Ex Parte Haag et al

Patent Trial and Appeal Board

Sep 25, 2018

13501304 (P.T.A.B. Sep. 25, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/501,304 04/11/2012
32692 7590 09/27/2018
3M INNOVATIVE PROPERTIES COMPANY
PO BOX 33427
ST. PAUL, MN 55133-3427
UNITED ST A TES OF AMERICA
FIRST NAMED INVENTOR
AdamD. Haag
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.
65766US005 1096
EXAMINER
MAYY, MOHAMMAD
ART UNIT PAPER NUMBER
1718
NOTIFICATION DATE DELIVERY MODE
09/27/2018 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):
LegalUSDocketing@mmm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ADAM D. HAAG,
WILLIAM F. EDMONDS, JASON S. PETAJA,
ERIC W. NELSON, WILLIAM BLAKE KOLB,
ENCAI HAO, PEI LU, and MICHAEL BENTON FREE
Appeal2017---010374
Application 13/501,304
Technology Center 1700
Before MICHAEL P. COLAIANNI, GEORGE C. BEST, and
N. WHITNEY WILSON, Administrative Patent Judges.
WILSON, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134 from the Examiner's
October 6, 2016 decision finally rejecting claims 1, 2, 4, 6, 13, 61, and 62.
Claims 5, 29, 39, 46, 47, 53-55, and 58 are withdrawn from consideration as
being directed to a non-elected invention. We have jurisdiction over the
appeal under 35 U.S.C. § 6(b ).
We affirm-in-part.
1 Appellants state that the real party in interest is 3M Company (Appeal Br. 3).
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Application 13/501,304
CLAIMED SUBJECT MATTER
Appellants' invention is directed to a process for the manufacture of
articles having a structure of nanometer sized pores and voids (Spec. 1 :23).
The described process is said to avoid the need for a wash step, which
removes surfactants, oils or chemical residues used to form the structure, but
which can limit the size ranges and uniformity of the pores or voids
produced (id. at 2:6-9; 2:15-16).
Claims 1 and 61 are representative and are reproduced below from the
Claims Appendix of the Appeal Brief (emphasis added):
1. A process comprising:
applying a coating comprising a first solution comprising
a polymerizable material in a solvent onto a substrate;
exposing a first region of the coating to a first curing
environment and a second region of the coating to a different
second curing environment to at least partially polymerize the
polymerizable material to form an insoluble polymer matrix
bi continuous with a plurality of nanovoids and a second
solution, the second solution occupying the plurality of
nanovoids, wherein the second solution comprises the solvent,
wherein an average diameter of each nanovoid of the plurality
of nanovoids is between about 1 nm to about 1000 nm, wherein
a first volume fraction of the plurality of nanovoids proximate
the first region of the coating is less than a second volume
fraction of the plurality of nanovoids proximate the adjacent
region of the coating; and
removing a major portion of the solvent from the second
solution.
61. The process of claim 1, wherein the first solution is
substantially free of a nanovoid template agent.
(Appeal Br. 19, 20 (Claims App.)).
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Application 13/501,304
REJECTIONS
(1) Claims 61 and 62 are rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
(2) Claims 1, 6, 13, 61, and 62 are rejected under 35 U.S.C. § I03(a)
as unpatentable over Adams2 in view of Takada. 3
(3) Claims 2 and 4 are rejected under 35 U.S.C. § I03(a) as
unpatentable over Adams in view of Takada, and further in view of Ahn. 4
DISCUSSION
Rejection (1)
Appellants' arguments focus on limitations recited in both claims 61
and 62. Because Appellants argue the rejection of these claims as a group,
we select claim 61 as representative. 37 C.F.R. § 4I.37(c)(l)(iv).
To satisfy the written description requirement of§ 112, the
specification must allow a person of ordinary skill in the art to recognize that
the inventor invented what is claimed. In re Gosteli, 872 F.2d 1008, 1012
(Fed. Cir. 1989). The specification must reasonably convey to a person of
ordinary skill in the art that the inventor had possession of the claimed
subject matter as of the filing date. Ralston Purina Co. v. Far-Mar-Co, Inc.,
772 F.2d 1570, 1575 (Fed. Cir. 1985); see also Vas-Cath Inc. v. Mahurkar,
935 F.2d 1555, 1563 (Fed. Cir. 1991). The specification, however, need not
describe the claimed subject matter word-for-word. In re Wertheim, 541
F.2d 257,262 (CCPA 1976).
