Ex Parte Hager et al

Patent Trial and Appeal BoardSep 6, 2013

10591289 (P.T.A.B. Sep. 6, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 10/591,289 08/31/2006 Harald Hager 7601/88288 9193 66991 7590 09/06/2013 LAW OFFICE OF MICHAEL A. SANZO, LLC 15400 CALHOUN DR. SUITE 125 ROCKVILLE, MD 20855 EXAMINER LEONARD, MICHAEL L ART UNIT PAPER NUMBER 1763 MAIL DATE DELIVERY MODE 09/06/2013 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte EVONIK DEGUSSA GmbH Inventors: Harald Hager, Thomas Hasskerl, Roland Wursche, Gunther Ittmann, Hans-Guenter Lohkaemper, and Klaus-Dieter Schuebel ____________________ Appeal 2013-000895 Application 10/591,289 Technology Center 1700 ____________________ Before FRED E. McKELVEY, RICHARD E. SCHAFER and RICHARD TORCZON, Administrative Patent Judges. McKELVEY, Administrative Patent Judge. DECISION ON APPEAL Background 1 Evonik Degussa GmbH (“applicant”), the real party in interest (Brief, 2 page 2), seeks review under 35 U.S.C. § 134(a) of a final rejection dated 3 04 January 2012. 4 The appeal is being deciding concurrently with a related appeal in Ex parte 5 Evonik Degussa GmbH, Appeal 2012-005125. 6 The application on appeal was filed in the PTO on 31 August 2006. 7 Appeal 2013-000895 Application 10/591,289 2 The application was earlier filed on 18 February 2005 as International 1 Application PCT/EP/2005/001689, which entered the national stage as to the 2 United States. 35 U.S.C. § 371. 3 Applicant claims priority of German patent application 10 2004 010 504.9, 4 filed 04 March 2004. 5 The application has been published as U.S. Patent Application Publication 6 2007/0173581 A1. 7 Prior art 8 In support of prior art rejections, the Examiner relies on the following 9 evidence. 10 Fisher U.S. Patent 6,620,872 B2 16 Sept. 2003 Joachimi et al. “Joachimi” U.S. Patent Application Publication 2003/0130381 A1 10 July 2003 Wissman U.S. Patent Application Publication 2004/0030384 A1 12 Feb. 2004 Carroll U.S. Patent Application Publication 2005/0137305 A1 23 June 2005 filed 01 Nov. 2004 Applicant does not contest the prior art status of the Examiner’s evidence. 11 We have jurisdiction under 35 U.S.C. § 134(a). 12 Claims on appeal 13 Claims 61-80 are on appeal. Brief, page 4 and 13-15. 14 Appeal 2013-000895 Application 10/591,289 3 Rejections 1 In the Answer, the Examiner has maintained the following rejections: 2 Rejection 1 3 Claims 76-78 stand rejected as unpatentable under § 103 over Joachimi and 4 Carroll. Answer, page 3. 5 In presenting the appeal, applicant does not argue the separate patentability 6 of Claims 77-78 apart from Claim 76. Brief, page 7. Accordingly, we decide 7 Rejection 1 on the basis of Claim 76. 37 C.F.R. § 41.37(c)(1)(iv), as amended, 8 Notice of Final Rule, 76 Fed. Reg. 72270, 72297 (Nov. 22, 2011). 9 Rejection 2 10 Claim 79 stands rejected as unpatentable under § 103 over Joachimi, Carroll 11 and Fisher. Answer, page 4. 12 In presenting the appeal, applicant does not argue Rejection 2 apart from 13 Rejection 1. Brief, page 7. Accordingly, we decide Rejection 2 on the basis of 14 Rejection 1. 37 C.F.R. § 41.37(c)(1)(iv), as amended, Notice of Final Rule, 76 15 Fed. Reg. 72270, 72297 (Nov. 22, 2011). 16 Rejection 2 stands or falls with Rejection 1. Brief, page 7. 17 Rejection 3 18 Claims 61-69, 71-75 and 80 stand rejected as unpatentable under § 103 over 19 Joachimi, Carroll and Wissman. Answer, page 5. 20 In presenting the appeal, applicant does not argue the separate patentability 21 of claims 62-69, 71-75 or 80 apart from Claim 61. Accordingly, we decide 22 Rejection 3 on the basis of Claim 61. 37 C.F.R. § 41.37(c)(1)(iv), as amended, 23 Notice of Final Rule, 76 Fed. Reg. 72270, 72297 (Nov. 22, 2011). 24 Appeal 2013-000895 Application 10/591,289 4 Rejection 4 1 Claim 70 stands rejected as unpatentable under § 103 over Joachimi, Carroll, 2 Wissman, and Fisher. Answer, page 6. 3 In presenting the appeal, applicant does not argue Rejection 4 apart from 4 Rejection 3. Accordingly, we decide Rejection 4 on the basis of Claim 61. 5 37 C.F.R. § 41.37(c)(1)(iv), as amended, Notice of Final Rule, 76 Fed. Reg. 72270, 6 72297 (Nov. 22, 2011). 7 Rejection 4 stands or falls with Rejection 3. Brief, page 7. 8 Rejection 5 9 Claims 76-78 were newly rejected under § 102 as anticipated by Carroll. 10 Answer, page 7. 11 Applicant’s response to the new rejection appears on pages 9-11 of the 12 Reply Brief. 13 In presenting the appeal, applicant does not argue the separate patentability 14 of claims 77-78 apart from Claim 76. Accordingly, we decide Rejection 5 on the 15 basis of Claim 61. 