Ex Parte Percec et al

Patent Trial and Appeal Board

Jul 14, 2016

12641474 (P.T.A.B. Jul. 14, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/641,474 12/18/2009
23906 7590 07118/2016
EIDUPONTDENEMOURSANDCOMPANY
LEGAL PATENT RECORDS CENTER
CHESTNUT RUN PLAZA 721/2340
974 CENTRE ROAD, P.O. BOX 2915
WILMINGTON, DE 19805
Simona Percec
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.
CIA958USNA 1688
EXAMINER
ENGLISH, PATRICK NOLAND
ART UNIT PAPER NUMBER
1787
NOTIFICATION DATE DELIVERY MODE
07/18/2016 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):
PTO-Legal.PRC@dupont.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SIMONA PERCEC and JOEL M. POLLINO
Appeal2015-001416
Application 12/641,474
Technology Center 1700
Before BEYERL YA. FRANKLIN, KAREN M. HASTINGS, and
DEBRA L. DENNETT, Administrative Patent Judges.
DENNETT, Administrative Patent Judge.
DECISION ON i\.PPEi\L 1
STATEMENT OF CASE
Appellants2 appeal under 35 U.S.C. § 134 from a rejection of claims
1-12. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 In our opinion below, we refer the Final Office Action mailed February 26,
2014 (Final Act.), the Appeal Brief filed August 21, 2014 (App. Br.), and the
Examiner's Answer mailed September 11, 2014 (Ans.).
2 According to Appellants, the real party in interest is E.I. DuPont de
Nemours and Company. App. Br. 2.
Appeal2015-001416
Application 12/641,474
The claims are directed to electrochromic devices and methods of use.
Claims 1, 9, and 12 are independent claims. Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. A device comprising:
(A) a first substrate with a conductive surface;
(B) a second substrate with a conductive surface; and
(C) a composition consisting essentially of (i) and (ii) obtained
by mixing:
(i) 10-60 wt% of a polymer selected from the group of
amorphous, film-forming polymers with Tg less than
100°C; with
(ii) 40-90 wt% of a plasticizer mixture, wherein, before
mixing with the polymer, the plasticizer mixture
comprises
(a) a plasticizer, wherein the plasticizer is soluble
in the polymer to at least 45 wt%;
(b) an electrochromophore, wherein the
electrochromophore is soluble in the plasticizer
to at least 10 wt% and wherein the
concentration of the electrochromophore in the
composition is from 1 to 30 wt%;
( c) an electron mediator selected from the group
consisting of ferrocene, butyl ferrocene,
ferrocene carboxylic acid, phenazine and its
derivatives, carbazole and its derivatives,
phenothiazine and its derivatives, and
phenanthroline and its derivatives wherein the
concentration of the electron mediator in the
composition is from 0 .1 to 10 wt%; and
( d) a salt selected from the group consisting of
lithium chloride, tetrabutylammonium bromide,
lithium bis( trifluoromethanesulfonyl )imide,
lithium triflate, and lithium
hexafluorophosphate, wherein the concentration
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Application 12/641,474
of the salt in the composition is from 0 .1 to 10
wt%, and
wherein:
( 1) the melting point of the plasticizer is not
above about 0°C, the boiling point of the
plasticizer is above about l 90°C at a
pressure of 1 atmosphere, and the solubility
in the plasticizer of the electron mediator
and the salt are each at least 0.5 mg per mg
of plasticizer, and
(2)the composition is in contact with the
conductive surfaces of the first and second
substrates, wherein at least one substrate and
associated conductive surface is transparent.
REFERENCES
Varaprasad et al. US 6,154,306 Nov. 28, 2000
("V araprasad")
Yan et al. US 2007/0021533 Al Jan. 25, 2007
("Yan")
Percec et al. WO 2007/149091 Al Dec. 27, 2007
("Percec")
Shin-Nakamura Chemical Co., Ltd, "Bifunctional acrylates," 1--4
(2 009), at http ://www.shin-nakamura.com/ english/products/monomer-
o ligomer-02 .html) ("Shin-Nakamura")
ScienceLab.com product web page, "Propylene carbonate MSDS, "
1-5 (October 10, 2005), at
http://www.sciencelab.com/msds.php?msdsld=992723 8
("ScienceLab").
