Ex Parte Southwell et al

Patent Trials and Appeals Board

Jun 21, 2019

13515664 - (D) (P.T.A.B. Jun. 21, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/515,664 06/13/2012
109143 7590
DSM North America Inc.
Patent Department
6480 Dobbin Road
Columbia, MD 21045
06/25/2019
FIRST NAMED INVENTOR
John Edmund Southwell
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.
27578-US-PCT 6726
EXAMINER
ROSWELL, JESSICA MARIE
ART UNIT PAPER NUMBER
1767
NOTIFICATION DATE DELIVERY MODE
06/25/2019 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):
dsmna.ip@dsm.com
dsm_PAIR@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN EDMUND SOUTHWELL, JIGENG XU, KANG TAI REN,
KEN DAKE, and SAM EAST
Appeal2017-008812
Application 13/515,664
Technology Center 1700
Before JEFFREY T. SMITH, RAE LYNN P. GUEST, and
CHRISTOPHER L. OGDEN, Administrative Patent Judges.
OGDEN, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1-18, 21, and 22 in the above-identified
application. We affirm.
1 The appeal record includes the following: Specification, June 13, 2012
("Spec."); Final Office Action, Jan. 14, 2016 ("Final Action"); Appeal Brief,
Dec. 19, 2016 ("Appeal Br."); Examiner's Answer, Apr. 10, 2017
("Answer"), and Reply Brief, May 23, 2017 ("Reply Br.").
2 According to the Appellants, the real party in interest is DSM IP Assets
B.V. Appeal Br. 3.
Appeal2017-008812
Application 13/515,664
BACKGROUND
Appellants' invention relates to a liquid, radiation curable resin for
use in an additive fabrication process. Spec. ,i 1. In particular, the resin
comprises "an R-substituted aromatic thioether triaryl sulfonium
tetrakis(pentafluorophenyl) borate cationic photoinitiator." Id., Abstract.
Independent claim 1, reproduced below, is representative of the
invention:
1. A filled liquid radiation curable resin for additive
fabrication comprising:
(a) an R-substituted aromatic thioether triaryl sulfonium
tetrakis(pentafluorophenyl) borate cationic photoinitiator with a
tetrakis(pentafiuorophenyl)borate anion and a cation of the
followingformula (1):
wherein YI, Y2, and Y3 are the same or different and wherein
YI, Y2, or Y3 are R-substituted aromatic thioether with R being
an acetyl or halogen group; and
(b) from about 10 to about 7 5% by weight, relative to the total
composition, of silica nanoparticles, comprising at least 80
wt% silica.
( c) from about 2 to about 40% by weight, relative to the total
composition, of a radically polymerizable component;
( d) from about 10 to about 80% by weight, relative to the total
composition, of a cationically polymerizable component; and
( e) from about 0.1 to about 10% by weight, relative to the total
composition, of a radical photoinitiator.
2
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Application 13/515,664
Appeal Br. A 1 ( emphasis of key phrases added). Claim 14 is also
independent, and contains similar limitations. See id. at A4. Claims 2-13,
15-18, 21, and 22 depend directly or indirectly from claim 1. See id. at A2-
A6.
The Examiner relies on the following prior art in rejecting the claims
on appeal:
Hayoz et al. (Hayoz) US 2009/0197987 Al Aug. 6, 2009
Xu US 2004/00777 45 A 1 Apr. 22, 2004
Kerr et al. (Kerr) WO 99/35188 July 15, 1999
The Examiner rejects claims 1-13, 15-18, 21, 22 as unpatentable
under 35 U.S.C. § 103(a) over Hayoz in view of Xu. Final Action 2-7.
Because Appellants argue these claims together, we limit our discussion to
claim 1 as it relates to this rejection. See 37 C.F.R. § 41.37(c)(l)(iv).
The Examiner also rejects claim 14 as unpatentable under 35 U.S.C. §
103(a) over Hayoz and Xu, further view of Kerr. Final Action 7-10.
However, Appellants state that the rejection of claim 14 should stand or fall
with arguments made with respect to claim 1. Appeal Br. 31. Therefore, we
address only the first rejection in our decision, and only with respect to claim
1.
DISCUSSION
In this appeal, Appellants make two general arguments: ( 1) that the
Examiner has not shown that it would have been obvious to use silica
nanoparticle in the concentration recited in claim 1, and (2) that the
Examiner has not provided a credible rationale for selecting and using the
structure recited in claim 1 for the cationic photoinitiator. See Appeal Br. 2
3
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Application 13/515,664
(table of contents). For the reasons below, we do not find these arguments
persuasive of reversible error in the Examiner's rejection.
1. The Silica Nanoparticle Filler
According to the Examiner, Hayoz teaches the use of suitable fillers in
the resin. See Final Action 3; see also Hayoz ,-J 219-221. However, the
Examiner notes that Hayoz does not explicitly teach using "from about 10 to
about 75% by weight, relative to the total composition, of silica
nanoparticles, comprising at least 80 wt% silica." Final Action 3. The
Examiner relies on Xu for this teaching. Id. at 3-4. In an analogous
photocurable resin, the Examiner notes that Xu teaches the use of
nanometer-size silica particles as an additive, comprising up to 90% of the
total weight of the composition. Final Action 4 ( citing Xu ,-J 75). The
Examiner also determines that"[ w ]hen employing silica nanoparticles, one
of ordinary skill in the art understands that it contains 100 wt.% silica."