37 C.F.R. § 41.37(c)(1)(iv), as amended, Notice of Final Rule, 16 76 Fed. Reg. 72270, 72297 (Nov. 22, 2011). 17 Invention 18 The claimed invention is directed to (1) a method of making a plastic 19 material (e.g., Claim 76) and (2) a method for welding a plastic material (e.g., 20 Claim 61). 21 Appeal 2013-000895 Application 10/591,289 5 Claim 76—Method of making plastic material 1 Claim 76, which we reproduce from the Claims Appendix of the Brief 2 (pages 14-15), reads [matter in brackets and indentation added; principal 3 limitations in issue in italics]: 4 A method for producing a high-transparency laser-markable 5 and/or laser-weldable plastic material comprising 6 [1] a matrix of high transparency plastic and 7 [2] discrete laser-absorbing particles consisting of 8 nanoscale laser-sensitive metal oxides and/or nanoscale laser-9 sensitive doped metal oxides, 10 wherein said discrete laser-absorbing particles constitute 11 [a] 0.0001-0.01 weight percent of said high-transparency 12 laser-markable and/or laser-weldable plastic material and 13 [b] have a particle size of 1 to 500 nm, 14 said method comprising mixing 15 [i] said nanoscale laser-sensitive metal oxides and/or said 16 nanoscale laser-sensitive doped metal oxides with 17 [ii] a high transparency plastic 18 under conditions of shear that prevent the agglomeration or 19 aggregation of said laser-absorbing particles into larger units. 20 Claim 61—Method of welding 21 Claim 61, which we reproduce from the Claims Appendix of the Brief 22 (page 13), reads [matter in brackets and indentation added; principal limitations in 23 issue in italics]: 24 Appeal 2013-000895 Application 10/591,289 6 A method for welding plastic molded bodies or plastic 1 semifinished products, comprising 2 irradiating a join face of said plastic molded bodies or plastic 3 semifinished products with laser light, 4 wherein at least one of the parts to be joined comprises a high-5 transparency plastic material comprising: 6 a) a matrix of high transparency plastic; and 7 b) discrete laser-absorbing particles consisting of 8 nanoscale metal oxides that are sensitive to said laser light and/or 9 nanoscale doped metal oxides that a sensitive to said laser light, 10 wherein said discrete laser-absorbing particles 11 [1] constitute 0.0001 to 0.01 weight-percent of said 12 plastic material and 13 [2] have a particle size of 1 to 500 nm and 14 wherein said plastic molded bodies or plastic semifinished 15 products are laser weldable due to the presence of said laser absorbing 16 particles. 17 Analysis 18 Rejections 1-2 19 Claim 76 stands rejected as unpatentable under § 103 over Joachimi and 20 Carroll. 21 Joachimi describes laser-weldable materials comprising (1) a transparent 22 plastic (Component A) and (2) an IR-absorbing compound, including perylenes 23 (Component B). Answer, page 3. See also Joachimi, e.g., 24 Appeal 2013-000895 Application 10/591,289 7 (1) ¶ 0008 (defining laser-transparent), 1 (2) ¶ 0028 (describing use of 0.001 to 0.1 weight percent of an 2 IR-absorbing compound, which can be a perylene), 3 (3) ¶ 0033 (describing suitable transparent plastics), 4 (4) ¶ 0103 (describing suitable Component B IR-absorbing 5 compounds that absorb very strongly in the wavelength range of 700-6 1200 nm and which need to be thermostable for processing in injection 7 molding, extruding and welding and 8 (5) ¶ 0118 (describing mixing of Component A and Component B 9 at temperatures of 200 ºC to 380 ºC in extruders). 10 Joachimi differs from the subject matter of Claim 76 in that Joachimi does 11 not describe the use of metal oxide nanoparticles. Answer, page 3. 12 To overcome the difference, the Examiner turned to Carroll. Id. 13 Carroll describes a method of laser marking plastic material. Abstract. 14 The plastic material to be laser marked is made from polymers and 15 IR-absorbing compounds. ¶¶ 0014, 0018, 0019, 0039. 16 The plastic material can be made by preparing a mixture of the polymer and 17 the IR-absorbing compound followed extrusion or injection molding. ¶ 0016, 18 0041, 0042. 19 The IR-absorbing compounds have a particle size of less than 100 nm. 20 ¶ 0018. The amount of IR-absorbing material to be used is described as 21 “[t]ypically” being from 0.01 to 5% by weight of the resin (plastic) component.” 22 Id. In the context of the entire Carroll document, one skilled in the art would 23 Appeal 2013-000895 Application 10/591,289 8 understand typically to include amounts below 0.01 wt. %. Compare Claim 7 1 (no amount specified but must be laser markable) with Claim 11 (specifying 2 0.01-5 wt %). 3 One suitable IR-absorbing compound is described as being antimony-tin-4 oxide (ATO). ¶ 0019. 