Ex Parte D et al

Patent Trial and Appeal Board

Mar 12, 2019

14465803 (P.T.A.B. Mar. 12, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/465,803 08/21/2014
66024 7590 03/14/2019
EASTMAN CHEMICAL COMPANY
200 SOUTH WILCOX DRIVE
KINGSPORT, TN 37660-5147
FIRST NAMED INVENTOR
JOHN J. D'ERRICO
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.
85685US02 1251
EXAMINER
EDMONDSON, LYNNE RENEE
ART UNIT PAPER NUMBER
1734
NOTIFICATION DATE DELIVERY MODE
03/14/2019 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):
jlmcglothlin@eastman.com
rlwhite@eastman.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN J. D'ERRICO, BENJAMIN B. THOMPSON,
and WENJIE CHEN
Appeal2018-003969
Application 14/465,803
Technology Center 1700
Before ROMULO H. DELMENDO, DONNA M. PRAISS, and
LILAN REN, Administrative Patent Judges.
DELMENDO, Administrative Patent Judge.
DECISION ON APPEAL
The Applicant (hereinafter "Appellant") 1 appeals under 35 U.S.C.
§ 134(a) from the Primary Examiner's non-final decision to reject claims 1,
2, and 4--20. 2 We have jurisdiction under 35 U.S.C. § 6(b).
We reverse. Pursuant to our authority, 3 however, we enter a new
ground of rejection below.
1 The Appellant is the Applicant, "SOLUTIA INC." (Application Data Sheet
filed August 21, 2014, 5), which, according to the Brief, is the real party in
interest (Appeal Brief filed September 14, 2017 ("Br.") 3). The Brief further
states that Solutia Inc. is a subsidiary of Eastman Chemical Company (id.).
2 Br. 10-15; Non-Final Office Action entered March 14, 2017 ("Non-Final
Act.") 3-14; Examiner's Answer entered December 27, 2017 ("Ans.") 2-7.
3 37 C.F.R. § 41.50(b).
Appeal2018-003969
Application 14/465,803
I. BACKGROUND
The subject matter on appeal relates to a polymer interlayer-
particularly, an interlayer for glazing (Specification filed August 21, 2014
("Spec.") ,r,r 11-16. The Inventors state that when a luminescent pigment is
mixed with other raw materials and then the mixture is extruded to form a
polymer interlayer, the resulting polymer interlayer has a higher color or
yellowness index and higher haze level than a polymer interlayer without the
luminescent pigment (id. ,r 40). According to the Inventors, they have found
that "the addition of a small amount of an additive such as a carboxylic acid
additive into the composition reduces the discoloration of the luminescent
pigment and resulting higher YI [yellowness index]" (id.).
Representative claim 1 is reproduced from the Claims Appendix to the
Appeal Brief, as follows:
1. An extruded polymer interlayer for glazing, comprising fl:
composition comprising:
poly(vinyl butyral),
a plasticizer,
a luminescent pigment having the structural
formula: R-OOC-Ar(OH)xCOO-R, wherein each R is
independently a substituent group having at least 1 carbon atom
and may be the same or different, Ar is an aryl group, and x is
from about 1 to 4, and
a carboxylic acid additive having a pKa of less than
about 10,
wherein the composition is mixed and melt extruded to
form the polymer interlayer,
wherein the polymer interlayer has a YI of less than 12,
and
wherein the polymer interlayer fluoresces at a wavelength
of about 400 to 7 00 nm.
(Br. 16 (Claims App'x); italics added for emphasis.)
2
Appeal2018-003969
Application 14/465,803
II. REJECTIONS ON APPEAL
On appeal, the Examiner maintains two rejections, as follows:
A. Claims 1, 2, and 4--20 under AIA 35 U.S.C. § 103 as
unpatentable over Labrot et al. 4 ("Labrot") in view of Ii et al. 5
(referred to as "Sekisui" by the Examiner and the Appellant);
and
B. Provisionally, claims 1, 2, 4--6, 6 and 8-20 under the judicially-
created doctrine of double patenting as unpatentable over
claims 1-20 of Application 14/972,34 7.
(Ans. 2-7; Non-Final Act. 3-14.)
III. DISCUSSION
Double Patenting. We start with the double patenting rejection. On
August 10, 2018, a Notice of Abandonment was entered in Application
14/972,347. No request for continued examination or a continuation
application appears to have been filed. Therefore, we dismiss Rejection Bas
moot.
