KOLON INDUSTRIES, INC.Download PDFPatent Trials and Appeals BoardOct 26, 20212021000066 (P.T.A.B. Oct. 26, 2021) Copy Citation 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. 15/021,367 03/11/2016 Jong Won YANG Q225839 2894 23373 7590 10/26/2021 SUGHRUE MION, PLLC 2000 PENNSYLVANIA AVENUE, N.W. SUITE 9000 WASHINGTON, DC 20006 EXAMINER KAHN, RACHEL ART UNIT PAPER NUMBER 1766 NOTIFICATION DATE DELIVERY MODE 10/26/2021 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): PPROCESSING@SUGHRUE.COM USPTO@sughrue.com sughrue@sughrue.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte JONG WON YANG and HAK GEE JUNG ____________ Appeal 2021-000066 Application 15/021,367 Technology Center 1700 ____________ Before CATHERINE Q. TIMM, MICHAEL P. COLAIANNI, and DEBRA L. DENNETT, Administrative Patent Judges. DENNETT, Administrative Patent Judge. DECISION ON APPEAL1 STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the Examiner’s decision to reject claims 5, 6, 9, and 10 of Application 15/021,367, which constitute all the claims pending in this application. We have jurisdiction under 35 U.S.C. § 6(b). 1 In our Decision, we refer to the Specification (“Spec.”) of Application No. 15/021,367 filed Mar. 11, 2016; the Final Office Action dated July 9, 2019 (“Final Act.”); the Appeal Brief filed Jan. 30, 2020 (“Appeal Br.”); and the Examiner’s Answer dated Apr. 8, 2020 (“Ans.”). Appellant did not filed a Reply Brief. 2 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies KOLON INDUSTRIES, INC. as the real party in interest. Appeal Br. 3. Appeal 2021-000066 Application 15/021,367 2 For the reasons set forth below, we AFFIRM. The subject matter of the invention relates to polyimide films having improved yellowness and optical isotropy while retaining the superior properties of conventional polyimide films. Spec. 1, ll. 6–8; 4, ll. 5–8. The invention further relates to a polyamic acid and a polyimide resin (an imidized product of the polyamic acid) for use in producing the polyimide film. Id. 4, ll. 8–10. According to the applicant, the polyimide film or resin of the invention can be effectively used for a protective layer or a substrate for a flexible display because it has excellent mechanical properties and high heat resistance, is colorless and transparent, with high optical isotropy. Id. 6, ll. 8–13. Claim 5, reproduced below from the Claims Appendix of the Appeal Brief, represents the claimed subject matter: 1. A polyimide film, comprising: a first block of the following Chemical Formula 1, said first block being formed by polymerizing 9,9-bis(3-fluoro-4- aminophenyl)fluorene (FFDA) and 2-bis(3,4- dicarboxyphenyl)hexafluoropropane dianhydride (6FDA); and a second block of the following Chemical Formula 2, said second block being formed by polymerizing FFDA and 3,3',4,4'-biphenyltetracarboxylic dianhydride (BPDA): Appeal 2021-000066 Application 15/021,367 3 in Chemical Formulas 1 and 2, X is a molar fraction in a range of 0.6 ≤ X ≤ 0.9, and wherein the polyimide film has a coefficient of linear thermal expansion (CTE) of 60 ppm/°C or less, measured two times at 50 to 250°C using a thermomechanical analysis (TMA) method, and a birefringence (∆n) of 0.01 or less, the birefringence being defined by Transverse Electric (TE) - Transverse Magnetic (TM). REFERENCES The Examiner relies on the following prior art in rejecting the claims as obvious under 35 U.S.C. § 103: Name Reference Date Jeong et al. (“Jeong”) US 2011/0245455 A1 Oct. 6, 2011 Tanaka et al. (“Tanaka”)3 JP 2012–040836 Mar. 1, 2012 REJECTIONS The Examiner maintains the rejection of claims 5, 6, 9, and 10 under 35 U.S.C. § 103 as obvious over Tanaka in view of Jeong. Final Act. 2–8. 3 The Examiner relies on a machine translation of Tanaka, to which Appellant did not object. Thus, we also rely on the machine translation. Appeal 2021-000066 Application 15/021,367 4 DISCUSSION We review the appealed rejections for error based upon the issues identified by Appellant and in light of the arguments and evidence produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential), (cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011)) (“[I]t has long been the Board’s practice to require an applicant to identify the alleged error in the [E]xaminer’s rejections.”). After considering the evidence presented in this Appeal and each of Appellant’s arguments, we are not persuaded that Appellant identifies reversible error. Thus, we affirm the Examiner’s rejections for the reasons expressed in the Final Office Action and the Answer. We add the following primarily for emphasis. Appellant argues for reversal of the rejection of the pending claims as a group. Appeal Br. 7–15. We select claim 5 as representative. 