5 The Examiner reasoned that one skilled in the art would have found it 6 obvious to use the Carroll IR-absorbing material in Joachimi because the 7 IR-absorbing compound would be performing its known function—responding to 8 laser light. Use of a known material for its known function is evidence of 9 obviousness. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). 10 We understand applicant’s principal argument to be that the teachings of 11 Joachimi and Carroll cannot be combined because Joachimi and Carroll are 12 nonanalogous art. Brief, page 10. We believe applicant’s argument to be based on 13 Joachimi being directed to laser welding whereas Carroll is directed to laser 14 marking. Reply Brief, page 7 (Joachimi and Carroll said to involve different fields 15 of endeavor). 16 As will become apparent, one skilled in the art understands that laser 17 welding and laser making are based on the same scientific principle: laser light 18 interacts with a compound in a plastic to cause a result. Applicant’s Specification 19 reveals the following prior art background (page 1:10-24) (italics added): 20 The identification of plastic through laser marking and also the 21 welding of plastics using laser energy are known per se. Both are 22 caused by absorption of the laser energy in the plastic material 23 either directly through interaction with the polymer or indirectly 24 Appeal 2013-000895 Application 10/591,289 9 using a laser-sensitive agent added to the plastic material. The 1 laser-sensitive agent may be an organic coloring or a pigment, which 2 causes a locally visible discoloration of the plastic through 3 absorption of the laser energy. It [i.e., the laser-sensitive agent,] 4 may be a compound which is converted from an invisible, colorless 5 form into a visible form upon irradiation with laser light. [Laser-6 marking can be used to emboss an expiration date. Specification, 7 page 1:26-29.] In laser welding, the plastic material is so strongly 8 heated in the join area through absorption of the laser energy that the 9 material melts and both parts weld to one another. 10 Prior art described in the Specification reveals that colorants, pigments, and 11 metal oxides have been used to accomplish laser-marking and laser-welding. 12 Specification, page 3:9 through page 4:27. 13 Applicant is using a known material for its known purpose to accomplish an 14 expected result. The obviousness of the claimed invention is apparent from two 15 points of view. First, applicant is substituting the Carroll IR-absorbing compound 16 for Component (B) of Joachimi. Substitution of one known material known for 17 accomplishing a particular result for another known material also known for 18 accomplishing the same result is evidence of obviousness. Hotchkiss v. 19 Greenwood, 11 How. (52 U.S.) 248, 265-67 (1850). Second, use of a mixture of 20 two known materials for accomplishing a given result is also evidence of 21 obviousness. In re Kerkhoven, 626 F.2d 846, 850 (CCPA 1980) (it is generally 22 prima facie obvious to combine two compositions each of which is taught by the 23 prior art to be useful for the same purpose in order to form a third composition 24 Appeal 2013-000895 Application 10/591,289 10 which is also used for that purpose). It would have been obvious to include the 1 Carroll IR-absorbing material to the Joachimi composition to accomplish laser-2 welding. Answer, page 3, last paragraph. 3 Applicant attempts to narrow the prior art teachings to the specific 4 compounds described as suitable as Joachimi Component (B). Brief, page 9. In 5 doing so, applicant overlooks use of other compounds that one skilled in the art 6 would have understood to be useful for accomplishing Joachimi’s purpose, i.e., the 7 metal oxides of Carroll. 8 Applicant also calls attention to Component (D) of Joachimi noting that 9 some Component (D) materials of Joachimi may also absorb laser light. Brief, 10 page 10. According to applicant there is no “incentive” for replacing the Joachimi 11 Component (B) compounds with those of Carroll. Hotchkiss provides an answer to 12 applicant’s position. Like here, Hotchkiss involved the substitution of one known 13 material for accomplishing a result with another known material which one skilled 14 in the art would have understood would also accomplish the same result. 15 Applicant’s lack of incentive argument is reminiscent of a pre-KSR “motivation” 16 test. As KSR points out, what is needed to justify a substitution of one known 17 material for another known material is a “reason”. 