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Appeal2015-001416
Application 12/641,474
REJECTIONS
Claims 1-12 stand rejected under 35U.S.C§103(a) as being
unpatentable over Varaprasad in view of Percec as evidenced by Shin-
N akamura, ScienceLab, and Yan.
OPINION
Appellants argue the claims as a group, with additional argument
directed to claims 4 and 5. App. Br. 3, 12. Therefore, we address the claims
as a group with our analysis directed to claim 1, and additional analysis on
claims 4 and 5. 37 C.F.R. § 41.37(c)(iv)(2013)
In rejecting the claims, the Examiner cites Varaprasad as disclosing
an electrochromic monomer composition comprising by weight
about 4.4% EVCl04 ... , about 2% ferrocene ... , both
homogeneously dispersed in a combination comprising, in
combination as the plasticizer component, about 48.6%
propylene carbonate and about 8.8% cyanoethyl sucrose and, in
combination as a monomer component, about 17. 7%
caprolactone acrylate and about 13.3% polyethylene glycol
diacrylate ( 400).
Final Act. 3 (citing Varaprasad col. 38, lines 54--62).
The Examiner finds that the plasticizer of the claims is met by
propylene carbonate, the electrochromophore is met by EVC104
[ ethylviologen perchlorate], and the "electron mediator" is met by ferrocene.
Id. The Examiner further finds that the "amorphous, film-forming polymer"
is met by polyethylene glycol diacrylate and caprolactone acrylate. Id. The
Examiner acknowledges that Varaprasad does not disclose the addition of a
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Application 12/641,474
salt in the proportions claimed, but finds that Percec cures this deficiency by
teaching use of lithium chloride. Id. at 4 (citing Percec p. 9, 11. 20-25).
Appellants first contend that the Examiner fails to make a prima facie
case of obviousness because "the combination of the references do not
provide solubility properties of the various chemical components in the
combination defined in the device claimed by applicants." App. Br. 3.
Appellants argue throughout their brief that solubility is critical. See, e.g.,
id. at 3-7, 9. However, the Examiner explains that "the solubilities recited
are considered to be inherent characteristics of the plasticizer,
electrochromophore, electron mediator, and salt." Final Act. 5. "The
inherent teaching of a prior art reference" is a "question of fact." In re
Napier, 55 F.3d 610, 613 (Fed. Cir. 1995). The Examiner noted that
Appellants "did not claim solubility of salt in the plasticizer mixture, made
up of different elements, but rather the solubility of a single component in
another (salt in plasticizer)." Ans. 10 (emphasis in original). The references
teach components that are the same as those required by the claims. In light
of this, and since the Examiner's finding that solubilities of the components
taught necessarily fall within the claimed percentages is reasonable, the
Examiner's determination that the properties recited in the claim would
follow is also reasonable. Stated differently, the fact that Appellants may
have recognized another property which would flow naturally from
following Varaprasad's teaching of the components of the composition
cannot be the basis for patentability. In re Kao, 639 F.3d 1057, 1070 (Fed.
Cir. 2011) ("Maloney's express teachings render the claimed controlled
release oxymorphone formulation obvious, and the claimed 'food effect'
adds nothing of patentable consequence."). Thus, this argument of
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Application 12/641,474
Appellants' argument regarding the solubilities recited in claim 1 is
unpersuasive of error in the Examiner's rejection.
Appellants also contend that the Examiner disregards the claims'
requirement of mixing electrochromic additives with a plasticizer prior to
mixing the plasticizer mixture with the polymer. App. Br. 4 (emphasis
added). The Examiner points out that the claims are drawn to a product-by-
process (Final Act. 6); "[t]he patentability of a product does not depend on
its method of production." In re Thorpe, 777 F.2d 695, 697 (Fed. Cir.
