Ex Parte Wu et al

Patent Trial and Appeal Board

May 31, 2018

14825175 (P.T.A.B. May. 31, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/825,175 08/13/2015
31561
JCIPRNET
7590
P.O. Box 600 Taipei Guting
Taipei City, 10099
TAIWAN
06/04/2018
FIRST NAMED INVENTOR
Ming-Ju Wu
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.
46455-US-P A-OP 4085
EXAMINER
LEE, SINJ
ART UNIT PAPER NUMBER
1722
NOTIFICATION DATE DELIVERY MODE
06/04/2018 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):
USA@JCIPGROUP.COM
Belinda@JCIPGROUP.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL
AND APPEAL BOARD
Ex parte MING-JU WU and CHUN-AN SHIH 1
(Applicant: Chi Mei Corporation)
Appeal2017---007543
Application 14/825, 17 5
Technology Center 1700
Before ADRIENE LEPIANE HANLON, BEYERL YA. FRANKLIN, and
MICHAEL G. McMANUS, Administrative Patent Judges.
FRANKLIN, Administrative Patent Judge.
DECISION ON APPEAL
1 Appellants identify the real parties in interest as themselves, Ming-Ju Wu,
Chun-An Shih, and Chi Mei Corporation.
Appeal2017-007543
Application 14/825, 17 5
Appellants request our review under 35 U.S.C. § 134(a) of the
Examiner's decision rejecting claims 1-13. We have jurisdiction over the
appeal under 35 U.S.C. § 6(b ).
STATEMENT OF THE CASE
Claim 1 is illustrative of Appellants' subject matter on appeal and is
set forth below (with text in bold for emphasis):
1. A photosensitive polysiloxane composition, comprising:
a nitrogen-containing heterocyclic compound (A),
a polysiloxane (B),
an o-naphthoquinone diazide sulfonate (C), and
a solvent (D), wherein the nitrogen-containing heterocyclic compound (A) is
selected from the group consisting of compounds represented by formulas
(1) to (4):
ox1
3 Ry
N~
ox2
formula (1)
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Application 14/825, 17 5
formula (2)
formula (3)
formula (4),
wherein in the formulas (1) to (4), X 1 and x2 each
independently represents hydrogen, an acyl or an alkyl group; R 1 to
R9 each independently represents hydrogen, a hydroxyl group, a
carboxyl group, a sulfo group, an alkyl group, an amino group,
halogen or a mercapto group; m, n, q ands each independently
represents an integer selected from 0, 1, 2 and 3; p and r each
independently represents an integer selected from 0, 1 and 2; t and u
each independently represents an integer selected from 0, 1, 2, 3 and
4·
' the polysiloxane (B) is a copolymer formed by
polycondensation of a mixture comprising a silane monomer (b-
l) represented by formula (5), a silane monomer (b-2)
represented by formula (7), and a silane monomer (b-3)
represented by formula (8):
formula ( 5),
wherein, in the formula (5), R 10 represents hydrogen, an
alkyl group of 1-10 carbon atoms, an alkenyl group of 2-10
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Application 14/825, 17 5
carbon atoms, an aryl group of 6-15 carbon atoms, an alkyl group
containing an acid anhydride group, an alkyl group containing an
epoxy group, an alkoxy group containing an epoxy group, and R 10
comprises at least one alkyl group containing an acid anhydride
group, and for more than one R 10, R 10 are the same or different;
R 11 represents hydrogen, an alkyl group of 1-6 carbon atoms, an
acyl group of 1-6 carbon atoms, an ary 1 group of 6-15 carbon
atoms, and for more than one R 11 R 11 are the same or different; w
represents an integer selected from 1, 2 and 3;
Si(R70)v(OR71 h-v formula (7),
wherein, in the formula (7), R 70 represents hydrogen, an alkyl
group of 1-10 carbon atoms, an alkenyl group of 2-10 carbon
atoms, an aryl group of 6-15 carbon atoms, an alkyl group
containing an acid anhydride group, an alkyl group containing
an epoxy group, an alkoxy group containing an epoxy group,
and R 71 comprises at least one alkyl group containing an
epoxy group or an alkoxy group containing an epoxy group, and
for more than one R 70, R 70 are the same or different; R 71
represents hydrogen, an alkyl group of 1-6 carbon atoms, an acyl
group of 1-6 carbon atoms, an aryl group of 6-15 carbon atoms,
and for more than one R 71, R 71 are the same or different; v
represents an integer selected from 1, 2 and 3; and
Si(R 80)t(OR 81 )4-f formula (8),
wherein, in the formula (8), R 80 represents hydrogen, an alkyl
group of 1-10 carbon atoms, an alkenyl group of 2-10 carbon
atoms, an aryl group of 6-15 carbon atoms; a plurality of R 80
may be the same or different; R 81 represents hydrogen, an alkyl
group of 1-6 carbon atoms, an acyl group of 1-6 carbon atoms,
an aryl group of 6-15 carbon atoms, and for more than one R 81,
R 81 are the same or different; f represents an integer selected
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Application 14/825, 17 5
from 0, 1, 2 and 3, and wherein based on 1 mole of the total
silane monomers in the mixture, a content of the silane monomer
(b-2) is 0.01 moles to 0.40 moles.
