Ex Parte Sharygin et al

Patent Trial and Appeal Board

May 23, 2018

12166784 (P.T.A.B. May. 23, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/166,784 07/02/2008 Andrei Sharygin
23413 7590 05/25/2018
CANTOR COLBURN LLP
20 Church Street
22nd Floor
Hartford, CT 06103
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.
08SFS0002-US-NP 4240
EXAMINER
FREEMAN, JOHN D
ART UNIT PAPER NUMBER
1787
NOTIFICATION DATE DELIVERY MODE
05/25/2018 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):
usptopatentmail@cantorcolbum.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANDREI SHARYGIN, DAVID CLINNIN,
KWAN HONGLADAROM, JAMUNA CHAKRA VARTI,
KESHA V GAUTUM, and MICHAEL MATTHEW LAURIN
Appeal 2016-002978
Application 12/166,784
Technology Center 1700
Before CATHERINE Q. TIMM, N. WHITNEY WILSON, and
WESLEY B. DERRICK, Administrative Patent Judges.
WILSON, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's March
27, 2015 decision finally rejecting claims 1, 3, 6-13, 15, 16, 20, and 22-26
("Final Act."). We have jurisdiction over the appeal under 35 U.S.C. § 6(b ).
We affirm.
1 Appellants identify the real party in interest as SABIC Innovative Plastics IP B.V.
(Br. 2).
Appeal 2016-002978
Application 12/166,784
CLAIMED SUBJECT MATTER
Appellants' invention is directed to a coated thermoplastic film which is
said to be useful for, inter alia, cell phones, electronic devices, automotive
vehicles, display panels, and lenses (Abstract). Details of the claimed invention
may be found in independent claims 1, 15, 23, and 26. Claim 1, relevant to
contested issues, is reproduced below from the Claims Appendix:
1. A coated thermoplastic film comprising:
a polymeric film substrate; and
a cured coating formed from a coating composition that
compnses
a urethane acrylate having a functionality of 3. 0 acrylate
functional groups, wherein the urethane acrylate has a glass
transition temperature of about l 4°C; and
an acrylate monomer having at least one acrylate functional
group;
wherein the coating composition is cured to form the cured
coating; and
wherein the coated thermoplastic film, comprising the cured
coating, can pass a Mandrel Bend Test in accordance with ASTM
D3363-05 to a mandrel size of 3.2 mm without cracking.
REJECTIONS 2
I. Claims 1, 3, 6-11, 13, 20, and 22-26 are rejected under
35 U.S.C. § 103(a) as unpatentable over Isogai3 in view of Photomer products
for UV/EB curing brochure (2003 Cognis Corporation).
2 The provisional obviousness-type double patenting rejections set forth in
the Final Action and argued in the Appeal Brief are moot, as the applications
over which the claims were rejected have been abandoned.
3 Isogai et al., US 2001/0008691 Al, published July 19, 2001.
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Application 12/166,784
II. Claims 12 and 15 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Isogai in view of Photomer products, and further in view of
Boven4 and Wisnudel. 5
III. Claim 16 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Isogai in view of Photomer products, and further in view of Laurin. 6
IV. Claims 1, 3, 6-11, 13, 20, and 22-26 are rejected under
35 U.S.C. § 103(a) as unpatentable over Isogai in view ofltoh7 and Photomer
products.
V. Claims 12 and 15 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Isogai in view of Itoh and Photomer products, and further in
view of Boven and Wisnudel.
VI. Claim 16 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Isogai in view of Itoh and Photomer products, and further in view of
Laurin.
VII. Claims 1, 3, 6-11, 13, 20, and 22-26 are rejected under
35 U.S.C. § 103(a) as unpatentable over Ortmeier8 in view of Photomer
products and Kerr. 9
VIII. Claims 12 and 15 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Ortmeier in view of Kerr and Photomer products, and
further in view of Boven and Wisnudel.
4 Boven et al., US 2007/0009741 Al, published January 11, 2007.
5 Wisnudel et al., US 6,537,636 Bl, issued March 25, 2003.
6 Laurin et al., US 6,117,384, issued September 12, 2000.
7 Itoh et al., US 7,037,952 B2, issued May 2, 2006.
8 Ortmeier et al., WO 2005/099943 A2, published October 27, 2005. Ortmeier
is in German. Like the Examiner and Appellants, we will refer to the U.S.
counterpart: Ortmeier et al., US 8,053,065 B2, issued November 8, 2011.
