13885496 - (D) (P.T.A.B. Sep. 27, 2019)

Jimmie R. Baran et al.

Patent Trials and Appeals BoardSep 27, 2019

13885496 - (D) (P.T.A.B. Sep. 27, 2019)

UNITED STATES PATENT AND TRADEMARK OFFICE 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 13/885,496 05/15/2013 Jimmie R. Baran JR. 67049US004 3890 32692 7590 09/27/2019 3M INNOVATIVE PROPERTIES COMPANY PO BOX 33427 ST. PAUL, MN 55133-3427 EXAMINER AUER, LAURA A ART UNIT PAPER NUMBER 1783 NOTIFICATION DATE DELIVERY MODE 09/27/2019 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): LegalUSDocketing@mmm.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte JIMMIE R. BARAN, PAUL S. LUGG, TERRY L. SMITH, and TERRANCE P. SMITH ____________ Appeal 2019-002374 Application 13/885,496 Technology Center 1700 ____________ Before GEORGE C. BEST, JEFFREY R. SNAY, and LILAN REN, Administrative Patent Judges. BEST, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1–18 of Application 13/885,496. Final Act. (February 13, 2017). We have jurisdiction under 35 U.S.C. § 6. For the reasons set forth below, we affirm. 1 We use the word “Appellant” to refer to “Applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies 3M Company and 3M Innovative Properties Company as the real parties in interest. Appeal Br. 2. Appeal 2019-002374 Application 13/885,496 2 BACKGROUND The ’496 Application describes articles for packaging, protection, and storage of particles in a film format and for delivery of a monolayer of these particles onto a substrate. Spec. 1. In these articles, an electrostatic force present in a release liner can be used to temporarily bond the particles to the liner. Id. Atmospheric humidity can interfere with the use of electrostatic forces to adhere the particles to the release layer. Id. The ’496 Application’s Specification teaches that the use of a combination of hydrophilic particles with much smaller hydrophobic particles can overcome problems created by atmospheric humidity. Id. at 2. Claim 1 is representative of the ’496 Application’s claims and is reproduced below from the Claims Appendix of the Appeal Brief. 1. A transfer article comprising: a first flexible liner having opposing first and second surfaces, wherein the first surface has a released value of less than 700 grams per inch per ASTM D3330/D3330M-04; multi-sized particles adhered to the first surface of the first flexible liner; the multi-sized particles comprising: a plurality of dominant hydrophilic particles having an average primary particle size of no greater than 200 microns; and a plurality of discrete hydrophobic nanoparticles; wherein the dominant particles are disposed in a monolayer; and wherein the multi-sized particles are disposed on the first liner in a more uniform layer at a higher density than the same hydrophilic particles without the hydrophobic nanoparticles; and Appeal 2019-002374 Application 13/885,496 3 a second flexible liner having opposing first and second surfaces, wherein the second liner is an physical contact with at least a portion of the multi-sized particles. Appeal Br. 10. REJECTIONS On appeal, the Examiner maintains the following rejections: 1. Claims 1, 5, 9–14 and 16–18 are rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Sung,2 Jungbauer,3 and Eshleman.4 Final Act. 2–9. 2. Claims 2–4 are rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Sung, Jungbauer, Eshleman, and Phillips.5 Final Act. 9–10. 3. Claims 6–8 are rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Sung, Jungbauer, Eshleman, and Krankkala.6 Final Act. 11. 4. Claim 15 is rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Sung, Jungbauer, Eshleman, and Palmgren.7 Final Act. 11–12. 2 US 2007/0060026 A1, published March 15, 2007. 3 US 2012/0252321 A1, published October 4, 2012. 4 US 4,337,107, issued June 29, 1982. 5 US 5,977,263, issued November 2, 1999. 6 US 5,084,354, issued January 28, 1992. 7 US 2007/0084131 A1, published April 19, 2007. Appeal 2019-002374 Application 13/885,496 4 DISCUSSION Rejection 1. Appellant argues for reversal with respect to all of the claims subject to this rejection as a group. Appeal Br. 4–7. We, therefore, select claim 1 and claim 10 as representative of the claims subject to this ground of rejection. 