Ex Parte Harkness et al

Patent Trial and Appeal BoardMar 2, 2017

14349383 (P.T.A.B. Mar. 2, 2017)

United States Patent and Trademark Office 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. 14/349,383 04/03/2014 Brian R. Harkness DC11215PCT/071038.01499 4555 14205 7590 03/06/2017 Howard & Howard Attorneys PLLC Dow Corning Corp. 450 West Fourth Street Royal Oak, MI 48067 EXAMINER PENG, KUO LIANG ART UNIT PAPER NUMBER 1765 NOTIFICATION DATE DELIVERY MODE 03/06/2017 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): IPDocket@howardandhoward.com dtrost @ HowardandHoward. com tmorris @ Howardandhoward. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte BRIAN R. HARKNESS, MALINDA N. HOWELL, DAESUP HYUN, JING JIANG, JOHN J. KENNAN, KENT R. LARSON, RANDALL G. SCHMIDT, and SHENGQING XU1 Appeal 2016-003428 Application 14/349,383 Technology Center 1700 Before BRADLEY R. GARRIS, N. WHITNEY WILSON, and SHELDON M. McGEE, Administrative Patent Judges. GARRIS, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134 from the Examiner’s decision rejecting claims 1—3, 7—14, 22, 24, and 35.2 We have jurisdiction under 35 U.S.C. § 6. 1 Dow Coming Corporation is identified as the real party in interest. App. Br. 3. 2 Appellants make conflicting statements as to whether pending and rejected dependent claims 9, 11, and 12 are on appeal (compare App. Br. 8, 31 with 25—29). We presume these claims are on appeal. 37 C.F.R. § 41.31(c). Appeal 2016-003428 Application 14/349,383 We REVERSE. Appellants claim a gel that has improved thermal stability and that is an ultraviolet hydrosilylation reaction product of a certain type of organopolysiloxane and a certain type of cross-linker which react in the presence of a UV-activated hydrosilylation catalyst and a certain amount of thermal stabilizer, said thermal stabilizer “having transparency to UV light sufficient for said ultraviolet hydrosilylation reaction product to form” (independent claim 1). Appellants also claim a method of forming such a gel (independent claim 14) and an electronic article comprising such a gel (remaining independent claim 24). A copy of representative claim 1, taken from the Claims Appendix of the Appeal Brief, appears below. 1. A gel that has improved thermal stability and that is an ultraviolet hydrosilylation reaction product of: (A) an organopolysiloxane having an average of at least 0.1 silicon-bonded alkenyl group per molecule; and (B) a cross-linker having an average of at least 2 silicon- bonded hydrogen atoms per molecule; wherein (A) and (B) react via hydrosilylation in the presence of; (C) a UV-activated hydrosilylation catalyst comprising at least one of platinum, rhodium, ruthenium, palladium, osmium, and iridium, and (D) a thermal stabilizer present in an amount of from about 0.01 to about 30 weight percent based on a total weight of (A) and (B) and having transparency to UV light sufficient for said ultraviolet hydrosilylation reaction product to form. 2 Appeal 2016-003428 Application 14/349,383 The Examiner rejects: claims 1—3, 7, 8, 10, 13, 14, 24, and 35 under 35 U.S.C. § 102(b) as anticipated by, or alternatively under 35 U.S.C. § 103(a) as unpatentable over, Koellnberger (DE 10 2008 000 156 Al, published July 30, 2009 with US 2010/0292361 Al, published Nov. 18, 2010 cited to and relied on as an English equivalent) (Final Action 2—5); claims 9 and 11 under 35 U.S.C. § 103(a) as unpatentable over Koellnberger {id. at 5—6); and claims 12 and 22 under 35 U.S.C. § 103(a) as unpatentable over Koellnberger in view of Alvarez (US 6,169,155 Bl, issued Jan. 2, 2001) {id. at 6). In the § 102 and § 103 rejections of the independent claims, the Examiner finds that Koellnberger discloses a UV hydrosilylation reaction product that can include a heat stabilizer in an amount overlapping the claimed amount to such an extent that the claimed amount is anticipated or would have been obvious {id. at 3). As for the transparency requirement of the claimed stabilizer, the Examiner additionally finds that “[because] Koellnberger clearly teaches the use of a heat stabilizer in an amount substantially overlapped with that as claimed for a UV hydrosilylation curable composition,... the amount of such a heat stabilizer would inherently be transparent to UV light sufficient for the UV hydrosilylation reaction product to form [as claimed]” {id. at 4). We agree with Appellants that the Examiner’s inherency finding “contains a factual error where it wrongly assert[s] that it is the amount of the (D) [] thermal stabilizer that is transparent to UV light sufficient for said 3 Appeal 2016-003428 Application 14/349,383 ultraviolet hydrosilylation reaction product to form” (App. Br. 19; see also id. at 24). As correctly explained by Appellants, the broadest reasonable interpretation of their independent claims is that “it is the thermal stabilizer itself that is transparent to UV light sufficient for said ultraviolet hydrosilylation reaction product to form” {id. at 20 (citing, e.g., Spec. 128)). In responding to Appellants’ arguments on this matter, the Examiner urges that the broadest reasonable interpretation of the claimed transparency refers to the composition rather than the thermal stabilizer itself (Ans. 7—8) and that the composition of Koellnberger “would inherently have sufficient transparency as presently claimed” {id. at 9). We fully share Appellants’ position that the claim interpretation urged by the Examiner is “unreasonable in light of Appellants’] specification explicitly and repeatedly teaching otherwise in independent claims 1,14 and 24, and the written description in paragraphs [0003], [0004], [0028], [0029] (twice), [0030], and [0039]” (Reply Br. 4). The plain language of the independent claims, particularly when read in light of the Specification, reflects that it is the thermal stabilizer itself which must “hav[e] transparency to UV light sufficient for said ultraviolet hydrosilylation reaction product to form” (claim 1) as persuasively argued by Appellants. In this latter regard, the Examiner alternatively contends that “since the prior art reference discloses the amount of the thermal stabilizer . . . and since the disclosed composition is UV hydrosilylation curable, the thermal stabilizer by itself would inherently have sufficient transparency as presently claimed” (Ans. 9). 4 Appeal 2016-003428 Application 14/349,383 The record does not support the Examiner’s contention. Appellants are correct that Koellnberger’s reference to heat stabilizers generally (i.e., in 1109 cited by the Examiner) is silent regarding UV light transparency and chemical composition (see, e.g., App. Br. 17), that the amount of heat stabilizer used by Koellnberger is not relevant to whether the stabilizer possesses the claimed transparency (id. at 19-20; see also, e.g., Reply Br. 11—12), and that, because Koellnberger’s composition need not be UV curable (Reply Br. 12), no basis in fact or technical reasoning exists for the Examiner’s finding that Koellnberger’s heat stabilizer must inherently have the claimed transparency to UV light (id. at 13). For the above-stated reasons, we do not sustain any of the Examiner’s § 102 or § 103 rejections. The decision of the Examiner is reversed. REVERSED 5