ACULON, INC.

Patent Trials and Appeals Board

Feb 28, 2022

2021001572 (P.T.A.B. Feb. 28, 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. 15/809,984 11/10/2017 ERIC LEE HANSON Aculon-1703 5682 36787 7590 02/28/2022 BLYNN L. SHIDELER THE BLK LAW GROUP 3000 Village Run Road Suite 103-251 WEXFORD, PA 15090 EXAMINER HIGGINS, GERARD T ART UNIT PAPER NUMBER 1759 NOTIFICATION DATE DELIVERY MODE 02/28/2022 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): blynn@BLKLawGroup.com cbelleci@BLKLawGroup.com patents@BLKLawGroup.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ERIC LEE HANSON, DEAN POTTER, MARIO GATTUSO, and ANDRES HANAU Appeal 2021-001572 Application 15/809,984 Technology Center 1700 Before TERRY J. OWENS, KAREN M. HASTINGS, and DEBRA L. DENNETT, Administrative Patent Judges. OWENS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), the Appellant1 appeals from the Examiner’s decision to reject claims 10-19. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. The Appellant identifies the real party in interest as Aculon, Inc. (Appeal Br. 2). Appeal 2021-001572 Application 15/809,984 2 CLAIMED SUBJECT MATTER The claims are directed to a coated substrate. Claim 10, reproduced below, is illustrative of the claimed subject matter: 10. A coated substrate comprising: (i) a substrate; and (ii) a self-assembled coating layer applied to at least one surface of the substrate; wherein the coating layer is formed from a surface treatment composition comprising: (a) a fluorine-containing polymer; (b) a solvent containing at least one C-F bond; and (c) a rheology modifying component comprising fumed silica that is surface modified with hydrophobic functional groups. REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Feit US 4,136,225 Jan. 23, 1979 Nakayama US 6,149, 992 Nov. 21, 2000 Jing US 2004/0241395 A1 Dec. 2, 2004 Kontomaris US 2016/0137895 A1 May 19, 2016 REJECTION Claims Rejected 35 U.S.C. § Reference(s)/Basis 10-19 103 Jing, Feit, Nakayama, Kontomaris OPINION The Appellant argues only claim 10, which is the sole independent claim, and dependent claims 13 and 19 (Appeal Br. 5-9). We therefore limit our discussion to those claims. Claims 11, 12, and 14-18 stand or fall with claim 10. See 37 C.F.R. § 41.37(c)(1)(iv) (2013). Appeal 2021-001572 Application 15/809,984 3 Claim 10 Jing discloses a substrate coated with an inkjet printable fluoropolymer solution comprising a fluorine-containing polymer, a fluorinated solvent, and, optionally, a thixotrope or thickener (¶¶ 17, 32, 33). The substrate can be any solid substrate, and can be a circuit board (¶ 35). Jang discloses that “in cases wherein that the inkjet printable fluoropolymer solution is forced through a small orifice during application to the substrate surface (e.g., inkjet printing) it may be desirable to use an inkjet printable fluoropolymer solution that is essentially free of dispersed particulates that may tend to clog the orifice” (¶ 33). Feit discloses a printed wiring flame retardant overcoat comprising a crosslinked polymer of dichloropropyl acrylate (DCPA) and/or neopentyl glycol diacrylate (NPGDA), and, optionally, a hydrophobic fumed silica thixotropic agent (col. 1, ll. 12-24; col. 2, ll. 30-32; col. 4, ll. 25-32). The Appellant argues that Jing is drawn explicitly and specifically to inkjet printing, and in view of Jing’s warning that dispersed particulates may clog a small orifice, one of ordinary skill in the art would not have used Feit’s hydrophobic fumed silica as Jing’s thixotrope (Appeal Br. 7-8). The Appellant argues that Jing does not distinguish between small and large orifices such that one is directed when or when not to use particulate rheology modifiers (Reply Br. 5). Jing’s disclosure that it may be desirable to use an inkjet printable fluoropolymer solution that is essentially free of dispersed particulates “in cases wherein that the inkjet printable fluoropolymer solution is forced through a small orifice during application to the substrate surface (e.g., inkjet printing)” (¶ 33) would have indicated to one of ordinary skill in the Appeal 2021-001572 Application 15/809,984 4 art that the inkjet printable fluoropolymer solution also is useful in cases wherein the solution is not forced through a small orifice. Moreover, that disclosure would have indicated to one of ordinary skill in the art that even if the solution is to be forced through a small orifice, use of a solution that is free of dispersed particulates is not essential, but merely is desirable to reduce the chance of orifice clogging. Thus, Jing would have provided one of ordinary skill in the art with a reasonable expectation of success in using Feit’s hydrophobic fumed silica as Jing’s thixotrope. See In re O’Farrell, 853 F.2d 894, 904 (Fed. Cir. 1988) (“For obviousness under § 103, all that is required is a reasonable expectation of success.”). The Appellant argues (Appeal Br. 8): [T]he fumed silica disclosed by Feit et al. was used in a formulation specifically “developed for use with DBPA (dibromopropyl acrylate) monomer and was used with DCPA monomer to permit direct comparison.” (see Feit et al., column 2, lines 30-38) There is no teaching or suggestion in Feit et al. that the silica particles used therein are compatible with or suitable for use in an inkjet printable fluoropolymer solution such as that used in Jing et al. Jing does not limit the thixotrope (¶ 33). The Appellant does not establish, and it is not apparent, that one or ordinary skill in the art would have expected Feit’s hydrophobic fumed silica to react in an undesirable way with Jing’s fluoropolymer solution. Thus, the record indicates that use of Feil’s hydrophobic fumed silica as Jing’s thixotrope would have been prima facie obvious to one of ordinary skill in the art. Appeal 2021-001572 Application 15/809,984 5 Claims 13 and 19 Claim 13 requires that “the dry film thickness of the coating layer over the at least one surface of the substrate varies by no more than 50 percent.” Claim 19 requires that “the rheology modifying component (c) is present in the surface treatment composition in an amount of 1 to 5 percent by weight, based on the total weight of the surface treatment composition.” The Appellant argues: In addition to arguments presented above with respect to claims 10 and 12, from which claim 13 depends, Appellant notes that neither the Jing et al. reference nor the Feit et al. reference teaches or suggests a coated substrate that comprises a conformal coating layer; i.e., a uniform coating layer wherein the dry film thickness thereof over the surface of the substrate varies by no more than 50 percent, as recited in claim 13. [Appeal Br. 8] . . . For reasons discussed above, the combination of Jing et al. and Feit et al. does not teach or suggest the coated substrate of the present invention, wherein the coating layer is formed from a surface treatment composition comprising a rheology modifying component (c), which in turn comprises fumed silica that is surface modified with hydrophobic functional groups. It follows that there is no teaching or suggestion in the combination of references of the coated substrate, wherein the rheology modifying component (c) is present in the surface treatment composition in an amount of 1 to 5 percent by weight, based on the total weight of the surface treatment composition, as recited in claim 19. [Appeal Br. 9] As stated by the Federal Circuit in In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (Rule 41.37 “require[s] more substantive arguments in an appeal brief than a mere recitation of the claim elements and a naked Appeal 2021-001572 Application 15/809,984 6 assertion that the corresponding elements were not found in the prior art.” Hence, we are not persuaded by the Appellant’s arguments regarding claims 13 and 19. CONCLUSION For the above reasons, we are not persuaded of reversible error in the Examiner’s rejection. Accordingly, we affirm the rejection. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 10-19 103 Jing, Feit, Nakayama, Kontomaris 10-19 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). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED