Ex Parte Hayoz et al

Patent Trial and Appeal BoardFeb 16, 2016

12681786 (P.T.A.B. Feb. 16, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/681,786 08/11/2010 94799 7590 02/18/2016 Law Office of Shrnti Costales, PLLC 2020 Pennsylvania A venue NW #310 Washington, DC 20006 FIRST NAMED INVENTOR Pascal Hayoz 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. C23806 7151 EXAMINER WALKE, AMANDA C ART UNIT PAPER NUMBER 1722 NOTIFICATION DATE DELIVERY MODE 02/18/2016 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): shrnti@shrntilaw.com info@shrntilaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte PASCAL HAYOZ, HITOSHI YAMATO, and TOSHIKAGE ASAKURA Appeal2014-002044 Application 12/681,786 Technology Center 1700 Before BRADLEY R. GARRIS, CHUNG K. PAK, and ROMULO H. DELMENDO, Administrative Patent Judges. DELMENDO, Administrative Patent Judge. DECISION ON APPEAL The Appellants 1 seek our review under 35 U.S.C. Â§ 134(a) of a decision of the Primary Examiner to reject claim 1. We have jurisdiction under 35 U.S.C. Â§ 6(b). We affirm. 1 The Appellants state that "BASF SE" is the Real Party in Interest (Appeal Brief filed August 26, 2013, hereinafter "Br.," 3). Appeal2014-002044 Application 12/681,786 BACKGROl.J1'-JD The subject matter on appeal relates to a sulphonium (sulfonium) salt photoinitiator (Specification, hereinafter "Spec.,"1, 11. 2-3). Claim 1 is reproduced from pages 11-12 of the Appeal Brief (Claims App.) as follows: 1. A compound of the formula I y (I), wherein R is phenyl or phenyl substituted by one or more C i-C2oalkyl, hydroxyl or ORi2; L., LI Z 1s -------M)-L or C3-C2oheteroaryl substituted by L; 0. L,I L?. Li, L2, L3, L4, Ls, L6, L7 and Ls are hydrogen L is CORi or Ri Ri is Ci-C2oalkyl or C2-Cisalkenyl substituted by CN or phenyl; Ri2 is (CO)NRs-(CH2)y-O(CO)-C(R9)=CRioR11; Rs, Rio and Ri i are hydrogen; R9 is methyl; X is 0 or S; Y is halogen or a non-nucleophilic anion, selected from the group CfF2f+iS03-, pp6-, SbF6- or Ci-C20- perfluoroalkylsulphonylmethide; and f is an integer from 1 to 4. 2 Appeal2014-002044 Application 12/681,786 THE REJECTION The Examiner rejected claim 1under35 U.S.C. Â§ 103(a) as unpatentable over Tsuchimura et al. (Tsuchimura)2 and Wolf. 3 (Examiner's Answer entered October 2, 2013, hereinafter "Ans., at 2; Final Office Action entered January 30, 2013, hereinafter "Final Act," at 2-3.)4 DISCUSSION We affirm the rejection for essentially the reasons set forth in the Examiner's Answer. Nevertheless, we add the following comments primarily for emphasis. The Examiner (Final Act. 2) found that Tsuchimura generally discloses sulfonium salt compounds of general formula (3) through formula (5), each reproduced below: Additionally, the Examiner found that Ri-R3 of general fonnula 3 are taught as being, inter alia, a hydrogen atom, phenylthio group or a benzyloxy group and X is an anion (id.). Therefore, in view of these teachings regarding 2 US 2007/0242120 Al, published October 18, 2007. 3 WO 2007/003507 Al, published January 11, 2007. 4 In the Answer at page 2, the Examiner withdrew a provisional nonstatutory obviousness-type double patenting rejection over claim 1 of copending Application No. 12/681,785, now United States Patent 8,652,752 B2 issued February 18, 2014. 3 Appeal2014-002044 Application 12/681,786 R1-R3, the Examiner concluded"[ o ]ne could envision from this disclosure an embodiment of formula 3 where R2 was a hydrogen and 1 [sic, Ri]) and R3 where [sic, were] a phenylthio or benzyloxy group" (id.). Additionally, the Examiner found formula ( 4) suggests that phenylthio substituents can themselves be substituted (id. at 3). The Examiner found that Tsuchimura fails to disclose the phenylthio or benzyloxy group can be substituted by "L" as required by the claims (id.). However, the Examiner found Wolf teaches sulphonium salt compounds can include phenylthio and benzyloxy groups substituted by COR1, where Riis phenyl (id.). Based on these findings, the Examiner concluded that a person of ordinary skill in the art would have found it obvious to have modified the phenylthio