Ex Parte Hayes

Patent Trial and Appeal Board

Apr 7, 2016

12263096 (P.T.A.B. Apr. 7, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/263,096 10/31/2008
23906 7590 04/11/2016
EIDUPONTDENEMOURSANDCOMPANY
LEGAL PATENT RECORDS CENTER
CHESTNUT RUN PLAZA 721/2340
974 CENTRE ROAD, P.O. BOX 2915
WILMINGTON, DE 19805
Richard Allen Hayes
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.
PP0073USNA 7471
EXAMINER
KHAN, TAHSEEN
ART UNIT PAPER NUMBER
1781
NOTIFICATION DATE DELIVERY MODE
04/11/2016 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):
PTO-Legal.PRC@dupont.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RICHARD ALLEN HA YES
Appeal2014-008871
Application 12/263,096
Technology Center 1700
Before TERRY J. OWENS, JAMES C. HOUSEL, and BRIAND. RANGE,
Administrative Patent Judges.
RANGE, Administrative Patent Judge.
DECISION ON APPEAL
SUMMARY
Appellant1 appeals under 35 U.S.C. § 134(a) from a rejection of
claims 1-9 and 13-23. Appeal Br. 2. We have jurisdiction. 35 U.S.C.
§ 6(b). We AFFIRM and also enter a new ground of rejection under
37 C.F.R. § 41.50(b).
1 According to Appellant, the Real Party in Interest is E.I. du Pont de
Nemours and Company. Appeal Br. 1.
Appeal2014-008871
Application 12/263,096
STATEMENT OF CASE
Claims 10-12 were cancelled. The Examiner rejected claims 1-9 and
13-23, and Appellant appeals2 those rejections. Appeal Br. 2.
Appellant describes the present invention as "highly abrasion-
resistant outermost terionomer layers" that could be used to protect, for
example, building glazing, automotive windows, headlamps, and solar
panels. Spec. 1:3-15; 4:16-19. Claims 1and17, reproduced below, are the
only independent claims on appeal and are illustrative of the claimed subject
matter:
1. An article comprising a substrate having overlaid,
or overlapped, thereon or thereto an outermost layer wherein
the substrate is selected from the group consisting of glass,
metal, ceramic, building glazing, vehicle window, automobile
headlamp housing, light fixture, sign, safety laminate, and
vehicle windshield;
the outermost layer, or a portion thereof, adheres to the
surface of the substrate, comprises a terionomer, and is exposed
to the environment;
the terionomer is made from a parent acid terpolymer
comprising copolymerized units of an a-olefin having 2 to 10
carbons, about 12 to about 60 wt% of an a,B-ethylenically
unsaturated carboxylic acid ester, and about 5 to about 25 wt%
of an a,B-ethylenically unsaturated carboxylic acid having 3 to 8
carbons, all based on the total weight of the parent acid
terpolymer; and
about 5 to about 90% of the carboxylic acids are
neutralized with metal ions.
2 Appellant first filed an appeal brief on March 19, 2014. That brief
included a defective Summary of Claimed Subject Matter. Appellant filed a
corrected Summary of Claimed Subject Matter on April 18, 2014. Citations
to "Appeal Br." provided herein refer to the March 19, 2014, brief.
2
Appeal2014-008871
Application 12/263,096
17. An article comprising a solar cell module and an
outermost layer wherein the solar cell module comprises, in the
order from the front light-receiving side to the back non-light-
receiving side of the solar cell module, (a) an incident layer, (b)
a front encapsulant layer, ( c) a solar cell layer comprising one
or more electrically interconnected solar cells, ( d) a back
encapsulant layer, and ( e) a backing layer;
the outermost layer is adjacent to the incident layer;
the outermost layer or a portion thereof adheres to the
surface of the substrate exposed to the environment;
the terionomer comprises or is made from a terpolymer
comprising copolymerized units of ethylene, an a,B-
ethylenically unsaturated carboxylic acid, and an a,B
ethylenically unsaturated carboxylic acid ester;
about 5 to about 90% of the carboxylic acids are
neutralized with a metal ion; and
the copolymerized unit derived from the a,B-
ethylenically unsaturated carboxylic acid ester is present in the
ionomer in the range of about 12 to about 60 wt%.
Spec. 17-18 (Claim Appendix).
REFERENCES
The Examiner relied upon the prior art below when rejecting the
claims on appeal:
Rees
Mattimoe et al.,
(hereinafter "Mattimoe")
Hanoka et al.,
(hereinafter "Hanoka")
Yamada et al.,
(hereinafter "Yamada")
us 3,404, 134
us 4,059,469
US 6,187,448 Bl
US 2004/0229394 Al
3
Oct. 1, 1968
Nov. 22, 1977
Feb. 13,2001
Nov. 18, 2004
Appeal2014-008871
Application 12/263,096
REJECTIONS
The Examiner made the following rejections:
Rejection 1. The Examiner rejected claims 1-9 and 13-16 under
35 U.S.C. § 103 as unpatentable over the combination of Mattimoe and
Rees. Ans. 4.
