Rohm and Haas Electronic Materials LLC et al.

Patent Trials and Appeals Board

Mar 15, 2022

2021001735 (P.T.A.B. Mar. 15, 2022)

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. 15/715,564 09/26/2017 Eui Hyun Ryu 79634-US-NP (DPN50005US2) 3867 158376 7590 03/15/2022 Cantor Colburn LLP - DuPont 20 Church Street 22 Floor Hartford, CT 06103 EXAMINER TRINH, THANH TRUC ART UNIT PAPER NUMBER 1726 NOTIFICATION DATE DELIVERY MODE 03/15/2022 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): usptopatentmail@cantorcolburn.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte EUI HYUN RYU, PETER TREFONAS III, and BOK-HEE LEE Appeal 2021-001735 Application 15/715,564 Technology Center 1700 Before MERRELL C. CASHION, JR., SHELDON M. MCGEE, and JANE E. INGLESE, Administrative Patent Judges. McGEE, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1-8. We have jurisdiction. 35 U.S.C. § 6(b). We affirm. 1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as Rohm and Haas Electronic Materials LLC et al. Appeal Br. 2. Appeal 2021-001735 Application 15/715,564 2 CLAIMED SUBJECT MATTER The subject matter on appeal is directed to a gas sensor having two or more polymeric layers, where on one of the layers, one surface has a higher surface area than the other surface. Spec. ¶ 5. Figure 2A is illustrative of the claimed subject matter: Figure 2A of the Drawings depicts substrate 154 having a multilayered coating 155 disposed thereon. The first layer 155A is disposed on substrate 154 and second layer 155B is disposed on first layer 155A. First layer 155A has top surface 159 which is textured, and therefore surface 159 has a higher surface area than the bottom surface of layer 155A. Second layer 155B is disposed on first layer 155A and has a top surface 163 and a bottom surface 161. “[F]irst surface 161 of the second polymeric layer 155B contact[s] the second surface 159 of the first polymeric layer 155A.” Second surface 163 of layer 155B is parallel to second surface 159 of layer 155A.2 Spec. ¶¶ 21- 22. 2 Paragraph 22 of the Specification contains an apparent typographical error because it erroneously refers to “second surface 159 of the second polymeric layer 155B.” Second surface 159 belongs, however, to first polymeric layer 155A. See Fig. 2A. Appeal 2021-001735 Application 15/715,564 3 Sole independent claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A gas sensor comprising: a substrate; a first polymeric layer having a first surface and a second surface disposed on the substrate; where the first surface contacts the substrate and where the second surface is opposed to the first surface and has a higher surface area than the first surface; where the first polymeric layer comprises repeat units that have a deprotected hydrogen donor; and a second polymeric layer disposed on the first polymeric layer; where the second polymeric layer is derived from a repeat unit that comprises a hydrogen acceptor. REJECTION AND PROVISIONAL REJECTION I. Claims 1-8 under 35 U.S.C. § 103 as unpatentable over Schonfeld3 and Miyamoto.4 II. Claims 1-8 (provisionally) as unpatentable under the doctrine of obviousness-type double patenting over claim 1-12 of US Application 15/846,640 in view of Schonfeld. OPINION The Obviousness Rejection over Schonfeld and Miyamoto The Examiner undisputedly finds that Schonfeld discloses all of the limitations of the claimed gas sensor, except for “the second surface [of the first layer 12] has a higher surface area than the first surface.” Final Act. 4- 5. To address this difference, the Examiner turns to Miyamoto, which the 3 US 5,958,787, issued September 28, 1999. 4 JPH06128721(A), published May 10, 1994. We rely on the uncontested English language translation of this publication. Appeal 2021-001735 Application 15/715,564 4 Examiner finds teaches a gas sensor comprising layers 2 and 3 on substrate 1. Id. at 5. The Examiner undisputedly finds Miyamoto teaches that texturizing the top surface of layer 2 yields a higher surface area than the bottom surface of layer 2, and that such texturizing would cause adjacent layer 3 to likewise have a textured surface. Final Act. 5; Ans. 6-7. The Examiner reasons that “because Miyamoto teaches such textured surface(s) would increase surface area and gas adsorption capacity,” the skilled artisan would have found it obvious to modify the second surface of Schonfeld’s first layer 12 to have a textured surface, thereby also texturizing layer 13’s surface. Final Act. 5. The Examiner finds that such modification would improve gas sensor sensitivity and responsiveness, and expand the gas detection concentration range. Final Act. 5-6. We review this rejection for reversible error based on the arguments and evidence presented by Appellant. 37 C.F.R. § 41.37(c)(1)(iv); 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) (explaining that even if the Examiner had failed to make a prima facie case, “it has long been the Board’s practice to require an applicant to identify the alleged error in the examiner’s rejections”). Upon consideration of Appellant’s arguments in light of the evidence in the appeal record, we determine that Appellant has identified no such error. We therefore affirm this rejection for the reasons expressed by the Examiner. Final Act. 4-7; Ans. 3-12. We add the following for emphasis. Appellant asserts that Miyamoto’s sensitive film is not polymeric in nature. Appeal Br. 7. That argument has no merit because the Examiner relies on Schonfeld, not Miyamoto, for this limitation. Final Act. 4. Appeal 2021-001735 Application 15/715,564 5 Appellant then acknowledges that “Miyamoto in FIG. 1 does show that concavities and convexities are formed on the underlying thin film 2 so that the concavities and convexities are indirectly formed on the surface of the sensitive film 3 such that, the sensitivity is improved, and detection range is expanded.” Appeal Br. 7. Thus, Appellant recognizes that texturizing intermediate adhesive layer 2 in Miyamoto’s gas sensor “indirectly forms” such texturing on the Miyamoto’s adjacent layer 3. Id. That recognition is significant here and reveals the weakness in Appellant’s subsequent arguments regarding Schonfeld’s intermediate layer 12. Appeal Br. 7-8. Specifically, Appellant asserts that layer 12 “is not employed to increase the absorption of incoming gases,” but is rather “solely used to improve adhesion.” Appeal Br. 7. According to Appellant, “Schonfeld is not looking to improve the absorptive properties of the underlying layer 12,” and as a result, “there is no motivation to texture the underlying layer 12 in Schonfeld as suggested by the Examiner.” Appeal Br. 8. These arguments do not address, however, the natural result of texturing intermediate adhesive layer 12--i.e., the texturing of outer layer 13, which Appellant recognizes would have been expected by texturing the top surface of layer 12. Appeal Br. 7; Final Act. 5; see Ans. 8 (“Miyamoto teaches texturing the sensing layer (3) by texturing the intermediate layer (2)”); Miyamoto Figs. 1b and 1c. Because Appellant fails to identify reversible error in the Examiner’s rejection, we sustain it. Provisional Obviousness-Type Double Patenting Rejection Appellant requests that we hold this provisional rejection “in abeyance at least until the present claims are allowed and the 15/846,640 Appeal 2021-001735 Application 15/715,564 6 case has issued.” Appeal Br. 8-9. Appellant thus advances no substantive argument regarding this provisional rejection. In the absence of any substantive argument, we summarily affirm the provisional rejection. CONCLUSION The Examiner’s obviousness rejection is affirmed. The Examiner’s provisional obviousness-type double patenting rejection is summarily affirmed. DECISION SUMMARY Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1-8 103 Schonfeld, Miyamoto 1-8 1-8 Application 15/846,640, Schonfeld 1-8 Overall Outcome 1-8 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)(1)(iv). AFFIRMED