Ex Parte Dake et al

Patent Trials and Appeals Board

Jun 21, 2019

13515629 - (D) (P.T.A.B. Jun. 21, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/515,629 06/13/2012
109143 7590
DSM North America Inc.
Patent Department
6480 Dobbin Road
Columbia, MD 21045
06/25/2019
FIRST NAMED INVENTOR
Ken Dake
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.
27940-US-PCT 7051
EXAMINER
ROSWELL, JESSICA MARIE
ART UNIT PAPER NUMBER
1767
NOTIFICATION DATE DELIVERY MODE
06/25/2019 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):
dsmna.ip@dsm.com
dsm_PAIR@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KEN DAKE, JIGENG XU, and TIMOTHY BISHOP
Appeal2017-008899
Application 13/515,629
Technology Center 1700
Before JEFFREY T. SMITH, RAE LYNN P. GUEST, and
CHRISTOPHER L. OGDEN, Administrative Patent Judges.
OGDEN, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 25-31, 33, and 38-50 in the above-identified
application. We affirm.
1 The appeal record includes the following: Specification, June 13, 2012
("Spec."); Final Office Action, Nov. 19, 2015 ("Final Action"); Appeal
Brief, Dec. 19, 2016 ("Appeal Br."); Examiner's Answer, Apr. 6, 2017
("Answer"), and Reply Brief, June 2, 2017 ("Reply Br.").
2 According to the Appellants, the real party in interest is DSM IP Assets
B.V. Appeal Br. 3.
Appeal2017-008899
Application 13/515,629
I. BACKGROUND
Appellants' invention relates to a photocurable resin for use in an
additive fabrication process. Spec. ,i 1. Below, we reproduce sole
independent claim 25, which is representative of the invention:
25. A photocurable resin composition for additive fabrication
compnsmg:
a polymerizable component, further comprising a
free-radically polymerizable component present in an
amount from 15 to 60% by weight of the photocurable resin
composition; and
a cationically polymerizable component present in an
amount of less than 65% by weight of the photocurable resin
composition;
a cationic photoinitiator having a tetrakis(pentafiuorophenyl)
borate anion;
a free-radical photoinitiator;
a 4-Benzoyl-4'-methyl diphenyl sulphide photosensitizer;
wherein the photocurable resin composition is capable of curing
to provide a solid upon irradiation with light emitted from a
light emitting diode (LED), wherein the light has a wavelength
of from 100 nm to 900 nm, having a peak at about 365 nm.
Appeal Br. Al (emphasis of key phrases added). Claims 26-31, 33, and 38-
50 depend directly or indirectly from claim 25. See id. at A2-A8.
The Examiner relies on the following prior art in rejecting the claims
on appeal:
Hayoz et al. (Hayoz) US 2009/0197987 Al Aug. 6, 2009
Kimura et al. (Kimura) WO 2009/057600 Al 3 May 7, 2009
Schon et al. (Schon) us 6,127,092 Oct. 3, 2000
3 The Examiner relies on the corresponding U.S. national stage application
US 2010/0267857 Al (published Oct. 21, 2010) as the English translation.
Final Action 3. All citations Kimura in this decision are to the U.S.
document.
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Application 13/515,629
The Examiner rejects claims 25-31, 33, and 38-50 as unpatentable
under 35 U.S.C. § 103(a) over Hayoz in view of Kimura. Final Action 2-9.
Appellants argue these claims together except for claim 50. Therefore, we
limit our discussion to claims 25 and 50 as they relate to this rejection. See
37 C.F.R. § 41.37(c)(l)(iv).4
The Examiner also rejects claim 39 as unpatentable under 35 U.S.C.
§ 103(a) over Hayoz in view of Kimura and Schon. Final Action 9-10.
However, Appellants do not present any substantive argument with respect
to claim 39 beyond the arguments presented for claim 25. Appeal Br. 34-36.
Therefore, claim 39 falls with claim 25, and we do not specifically address
the claim in our decision.