37 C.F.R. § 41.37(c)(1)(iv). Independent claims 1 and 10 each contain a limitation specifying that “the multi-sized particles are disposed on the first liner in a more uniform layer at a higher density than the same hydrophilic particles without the hydrophobic nanoparticles.” Appeal Br. 10, 12. Appellant relies upon this language in arguing for reversal of the rejection of these claims. Id. at 4–7. In particular, Appellant argues that the Examiner reversibly erred by finding that the combination of Sung, Jungbauer, and Eshleman describes or suggests this limitation. Id. In rejecting claim 1, the Examiner found that “it is expected the combination of the abrasive particles of Sung and the hydrophobic nanoparticles of Jungbauer will have the same properties regarding uniformity and density of the claimed article given the similar composition.” Final Act. 4; see also 7 (same finding with respect to claim 10). Appellant presents four arguments in support of its contention that this finding is erroneous. Appeal Br. 4–7. First, Appellant argues that the Examiner’s finding does not comply with the requirements of MPEP § 2144.03. Id. at 4. In particular, Appellant argues that the Examiner should have provided an appropriate citation to evidence in support for the assertion that the combination of Sung’s abrasive particles and Jungbauer’s hydrophobic nanoparticles will have the same properties as the claimed article given the similar composition. Id. Appeal 2019-002374 Application 13/885,496 5 The Examiner responds that MPEP § 2144.03 does not apply to this situation because the Examiner has not taken official notice of common knowledge in the art or well-known prior art. Answer 3. According to the Examiner, the rejection was based upon a property expected to be present in the cited combination of references. Id. at 3–5 (citing MPEP § 2112 V). The Examiner asserts that the proposed combination of Sung and Jungbauer is similar to the claimed composition and that the burden has shifted to Appellant to show that the claimed composition and the asserted combination of prior art have different properties. Id. at 4 (citing MPEP § 2112.01 II). We agree with the Examiner that the rejection is not based upon a situation in which official notice has been taken of anything. Rather, this is a situation where the Examiner has established that the proposed combination of the prior art describes or suggests a product made by a process that is essentially identical to that described in the application. The Examiner, therefore, correctly observes that the burden is upon Appellant to show that the prior art combinations does not have the same properties as those described for the claimed combination. See In re Best, 562 F.2d 1252, 1255 (CCPA 1977). Thus, we do not reverse the rejection of claims 1 and 10 on this basis. Second, Appellant argues that Jungbauer’s Figures 2 and 3 are evidence that is contrary to the Examiner’s assertion. Id. at 4–5. Jungbauer’s Figure 2 is a scanning electron photomicrograph of an abrasive article comprising silicon carbide abrasive particles and hydrophobic nanoparticles. Jungbauer ¶ 8. Appeal 2019-002374 Application 13/885,496 6 Jungbauer’s Figure 3 is a scanning electron photomicrograph of an abrasive article comprising silicon carbide abrasive particles without hydrophobic nanoparticles. Id. ¶ 9. According to Appellant, the density of the hydrophilic particles—i.e., the silicon carbide abrasive particles—in Figure 3 is greater than the density of the multi-sized particles shown in Figure 2. Appeal Br. 4–5. Appellant argues that, [g]iven Jungbauer’s opposite disclosure that the surface of an abrasive article comprising silicon carbide abrasive grain particles and hydrophobic nanoparticles, shows a less [sic] density than the abrasive grain particles without hydrophobic nanoparticles, one skilled in the art would not expect that the combination of the abrasive particles of Sung and the hydrophobic nanoparticles of Jungbauer would have different property [sic] from the combination of the abrasive particles and the hydrophobic nanoparticles of Jungbauer. In addition, the Examiner fails to provide a rational [sic] or evidence that the combination of the abrasive particles of Sung and the hydrophobic nanoparticles of Jungbauer would have different property [sic] from the combination of the abrasive particles and the hydrophobic nanoparticles of Jungbauer. Id. at 5. Appellant’s argument is not persuasive. All Jungbauer’s Figures 2 and 3 show are the silicon carbide abrasive particles, which have an average particle size of 4.0 µm. Jungbauer ¶ 66. The hydrophobic nanoparticles— which are a surface-treated silica based upon NALCO 2326, see id. ¶ 64— are not illustrated in Figure 2.8 Independent claims 1 and 10 require that the 8 NALCO 2326 has an average particle size of 5 nm. See, e.g., Chen, US 2015/0010748 A1, ¶ 53 (January 8, 2015) (“One useful silica sol is NALCO 2326 available as a silica sol with mean particle size of 5 [nm], pH 10.5 and solid content 15% by weight.”). Appeal 2019-002374 Application 13/885,496 7 density