9 Kerr, III et al., US 4,929,506, issued May 29, 1990.
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Application 12/166,784
IX. Claim 16 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Ortmeier in view of Kerr and Photomer products, and further in view of
Laurin.
DISCUSSION
Rejections I, II, and III. The Examiner finds that Isogai discloses
each of the limitations of claims 1 and 26, except that Isogai does not
specifically disclose a urethane acrylate with a glass transition temperature
with glass temperature of either about 14 °C (claim 1) or from 10 to 14 °C
(claim 26) (Final Act. 7). The Examiner further finds that urethane acrylates
with those properties are taught by the Photomer products reference, in
particular Photomer 6892, and that a person of skill in the art would have
used the Photomer 6892 in Isogai for its adhesion, chemical resistance, and
flexibility properties (Final Act. 7-8). With regards the limitations
regarding the properties of the claimed film, including as to independent
claim 23, the Examiner states that "[g]iven that the cured coating is
otherwise the same as presently claimed, the Examiner submits it
intrinsically has the same properties as presently claimed" (Final Act. 8).
Appellants argue that their invention is concerned with coated
thermoplastic films that are resistant to scratches, abrasion, and chemical
attacks and that are still soft enough to be thermoformed after being cured,
which is said to address concerns raised by prior art products (Appeal Br. 9-
10). Appellants point to data in the Specification as supporting their
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Application 12/166,784
argmnent 10, and contend that there was no reason for a person of skill in the
art to have combined Isogai with Photomer 6892 (Appeal Br. 10).
However, the Examiner has specifically explained why a person of
ordinary skill in the art would have selected Photomer 6892 as the urethane
triacrylate to combine with Isogai' s composition, namely that it has the
properties of flexibility, adhesion, and chemical resistance (Final Act. 8). 11
That other Photomer products might have overlapping properties (Reply Br.
7), does not negate the reasons why a person of ordinary skill in the art
would have selected Photomer 6892, as articulated by the Examiner (Final
Act. 8).
Appellants also explain the advantages of the claimed film (Appeal
Br. 9--10). However, these explanations do not negate the findings
underlying the Examiner's determination of obviousness.
Appellants further argue that the products disclosed in Photomer do
not inherently have the claimed properties because there are many different
products, each having different properties (Appeal Br. 11-14). This
argument is misplaced, however, because the Examiner specifically finds
that it would have been obvious to combine the teachings of Isogai with
Photomer by using a particular product, Photomer 6982 (Final Act. 7-8).
Appellants do not dispute that Photomer 6982 has the claimed properties.
Therefore, if a person of skill in the art would have combined Photomer
10 Appellants specifically state that the results set forth in Table 3 of the
Specification "are clearly surprising and could not have been anticipated
over Isogai in view of the Photomer brochure" (Appeal Br. 10).
11 Appellants also argue that Isogai directs a person of skill in the art to use
urethane acrylates having a functionality of 6 (Appeal Br. 9--10). However,
as found by the Examiner, Isogai suggests that the urethane acrylate should
have three or more functional groups (Ans. 20, citing Isogai i-f 38).
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6982 with Isogai, it would have had the claimed properties. Accordingly,
Appellants' arguments based on a lack of inherency are not persuasive of
reversible error.
Appellants argue that the surprising results discussed in the
Specification (namely at Table 3) are sufficient to overcome the prima facie
case of obviousness (Appeal Br. 10-11 ). However, as correctly found by the
Examiner (Final Act. 20), the examples relied upon by Appellants are not
commensurate in scope with the claims.
Appellants have the burden of showing unexpected results. In re
Freeman, 474 F.2d 1318, 1324 (CCPA 1973); In re Klosak, 455 F.2d 1077,
1080 (CCP A 1972). The burden requires Appellants to proffer factual
evidence that actually shows unexpected results relative to the closest prior
art, see In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991), and
that is reasonably commensurate in scope with the protection sought, In re
Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983); In re Clemens, 622 F.2d
1029, 1035 (CCPA 1980); In re Hyson, 453 F.2d 764, 786 (CCPA
1972). The extent of the showing relied upon by Appellants must
reasonably support the entire scope of the claims at issue. See In re Harris,
409 F.3d 1339, 1344 (Fed. Cir. 2005).
In this instance, claim 1 covers a wide range of polymeric film
substrates, and urethane acrylates, and acrylate monomers used in the
coating composition (see, e.g., Spec. i-fi-122-30, 42). However, the showing
proffered by Appellants is limited to examples which comprise a single
oligomer (Photomer 6892 12) and a single acrylate monomer for use in the
coating composition, and a single substrate (see Spec. i-fi-194--95, Table 3).
