Ex Parte Yan et al

Patent Trial and Appeal Board

Feb 23, 2016

11432685 (P.T.A.B. Feb. 23, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
111432,685 05/10/2006 Yongan Yan
30764 7590 02/25/2016
SHEPPARD, MULLIN, RICHTER & HAMPTON LLP
12275 EL CAMINO REAL, SUITE 200
SAN DIEGO, CA 92130
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.
OSBE-116933 8394
EXAMINER
QIAN, YUN
ART UNIT PAPER NUMBER
1732
NOTIFICATION DATE DELIVERY MODE
02/25/2016 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):
DOCKETING@SHEPPARDMULLIN.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte YONGAN YAN,
SATYABRATARAYCHAUDHURI
and MATTHEW EMILIO CODA
Appeal2014-005712
Application 11/432,685
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 CASE
Appellants appeal under 35 U.S.C. § 134 from the Examiner's
decision to reject claims 26-42. We have jurisdiction under 35 U.S.C.
§ 6(b ).
Appeal2014-005712
Application 11/432,685
The claimed invention is directed to a coating composition. App. Br.
2. Claim 26 illustrates the subject matter on appeal and is reproduced
below:
26. A coating composition consisting essentially of:
at least one organo-metallic compound other than an organo-
metallic compound of silicon, at least one epoxy-functional silicon
alkoxide, at least one non-epoxy-functional silicon alkoxide, at least
one curing agent compatible with epoxy-functional molecules, at least
one solvent, at least one inorganic acid, and water;
wherein the relative amounts of the constituents of the
coating composition are controlled such that, when the coating
composition is dispensed onto the surface of an article and
cured, it forms a coating having a refractive index greater than
about 1. 70, at a wavelength of 510 nm, and a thickness in the
range of 10 to 200 nm.
Appellants request review of the following rejections from the
Examiner's Nonfinal Office Action of May 29, 2013:
I. Claims 26-35 and 37--42 rejected under 35 U.S.C. § 103(a) as
unpatentable over Tamori (US 2003/0073779 Al, published April 17, 2003)
and Olson (WO 00/06622 Al, published February 10, 2000).
II. Claim 36 rejected under 35 U.S.C. § 103(a) as unpatentable
over Tamori, Olson and Forray (US 2004/0102566 Al, published May 27,
2004).
2
Appeal2014-005712
Application 11/432,685
OPINION
The Prior Art Rejections
The dispositive issue on appeal is: Has Appellants established that the
transitional language "consisting essentially of' of independent claim 26
excludes the emulsifier and the component having ultraviolet absorption
action and/or light stabilization action of Tamori? i, 2
After review of the respective positions provided by Appellants and
the Examiner, we answer in the negative and AFFIRM the Examiner's prior
art rejections of claims 26-42 under 35 U.S.C. § 103(a) for the reasons
presented by the Examiner and add the following for emphasis.
We refer to the Examiner's Final Action for a complete statement of
the rejections. Final Act. 4--7.
The phrase "consisting essentially of' limits the scope of a claim to
the specifically recited ingredients plus others that do not materially affect
the basic and novel characteristic(s) of a composition. AK Steel Corp. v.
Sollac, 344 F.3d 1234, 1239 (Fed. Cir. 2003)(The phrase "consisting
essentially of' in a patent claim "has long been understood to permit
inclusion of components not listed in a claim, provided that they do not
'materially affect the basic and novel properties of the invention."'); PPG
Indus., Inc. v. Guardian Indus. Corp., 156 F.3d 1351, 1354 (Fed. Cir. 1998)
1 Appellants present arguments for independent claim 26. See Appeal Brief,
generally. Appellants rely on these arguments to address the rejection of
claims 27--42, as presented in Rejections I and II. Id. at 12. Accordingly,
we limit our discussion to independent claim 26, focusing on Rejection I.
Claims 27--42 stand or fall with independent claim 26.
2 A discussion of Olson is unnecessary for disposition of this appeal. The
Examiner relied upon this reference for features not related to the dispositive
issue.
3
Appeal2014-005712
Application 11/432,685
(The claim term "consisting essentially of" is used in claim construction to
indicate, for example, 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.")
To resolve or address Appellants' argument, we need to assess
whether Appellants' Specification and declarations are sufficient to show
that the additional ingredients taught by the prior art materially affect the
basic and novel characteristics of the claimed invention. In other words, we
need to determine whether Appellants have carried the burden by showing
what the basic and novel characteristics of the claimed composition are and
how they would be materially changed by the ingredient of the prior art
reference sought to be excluded by Appellants' use of such transitional
term. See In re De Lajarte, 337 F.2d 870, 873-74 (CCPA 1964); Ex parte
Hoffman, 12 USPQ2d 1061, 1063-64 (BPAI 1989).
According to Appellants, independent claim 26 defines a coating
composition consisting essentially of ( 1) at least one organo-metallic
compound other than an organo-metallic compound of silicon; (2) at least
one epoxy-functional silicon alkoxide; (3) at least one non-epoxy-functional
silicon alkoxide; (4) at least one curing agent compatible with epoxy-
functional molecules; (5) at least one solvent; (6) at least one inorganic acid;
and (7) water. App. Br. 3.
Appellants do not dispute that Tamori discloses a coating composition
having the claimed components. App. Br. 5; Final Act. 4; Tamori i-fi-f 16, 38,