Answer 12. According to the Examiner, a person of ordinary skill in the art
would have had reason to use these particles as an additive in the
composition of Hayoz "in order to achieve [the] desired mechanical
properties ( e.g., strength, ductility, impact resistance), which ultimately
affects the viscosity and thickness ( during application/printing) of the
radiation curable resin." Final Action 4.
Appellants argue that Xu only teaches the use of silica nanoparticles
in an organic-inorganic hybrid filler, and that the Examiner has identified no
reason that such filler particles would have comprised at least 80 wt% silica
as recited in claim 1. Appeal Br. 8-9 ( citing Xu ,-J 75 (stating that additives
may include "metallic-, organic-, inorganic-, or organic-inorganic hybrid
fillers (e.g., silica particles, glass beads, or talc).")). According to
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Application 13/515,664
Appellants, "the presence of the serial (Oxford) comma between 'inorganic-'
and 'or organic-inorganic hybrid fillers' strengthens the presumption that the
silica particles are meant to fairly modify the last delineated item, and only
that listed item." Reply Br. 8.
We disagree with this interpretation. In this passage, the words
"metallic-," "organic-," "inorganic-," and "organic-inorganic hybrid" are
modifiers that most logically modify the word "fillers." In addition, the
parenthesized examples that include "silica particles" immediately follow
the word "fillers." Thus, we agree with the Examiner that a person of
ordinary skill in the art would have understood silica particles to be "a
generic example of the fillers to be used in the invention of XU." Answer
10.
Appellants also argue that silica particles may contain non-silica
byproducts, Appeal Br. 9, and that the Examiner's rejection presents no
credible reason "why the skilled artisan might be motivated to select a filler
consisting only of silica particles," id. at 10; see also Reply Br. 9 (arguing
that Xu certainly teaches that the additives could include a hybrid filler).
Appellants further argue that the Examiner has improperly placed upon them
the burden of proof as to the concentration range of silica particles. Reply
Br. 9-10. 3
We find these arguments unpersuasive of reversible error. The
Examiner has identified within Xu a teaching that "silica" nanoparticles are a
suitable filler material, and the Examiner finds that a skilled artisan would
3 Appellants also argue that the Examiner has not established the recited
silica nanoparticle range through inherency. Reply Br. 11. However, the
Examiner does not rely on an inherency rationale.
5
Appeal2017-008812
Application 13/515,664
have understood this teaching to include pure silica nanoparticles. Answer
12. We find this showing sufficient, by a preponderance of the evidence, to
establish a prima facie case of obviousness. Normally, as is the case here, "it
is to be expected that a change in ... concentration ... would be an
unpatentable modification" unless a particular range "produce[ s] a new and
unexpected result which is different in kind and not merely in degree from
the results of the prior art." In re Aller, 220 F.2d 454, 456 (C.C.P.A. 1955)
(citing In re Dreyfus, 73 F.2d 931, 934 (CCPA 1934)). Appellants have not
pointed to any evidence on this appeal record to rebut the Examiner's initial
showing of obviousness, such as evidence that silica concentration range
recited in claim 1 is critical,4 or that a person of ordinary skill in the art
would have been led away from this range.
2. The Structure of the Photoinitiator
Hayoz discloses "novel sulphonium salt photoinitiators and their use
in photocurable compositions." Hayoz ,-J 1. In the rejection, the Examiner
cites Example 6, which discloses the following structure:
[
l:.r._,c-c·~ 1,) .a. Ii
()
s
4 In the Reply Brief, Appellants, for the first time on the appeal record, refer
to evidence of unexpected results presented in previous responses to non-
final office actions. Reply Br. 15. We do not consider this evidence because
Appellants submitted it late without a showing of good cause. 37 C.F.R.
§ 41.41 (b )(2) ("Any argument raised in the reply brief which was not raised
in the appeal brief ... will not be considered by the Board for purposes of
the present appeal, unless good cause is shown.").
6
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Final Action 3 ( citing Hayoz ,i 283). According to the Examiner, this is the
photoinitiator structure recited in claim 1, except that the anion "PF 6 - is
substituted by (B(C6Fs)4t." Id. The anion B(C6Fs)4- is one of the "non-
nucleophilic anion[ s ]" that Hayoz identifies in a "particular[ly] preferred"
embodiment. See Hayoz ,i 87 (the anion "is halogen or a non-nucleophilic
anion, C.tf21+1S03-, C1-C20-perfluoroalkylsulphonylmethide, (BF4t, (SbF6t,
(AsF6t, (PF6t, (B(C6Fs)4t, and/is an integer from 1 to 8."). According to
the Examiner this is "a rather finite group, ... thus there is reasonable
expectation to try." Answer 1 7.