37 C.F.R. § 41.37(c)(1)(iv) (2017). Claims 6, 9, and 10 stand or fall with claim 5. Appellant argues that neither Tanaka nor Jeong teach the claimed first block and claimed second block. Appeal Br. 8–9. This is accurate, as the Examiner acknowledges. See Final Act. 5 (“Tanaka and Jeong fail to specifically teach that the polyimide contains blocks according to instant formulas 1 and 2.”). However, Appellant’s argument is unpersuasive of reversible error because Appellant argues the references individually, which is insufficient to rebut an obviousness rejection. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (“Non-obviousness cannot be established by attacking references individually where the rejection is based upon the teachings of a combination of references.”). Tanaka and Jeong must be read, not in isolation, but for what each fairly teaches in combination with the prior art as a whole. See id. Appeal 2021-000066 Application 15/021,367 5 Appellant argues that Tanaka and Jeong do not provide sufficient guidance to combine their teachings and modify them to arrive at the claimed polyimide. Appeal Br. 9. Tanaka discloses polyimide films prepared from one of two diamines (TFMB or FFDA) in combination with one or more of five dianhydrides (including BPDA and 6FDA separately or together). Tanaka ¶¶ 1, 27–32, 64, 70, and 72. Tanaka discloses that a polyimide prepared from FFDA combined with BPDA provides lower haze and significantly improved light transmission at 400 nm in comparison to a polyimide prepared from TFMB in combination with BPDA. Id. ¶ 76 (Table 1). Tanaka also discloses that a polyimide prepared from TFMB and a combination of BPDA and 6FDA provides significantly improved light transmission at 400 nm in comparison to a polyimide prepared from TFMB in combination with BPDA alone. Id. Jeong discloses polyimide films prepared from TFMB in combination with dianhydrides BPDA and 6FDA, with 6FDA present in 30 to 100 mol%. Jeong ¶¶ 68–69, 71. Jeong suggests use of 6FDA when considering transparency and BPDA when considering thermal resistance. Id. Here, the skilled artisan would have been motivated to improve light transmission and maintain thermal resistance by substituting FFDA for TFMB as a diamine in combination with BPDA and 6FDA. See KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 421 (2007) (Where a skilled artisan merely pursues “known options” from “a finite number of identified, predictable solutions,” the resulting invention is obvious under Section 103.). Evidence of a motivation to combine references “may flow from the prior art references themselves, the knowledge of one of ordinary skill in the art, or, in some cases, from the nature of the problem to be solved.” Brown Appeal 2021-000066 Application 15/021,367 6 & Williamson Tobacco Corp. v. Philip Morris Inc., 229 F.3d 1120, 1125 (Fed. Cir. 2000). Tanaka shows that substituting FFDA for TFMB was a known option, and Tanaka and Jeong show that substituting the combination of BPDA and 6FDA for BPDA was also a known option for preparing a polyimide. As the Examiner explains, the skilled artisan having prepared polyimide from FFDA, BPDA, and 6FDA, as suggested by Tanaka and Jeong, and adding BPDA to FFDA first and reacting for an hour before adding 6FDA, as taught by Jeong, would have produced a polyimide having a first block and second block according Chemical Formulas 1 and 2 of claim 1. Final Act. 5–6. Reaction of a molar excess of FFDA with BPDA will form at least some blocks containing just FFDA-BPDA, in accordance with Chemical Formula 2. See id. at 6. Thereafter, reaction of the remaining molar excess of FFDA with 6FDA with result in the formation of FFDA-6FDA blocks in accordance with Chemical Formula 1. Jeong teaches that the diamine is reacted in a molar amount equal to the combined dianhydramines. Jeong ¶ 94. The block structures are inherent to the reaction. “[I]nherency may supply a missing claim limitation in an obviousness analysis where the limitation at issue is the natural result of the combination of prior art elements.” Persion Pharm. LLC v. Alvogen Malta Operations Ltd., 945 F.3d 1184, 1191 (Fed. Cir. 2019) (internal quotation marks omitted). As the Examiner explains the person having ordinary skill in the art would have been motivated to select any appropriate ratio of 6FDA to BPDA in order to achieve the desired balance of optical properties (yellowness, light transmission) and thermal resistance. For example, for applications requiring higher thermal resistance Appeal 2021-000066 Application 15/021,367 7 but less stringent optical properties, the