1985). Where, as here, the product in a product-by-process claim is the
same as or obvious from a product of the prior art, the claim is unpatentable
even though the prior product was made by a different process. Id. Thus,
this argument is also unpersuasive.
Appellants assert surprising results from mixing electrochromic
additives with plasticizer prior to adding the resulting mixture to a polymer.
App. Br. 5. Appellants' brief provides no evidence, only attorney argument
on this point, which is inadequate on its face. See In re Pearson, 494 F.2d
1399, 1405 (CCPA 1974) ("Attorney's argument in a brief cannot take the
place of evidence."). The Specification states that "[i]t has been found that
the more soluble the set of additives is within a particular plasticizer-
polymer matrix, the faster the switching speed and coloring of a resultant
electrochromic device." Spec. p. 26, 11. 7-9 (emphasis added). The
preceding sentence does not support Appellants' current contention that the
separate solubility of an electrochromophore, electron mediator, and salt in a
plasticizer provides surprising results that confer patentability. If Appellants
wish to use unexpected results as evidence of nonobviousness, they must
show the results are "unexpected compared with the closest prior art." In re
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Application 12/641,474
Baxter T'ravenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991). They have not
done so.
Appellants further contend that the Examiner employs impermissible
hindsight in rejecting the claims as obvious. App. Br. 5. "Any judgment on
obviousness is in a sense necessarily a reconstruction based upon hindsight
reasoning, but so long as it takes into account only knowledge which was
within the level of ordinary skill at the time the claimed invention was made
and does not include knowledge gleaned only from applicant's disclosure,
such a reconstruction is proper." In re McLaughlin, 443 F.2d 1392, 1395
(CCP A 1971 ). The Examiner provides adequate motivation to combine
Varaprasad with Percec, i.e., to increase conductivity of the polymer and
inhibit crystallization of polyethylene glycol. Ans. 13, 26. In addition, as
the inventions of Varaprasad and Percec are both directed toward
compositions with an amorphous polymer, a plasticizer, an
electrochromophore, and electron mediator, the Examiner appropriately
finds that addition of a salt as a component would have had reasonable
expectation of success. Id. at 4. "[O]nly a reasonable expectation of
success, not a guarantee, is needed" to support a conclusion of obviousness.
Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1364 (Fed. Cir. 2007).
Appellants argue that Percec teaches away from the claimed invention
because the reference discloses triethyleneglycol-di-2-ethyl hexanoate
(3GO) as a plasticizer. App. Br. 8. Appellants' Specification states that use
of 3GO as a plasticizer resulted in a device that "is sluggish to develop full
color and to bleach." Spec. p. 27, 11. 4--15. Whether a reference teaches
away from a claimed invention is a question of fact. In re Harris, 409 F.3d
1339, 1341 (Fed. Cir. 2005). For a reference to "teach away," it must
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Application 12/641,474
criticize, discredit, or otherwise discourage the claimed solution. See In re
Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). The Examiner aptly explains
that Percec is used only to exemplify the obviousness of adding a salt to a
plasticizer, such as the plasticizer/polymer mixture of Varaprasad, and not as
modifying the plasticizer taught by Varaprasad (e.g., to use 3GO). Ans. 18-
19. Thus, the Examiner's use of Percec does not teach away from the
claimed invention, since Percec does not criticize or otherwise discourage
the use of a salt with plasticizers such as those used in Varaprasad.
In dependent claim 4, which includes a Markush group consisting of,
among other polymers, "acrylate (co )polymers," the Examiner finds that
polyethylene glycol diacrylate meets the "acrylate (co )polymers" limitation.