of the multi-sized particles be greater than that of the hydrophilic particles in the absence of the hydrophobic nanoparticles. Because the term “multi-sized particles” includes both the hydrophilic particles and the hydrophobic nanoparticles, the density of the particles in Jungbauer’s Figure 2 cannot be determined and a meaningful comparison with the density of the how to fill a particles shown in Jungbauer’s Figure 3 cannot be made. These figures therefore do not show that the Examiner reversibly erred in evaluating the prior art teachings. Third, Appellant argues that the Examiner has failed to provide a rationale or evidence tending to show that the distribution and density of the combination of particles is an inherent property. Appeal Br. 5–6. This argument is not persuasive. As discussed above, the Examiner has demonstrated that the proposed combination of references would result in production of a transfer article that is substantially identical to that recited in claims 1 and 10. Appellant, therefore, has the burden of showing that the uniform distribution and density properties of the mixture of hydrophilic particles and hydrophobic nanoparticles are not inherent. See Best, 562 F.2d at 1255. Fourth, Appellant attacks the Examiner’s statement that “it is unclear how Applicant’s claimed layer can have a higher density than the layer without the hydrophobic nanoparticles, given densit[ies] . . . based on the number of particles added to the composition regardless of whether or not nanoparticles are added.” Appeal Br. 6–7. Appellant further argues that the ’496 Application shows a surprising result in that the multi-sized particles are disposed on the first liner in a more uniform layer at a higher density than the same hydrophilic particles without the hydrophobic nanoparticles. Id. at 7. Appeal 2019-002374 Application 13/885,496 8 Appellant’s argument regarding unexpected results is not persuasive. To establish the existence of unexpected results, Appellant must establish (1) that there actually is a difference between the results obtained through the claimed invention and those of the closest prior art and (2) that the difference actually obtained would not have been expected by person of ordinary skill in the art at the time of the invention. In re Freeman, 474 F.2d 1318, 1324 (CCPA 1973). In this case, Appellant has not pointed us to any evidence that the difference actually obtained would have been regarded as unexpected by a person of ordinary skill in the art at the time of the invention. Appellant’s unsupported attorney argument that the results shown in Figure 4 of the ’496 Application are “surprising” is not evidence. Appellant, therefore, has not established the existence of unexpected results. In view of the foregoing, we affirm the rejections of claims 1 and 10. We, therefore, also affirm the rejection of claims 5, 9, 11–14, and 16–18. Rejections 2–4. Appellant argues that each of these rejections should be reversed because the claims subject to the rejection depend from an allowable independent claim and the secondary references cited in each of the rejection fail to cure the defects in the rejection of the independent claim. Appeal Br. 8–9. Because we have affirmed the rejections of claims 1 and 10, we also affirm these rejections. Appeal 2019-002374 Application 13/885,496 9 CONCLUSION In summary: Claims Rejected Basis Affirmed Reversed 1, 5, 9–14, and 16–18 § 103(a) Sung, Jungbauer, and Eshleman 1, 5, 9–14, and 16–18 2–4 § 103(a) Sung, Jungbauer, Eshleman, and Phillips 2–4 6–8 § 103(a) Sung, Jungbauer, Eshleman, and Krankkala 6–8 15 § 103(a) Sung, Jungbauer, Eshleman, and Palmgren 15 Overall Outcome 1–18 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 Notice of References Cited Application/Control No. 13/885,496 Applicant(s)/Patent Under Patent Appeal No. 2019-002374 Examiner Art Unit 1783 Page 1 of 1 U.S. PATENT DOCUMENTS * Document NumberCountry Code-Number-Kind Code DateMM-YYYY Name CPC Classification US Classification A B US- C US- D US- E US- F US- G US- H US- I US- J US- K US- L US- M US- FOREIGN PATENT DOCUMENTS * Document NumberCountry Code-Number-Kind Code DateMM-YYYY Country Name CPC Classification N O P Q R S T NON-PATENT DOCUMENTS * Include as applicable: Author, Title Date, Publisher, Edition or Volume, Pertinent Pages) U V W X *A copy of this reference is not being furnished with this Office action. (See MPEP § 707.05(a).) Dates in MM-YYYY format are publication dates. Classifications may be US or foreign. U.S. Patent and Trademark Office PTO-892 (Rev. 01-2001) Notice of References Cited Part of Paper No. 20170303 2015/0010748 A1 01-2015 Chen et al.