Appellants acknowledge that "the claimed anion substituent and
cation substituent are each independently derivable somewhere within the
four comers of the HAYOZ document." Appeal Br. 13. However,
Appellants argue that the number of possible choices that Hayoz discloses is
so large that a person of ordinary skill in the art would not have been
motivated to select the particular combination recited in claim 1. See id. In
particular, Appellants argue that Hayoz, as a whole, discloses at least 13,980
possible cations and at least 360 possible anions, totaling more than 5
million choices for both components together. See id. at 17-21, 23-30.5
5 In the Reply Brief, Appellants cite Ex parte Tatarka, Case No. 2014-
007414, 2016 WL 1239173 (PTAB Mar. 28, 2016) as an allegedly analogous
case that warrants a similar result. Reply Br. 12-14. While Tatarka is non-
precedential, it also presents a different factual situation because unlike here,
the prior art in the Tatarka case "d[id] not identify only a finite number of
identified, predictable solutions," and there was a "lack of guidance towards
selecting [the recited structure] over other possibilities in [the reference's]
broad disclosure." Id. at *2 (citing KSR Int'l Co. v. Teleflex Inc., 550 U.S.
398, 421 (2007)).
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Application 13/515,664
These arguments are not persuasive of reversible error. While Hayoz
as a whole discloses a large number of possible combinations of cation and
anion, the reference also guides a person of ordinary skill in the art toward
the specific combination recited in claim 1. In particular, Hayoz discloses,
in Example 6, the specific cation recited in claim 1. See Hayoz ,-J 283. The
breadth of the overall disclosure in Hayoz does not nullify the specific
teaching of Example 6. See Merck & Co. v. Biocraft Labs., Inc., 874 F.2d
804, 807 (Fed. Cir. 1989) ("That the [prior art reference] discloses a
multitude of effective combinations does not render any particular
formulation less obvious.")
Appellants also argue that Hayoz teaches away from the cation in
Example 6. According to Appellants, Example 6 is only one of 25 examples,
and not even a preferred embodiment. Appeal Br. 14-15. Moreover,
Appellants allege that Example 6 exhibits an inferior cure speed to other
examples, leading a person of ordinary skill in the art away from Example 6
and toward other embodiments. Id. at 15-16. According to Appellants, both
Hayoz and Appellants' Specification demonstrate that people of ordinary
skill in the art knew that high cure speed ( or alternatively, reactivity) was
highly desirable in promoting cationic polymerization. Reply Br. 4-5 ( citing
Spec. ,-J,-J 19, 26; Hayoz ,-J,-J 3, 6).
This argument is not persuasive of reversible error. Hayoz teaches
that the cure speed for Example 6 is 170 rn/min, compared to 200 m/min for
some of the other examples. Hayoz ,-J 348. "A reference does not teach
away, however, if it merely expresses a general preference for an alternative
invention but does not 'criticize, discredit, or otherwise discourage'
investigation into the invention claimed." DePuy Spine, Inc. v. Medtronic
8
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Application 13/515,664
Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009) (citing In re
Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004)). Appellants have not pointed
to any teaching in Hayoz that criticizes, discredits, or otherwise discourages
the use of the cation in Example 6. Moreover, Appellants have not presented
evidence on the appeal record that a person of ordinary skill in the art would
have considered a cure rate of 170 m/min to be undesirable, or that this cure
rate would have made it unsuitable for its intended purpose.
With regard to the anion of claim 1, Hayoz discloses a finite list of
particular anions that share the common characteristic of being a "halogen or
a non-nucleophilic anion." Id. ,-i,-i 34 (generically, as anion y- for all
embodiments) and 87 (the same list being applied to an exemplary cation).
Both the PF 6 - anion of Example 6, and the B( C6F s )4 - anion recited in claim
1, are in this short list. 6 Hayoz teaches that the structurally similar anions in
this list are suitable because they share the characteristic of being non-
nucleophilic. Thus, a person of ordinary skill in the art would have regarded
the anions in this list as functionally interchangeable, and would have had a
reasonable expectation of success in substituting one for another. Cf In re
Dillon, 919 F.2d 688 (Fed. Cir. 1990) (en bane) ("Structural similarity
between claimed and prior art subject matter, ... where the prior art gives
6 The Examiner characterizes the list as having seven members, see Final
Action 11, while Appellants argue that the list has 33 distinct species
because two members of the list are genera, see Appeal Br. 22-23.
Regardless of its exact size, the list establishes a known functionality
between its members, and it includes both the specific anions of Appellants'
claim 1 and Example 6 of Hayoz. Thus, the list is small enough that a
skilled artisan would have been specifically aware of both anions, and
motivated to substitute one for the other.
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reason or motivation to make the claimed compositions, creates a prima
facie case of obviousness.")
For the above reasons, Appellants have not shown reversible error in
the Examiner's determination that claim 1 is unpatentable under 35 U.S.C. §
103(a) over Hayoz and Xu. Claims 2-18, 21, and 22 fall with claim 1, for
the same reasons. Therefore, we affirm the Examiner's decision as to all
claims.
DECISION
The Examiner's decision is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended. See 37 C.F.R. §§ l.136(a)(l)(iv), 41.50(±)
(2018).
AFFIRMED
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