Rejection 2. The Examiner rejected claims 17-23 under 35 U.S.C.
§ 103 as unpatentable over the combination of Hanoka, Yamada, and Rees.
Ans. 7.
ANALYSIS
We review the appealed rejections for error based upon the issues
identified by Appellant and in light of the arguments and evidence produced
thereon. Cf Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)
(precedential) (citation omitted). We address each of the Examiner's
rejections below.
Rejection 1. The Examiner rejected claims 1-9 and 13-16 as obvious
over the combination of Mattimoe and Rees. Ans. 4. Appellant does not
separately argue claims 2-9 or 13-16. Appeal Br. 3-13. We therefore limit
our discussion to claim 1. Claims 2-9 and 13-16 stand or fall with that
claim. 37 C.F.R. § 41.37(c)(l)(iv) (2013).
For the reasons we explain below, Appellant's arguments with respect
to claim 1 are not persuasive. Appellant asserts that only layer 16 of
Mattimoe may be an ionomer and that layer 16 is not "outermost." Appeal
Br. 8. Appellant further argues that layer 18 of Mattimoe is outermost, and
Mattimoe does not disclose that layer 18 is an ionomer. Id. at 8-9.
(Appellant does not dispute, in view of the cited references, that an ionomer
4
Appeal2014-008871
Application 12/263,096
would correspond to the recited terionomer of claim 1.) Thus, according to
Appellant, the combination of Mattimoe and Rees fails to teach claim 1 's
outermost layer comprising a terionomer. Id. at 9-11.
The Examiner explains why layer 16 would be the outermost layer
during an intermediate step when producing Mattimoe's covers. Ans. 13-
14. Appellant does not persuasively dispute these factual findings. We
agree with and adopt the Examiner's findings of fact in this regard. For
further emphasis we note that Mattimoe explains how its various layers,
including layer 16, are applied to glass during manufacture. Mattimoe 5:28-
49. Thus, we agree with the Examiner that Mattimoe teaches an outermost
ionomer layer.
Appellant also argues that the Examiner erred by failing to consider
evidence of unexpected results. Appeal Br. 11. The Examiner, however,
explains that the reported results are not commensurate with the scope of
claims 1 or 17 (Ans. 14), and we agree with and adopt this explanation. Cf
In re Clemens, 622 F.2d 1029, 1035 (CCPA 1980) ("objective evidence of
non-obviousness must be commensurate in scope with the claims which the
evidence is offered to support."). Moreover, Appellant cites no evidence
that the reported results were unexpected.
Finally, Appellant argues that combining Mattimoe and Rees does not
disclose or suggest "an outer most layer comprises [sic] a terionomer
comprising more than 12 weight% of repeat units derived from a carboxylic
acid." Appeal Br. 13. The Examiner, however, explains how the references
teach this limitation (Final Act. 5-6), and Appellant provides no persuasive
argument rebutting this explanation. Thus, we agree with and adopt the
5
Appeal2014-008871
Application 12/263,096
Examiner's findings of fact in this regard, and we sustain the Examiner's
first rejection.
Rejection 2. As we explain in entering a new rejection, infra, claims
17-23 are indefinite. In some instances it may be impossible to determine
whether claimed subject matter is anticipated by or would have been obvious
over references because the claims are so indefinite that considerable
speculation and assumptions would be required regarding the meaning of
terms employed in the claims with respect to the scope of the claims. See In
re Steele, 305 F.2d 859, 862 (CCPA 1962). In other instances, however, it is
possible to make a reasonable, conditional interpretation of claims adequate
for the purpose of resolving patentability issues to avoid piecemeal appellate
review. In the interest of administrative and judicial economy, this course is
appropriate wherever reasonably possible. See Ex parte Saceman,
27 USPQ2d 1472, 1474 (Bd. Pat. App. & Int. 1993); Ex parte Ionescu,
222 USPQ 537, 540 (Bd. App. 1984).
Here, a reasonable, conditional interpretation is possible. This
interpretation is that claim 17' s recited "outermost layer" comprises the
recited "the terionomer," that claim 17' s recited "the substrate" is the solar
cell module, and that "the surface" refers to a surface of the recited "the
substrate." We consider the Examiner's obviousness rejection on this basis.
The Examiner rejected claims 17-23 as obvious over the combination
of Hanoka, Yamada, and Rees. Ans. 7. Appellant does not separately argue
claims 18-23. Appeal Br. 3-13. We therefore limit our discussion to claim
1. Claims 18-23 stand or fall with that claim. 37 C.F.R. § 41.37(c)(l)(iv)
(2013).