2 Adams et al., US 2004/0109950 Al, published June 10, 2004.
3 Takada et al., US 2008/0070998 Al, published March 20, 2008.
4 Ahn et al., US 2009/0111701 Al, published April 30, 2009.
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In this instance, the Examiner finds that the requirement that "the first
solution is substantially free of a nanovoid template agent," as recited in
claim 61, is not described in the Specification within the meaning of§ 112
(Final Act. 4).
Appellants argue that the Specification at Examples A, B, and 1,
exemplifies and "describe[ s] composition coatings that do not include a
template agent, yet result in pores" (Appeal Br. 16). Therefore, according to
Appellants, "a person of ordinary skill in the art would have reasonably
understood Appellant[s'] specification to at least inherently provide support
for coating compositions that do not include a template agent" (id.).
Appellants further argue that negative limitations, such as the one
recited in claim 61, are adequately supported when the "' specification
describes a reason to exclude the relevant limitation"' (Appeal Br. 17 ( citing
Inphi Corp. v. Netlist, Inc., 805 F.2d 1350, 1355 (Fed. Cir. 2015) (internal
citations omitted))). Appellants argue that the Specification describes a
reason to exclude a template agent because the described process "avoid[ s]
washing or additional steps to remove the nanovoid template agent" (Reply
Br. 6). Appellants further direct our attention to Ex parte Parks, 30 USPQ2d
1234, 1236 (BP AI 1993), for holding that the addition of a disputed term,
which did not appear in the original disclosure, nevertheless complied with
the description requirement (Appeal Br. 17).
Appellants' arguments are not persuasive.
In Inphi Corp., at issue was whether a negative claim limitation,
which limited the claimed chip selects to exclude three particular types of
signals (CAS, RAS, and bank-address signals), satisfied the written
description requirement of§ 112, first paragraph. Inphi 805 F.3d at 1352.
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Our reviewing Court held that substantial evidence supported the Board's
finding that the specification properly distinguished the relevant CAS, RAS,
and bank-address signals types as alternative features of the patented
invention. Id. at 1356-1357 (citing Santarus, Inc. v. Par Pharm., Inc., 694
F.3d 1344, 1351 (Fed. Cir. 2012)). The Inphi Court further opined that if
"alternative elements [ or features] are positively recited in the specification,
they may be explicitly excluded in the claims." Inphi 805 F.3d at 1356
(internal citations omitted).
The facts at hand are distinguishable from those presented in Inphi.
We agree with the Examiner that the Specification as filed does not disclose
a "template agent" or "nanovoid template agent," nor does the Specification
convey, in a reasonable matter, what the template agent material is (see Ans.
2). The Specification describes a process said to avoid the need for a wash
step to remove certain materials (Spec. 2:6-8; 2: 15-16). Even assuming that
the Specification's disclosed "materials[,] such as surfactants, oils, or
chemical residues used to form the [nanovoid] structure" (Spec. 2:7), include
the materials that comprise a "nanovoid template agent" as an alternative
element or feature, this disclosure is insufficient to meet the § 112, first
paragraph, standard set by Inphi. In other words, the Specification does not
support a reason to exclude a "template agent" or a "nanovoid template
agent" when the disclosure as filed fails to positively recite these agents at
all.
Furthermore, the Parks case is non-precedential and thus a non-
binding opinion of our predecessor Board. In Parks, the applicant submitted
expert declaration testimony to establish what was conveyed by the
specification to a person skilled in the art. Parks, 30 USPQ.2d at 1236-37.
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No similar evidence has been presented here. We have only counsel
argument.
Accordingly, we affirm the § 112, first paragraph, rejection of claims
61 and 62 for the reasons set forth above. 37 C.F.R. § 4I.37(c)(l)(iv).