DISCUSSION
Hayoz discloses "novel sulphonium salt photoinitiators and their use
in photocurable compositions." Hayoz ,-J 1. In the rejection, the Examiner
cites Example 6, which discloses a photocurable resin composition having a
cationic photoinitiator with the following structure:
[
1-l.,(''- .--,. , ' l. ,. II
0
.,;.:, -, ·1n·· -
,,:J 1~0
j
Final Action 3 ( citing Hayoz ,-J 283). While this structure comprises PF6-,
the Examiner states that Hayoz also teaches tetrakis(pentafluorophenyl)
4 In the Reply Brief, Appellants refer to claim 26 as part of an argument
responding to the Examiner's discussion regarding a teaching away
argument with respect to claim 50. See Reply Br. 4-5 (responding to
Answer 15 (citing Appeal Br. 16)). However, Appellants have not
specifically responded to the Examiner's rejection of claim 26.
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Application 13/515,629
borate, the anion recited in claim 25 which has the formula B(C6Fs)4-, as a
suitable alternative. Id. ( citing ,i 72). While Hayoz does not disclose the
photosensitizer 4-Benzoyl-4'-methyl diphenyl sulphide photosensitize as
recited in claim 25, the Examiner finds that Hayoz teaches benzophenone as
a photoinitiator, and also that "benzophenone and 4-Benzoyl-4'-methyl
diphenyl sulphide are functional equivalents for the purpose of initiating
polymerization via free radicals," based on the teachings of Kimura. Id. at 5.
Thus, the Examiner determines that it would have been obvious to substitute
one for the other in the composition of Hayoz. Id.
In this appeal, Appellants make three general arguments: ( 1) that the
Examiner has not provided a credible rationale for selecting and using the
structure recited in claim 25 for the cationic photoinitiator; (2) that the
deficiencies with regard to claim 25 are even more striking in view of the
additional limitation in dependent claim 50; and (3) that Kimura teaches
away from the claimed invention. See Appeal Br. 2 (table of contents), 14.
For the reasons below, Appellants' arguments do not persuade us that the
Examiner reversibly erred in rejecting the claims.
1. The Structure of the Photoinitiator in Claim 25
Appellants acknowledge that "a single potential configuration of a
generic compound containing the claimed anion is possibly derived from the
four comers of the HAYOZ document." Appeal Br. 7 (citing Hayoz ,i 72).
Appellants also acknowledge that Hayoz discloses a list of 33 species of
anion including the one recited in claim 25. See id. at 7-8 & n.2 ( citing
Hayoz ,i 72). However, Appellants argue that Hayoz, as a whole, discloses
at least 360 possible species of anion. See id. at 10-14. According to
Appellants, in determining obviousness, one must look to the document as a
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Application 13/515,629
whole, including portions that would lead away from the claimed invention.
Id. at 10 ( citing W.L. Gore & Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540,
1552 (Fed. Cir. 1983)). Appellants argue that the Examiner has failed to
show why a person of ordinary skill in the art would have selected this
single species out of the 360 total possibilities within Hayoz.
We disagree that Hayoz fails to guide a person of ordinary skill in the
art toward the specific anion recited in claim 25. Moreover, Appellants do
not point to any evidence to establish that Hayoz itself teaches away from
the use ofB(C6Fs)4- as the anion in a cationic photoinitiator.5 To the
contrary, B(C6Fs)4- is one of the "non-nucleophilic anion[s]" that Hayoz
identifies in a short list of "particular" anions generally (see ,-i 37) and in a
"particular[ly] preferred" embodiment. See Hayoz ,-J 87 (the anion "is
halogen or a non-nucleophilic anion, Cft'21+1S03-, C1-C20-
perfluoroalkylsulphonylmethide, (BF4r, (SbF6r, (AsF6r, (PF6r,
(B(C6Fs)4r, and/ is an integer from 1 to 8."); see also Answer 12.
According to the Examiner this is "a rather finite group, ... thus there is
reasonable expectation to try." Answer 14.
Moreover, Hayoz discloses that the particularly preferred anions in the
list that includes B(C6Fs)4- share the common characteristic of being
"halogen or a non-nucleophilic anion." Id. ,-i 87. The list is not so large or
generic that a person of ordinary skill in the art would have been unable to
visualize B(C6Fs)4- in particular, or appreciate that it is a suitable non-
nucleophilic anion for use in a cationic photoinitiator. Because of the
functional and structural similarity of the anions in this list, a person of
5 As discussed below, Appellants argue that Kimura teaches away from the
recited anion.
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Application 13/515,629
ordinary skill in the art would have had reason to select any of them as the
anion for the photoinitiator, including B(C6Fs)4-. Cf In re Dillon, 919 F.2d
688 (Fed. Cir. 1990) (en bane) ("Structural similarity between claimed and
prior art subject matter, ... where the prior art gives reason or motivation to
make the claimed compositions, creates a prima facie case of obviousness.")
