Ex Parte D et al

Patent Trials and Appeals BoardMar 12, 2019

14465803 - (D) (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. Â§ 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. Â§ 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. Â§ 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. Â§ 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. Â§ 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. Â§ 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. Â§ 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 Â§ 41.52 by the Board upon the same record .... V. SUMMARY The rejection under 35 U.S.C. Â§ 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. Â§ 103 is entered. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a). REVERSED; 37 C.F.R. Â§ 4I.50(b) 11