Ex Parte Peña Hueso et al

Patent Trial and Appeal Board

Nov 7, 2017

14374734 (P.T.A.B. Nov. 7, 2017)

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.
14/374,734 07/25/2014 Jose Adrian Pena Hueso 48442.019 5934
25005 7590 11/09/2017
Intellectual Property Dept.
Dewitt Ross & Stevens SC
2 East Mifflin Street
Suite 600
Madison, WI 53703-2865
EXAMINER
LEONG, JONATHAN G
ART UNIT PAPER NUMBER
1725
NOTIFICATION DATE DELIVERY MODE
11/09/2017 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):
IP-DOCKET @ dewittross.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOSE ADRIAN PENA HUESO, JIAN DONG,
MICHAEL L. POLLINA, MONICA L. USREY,
ROBERT J. HAMERS, ROBERT C. WEST, and
DAVID OSMALOV
Appeal 2017-002026
Application 14/374,734
Technology Center 1700
Before TERRY J. OWENS, CHRISTOPHER L. OGDEN, and
DEBRA L. DENNETT, Administrative Patent Judges.
DENNETT, Administrative Patent Judge.
DECISION ON APPEAL1
STATEMENT OF THE CASE
Appellant2 appeals under 35 U.S.C. § 134(a) from a rejection of
claims 16 and 20. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 In our Opinion, we refer to the Final Action mailed March 14, 2016 (“Final
Act.”); the Advisory Action mailed June 2, 2016 (“Adv. Act.”); the Appeal
Brief filed July 18, 2016 (“Appeal Br.”); the Examiner’s Answer mailed
October 7, 2016 (“Ans.”); and the Reply Brief filed November 15, 2016
(“Reply Br.”).
2 Appellant is the applicant, Silatronix, Inc., who is also the real party in
interest. Appeal Br. 2.
Appeal 2017-002026
Application 14/374,734
The claims are directed to fluorinated organosilicon compounds.
Claim 16, reproduced below, is illustrative of the claimed subject matter:
16. A compound of formula:
^4-a-b
Rb----- SI-----Xa
wherein subscript “a” is an integer of from 1 to 3;
subscript “b” is 1 or 2;
X is fluorine;
R is selected from the group consisting of Formula 1
moieties, and Formula II moieties:
Formula I:
—R2
, ^
W
Formula II.
es-Sfv o* Vil'l 'O* ■k*
wherein R2 is an organic spacer;
R3 is nil or an organic spacer;
R4 is hydrogen, alkyl, or aryl;
R5 is alkyl or aryl;
subscript “c” is 1 or 2; and
subscript “d” is from 1 to 12; and
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Appeal 2017-002026
Application 14/374,734
R1 is selected from the group consisting of alkyl,
substituted alkyl, aryl, and substituted aryl.
Claims App’x 3^4.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Yoon et al. US 2005/0106470 A1 May 19, 2005
(“Yoon”)
Miyagietal. US 2010/0015514 Al Jan. 21, 2010
(“Miyagi”)
REJECTIONS
The Examiner maintains and Appellant seeks review of the following
rejections of claims 16 and 20 under 35 U.S.C. § 103(a): (1) over Yoon; and
(2) over Miyagi in view of Yoon. Final Act. 2, 3; Appeal Br. 4, 7.
OPINION
Section 103(a) Rejection over Yoon alone
The Examiner finds that Yoon discloses a compound corresponding to
the claimed compound in which the only difference between the claimed
compound and the embodiment in Yoon is that the claim requires X to be
fluorine where Yoon teaches a methyl group. Final Act. 2. The Examiner
finds that Yoon discloses a halogen can be used in the place of an alkyl
group, and fluorine as a halogen in silane compounds. Id. The Examiner
concludes that it would have been obvious to one of ordinary skill in the art
at the time of the invention to have substituted one of the methyl groups of
Yoon with a fluorine with a clear expectation of success. Id. Although
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Application 14/374,734
acknowledging that Yoon is silent as to a particular method of making
fluorinated silanes, the Examiner finds that prior art references need not
disclose that which is well-known in the art. Ans. 5.
Appellant argues that Yoon does not enable making a fluorinated
version of the compounds disclosed in the reference. Appeal Br. 4.
Appellant submits evidence in the way of a Rule 132 Declaration in support
of the contention that fluorinated versions of compounds structurally similar
to Yoon’s cannot be made by conventional routes. Id.', see also Rule 132