Appellants also argue that the Examiner failed to justify the selection
of Example 6 for the structure of the cation part of the structure for the
cationic photoinitiator. See Appeal Br. 8-9. We find this argument
unpersuasive as it relates to claim 25, because that claim does not recite any
specific structure for the cation. See id. at A 1. 6 Thus, any cation structure
within the "particular[ly] preferred" embodiment of Hayoz would fall within
the scope of the photoinitiator recited in claim 25. See Hayoz ,-J,-J 85-86.
2. The Additional Limitation in Claim 50
Claim 50 depends from claim 25 and further recites, "wherein the
cationic photoinitiator having a tetrakis(pentafluorophenyl)borate anion
further possesses a tris( 4-( 4-acetylphenyl)thiophenyl)sulfonium counterion."
Appeal Br. A8. According to the Examiner, Hayoz "teaches, in a preferred
embodiment, [that] the cationic initiator cation is preferably tris( 4-( 4-
acetylphenyl)thiophenyl)sulfonium." Final Action 9 ( citing Hayoz ,-J 283
(Example 6) ). The Examiner notes that while this embodiment includes a
different anion, "other anions are contemplated, such as tetrakis
(pentafluorophenyl)borate." Id. ( citing Hayoz ,-J 72). The Examiner
determines that it would have been obvious to substitute B(C6Fs)4- for PF6-
6 Unlike claim 25, dependent claim 50 recites a particular cation for the
photoinitiator. Appeal Br. A8. We discuss claim 50 below.
6
Appeal2017-008899
Application 13/515,629
in Example 6 because the two anions "are functional equivalents for the
purpose of acting as the anion counter ion to arylsulfonium salt cations." Id.
Appellants acknowledge that "the claimed anion substituent and
cation substituent are each independently derivable somewhere within the
four comers of the HAYOZ document." Appeal Br. 15. However,
Appellants argue that the number of possible choices that Hayoz discloses is
so large that a person of ordinary skill in the art would not have been
motivated to select the particular combination recited in claim 50. See id. In
addition to the 360 possible anions choices discussed in the previous section,
Appellants argue that Hayoz, as a whole, discloses at least 699 possible
cations, totaling more than 250,000 choices (and if an additional
independent choice is included, into the millions) for both components
together. See id. at 17-22. 7
These arguments are not persuasive of reversible error. While Hayoz
as a whole discloses a large number of possible combinations of cation and
anion, the reference also guides a person of ordinary skill in the art toward
the specific combination recited in claim 50. Hayoz discloses, in Example 6,
the specific cation recited in claim 50. See Hayoz ,-J 283. The breadth of the
overall disclosure in Hayoz does not nullify the specific teaching of Example
7 In the Reply Brief, Appellants cite Ex parte Tatarka, Case No. 2014-
007414, 2016 WL 1239173 (PTAB Mar. 28, 2016) as an allegedly analogous
case that warrants a similar result. Reply Br. 14-16. Tatarka is non-
precedential, and it presents a different factual situation. Unlike here, the
prior art in the Tatarka case "d[id] not identify only a finite number of
identified, predictable solutions," and there was a "lack of guidance towards
selecting [the recited structure] over other possibilities in [the reference's]
broad disclosure." Id. at *2 (citing KSR Int'l Co. v. Teleflex Inc., 550 U.S.
398, 421 (2007)).
7
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Application 13/515,629
6. See Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir.
1989) ("That the [prior art reference] discloses a multitude of effective
combinations does not render any particular formulation less obvious.")
In addition, As discussed above with respect to claim 25, Hayoz
specifically identifies the recited anion B( C6F s )4 -, and the Examiner has
provided a persuasive rationale for why a person of ordinary skill in the art
would have selected it as an anion in a cationic photoinitiator. Furthermore,
Hayoz discloses both the anion PF6- of Example 6 and the anion B(C6Fs)4-
recited in claim 50 in the same list of particularly preferred anions. Hayoz
,-J,-J 34, 87. These anions share the common functional characteristic of being
"a halogen or a non-nucleophilic anion," and are structurally similar. See id.
Thus, a person of ordinary skill in the art would have regarded the anions in
this list-including B( C6F s )4 - and PF 6 --as functionally interchangeable,
and would have had a reasonable expectation of success in substituting one
for the other in Example 6.