6
Appeal2014-008871
Application 12/263,096
Appellant's arguments regarding claim 17 are not persuasive.
Appellant first argues that Hanoka does not teach the recited layers of claim
17. Appeal Br. 15. The Examiner, however, found that Hanoka does teach
these layers and that Yamada teaches an additional outermost layer. Final
Act. 7-10; Ans 15-16. We agree with and adopt the Examiner's findings of
fact in this regard. For further emphasis, we note that Figure 2, for example,
of Hanoka illustrates a front support layer/incident layer (14), a solar cell
layer 22 encapsulated on front 23 and back 24 with encapsulating layers, and
backskin/backing layer 28. Hanoka Fig. 2; 6:34-56.
Appellant also appears to argue that Yamada' s ionomer layer is not an
outermost layer because it would be covered by film 1. Appeal Br. 15-16.
We disagree. Yamada teaches an "additional weather-resistant sheet"
comprising ionomer which "may be disposed on the deposited inorganic
oxide thin film." Yamada ,-i 166. Because this additional weather-resistant
sheet provides both "weather resistance" and "scratch resistance," a person
of ordinary skill in the art would have expected this weather-resistant sheet
to be the outermost layer. Id.; Final Act. 19. Indeed, because Yamada
paragraph 166 states the "weather-resistant sheet" could also be formed from
"fluorocarbon resin," Yamada would be understood as teaching that the
fluorocarbon weather-resistant sheet 1 of, for example, Yamada's paragraph
70 could also be formed from an ionomer. Appellant appears to admit that
sheet 1 (referred to by the Appellant as Yamada Film 1) is an outermost
layer. Appeal Br. 15.
The Examiner also explains that even if a sheet 1 were exterior to the
weather-resistant sheet, the additional weather-resistant sheet would be an
outermost layer during an intermediate stage of manufacture. Ans. 15-16.
7
Appeal2014-008871
Application 12/263,096
Appellant does not persuasively dispute this point, and we agree with and
adopt this finding of fact. Because neither of Appellant's arguments are
persuasive, we sustain the Examiner's rejection of claims 17-23 based upon
our provisional understanding of claim 1 7.
NEW GROUND OF REJECTION
Under 37 C.F.R. § 41.50(b), we enter the following new rejection:
claims 17-23 are rejected as indefinite under 35 U.S.C. § 112, second
paragraph (pre-AIA).
The Patent Office may reject a claim as indefinite when claim
language is "ambiguous, vague, incoherent, opaque, or otherwise unclear in
describing and defining the claimed invention .... " In re Packard,
751F.3d1307, 1311 (Fed. Cir. 2014).
Here, claim 17 recites "the terionomer comprises .... " Spec. 18
(Claim Appendix). The recited "the terionomer" lacks an antecedent basis,
and claim 17 is ambigiuous as to what layer, if any, must comprise a
terionomer.
Claim 17 also recites "the surface of the substrate." Id. The recited
"the surface" and "the substrate" each lack an antecedent basis, and it is
ambiguous what substrate the recitation refers to.
Claims 18-23 depend directly or indirectly on claim 17 and thus
suffer from the same ambiguities. Thus, we reject claims 17-23 as
indefinite under 35 U.S.C. § 112, second paragraph.
DECISION
For the above reasons, we sustain the Examiner's rejection of claims
1-9 and 13-23. We enter a new ground of rejection as to claims 17-23
under 37 C.F.R. § 41.50(b).
8
Appeal2014-008871
Application 12/263,096
Regarding the affirmed rejections, 37 C.F.R. § 41.52(a)(l) provides
"Appellant may file a single request for rehearing within two months from
the date of the original decision of the Board."
In addition to affirming the Examiner's rejections of one or more
claims, this decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b). 37 C.F.R. § 41.50(b) provides "[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review."
37 C.F.R. § 41.50(b) provides that the appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of the
following two options with respect to the new ground of rejection to avoid
termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new evidence relating to the claims so rejected, or both,
and have the matter reconsidered by the examiner, in which event the
proceeding will be remanded to the examiner ....
(2) Request rehearing. Request that the proceeding be reheard under
§ 41.52 by the Board upon the same record ....
Should Appellant elect to prosecute further before the Examiner
pursuant to 37 C.F.R. § 41.50(b)(l), in order to preserve the right to seek
review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed
rejections, the effective date of the affirmance is deferred until conclusion of
the prosecution before the Examiner unless, as a mere incident to the limited
prosecution, the affirmed rejections are overcome.
If Appellant elects prosecution before the Examiner and this does not
result in allowance of the application, abandonment, or a second appeal, this
case should be returned to the Patent Trial and Appeal Board for final action
9
Appeal2014-008871
Application 12/263,096
on the affirmed rejections, including any timely request for rehearing
thereof.
AFFIRMED; 37 C.F.R. § 41.50(b)
10