Ex Parte Haag et alDownload PDFPatent Trial and Appeal BoardSep 25, 201813501304 (P.T.A.B. Sep. 25, 2018) Copy Citation 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 Claims 5, 29, 39, 46, 47, 53-55, and 58 are withdrawn from consideration as being directed to a non-elected invention.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). Appeal2017---010374 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.)). 2 Appeal2017---010374 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. 3 Appeal2017---010374 Application 13/501,304 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. 4 Appeal2017---010374 Application 13/501,304 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. 5 Appeal2017---010374 Application 13/501,304 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 6 Appeal2017---010374 Application 13/501,304 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). 7 Appeal2017---010374 Application 13/501,304 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. 8 Appeal2017---010374 Application 13/501,304 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 9 Copy with citationCopy as parenthetical citation