Citing Hybritech Inc. v. Monoclonal Antibodies, Inc., 802 F.2d 1367,
1383 (Fed. Cir. 1986), Appellants discount the importance of the Examiner's
reference to specific examples and embodiments in Hayoz, because "a
proper obviousness inquiry analyzes the differences between the prior art
and the claimed invention as a whole." Id. at 22. However, in Hybritech,
the Federal Circuit was reversing a judgment that a patent was invalid as
obvious over a combination of about 20 references that "do not as a whole
suggest the claimed invention." 802 F.2d at 13 83. Here, by contrast, the
Examiner determines that a single reference, viewed as a whole, discloses a
8
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Application 13/515,629
genus including the recited photoinitiator, and provides guidance leading a
skilled artisan to the specific species recited in claim 50.8
Appellants also argues that Hayoz teaches away from the cation in
Example 6. According to Appellants, Example 6 is only one of 25 examples,
and not even a preferred embodiment. Appeal Br. 15-16. Moreover,
Appellants allege that Example 6 exhibits an inferior cure speed to other
examples, leading a person of ordinary skill in the art away from Example 6
and toward other embodiments. Id. at 16-17. According to Appellants, both
Hayoz and Appellants' Specification demonstrate that people of ordinary
skill in the art knew that high cure speed ( or alternatively, reactivity) was
highly desirable in promoting cationic polymerization. Reply Br. 3-4 ( citing
Spec. ,-i,-i 25, 28; Hayoz ,-i,-i 3, 6). 9
This argument is not persuasive of reversible error. Hayoz teaches
that the cure speed of Example 6 is 170 m/min, compared to 200 m/min for
8 Appellants also cite Torrent Pharmaceuticals, Ltd. v. Merck Frost Canada
& Co., Case No. 2014-00559, 2014 WL 4961577 (PTAB Oct. 1, 2014) as an
allegedly analogous case that warrants a similar result. Torrent is non-
precedential, and it presents a different factual situation. Unlike the
Examiner in this case, who has presented a reason to combine the cation of
Example 6 with an anion from a particularly preferred example, the
Petitioner in Torrent "ha[ d] not sufficiently explained why one skilled in the
art would have selected the claimed substituents at each of the six
independent positions all at once." Id. at *5.
9 In the Reply Brief, Appellants also argue that claim 26 requires fast
photospeed because it recites specific ranges for "Critical Exposure (Ee) and
a Depth of Penetration (Dp) as measured on a layer of the photocurable resin
composition as the composition is curing" that correspond to fast curing.
Reply Br. 4. However, Appellants have not presented any evidence or
technical reasoning that would enable us to compare the ranges in claim 26
to the corresponding cure speeds recited in Example 6 of Hayoz.
9
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Application 13/515,629
some of the other examples. Hayoz ,i 348. "A reference does not teach
away, however, if it merely expresses a general preference for an alternative
invention but does not 'criticize, discredit, or otherwise discourage'
investigation into the invention claimed." DePuy Spine, Inc. v. Medtronic
Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009) (citing In re
Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004)). Appellants have not pointed
to any teaching in Hayoz that criticizes, discredits, or otherwise discourages
the use of the cation in Example 6. Moreover, Appellants have not presented
evidence on the appeal record that a person of ordinary skill in the art would
have considered a cure rate of 170 m/min to be undesirable, or that this cure
rate would have made it unsuitable for its intended purpose.
3. Appellants' Argument that Kimura Teaches Away from
the Claimed Invention
Appellants argue that Kimura teaches away from the use of tetrakis
(pentafluorophenyl)borate anion in the composition of Hayoz. See Appeal
Br. 26-27. According to Appellants, Kimura "expressly and unequivocally
disavows the use of [fluorine-substituted tetraphenyl boric acid anions J as
incompatible with the objects of its own invention." Id. at 27. In particular,
Appellants argue that Kimura identifies two problems with the use of such
anions: "(l) they possess inferior photo-acid generating capacity; and (2)
they tend to color resin compositions into which they are associated." Id. at
28 ( citing Kimura ,i 5). According to Appellants, Kimura teaches that "the
application thereof is restricted in cases where these anions are used as a
cationic polymerization initiator." Id. ( citing Kimura ,i 5).
Appellants also point out Kimura uses the tetrakis(pentafluorophenyl)
borate anion in a comparative example, indicating that its spectral sensitivity
10
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Application 13/515,629
at 365 nm is 42 mJ/cm2, compared to 13-25 mJ/cm2 in the example cationic
polymerization initiators that include different anions. 10 Appeal Br. 29-30.