Obviousness. The Examiner finds that Labrot describes a multilayer
polymer interlayer for glazing that meets every limitation recited in claim 1
except for a carboxylic acid additive having a pKa of less than about 10
4 WO 2010/139889 Al, published July 27, 2006. Without objection from
the Appellant, the Examiner relies on US 2012/0068083 Al, published
March 22, 2012, as an English language translation. Therefore, our citations
are to the US document.
5 JP 2012-66954 A, published April 5, 2012. We cite to the English
language translation in the record.
6 The Examiner also rejects claim 3, but claim 3 was previously canceled
(Amendment filed August 26, 2016).
3
Appeal2018-003969
Application 14/465,803
(Non-Final Act. 3--4). To resolve this difference, the Examiner relies on
Sekisui (id. at 4). Specifically, the Examiner finds that Sekisui teaches a
polymer interlayer for glazing comprising 2-ethylhexanoic acid7 (id.). The
Examiner concludes that "[i]t would be obvious to one of ordinary skill in
the art to employ the carboxylic acid of Sekisui in the Labrot polymer
interlayer to enhance the heat resistance and transparency of the laminated
interlayer" (id.).
Regarding the disputed claim limitations highlighted in reproduced
claim 1 above, the Examiner finds that Labrot teaches that the interlayer can
be assembled by well-known techniques and that Sekisui teaches making the
interlayer by known methods such as extrusion (id. at 5). The Examiner
concludes that "[i]t would be obvious to one of ordinary skill in the art to
employ the well-known method of extrusion as set forth in Sekisui to
produce the Labrot interlayer as an extruded product" because "[ e ]xtrusion
facilitates formation of the interlayer in a simple and efficient manner" (id.).
Furthermore, the Examiner states that these limitations are product-by-
process limitations that do "not impart any structural or functional
characteristics to the claimed product, absent evidence to the contrary" (id.
at 6).
The Appellant points out that Labrot does not disclose or suggest an
extruded polymer interlayer as specified in claim 1 but, instead, teaches
applying or depositing a luminescent pigment on an extruded PVB interlayer
sheet in a thin film by screen printing, inkjet printing, or other printing (Br.
10). According to the Appellant, "Labrot does not disclose or contemplate
7 2-ethylhaxanoid acid is specified as the carboxylic acid additive in claim 7,
which depends from claim 1 (Br. 1 7).
4
Appeal2018-003969
Application 14/465,803
adding the luminescent pigment prior to extrusion to the composition or
blend and then melt-extruding the blend to form the multilayer interlayer"
(id. at 11 ). The Appellant contends that Sekisui does not cure the
deficiencies in Labrot relative to the claimed subject matter and that its
application in an attempt to overcome the deficiencies in Labrot constitutes
impermissible hindsight reasoning (id. at 10).
We agree with the Appellant. Labrot describes an interlayer for
joining together two transparent sheets in a laminated glazing (Labrot ,r 18).
Labrot teaches that a hydroxyterephthalate-type luminophore material is
integrated into the interlayer (id.). In one embodiment, Labrot teaches that
the transparent sheets are joined together by a multilayer foil incorporating a
polyvinyl butyral (PVB) interlayer, e.g., a foil having PVB/PET
(polyethylene terephthalate )/PVB layers (id. ,r 28). Labrot further teaches
that "[t]he luminophore may be deposited on the PVB foil by, for example,
screenprinting techniques, inkjet printing techniques or offset, flexographic
or photogravure printing techniques" and that, preferably, one of these
"techniques is carried out by dissolving or dispersing the luminophore
particles in at least one matrix [ such as a binder based on PVB] chosen for
facilitating the incorporation and very rapid dissolution of the luminophore
in the thermoplastic foil" (id. ,r,r 45--47).
Thus, consistent with the Appellant's position, Labrot does not
contemplate mixing all the components that make up the interlayer and then
extruding the interlayer or mixing all the components making up the foil and
then extruding to form a multilayer foil. Instead, Labrot teaches that the
luminophore particles may be dispersed or dissolved in a PVB binder for
5
Appeal2018-003969
Application 14/465,803
facilitating the incorporation and rapid dissolution of the deposited
luminophore in the thermoplastic foil.
The Examiner's reliance on Sekisui to bridge the gap between Labrot
and claim 1 is misplaced. Sekisui' s interlayer preparation technique
involving kneading and mixing of all the components by extrusion (Sekisui
11) has not been shown to be interchangeable with Labrot's technique
involving dispersion or dissolution of the luminophore particles in a PVB
binder prior to its application on the multilayer foil including the PVB
interlayer. In re Nuvasive, Inc., 842 F.3d 1376, 1381-82 (Fed. Cir. 2016)
( conclusory statement is insufficient to support obviousness).