46-49, 59, 76, 85, 116, 172. Instead, Appellants contend the transitional
language "consisting essentially of' in claim 26 excludes Tamori' s
additional components, namely an emulsifier and a component having
4
Appeal2014-005712
Application 11/432,685
ultraviolet absorption action and/or light stabilization action
(absorption/stabilization component), because these components materially
affect the basic and novel characteristics of the claimed invention of a
refractive index greater than about 1. 70, at a wavelength of 510 nm, and a
thickness in the range of 10 to 200 nm. Id. at 4.
Appellants rely on the Specification and two Declarations by co-
inventor Y ongan Y an3 to support the contention that the claimed coating
composition must not include any components, other than the components
claimed, that would materially affect the basic and novel characteristics of
the claimed coating compositions. App. Br. 4, 8-1 O; Spec. i-fi-f l 0, 25, 28,
72-81 (Examples 3---6); Yan Deel. 1 Exhibit A, i14-5; Yan Deel. 2 i15, 8-10.
Appellants argue Examples 3-6 of the Specification describes coating
compositions that include only the materials recited in claim 26, without any
other components that would materially affect the basic and novel
characteristics of the claimed coating compositions. App. Br. 4; Spec. 72-
81; Yan Deel. 1 i1 4. Further, Declarant states the presence of the emulsifier
prevents the formation of a coating having a significantly smaller thickness
of 10-200 nm. App. Br. 5; Yang Deel. 2 i18. Declarant also states the
presence of Tamori' s absorption/ stabilization component is also
incompatible with the claimed composition because it would detrimentally
impact the sol-gel condensation reactions in the composition or the light
3 Appellants submitted two Declarations under 37 C.F.R. § 1.132 by co-
inventor Y ongan Yan signed October 6, 2010 (hereinafter referred to as Yan
Deel. 1) and April 19, 2012 (hereinafter referred to as Yan Deel. 2). The
Declarations were respectively considered and entered into the Record by
the Examiner in the Nonfinal Office Actions of August 11, 2011 and May
29, 2013.
5
Appeal2014-005712
Application 11/432,685
scattering and haze in coatings deposited with the claimed coating
composition. App. Br. 10-11; Yang Deel. 1i-f9, Yang Deel. 2 i-f 10.
We are unpersuaded by these arguments and agree with the
Examiner's determination that this evidence is insufficient to establish that
the additional components of Tamori affect the basic and novel properties of
the claimed invention. Ans. 5-6.
Contrary to the Appellants' argument, the cited portions of the
Specification, including Examples 3---6, do not make clear that the claimed
refractive indices and coating thicknesses are the basic and novel
characteristics of the claimed composition. App. Br. 4; Spec. i-fi-1 10, 28, 72-
81. For example, Examples 3---6 do not provide information as to the
refractive indices and thicknesses of the respectively prepared compositions
once applied as cured coatings. Spec. i-fi-172-81.
With respect to Declarant's statements, we find them unavailing for
the following reasons. First, while Declarant identifies the basic and novel
characteristics of the claimed invention (Yan Dec. 1 i-f4 ), Declarant does not
identify what type of components alter these characteristics. Instead, Yan at
page 1 of the Declaration merely lists the components of the compositions in
Examples 3---6 and directs us to no evidence that describes the alleged basic
and novel characteristics of the listed coating compositions. Yan Deel. 1
Exhibit A. Yan at page 2 of the Declaration also lacks evidentiary support
for its statements. That is, Declarant has not revealed the evidence utilized
to develop the opinions stated in each declaration. Thus, Declarant' s general
statements are tantamount to stating that any amount of emulsifier or
absorption/ stabilization component in the claimed composition will affect
the basic and novel characteristics of the claimed invention. Second,
6
Appeal2014-005712
Application 11/432,685
Appellants and Declarant have not adequately directed us to evidence that
the addition of Tamori' s emulsifier and absorption/ stabilization component
in the amounts disclosed by Tamori in fact affect the basic and novel
characteristics of the coating composition.
Thus, Appellants have not adequately established that the transitional
language "consisting essentially of' of independent claim 26 excludes the
emulsifier and the absorption/stabilization component of Tamori.
With respect to Tamori not being able to form coatings within the
claimed range of 10 to 200 nm thickness, as noted by the Examiner, Tamori
discloses preferred particles having an average particle size in the range of
30-200 nm for a coating composition. Ans. 8; Tamori i-f 108. Appellants
have not adequately explained why one skilled in the art would not have
been capable of providing a coating with a thickness within the claimed
range of 10 to 200 nm using Tamori's particles having an average particle
size of less than 200 nm. In re Sovish, 769 F.2d 738, 743 (Fed. Cir. 1985)
(skill is presumed on the part of one of ordinary skill in the art); In re Bozek,
416 F.2d 1385, 1390 (CCPA 1969).
Accordingly, we sustain the Examiner's prior art rejections of claims
26-42 under 35 U.S.C. § 103(a) for the reasons presented by the Examiner
and given above.
7
Appeal2014-005712
Application 11/432,685
ORDER
The Examiner's prior art rejections of claims 26-42 under 35 U.S.C. §
10 3 (a) are 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)(l).
AFFIRMED
8