550 U.S. at 418. The reason 18 here is use of a known material for its known purpose—response to the influence 19 of laser light. Moreover, as KSR confirms, if a technique is known in one field 20 (laser making), and a person of ordinary skill in the art would recognize that the 21 known technique would improve similar methods in another field (laser welding), 22 using the technique in the other field is evidence of obvious unless the actual 23 application is beyond the person’s skill. KSR at 417. For reasons already given, 24 Appeal 2013-000895 Application 10/591,289 11 use of the Carroll IR-absorbing materials in Joachimi is not beyond the skill of the 1 art. 2 Rejection 1 is affirmed. 3 Rejection 2 is affirmed. 4 Rejections 3-4 5 Claim 61 stands rejected as unpatentable under § 103 over Joachimi, Carroll 6 and Wissman. Answer, page 5. 7 In addition to the arguments presented in connection with Claim 76, 8 applicant further argues that the prior art does not “suggest that the metal oxides 9 must be responsible for rendering the composition laser weldable as opposed, for 10 example, to the B compounds recited in paragraph [0028] of Joachimi.” Brief, 11 page 11; Reply Brief, page 9. 12 Claim 61 requires that the “plastic molded bodies or plastic semifinished 13 products are laser weldable due to the presence of said laser absorbing particles.” 14 One skilled in the art would readily have understood that if the Carroll 15 IR-absorbing compounds are substituted for, or used in combination with, the 16 Joachimi Component (B) materials, then the IR-absorbing compounds would be 17 responsible for weldability. 18 Rejection 3 is affirmed. 19 Rejection 4 is affirmed. 20 Rejection 5 21 Claim 76 was newly rejected under § 102 as anticipated by Carroll. Answer, 22 page 7. 23 Appeal 2013-000895 Application 10/591,289 12 Claim 76 requires “mixing . . . under conditions of shear that prevent the 1 agglomeration or aggregation of . . . laser-absorbing particles into larger units.” 2 The Specification reveals that (page 12:11-21) (matter in brackets added): 3 It is advantageous if the incorporation of the nanoscale laser-4 sensitive metal oxides into the plastic matrix is performed with high 5 shear in the plastic matrix. This [i.e., high shear,] may be performed 6 through appropriate setting of the mixers, roller mills, and extruders. 7 In this way, any possible agglomeration or aggregation of the 8 nanoscale metal oxide particles into larger units may be effectively 9 prevented; any existing larger particles are broken down. The 10 corresponding technologies and the particular method parameters 11 to be selected are well-known to those skilled in the art. 12 In connection with Example 1, the Specification further reveals 13 (page 15:27-36) (italics added): 14 A plastic molding compound, containing a laser-sensitive 15 nanoscale pigment, was melted in an extruder and injected into an 16 injection mold to form plastic molded bodies in the form of lamina or 17 extruded to form slabs, films, or tubes. 18 The incorporation of the laser-sensitive pigment into the plastic 19 molding compound was performed with strong shear in order to 20 break down possible agglomerated particles into nanoscale primary 21 particles. 22 Carroll teaches mixing the components in extruders (¶¶ 0038 and 0041) 23 consistent with prior art practice (¶ 0016, first sentence). According to Carroll, the 24 Appeal 2013-000895 Application 10/591,289 13 mixture can be processed in an extruder to achieve “a very homogeneous 1 distribution of the dopant [i.e., the metal particles (¶ 0035)].” See ¶ 0038. 2 We are unable to distinguish the process and homogeneous result described 3 by Carroll from that required by Claim 76. Both processes use extruders. Both 4 processes seek uniformity. Moreover, we cannot imagine that one skilled in the art 5 would want agglomeration or aggregation of particles into larger unit if for no 6 other reason than to avoid either inappropriate laser-marking and/or laser welds. It 7 is for this very reason that Carroll suggests using an extruder to achieve 8 homogeneous distribution of its dopant. We therefore disagree with applicant that 9 the claimed mixing step is not described by Carroll. Reply Brief, page 10. 10 Rejection 5 is affirmed. 11 Decision 12 Upon consideration of the appeal, and for the reasons given herein, it is 13 ORDERED that Rejections 1-4 under § 103 are affirmed. 14 FURTHER ORDERED that Rejection 5 under § 102 is affirmed. 15 FURTHER ORDERED that no time period for taking any 16 subsequent action in connection with this appeal may be extended under 37 C.F.R. 17 § 1.136(a)(1)(iv) (2011). 18 AFFIRMED 19 20 bar 21