Final Act. 7; Ans. 7. Appellants claim that the diacrylate is not an acrylate
copolymer because "by definition a copolymer is a polymer comprising
polymeric units from at least two monomer types." App. Br. 12 (emphasis
added). However, in the Specification Appellants define (co )polymer as
follows: "As used herein, '(co )polymer' denotes a homopolymer or
copolymer." Spec. p. 5, 11. 1-2. The Examiner's position is that "acrylate
(co )polymers" encompasses both acrylate polymers and copolymers, and
that the acrylate monomers combined with the hydrocarbons in the
polyethylene glycol chain constitute an acrylate polymer and therefore meet
the limitations encompassed broadly by "acrylate (co )polymers." Ans. 25.
Given Appellants' statement, their argument fails.
Appellants argue that they have the right to define their invention in
any manner supported by the specification. App. Br. 13. The claims include
the limitation that the composition "consist[ s] essentially of' a polymer as
described and a plasticizer mixture as described. Id. at 2. This transitional
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phrase "limits the scope of a claim to the specified ingredients and those that
do not materially affect the basic and novel characteristics" of the claimed
invention. In re Herz, 537 F.2d 549, 551-552 (CCPA 1976) (citation
omitted). Appellants contend that they have defined the claims so as to bar
the inclusion of additional elements, such as cyanoethyl sucrose included in
the disclosure in Varaprasad. Id. at 13. But "[b]y using the term 'consisting
essentially of,' the drafter signals that the invention necessarily includes the
listed ingredients and is open to unlisted ingredients that do not materially
affect the basic and novel properties of the invention." PPG Indus. v.
Guardian Indus., 156 F.3d 135 L 1354 (Fed. Cir. 1998). The Examiner
correctly notes that Appellants fail to provide any evidence that the presence
of cyanoethyl sucrose affects the basic and novel characteristics of the
invention. Ans. 21. For the purpose of applying prior art under 35 1.J.S.C. §
103~ absent a clear indication in the specification or c1aims of what the basic
and novel characteristics actually are~ "consisting essentially of'~ is construed
as equivalent to "comprising." See, e.g., PPG Indus., 156 F.3d at 1355
("PPG could have defined the scope of the phrase 'consisting essentially of
fbr purposes of its patent by making clear in its specification what it
regarded as constituting a material change in the basic and nove1
~ 0 0
characteristics of the invention.'~). Therefore~ the Examiner properly
intei1Jreted the metes and bounds of the invention in applying Varaprasad as
a reference.
Dependent claim 5 requires the plasticizer in the electrochromic
device to be selected from a group consisting of linear carbonates and
numerous other molecules. App. Br. 3. Varaprasad discloses propylene
carbonate as a plasticizer, which is a linear carbonate. Ans. 3. Appellants
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argue that Varaprasad teaches a plasticizer mixture that includes "cyanoethyl
sucrose," which is not included within the limits of the claim, and no
teaching in the Varaprasad would make it obvious to exclude the cyanoethyl
sucrose from the claim. App. Br. 12-13. For the reasons discussed above,
cyanoethyl sucrose may be included in the composition of claim 5 as long as
a required plasticizer is present.
As a final point, Appellants state that "[i]n view of the many possible
outcomes available by a combination of the references suggested ... there is
little predictability of success." App. Br. 13. The Examiner counters that
Varaprasad teaches all of the claimed elements in amounts which overlap the
claimed ranges, with the single exception of salt, which is taught by Percec.
Ans. 12-13. The Examiner explains that Percec teaches a similar
composition and teaches salt to increase the conductivity of the polymer and
inhibit crystallization of polyethylene glycol. Id. at 13. The Examiner
reasons, therefore, that the addition of a salt, a known additive for
compositions similar to Varaprasad, would not create an unpredictable
result. Id.
After full consideration of Appellants' arguments and of the evidence
on this record, we are unpersuaded of error in the Examiner's determination
of obviousness. Accordingly, we affirm the Examiner's prior art rejection of
claims 1-12.
DECISION
For the above reasons, the Examiner's rejection of claims 1-12 is
AFFIRMED.
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Application 12/641,474
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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