not
constitute a teaching away .... " Id.
On this record, we are unpersuaded of reversible error in the
Examiner's rejection of claim 25. See Jung, 637 F.3d at 1365.
CONCLUSION
We REVERSE the Examiner's rejection under 35 U.S.C. § 112(b) of
claims 17 and 19-25.
We AFFIRM the Examiner's rejection under 35 U.S.C. § 103 of
claims 11-17 and 19-25.
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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