Moreover, the Examiner's failure to give any weight to the process
limitations in claim 1 in assessing its patentability constitutes reversible
error. Specifically, the Examiner does not explain why Labrot's technique
of depositing a luminophore dispersion or solution in a PVB binder on a
multilayer foil including an interlayer for facilitating the incorporation and
very rapid dissolution of the luminophore in the foil would be expected to
yield the same or similar interlayer as an interlayer obtained by mixing all
the interlayer' s components and then extruding the interlayer. Although the
patentability of a product depends on the product itself and not the process
by which it is made, the burden of presenting a prima facie case of
unpatentability is on the PTO. Cf In re Thorpe, 777 F.2d 695, 697 (Fed.
Cir. 1985) (initial burden satisfied when PTO relied on Thorpe's documents
of record and statements to support structural similarity).
For the foregoing reasons, no prima facie case of obviousness has
been established. Therefore, we do not sustain the Examiner's rejection.
6
Appeal2018-003969
Application 14/465,803
IV. NEW GROUND OF REJECTION
We enter a new ground of rejection under 35 U.S.C. § 103 against
claims 1, 2, and 4--20 as unpatentable over Sekisui in view of Labrot.
Sekisui describes an intermediate film 2 for forming laminated glass
1, wherein the intermediate film is sandwiched between two glass members
21 and 22 (Sekisui 4, Fig. 1 ). Sekisui teaches that the intermediate film 2
includes a thermoplastic resin, a plasticizer, a cyanine dye having a
maximum absorption wavelength in a near-infrared region, and 0.001-10
wt.% of an organic acid having 5-15 carbon atoms (id. at 1 (Abstract), 4).
As a suitable thermoplastic resin, Sekisui discloses a polyacetal resin, such
as PVB (id. at 5---6). As a suitable plasticizer, Sekisui teaches various
compounds such as phthalates (id. at 7), which the Inventors describe as
having a refractive index of about 1.480 to about 1.540 (Spec. ,r 59), which
falls within "at least about 1.460" recited in by claim 9. As a suitable
organic acid, Sekisui discloses 2-ethylhexanoic acid (Sekisui 9), which is
recited in claim 7 currently on appeal and described in the current
Specification as having a pKa of 4.8 (Spec. ,r 100 (Table 3)). In addition to
these components, Sekisui teaches that other components including, inter
alia, a pigment, dye, or fluorescent whitening agent (Sekisui 11 ).
Furthermore, as a method for manufacturing the intermediate film, Sekisui
teaches kneading and mixing the components and then molding the film by
extrusion molding (id.).
Thus, Sekisui' s intermediate film differs from the interlayer recited in
claim 1 only in that the former does not include a luminescent pigment as
specified in the claim. As we found above, however, Sekisui teaches that
other pigments may be used in addition to the cyanine dye.
7
Appeal2018-003969
Application 14/465,803
Labrot teaches that "the choice of luminophore ... appears to be
crucial and is necessarily a compromise between various characteristics and
properties associated with such a use" (Labrot ,r 11 ). According to Labrot,
such characteristics and properties include high luminance, transparency
(low haze), chemical compatibility, color neutrality (Yellowness Index), and
maximum durability in ageing tests under incident and incident concentrated
solar UV radiation (id. ,r,r 12-17). According to Labrot,
hydroxyterephthalates (e.g., diethyl-2,5-dihydroxyterephthalate (DDTP),
(H0)2C6H2(C02CH2CH3)2 with an emission wavelength close to 450 nm)
having structures falling within the scope of the claims on appeal, are
suitable luminophores that may be included in a PVB-based interlayer used
in laminated glass (Labrot ,r,r 18-29).
Although Labrot' s method for incorporating the luminophore particles
does not involve melting and extruding (id. ,r 46), a person having ordinary
skill in the art would have been prompted to add Labrot's
hydroxyterephthalate luminophore particles as an additional pigment in
Sekisui' s intermediate film with a reasonable expectation of achieving a
compromise in various characteristics such as luminance, transparency, and
Yellowness Index. The fluorescence wavelength as specified in claim 1
would follow upon combining Sekisui and Labrot in manner as discussed
above. In re Kubin, 561 F.3d 1351, 1357 (Fed. Cir. 2009) ("Even ifno prior
art of record explicitly discusses the [limitation], [applicant's] application
itself instructs that [ the limitation] is not an additional requirement imposed
by the claims on the [ claimed invention], but rather a property necessarily
present in [the claimed invention]."); In re Wiseman, 596 F.2d 1019, 1023
(CCPA 1979) (rejecting the appellants' argument that "a structure suggested
8
Appeal2018-003969
Application 14/465,803
by the prior art, and, hence, potentially in the possession of the public, is
patentable to them because it also possesses an [i]nherent but hitherto
unknown, function which they claim to have discovered"); Ex parte Obiaya,
227 USPQ 58, 60 (BPAI 1985) ("The fact that appellant has recognized
another advantage which would flow naturally from following the
suggestion of the prior art cannot be the basis for patentability when the
differences would otherwise be obvious.").