The Examiner relies on the following prior art references as evidence
of unpatentability:
Fujiwara US 2012/0237873 Al
(hereafter "Fujiwara '873)
Fujiwara2 US 2014/0242787 Al
(hereafter "Fujiwara '787)
Katsumata JP-11223937A
THE REJECTION
Sept. 20, 2012
Aug. 28, 2014
Aug. 17, 1999
Claims 1-13 are rejected under§ 103 as being unpatentable over
Fujiwara '787 in view of Fujiwara '873 and further in view ofKatsumata3 •
ANALYSIS
To the extent that Appellants have presented substantive arguments
for the separate patentability of any individual claims on appeal, we will
address them separately consistent with 37 C.F.R. § 4I.37(c)(l)(vii).
Upon consideration of the evidence on this record and each of the
respective positions set forth in the record, we find that the preponderance of
evidence on this record supports the Examiner's findings and conclusion that
2 The Examiner uses this Fujiwara '787 as the English equivalent of
Fujiwara, WO 2013/099785 Al (published July 4, 2013).
3 The Examiner uses the DERWENT English abstract and a machine-
assisted English translation of this reference provided by JPO.
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the subject matter of Appellants' claims is unpatentable over the applied art.
Accordingly, we sustain each of the Examiner's rejections on appeal
essentially for the reasons set forth in the Final Office Action and in the
Answer. We add the following for emphasis.
We refer to the Examiner's stated position as set forth on pages 2-5 of
the Answer. Therein, the Examiner finds that in Example 3 (found in Table
3 of Fujiwara '787), Fujiwara '787 teaches a composition containing (i)
Polysiloxane A-3 made in Synthesis Example 3, (ii) a naphthoquinone
diazide sulfonate compound, and (iii) a solvent. Ans. 2.
The Examiner finds that Fujiwara '787's Polysiloxane A-3 is formed
by reacting 16.4 mol% of methyltrimethoxysilane, 82 mol%
of phenyltrimethoxysilane, and 1.6 mol% of 3-trimethoxysilylpropylsuccinic
anhydride. Fujiwara '787, ,r [0213]. Ans. 2. The Examiner finds that the
phenyltrimethoxysilane meets instant formula (8), and the 3-
trimethoxysilylpropylsuccinic anhydride meets instant formula (5).
The Examiner states that the methyltrimethoxysilane does not meet instant
formula (7). Id.
The Examiner states that, as evidenced by Fujiwara'873
(i-f [0041 ]), methyltrimethoxysilane and 3-glycidoxypropyltrimethoxysilane
are known in the art as equivalent ( or interchangeable) trifunctional silanes
that are preferably used for producing polysiloxane which provides crack
resistance and hardness of a cured film. Ans. 2-3.
The Examiner notes that Fujiwara '787 (the primary reference)
already includes both methyltrimethoxysilane and 3-
glycidoxypropyltrimethoxysilane among examples of trifunctional silanes
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Application 14/825, 17 5
that meet its organosilane of general formula (1) (Fujiwara '787, ,r,r [0043]
and [0036}-[0037]). Ans. 3.
The Examiner concludes that it would have been obvious to have
replaced 16.4 mol% of methyltrimethoxysilane with 16.4 mol% 3-
glycidoxypropyltrimethoxysilane in synthesizing the Polysiloxane A-3 of
Fujiwara'787 with a reasonable expectation of obtaining a polysiloxane
which provides crack resistance and hardness of a cured film. The Examiner
states that thus the combination of Fujiwara'787 in view of Fujiwara'873
renders obvious Appellants' claimed polysiloxane (B). Ans. 3.
The Examiner states that Fujiwara'787 in view of Fujiwara'873 do not
teach instant nitrogen-containing heterocyclic compound (A). Ans. 3. The
Examiner relies upon Katsumata for teaching this aspect of the claimed
subject matter, and we refer to the Examiner's findings and conclusions in
this regard on pages 3--4 of the Answer.
Turning now to the Appeal Brief, Appellants focus on the
combination of Fujiwara'787 in view of Fujiwara'873, and state that these
references only teach that substituting 3-glycidoxypropyltrimethoxysilane
for methyltrimethoxysilane is probably workable when the polysiloxane
composition does not at the same time contain an acid anhydride group
containing silane monomer. Appeal Br. 7. Appellants state that nothing is
mentioned in these references when the polysiloxane composition also
contains an acid anhydride group containing silane monomer. 4 Id.
Appellants submit that therefore a skilled artisan would really have no idea
4 However, Appellants do acknowledge that Fujiwara '787 teaches a
polysiloxane composition with acid anhydride group containing silane
monomer. Appeal Br. 7.
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Application 14/825, 17 5
about the outcome of substituting 3-glycidoxypropyltrimethoxysilane for
methyltrimethoxysilane, under the circumstance that the polysiloxane
composition also contains an acid anhydride group containing silane
monomer. Id.
We are unpersuaded by Appellants' aforementioned argument for the
reasons stated by the Examiner on pages 6-9 of the Answer. Therein, the
Examiner reiterates the aforementioned findings regarding the teachings of
Fujiwara'787 in view of Fujiwara'873. Ans. 6. The Examiner reiterates that
since both Fujiwara'873 and Fujiwara'787 teach the interchangeability of
methyltrimethoxysilane and 3-glycidoxypropoyltrimethoxysilane, and since
the combination of methyltrimethoxysilane and 3-
trimethoxysilylpropylsuccinic anhydride worked in Synthesis Example 3 of
Fujiwara '787, one skilled in the art would have a reasonable expectation
that the combination of 3-glycidoxypropyltrimethoxysilane and 3-
trimethoxysilylpropylsuccinic anhydride would also work. Ans. 6-7. We
agree. While Appellants argue that nothing is mentioned in these references
when the polysiloxane composition also contains an acid anhydride group
containing silane monomer, absent supporting evidence that the combination
would not have been expected to work, Appellants' assertion amounts to a
mere conclusory statement that is entitled to little, if any, probative weight.
See, e.g., In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997). We also refer
to footnote 4, supra, in this regard.
Appellants also argue that that the claimed invention identifies a
previously unknown problem related to the properties of the polysiloxane
composition, and, therefore, the claimed specific combination ( acid
anhydride group containing silane monomer (formula (5)) + epoxy group
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containing silane monomer (formula (7))), by solving this
problem, contributes to the non-obviousness of the claimed invention.
Appeal Br. 3.
We recognize that "a patentable invention may lie in the discovery of
the source of a problem." In re Sponnoble, 405 F.2d 578, 585 (CCPA 1969).
The Appellants, however, do not identify the problem or provide any
evidence of the existence of a problem that the claimed composition is said
to have solved. Geisler, 116 F.3d at 1470; see also In re Schulze, 346 F.2d
600, 602 ( CCP A 1965) ("Argument in the brief does not take the place of
evidence in the record.").
Next, Appellants argue unexpected superior results ( with respect to
adhesion/ taper angle) of using a polysiloxane composition having the
specific combination of an "acid anhydride group-containing silane
monomer (instant formula ( 5)) + epoxy group-containing silane monomer
(instant formula (7)) by pointing to the comparative data presented in their
Specification (i.e., Examples 1-16 using polysiloxanes B 1-B 14
vs. Comparative Examples 2 and 4 using polysiloxanes B 15 and B 17,
respectively). 5 Appeal Br. 7-8. Spec. Table 3, pp. 48--49. Appellants argue
5 It is noted that while Appellants argue unexpectedly superior results, the
evaluation results as described on pages 46--47 of the Specification describes
the results as an "increase" in adhesion and as "better" adhesion. No
mention of unexpectedly superior results is set forth therein. We note that to
show unexpected results, Appellants must establish: "(1) that there actually
is a difference between the results obtained through the claimed invention
and those of the prior art, ... and (2) that the difference actually obtained
would not have been expected by one skilled in the art at the time of
invention") (citation omitted) In re Freeman, 474 F.2d 1318, 1324 (CCPA
1973). See also In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972) ("the
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that due to the crosslinking reaction of the epoxy group of the silane
monomer of instant formula ( 5) and the acid anhydride group of the silane
monomer of instant formula (7) to form a bond, using the
claimed polysiloxane (B) having the combination of both of these silane
monomers gives a patterned film having an excellent taper angle, which is
an unexpected and beneficial result. Appeal Br. 5---6.
At the outset, we note that Appellants have failed to show that any
improvement in properties exhibited by the claimed composition would have
been unexpected by one of ordinary skill in the art. Freeman, 4 7 4 F .2d at
1324. Moreover, as pointed out by the Examiner on pages 7-8 of the
Answer, the comparative data presented in Table 3 is unpersuasive regarding
a showing of unexpected superior results. The Examiner states that the
comparison is not an effective comparison between the closet prior art. 6 Ans.
7-9. Appellants have not explained why the comparative examples from the
Specification, in contrast to the invention disclosed in Fujiwara '787, are the
closest prior art. We note that the burden rests with Appellants to establish,
inter alia, that the comparisons are to the disclosure of the closest prior art.
See In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972).
Furthermore, the Examiner explains that the comparison made with
Comparative Example 2 ( assuming we accept that this example sufficiently
compares with Example 3 of Fujiwara '787) is not convincing because the
burden of showing unexpected results rests on he who asserts them"). The
mere assertion of surprise is not sufficient. In re Geisler, 116 F.3d 1465,
14 71 (Fed. Cir. 1997) ( attorney argument cannot take the place of evidence).
6 The Examiner states that Appellants' Comparative Example 2 of Table 3
is closest to Example 3 of Fujiwara '787. Ans. 8.
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only difference between the compositions should be use of MTMS versus
use of GMATES. Ans. 8. We agree and note that with regard to side-by-side
comparisons, the court stated in In re Dunn, 349 F.2d 433, 439 (CCPA
1965) "[t]he cause and effect sought to be proven is lost here in the welter of
unfixed variables." Also, to overcome a primafacie case of obviousness,
the showing of unexpected results must be linked within a reasonable
certainty to the feature that distinguished the claimed invention from the
prior art. See Wm. Wrigley Jr. Co. v. Cadbury Adams USA LLC, 683 F .3d
1356, 1363 (Fed. Cir. 2012) (holding that the referenced studies do not
establish an unexpected cooling effect for the claimed combination because
the tested products "differed from the [prior art products] in a number of
other ways").
Appellants reply in their Reply Brief, and refer to their Example 14
(which applies polysiloxane B14) and Comparative Example 2 (which
applies polysiloxane B 15) of their Specification. Reply Br. 1-2.
Appellants submit that as shown in Table 1, the components of B 14
and B 15 are mostly the same. Appellants state that the difference is that B 14
includes 0.45 mole% 2-(3,4-epoxycyclohexyl)ethyltrimethoxysilane
(ECETES), which, like the GMATES, belongs to the silane monomer of
formula (7); whereas B15 replaces this 0.45 mole% formula (7) with an
additional 0.45 mole% MTMS, which belongs to the silane monomer of
formula (8). In other words, Appellants state that B14 includes a 0.45
mole% formula (7) and a 0.50 mole% formula (8); whereas B-15 includes no
formula (7) but 0.95 mole% formula (8). Reply Br. 1-2.
Appellants argue that in the Examiner's Answer, the Examiner states
that MTMS and GMATES are interchangeable monomers, and, therefore,
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Application 14/825, 17 5
the result would be expected. Reply Br. 2. Appellants argue that if this
is the case, then one would expect substituting MTMS for ECETES ( a
monomer belonging to the same group as GMATES) would yield similar
results. Appellants state, however, that as shown in their Tables 1 and 3,
Example 14 ( with B 14 added) produces much better properties than
the Comparative Example 2 (with B 15 added). Appellants submit that this
shows that combining formula ( 5) with formula (7) could further enhance
the overall properties of the composition, whereas replacing formula (7) with
formula (8) would not, and therefore, the Examiner's position that MTMS
and GMATES are interchangeable is unsupported. Reply Br. 2.
However, the comparison made by Appellants as discussed in their
Reply Brief is similarly unconvincing of unexpected results ( as mentioned
supra with regard to the other comparison discussed by Appellants in their
Appeal Brief) because of the unfixed variables that exist in the comparison
made. In re Dunn, at 439.
In view of the above, we therefore affirm the rejection.
DECISION
The rejection is affirmed.
TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
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ORDER
AFFIRMED
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