person having ordinary skill in the art would have been motivated to increase the amount of BPDA relative to 6FDA in the dianhydride component. For applications wherein high transparency and minimal yellowness is a higher priority than thermal resistance, the person having ordinary skill in the art would have been motivated to increase the amount of 6FDA relative to BPDA in the dianhydride component. Final Act. 4–5. Thus, the natural result of the combination of Tanaka and Jeong is the formation of blocks according to Chemical Formulas 1 and 2. In addition, where the Examiner finds that the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, “the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product.” In re Best, 562 F.2d 1252, 1256 (CCPA 1977). The process for polymerization disclosed by the combined references is substantially identical to that use to prepare the examples in the Specification (purging the condenser with nitrogen, dimethylacetamide as the solvent, dissolving FFDA, then adding BPDA and carrying out the reaction for a period of time before adding 6FDA and maintaining the reaction at room temperature for several hours with the combined BPDA and 6FDA present in an equimolar amount to FFDA). Compare Jeong ¶¶ 94–95 and Tanaka ¶¶ 34–36, with Spec. 13, l. 18–14, l. 13. The Examiner thus supports a finding that FFDA would react with BPDA, producing at least some blocks of Chemical Formula 1, then unreacted FFDA would react with 6FDA, producing at least some blocks of Chemical Formula 2. See Final Act. 5–6; Ans. 13–15. Appellant argues that the Examiner’s finding that some FFDA would react with BPDA and some FFDA would react with 6FDA, resulting in Appeal 2021-000066 Application 15/021,367 8 copolymers of FFDA and BPDA, and copolymers of FFDA and 6FDA is groundless. Appeal Br. 12. Although Appellant points out that Jeong discloses only a one-hour time gap between adding BPDA and adding 6FDA to a diamine, while Appellant’s working examples employ a five-hour time gap, Appellant does not explain why Jeong’s method allegedly “prevents formation of random blocks in a resulting polymer” that are in according with Chemical Formulas 1 and 2. See id. at 14. The Examiner explains that if formation of the claimed first and second blocks is the result of stirring the first dianhydride with dissolved diamine at room temperature for five hours prior to addition of second the second dianhydride, there is reasonable basis to conclude that stirring the first dianhydride with dissolved diamine at room temperature for one hour prior to addition of second the second dianhydride (in a reaction carried out utilizing otherwise substantially identical process steps/conditions) also results in at least some formation of the claimed first and second blocks. Id. In rebuttal, Appellant provides only attorney argument, unsupported by factual evidence. It is well settled that arguments of counsel cannot take the place of factually supported objective evidence. See, e.g., In re Huang, 100 F.3d 135, 139–40 (Fed. Cir. 1996); In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984). Appellant argues that Jeong discloses a time gap between adding BPDA and 6FDA in order to control molecular weight and thermal resistance of the resulting polymer, but does not intend to create different blocks in the final polymer. Appeal Br. 13. However, “the law does not require that the references be combined for the reasons contemplated by the inventors,” when some motivation or suggestion is provided by the prior art taken as a whole. In re Beattie, 974 F.2d 1309, 1312 (Fed. Cir. 1992); see Appeal 2021-000066 Application 15/021,367 9 also In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). As the Examiner explains, the structures of the first block and the second block recited in claim 5 are not limited in terms of length, number of consecutive identical repeating units, or arrangement of blocks. Ans. 14. Here, Best requires Appellant to prove that the prior art products do not necessarily or inherently possess the claimed characteristics, including the blocks of Chemical Formula 1 and 2, and the claimed CTE and birefringence. See Best, 562 F.2d at 1256. Appellant’s unsupported attorney argument is insufficient to overcome the Examiner’s rejection of claim 5. We sustain the rejection of claim 5. We sustain the rejection of claims 6, 9, and 10 for the same reasons. 37 C.F.R. § 41.37(c)(1)(iv). DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § References/Basis Affirmed Reversed 5, 6, 9, 10 103 Tanaka, Jeong 5, 6, 9, 10 TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED Copy with citationCopy as parenthetical citation