The Appellant argues:
[The Inventors] have discovered that the use of a
thermoplastic resin, at least one fluorescent or luminescent
pigment and a carboxylic acid additive, when melt-extruded to
form an extruded polymer interlayer, creates an interlayer having
decreased color or lower yellowness index (less discoloration)
and decreased or less haze compared to conventional interlayers
that have been extruded with fluorescent pigments without the
carboxylic acid additive, without sacrificing other physical and
optical characteristics. The combination of the fluorescent
pigment, when selected to have the desired absorption and
emission ranges, and the additive, when selected within a pKa
range of about 2 to 10, results in an interlayer having excellent
optical properties as measured by color or yellowness, or the
change in yellowness index.
(Br. 12). In support, the Appellant relies on the data presented in the
Specification (Spec. ,r,r 95 (Table 1 ), 100 (Table 3) ).
The proffered evidence is insufficient. Table 1 shows that when 0.3
phr of 2-ethylhexanoic acid is added to an interlayer composition comprising
38 phr of 3GEH plasticizer, 0.6 phr ofDDTP luminescent pigment, and 0.25
or O. 5 phr of a commercial UV absorber, Yellowness Index and haze (%) are
reduced. Table 3 shows results for various carboxylic acids having different
pKa values. The results, however, have not been shown to be unexpected in
view of Sekisui' s disclosure, which teaches that the incorporation of an
9
Appeal2018-003969
Application 14/465,803
organic acid such as 2-ethylhexanoic acid enhances transparency as well as
weather resistance (Sekisui 9, 13-15 (examples)). In re Baxter Travenol
Labs., 952 F.2d 388, 392 (Fed. Cir. 1991) ("[W]hen unexpected results are
used as evidence of nonobviousness, the results must be shown to be
unexpected compared with the closest prior art.").
Moreover, the showing is not commensurate in scope with the claims,
which are considerably broader in scope than the specific compositions
shown in, e.g., Table 1 in the Specification. See, e.g., In re Grasselli, 713
F.2d 731, 743 (Fed. Cir. 1983) ("With respect to appellants' broad claims to
a catalyst with 'an alkali metal,' the experiments detailed in Friedrich III,
being limited to sodium only, are not commensurate in scope, and are,
therefore, insufficient to rebut the prima facie case.").
For these reasons, we conclude that the subject matter recited in the
claims would have been obvious to a person having ordinary skill over
Sekisui in view of Labrot.
We designate our decision as including a new ground of rejection
because we have relied on additional facts and reasoning in support of the
obviousness conclusion. Our new ground of rejection designation preserves
the procedural safeguards that must be afforded to the Appellant. In re
Leithem, 661 F.3d 1316, 1319 (Fed. Cir. 2011) ("Mere reliance on the same
statutory basis and the same prior art references, alone, is insufficient to
avoid making a new ground of rejection when the Board relies on new facts
and rationales not previously raised to the applicant by the examiner.").
37 C.F.R. § 4I.50(b) provides that "[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review."
37 C.F.R. § 4I.50(b) also provides that the Appellants, WITHIN TWO
10
Appeal2018-003969
Application 14/465,803
MONTHS FROM THE DATE OF THE DECISION, must exercise one of the
following two options with respect to the new ground of rejection to avoid
termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new evidence relating to the claims so rejected, or both,
and have the matter reconsidered by the Examiner, in which event the
proceeding will be remanded to the Examiner ....
(2) Request rehearing. Request that the proceeding be reheard under
§ 41.52 by the Board upon the same record ....
V. SUMMARY
The rejection under 35 U.S.C. § 103 of claims 1, 2, and 4--20 is not
sustained.
The provisional obviousness-type double patenting rejection of claims
1, 2, 4--6, and 8-20 is dismissed as moot.
A new ground of rejection under 35 U.S.C. § 103 is entered.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
REVERSED; 37 C.F.R. § 4I.50(b)
11