Rejections (2) and (3)
Appellants do not offer separate substantive arguments in support of
any of the dependent claims; arguments are directed to limitations recited in
independent claim 1 (see Appeal Br. 5-15; Reply Br. 2-5). Accordingly,
our discussion will focus on Appellants' arguments in support of claim 1.
Claims 2, 4, 6, 13, 61, and 62 will stand or fall with claim 1. 37 C.F.R.
§ 4I.37(c)(l)(iv).
The Examiner finds that Adams teaches or suggests each limitation
recited in claim 1, with the exception that, inter alia, Adams does not teach
that "a first volume fraction of the plurality of nano voids proximate the first
region of the coating is less than a second volume fraction of the plurality of
nanovoids proximate the adjacent region of the coating." Ans. 2--4.
However, the Examiner finds that
Takada teaches having a First region with small curing energy
(first curing environment) to have First volume fraction, and
where the Second/adjacent region with large curing energy
( different curing environment) to have Second volume fraction
... , and where the first volume fraction with nano pores/nano-
voids are less than the second volume fraction with nanovoids.
(Ans. 4 (citing Adams Fig. 19); see also Ans. 5 (Fig. 19 with Examiner's
annotations)). The Examiner further finds that Takada teaches the use of
UV irradiation to cure a disclosed polymer (Ans. 4 (citing Adams ,r 128)).
The Examiner concluded that it would have been obvious for the ordinary
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skilled artisan to have combined "Adams with Takada and irradiate the film
using UV from the second region [to] provide [the film] with continuous and
gradient nano pores that are highly dispersed within the formed film"
(Ans. 4).
Appellants argue, inter alia, that the "[t]he Examiner has not
established that merely because Takada describes a gradient foam, a person
would have sought to have provided a continuous and gradient nanopores
that are highly dispersed within the film of Adams" (Appeal Br. 11-12).
According to Appellants, the Examiner has not established that such a
modification would have been understood by the ordinary skilled artisan
to have been an improvement. The mere description of a
feature by a reference does not support an assertion that the
feature is an improvement. For example, the Examiner has not
even identified what property or condition of the composition
of Adams would be 'improved' by modifying the composition
of Adams in view of Takada in the manner proposed.
(Reply Br. 4 ).
Appellants' arguments are persuasive.
It is well understood that "rejections on obviousness grounds cannot
be sustained by mere conclusory statements; instead, there must be some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness." KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398,
418 (2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). The
fact that a reference may be modified to reflect features of the claimed
invention does not make the modification, and hence the claimed invention,
obvious unless the prior art suggested the desirability of such modification.
In re Mills, 916 F.2d 680, 682 (Fed. Cir. 1990).
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The Examiner has not provided adequate reasoning to explain why a
person of skill in the art would have modified Adams' porous organic
polysilica films with Takada's continuous and gradient nanopores (see Ans.
4, 13). Furthermore, we agree with Appellants that "[t]he Examiner has not
identified any problem or teaching in Adams or Takada that would have led
a person having ordinary skill to provide continuous and gradient nanopores
within the film of Adams" (Appeal Br. 13). Without adequate reasoning, the
Examiner has not established a prima facie case of obviousness.
Thus, Appellants' arguments have identified reversible error in the
Examiner's determination that Adams in view of Takada renders claim 1
obvious.
Accordingly, we reverse the§ 103(a) rejections of claims 1, 2, 4, 6,
13, 61, and 62 for the reasons set forth above. 37 C.F.R. § 4I.37(c)(l)(iv).
We express no opinion with respect to Appellants' other arguments
urging reversal of the Examiner's§ 103(a) rejections.
CONCLUSION
We AFFIRM the rejection of claims 61 and 62 under 35 U.S.C. § 112,
first paragraph, as failing to comply with the written description
requirement.
We REVERSE the rejection of claims 1, 6, 13, 61, and 62 under
U.S.C. §103(a) as unpatentable over Adams in view ofTakada.
We REVERSE the rejection of claims 2 and 4 under
35 U.S.C. § 103(a) as unpatentable over Adams in view ofTakada, and
further in view of Ahn.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 3 7 C.F .R. § 1.13 6( a )(1 )(iv).
AFFIRMED-IN-PART
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