12 Photomer 6892 is the oligomer relied on by the Examiner in the rejection.
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Even if the results were credited as showing surprising results they would
not be commensurate in scope with the claims. Appellants argue that
additional limitations relating to the components (i.e. glass transition
temperatures, viscosities, etc.) sufficiently limit the scope of the claims so as
to make the showing commensurate with the claims. However, Appellants
have not provided evidence to support their assertion that the additional
limitations they discuss at page 7 of the Reply Brief would limit the claims
to the specific selections set forth in their showing. See generally Appeal
Br., Reply Br. Accordingly, we agree with the Examiner that the results
relied on by Appellants are not sufficient, in light of the Examiner's findings
underlying the prima facie case of obviousness, to demonstrate error in the
rejection.
Appellants make essentially the same arguments in connection with
Rejections II and III as with Rejection I. They are not persuasive for the
same reasons as set forth above.
Rejections IV, V, and VI.
Appellants make the same general arguments in connection with these
rejections as they do in connection with Rejections I, II, and III. Compare
Appeal Br. 18-28, with Reply Br. 7-17. The arguments are unpersuasive for
the same reasons. In addition, Appellants argue that a person of ordinary
skill in the art would not have combined Isogai with Itoh because Isogai
requires a urethane acrylate with 3 or more functional groups, while Itoh
"discloses that the number of functional groups in [its] reactive oligomer is
preferably small and especially two" (Appeal Br. 19). This argument is also
unpersuasive. As noted by the Examiner (Ans. 29-30), Itoh's disclosure is
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Application 12/166,784
not limited to oligomers with no more than 2 functional groups, but instead
includes oligomers with functionalities of 2---6 (Itoh, 4:45-51 ). That Itoh
expresses a preference for an oligomer with a functionality of 2 does not
exclude these other oligomers from its disclosure. Accordingly, Appellants
have not persuasively shown reversible error in Rejections IV, V, and VI.
Rejections VII, VIII, and IX.
Appellants make essentially the same arguments - notwithstanding
the reliance on Ortmeier in view of Photomer products and Kerr rather than
on Isogai in view of Photomer products- in connection with Rejections VII,
VIII, and IX as they do with respect to Rejections I, II, and III. Compare
Appeal Br. 28-36, with Reply Br. 7-17. They are not persuasive for the
same reasons as set forth above.
CONCLUSION
We AFFIRM the rejection of claims 1, 3, 6-11, 13, 20, and 22-26 under
35 U.S.C. § 103(a) as unpatentable over Isogai in view of Photomer products.
We AFFIRM the rejection of claims 12 and 15 under 35 U.S.C. § 103(a)
as unpatentable over Isogai in view of Photomer products, and further in view
of Boven and Wisnudel.
We AFFIRM the rejection of claim 16 under 35 U.S.C. § 103(a) as
unpatentable over Isogai in view of Photomer products, and further in view of
Laurin.
We AFFIRM the rejection of claims 1, 3, 6-11, 13, 20, and 22-26 under
35 U.S.C. § 103(a) as unpatentable over Isogai in view of Itoh and Photomer
products.
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We AFFIRM the rejection of claims 12 and 15 under 35 U.S.C. § 103(a)
as unpatentable over Isogai in view of Itoh and Photomer products, and further
in view of Boven and Wisnudel.
We AFFIRM the rejection of claim 16 under 35 U.S.C. § 103(a) as
unpatentable over Isogai in view of Itoh and Photomer products, and further
in view of Laurin.
We AFFIRM the rejection of claims 1, 3, 6-11, 13, 20, and 22-26 are
rejected under 35 U.S.C. § 103(a) as unpatentable over Ortmeier in view of
Photomer products and Kerr.
We AFFIRM the rejection of claims 12 and 15 under
35 U.S.C. § 103(a) as unpatentable over Ortmeier in view of Kerr and
Photomer products, and further in view of Boven and Wisnudel.
We AFFIRM the rejection of claim 16 under 35 U.S.C. § 103(a) as
unpatentable over Ortmeier in view of Kerr and Photomer products, and
further in view of Laurin.
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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