Ex Parte TEMPLEMAN

Patent Trial and Appeal Board

Sep 13, 2016

13310267 (P.T.A.B. Sep. 13, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/310,267 12/02/2011 Cynthia G. TEMPLEMAN
22850 7590 09/15/2016
OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P.
1940 DUKE STREET
ALEXANDRIA, VA 22314
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.
385209US71 1025
EXAMINER
DAGENAIS, KRISTEN A
ART UNIT PAPER NUMBER
1717
NOTIFICATION DATE DELIVERY MODE
09/15/2016 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):
patentdocket@oblon.com
oblonpat@oblon.com
ahudgens@oblon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CYNTHIA G. TEMPLEMAN
Appeal2015-003524
Application 13/310,267
Technology Center 1700
Before JEFFREY T. SMITH, KAREN M. HASTINGS, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.
SMITH, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134 from a final rejection of
claims 1-19. We have jurisdiction under 35 U.S.C. § 6.
We REVERSE.
Appellant's appealed invention is illustrated by independent claim 1,
reproduced below:
Appeal2015-003524
Application 13/310,267
1. A method of forming a coating on a substrate,
compnsmg:
applying at least one layer of a monomer composition to
at least one surface of the substrate to form a coated substrate
having a monomer layer, wherein the monomer composition
comprises (i) at least one monomer capable of cationic
polymerization, (ii) at least one photoinitiator capable of
initiating cationic polymerization, and (iii) at least one photo-
generated base precursor;
exposing the monomer layer on the coated substrate to a
first wavelength of light to initiate a cationic polymerization of
the monomer; then
exposing the monomer layer to a second wavelength of
light to form a photogenerated base from the photo-generated
base precursor, wherein the photo-generated base comprises at
least one anionic group, to terminate the cationic
polymerization and form the coating on the substrate, wherein
the coating comprises a polymer of polymerized units of the
monomer.
Appellant (App. Br. 5---6) requests review of the following rejections
from the Examiner's Final Office Action:
I. Claims 1-3, 5-7, 11-16, and 19 rejected as unpatentable under
35 U.S.C. § 103(a) over Kropp et al. (US 2005/0113474 Al, published May
26, 2005) ("Kropp") and Katoh et al. (US 2007 /0264440 Al, published
November 15, 2007) ("Katoh").
II. Claim 4 rejected as unpatentable under 35 U.S.C. § 103(a) over
Kropp, Katoh, and Dershem et al. (US 2010/0041845 Al, published
February 18, 2010) ("Dershem").
III. Claims 8 and 17 rejected as unpatentable under 35 U.S.C. §
103(a) over Kropp, Katoh, and Tazzia (US 6,538,094 B2, issued March 25,
2003).
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Application 13/310,267
IV. Claims 9 and 10 rejected as unpatentable under 35 U.S.C.
§ 103(a) over Kropp, Katoh, and Watt (US 4,105,806, issued August 8,
1978).
V. Claim 18 rejected as unpatentable under 35 U.S.C. § 103(a)
over Kropp, Katoh, Tazzia, and Chretien et al. (US 2012/0282448 Al,
published November 8, 2012) ("Chretien"). 1
OPINION
We REVERSE.
Rejection 12
After review of the respective positions provided by Appellant and the
Examiner, we REVERSE the Examiner's prior art rejection of claims 1-3,
5-7, 11-16, and 19 for the reasons presented by Appellant. We add the
following.
Independent claim l is directed to a method of forming a coating from
at least one layer of a monomer composition comprising at least one
monomer capable of cationic polymerization, at least one photoinitiator
capable of initiating cationic polymerization, and at least one photo-
generated base precursor comprising at least one anionic group, where a first
wavelength of light initiates a cationic polymerization of the monomer and a
second wavelength of light forms a photo generated base from the photo-
1 This rejection has been modified to clarify that it is directed to claim 18
and not claims 9 and 10, consistent with the Examiner's discussion of the
rejection. App. Br. 6 (footnote 1); Final Act. 8-9.
2 We limit our discussion to independent claim 1.
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Appeal2015-003524
Application 13/310,267
generated base precursor to terminate the cationic polymerization and form
the coating.
The Examiner found Kropp teaches a method of forming a coating on
a substrate by applying a cationically curable composition comprising at
least one monomer capable of cationic polymerization, (ii) at least one
photoinitiator capable of initiating cationic polymerization, and (iii) at least
one base precursor that can be activated to neutralize any acidic species
produced during the curing reaction to terminate the cationic polymerization.
Final Act 2; Kropp i-fi-f 15, 75. The Examiner found Kropp does not teach the
base as being photogenerated from a base precursor. Final Act. 3. The
Examiner found Katoh teaches forming a photogenerated coating to reduce
the time of coating film curing process and the amount of thermal energy
necessary by using an active ray-curable coating composition. Final Act. 3;
Katoh i-fi-12, 5. The Examiner determined it would have been obvious to one
of ordinary skill in the art to replace the heat-activated base polymer of
Kropp with a photo-generated base for the benefits disclosed by Katoh.
Final Act. 3.
Appellant argues Katoh's photo-generated base functions to accelerate
polymerization of a material, which is opposite to the function of Kropp's
polymer-bound base of terminating a cationic polymerization. App. Br. 7-8;
Kropp i-fi-f 15, 58, 59; Katoh i142. Thus, Appellant argues one skilled in the
art would not have used the photo-generated base described in Katoh in the
process of Kropp. App. Br. 8-9.
We agree with Appellant that the Examiner has not established a
prima facie case of obviousness. As noted by Appellant, the functionalities
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Appeal2015-003524
Application 13/310,267
of the respective materials of Kropp (polymerization termination) and Katoh
(polymerization acceleration) are different. App. Br. 8; Kropp i-f 15; Katoh
i-f 42. Moreover, the Examiner has not equated the base material of Kropp
with the base material of Katoh or otherwise established that Kropp' s base
material is substitutable with the base material disclosed by Katoh. Kropp
i-fi-152-57; Katoh i-fi-127--43. That is, the Examiner directs us to no portion of
Katoh that would have led one skilled in the art to adapt the base material of
Katoh for use in the method of Kropp. The Examiner has not presented an
adequate technical explanation to support the determination that one skilled
in the art would expect Katoh's base material to function in a manner that
would terminate the cationic polymerization of Kropp.
Under these circumstances, we cannot conclude that the Examiner has
met the minimum threshold of establishing obviousness under 35 U.S.C.
§ 103(a). See In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992); KSR Int'!
Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (quoting In re Kahn, 441 F.3d
977, 988 (Fed. Cir. 2006)).
Accordingly, we reverse the Examiner's prior art rejection under
35 U.S.C. § 103(a) for the reasons presented by Appellant and given above.
Rejections II-V
The Examiner's prior art rejections of claims 4, 8-10, 17, and 18
under 35 U.S.C. § 103(a) (Rejections II-V) are premised on the teachings of
Kropp and Katoh rendering the method of forming a coating on a substrate
of the subject matter of independent claim 1 obvious to one skilled in the art.
Final Act. 5-9. As discussed above, such is not the case. The Examiner did
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Appeal2015-003524
Application 13/310,267
not rely on the additionally cited secondary reference to overcome the
previously noted deficiencies of Kropp and Katoh. Id.
Accordingly, we also reverse the Examiner's prior art rejections of
claims 4, 8-10, 17, and 18 for the reasons presented by Appellant and given
above.
ORDER
The Examiner's prior art rejections under 35 U.S.C. § 103(a) are
reversed.
REVERSED
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