Declaration of Jose Adrian Pena Hueso dated Sept. 21, 2015 (“Hueso
Deck”).
The Hueso Declaration states that (1) Yoon does not describe any
method for making a compound SiR4_x-yR'xR"y in which the R group is any
halogen in general or fluorine in particular; (2) the Si-F bond is the strongest
single bond known between any two elements in the periodic table; (3)
methods for selectively forming Si-F bonds differ from those of other
silicon-halogen bonds; (4) methods to synthesize fluorosilanes are
substantially different from the rest of the halogenated silanes and those
differences are both unpredictable and not trivial. Hueso Deck 2—3. The
declaration provides the unsuccessful results of attempting to synthesize 2-
fhioro-2-methyl-3,6,9,12-tetraoxa-2-silatridecane (F1NM3) by conventional
methods taught in the literature. Id. at 3^4. The declaration concludes that
“fluorinated silanes cannot be formed using either conventional methods for
forming fluorinated compounds in general, nor methods conventionally used
to form the corresponding chlorinated silane analogs.” Id. at 4 (emphasis
omitted).
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Appeal 2017-002026
Application 14/374,734
“[T]o render an invention unpatentable for obviousness, the prior art
must enable a person of ordinary skill to make and use the invention.” In re
Kumar, 418 F.3d 1361, 1368 (Fed. Cir. 2005). The presumption of
obviousness based on close structural similarity is overcome where the prior
art does not disclose or render obvious a method for making the claimed
compound. In re Payne, 606 F.2d 303, 314—315 (CCPA 1979); see also In
re Hoeksema, 399 F.2d 269, 274 (CCPA 1968).
Here, Appellant has come forward with evidence showing that Yoon,
in combination with ordinary skill in the art, would not be expected to
produce the claimed compounds. See Hueso Deck 2-4. Weighing this
evidence against the Examiner’s findings results in the conclusion that the
claims are not obvious over Yoon. We do not sustain the Examiner’s
rejection of claims 16 and 20.
Section 103(a) Rejection over Miyagi in view of Yoon
The Examiner finds that Miyagi discloses a compound similar to the
claimed compound when specific components taught by Miyagi are selected,
except that Miyagi does not teach polymerized ethoxy groups as a
substituent. Final Act. 3. The Examiner concludes that, because Yoon
teaches polymerized ethoxy groups coexisting with methyl R-groups in
silanes, it would have been obvious to one of ordinary skill in the art at the
time of the invention to arrive at the claimed compound. Id.
Appellant argues, inter alia, that the Examiner fails to provide a
motivation to combine the teachings of Miyagi and Yoon, engaging in
hindsight to arrive at the claimed compounds. Appeal Br. 7—8.
For an obviousness rejection over combined prior art references, the
Examiner must provide an explanation of why an ordinary artisan seeking to
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Application 14/374,734
solve the problem at hand would have been led to combine the references.
DyStar Textiifarben GmbH & Co. v. C.H. Patrick Co., 464 F.3d 1356, 1367
(Fed. Cir. 2006). In the instant case, the Examiner does not provide the
required “articulated reasoning with some rational underpinning to support
the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed.
Cir. 2006). Consequently, here the conclusion of obviousness is based upon
facts gleaned only through hindsight. “The invention must be viewed not
after the blueprint has been drawn by the inventor, but as it would have been
perceived in the state of the art that existed at the time the invention was
made.” Sensonics Inc. v. Aerosonic Corp., 81 F.3d 1566, 1570 (Fed. Cir.
1996) (citing Interconnect Planning Corp. v. Feil, 11A F.2d 1132, 1138
(Fed. Cir. 1985)).
Appellant identifies reversible error in the Examiner’s rejection of
claims 16 and 20 over Miyagi in view of Yoon. We do not sustain the
rejection.
DECISION
The Examiner’s rejection of claims 16 and 20 is reversed.
REVERSED
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