Appellants further argue that Kimura shows comparative examples using
tetrakis(pentafluorophenyl)borate in which the transmittance at 425 nm is
significantly lower than that of examples that use other ions. Id. at 30-31.
These arguments are not persuasive of reversible error. While Kimura
teaches that B( C6F s )4 - has certain disadvantages, the reference also
characterizes it, and other fluorine-substituted tetraphenyl boric acid ions, as
well-known, less toxic alternatives to SbF6-. Id. ,-i,-i 2, 5. While praising
SbF 6 - as "superior" in terms of decomposition rate and acid-generating
capacity, see id., Kimura includes SbF 6 - along with B( C6F s )4 - in its
comparative examples. See Kimura ,-i,-i 23 8 (Table 1 ), 240 (Table 2). 11 Thus,
Kimura suggests that there are factors other than those in Tables 1 and 2 that
a skilled artisan would have considered when selecting an anion for a
cationic photoinitiator.
As discussed above, Hayoz clearly teaches that B(C6Fs)4- is a suitable
anion for use with a cationic photoinitiator. See Hayoz ,-J 87. Even if we
were to determine that Kimura' s disclosure rises to the level of teaching
10 Appellants note that claim 25 refers to this wavelength of 365 nm. See id.
at 30. The claim requires that the photocurable resin is "capable of curing to
provide a solid" when irradiated with light having this peak wavelength.
Appeal Br. Al (emphasis added). However, Appellants do not argue that the
resin in Hayoz, as modified by Kimura, lacks this capability.
11 Kimura also includes phosphorus hexafluoride (PF 6 -) as a comparative
example. Hayoz features PF 6 - prominently, in 10 of its 24 examples,
including Example 6. See Hayoz ,-J,-J 268-339. Nevertheless, Kimura
teaches that its spectral sensitivity is significantly inferior to B(C6Fs)4- and
SbF 6 -. See Kimura ,-J 23 8 (Table 1, "Comparative Example Compound 3 ").
11
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away from the claimed invention, "there is no rule that a single reference
that teaches away will mandate a finding of nonobviousness. Likewise, a
given course of action often has simultaneous advantages and disadvantages,
and this does not necessarily obviate motivation to combine." Medichem,
S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006). Kimura's
disclosure of new anions with spectral features superior to B(C6Fs)4- is not
enough to remove it from the list of anions that a skilled artisan would have
had reason to consider, at the time of invention, for use in a cationic
photoinitiator for a photocurable resin. Thus, we find that Hayoz' s teaching
outweighs Kimura's teaching that B(C6Fs)4- is inferior to other known
anions in terms of acid generating capacity, spectral sensitivity and
coloration. See In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994)
("[Teachings] must be weighed in substance. A known or obvious
composition does not become patentable simply because it has been
described as somewhat inferior to some other product for the same use.")
Appellants also argue that even if a skilled artisan had reason to
consider the teachings of Kimura in combination with Hayoz, they "would
not be motivated to select the claimed photosensitizer," because Kimura
only discloses the photosensitizer with respect to "the present invention."
Reply Br. 12-13 ( citing Kimura ,-J 94). We disagree. Kimura states that
"[t]he energy beam-sensitive radical polymerization initiator of the present
invention can be any compound as long as it can initiate radical
polymerization by being irradiated with an energy beam." Kimura ,-J 94.
This is a functional disclosure, and among Kimura's preferred examples, the
reference lists both benzophenone (which Hayoz discloses for the same
purpose, see ,-i 205) and benzyl compounds (including, specifically, 4-
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benzoyl-4'-methyl diphenyl sulphide) as having this function. Id. at ,i,i 94,
96. Thus, Appellants' argument fails to identify reversible error in the
Examiner's rationale for combining Kimura with Hayoz.
For the above reasons, we sustain the Examiner's determination that
claims 25 and 50 are unpatentable under 35 U.S.C. § 103(a) over Hayoz and
Kimura. Claims 26-31, 33, and 38-49 fall with claim 25, for the same
reasons. Therefore, we affirm the Examiner's decision as to all claims.
DECISION
The Examiner's decision is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended. See 37 C.F.R. §§ l.136(a)(l )(iv), 41.50(±)
(2018).
AFFIRMED
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