of Tsuchimura to be substituted by a COR1, where Ri is phenyl, as such is exemplified and suggested by Wolf (id.). The Appellants off er a number of arguments in support of reversal, but we find that these arguments do not reveal any reversible error in the Examiner's factual findings, analysis, and conclusions of obviousness. Specifically, the Appellants do not contest the Examiner's articulated reason for combining the references---only that the references do not teach the substituent "-X-Z" as claimed (App. Br. at 7-9). Here, the Examiner has found that the limitations at issue are disclosed or suggested in the prior art references, and the Appellants' mere assertions to the contrary are insufficient to identify a reversible error. In re Jung, 637 F.3d 1356, 1363 (Fed. Cir. 2011) ("[W]hether there are gaps between the prior art and the rejected claims is a substantive issue, and Jung's assertion that the examiner must 'bridg[ e] the facial differences' between the claims and the prior art begs the substantive question of whether there are facial differences to be bridged."). See also Ex 4 Appeal2014-002044 Application 12/681,786 parte Belinne, No 2009-004693, 2009 WL 2477843 (BPAI 2009) (informative) ("[W]e find that the Examiner has made extensive specific fact finding ... with respect to each of the argued claims. Appellants' argument ... repeatedly restates elements of the claim language and simply argues that the elements are missing from the reference. However, Appellants do not present any arguments to explain why the Examiner's explicit fact finding is in error"). Additionally, one cannot show nonobviousness by attacking references individually when the rejection is based on a combination of reference. In re Keller, 642 F.2d 413, 425 (CCPA 1981). Here, Tsuchimura discloses using a sulphonium salt that "can release an acid upon exposure to actinic radiation" (i-fi-f 0082, 0092, 0095). As found by the Examiner (Ans. 3), Tsuchimura also discloses the sulphonium salt may comprise phenylthio groups as a substituent to the general formula 3 and such phenylthio groups can themselves be substituted as illustrated by S-9 (i-fi-f 0095- 0097, 0100). Wolf teaches similar sulphonium compounds "that upon irradiation release an acid" (13, 11. 9-10). Additionally, as found by the Examiner (Ans. 5), Wolf exemplifies specific sulphonium compounds, where a phenylthio or benzyloxy group are substituted by COR1 group, wherein Ri is shown as a phenyl group (Table 1, Ex. 6, 13, 14, 19-24). Therefore, we agree with the Examiner that, in view of the collective teachings of Tsuchimura and Wolf, which are both related to sulphonium compounds that release an acid upon exposure to radiation, it would have been obvious for a person of ordinary skill in the art to have substituted the phenylthio substituent of Tsuchimura's phenylthio-substituted sulphonium salt with another known COR1 group-containing phenylthio substituent group in a 5 Appeal2014-002044 Application 12/681,786 similarly functioning sulphonium salt, as suggested by Wolf, based on the expected interchangeability of the substituent groups as viable alternatives. KSR Int'!. Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) ("[W]hen a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable result."). In view of this analysis, we reject the Appellants' arguments and hold that this obvious modification would have led a person of ordinary skill in the art to arrive at a sulphonium salt compound including the substituent "-X-Z" as claimed. The test of obviousness is not whether an express suggestion of the claimed invention is present in any or all references but rather what the references taken collectively would have suggested to those of ordinary skill in the art presumed to be familiar with them. In re Rosselet, 347 F.2d 847, 851 (CCPA 1965); In re Hedges, 783 F.2d 1038, 1041 (Fed. Cir. 1986). SUMMARY For these reasons and those reasons as set forth in the Answer, we affirm the Examiner's rejection under 35 U.S.C. Â§ 103(a) of appealed claim 1 as unpatentable over Tsuchimura and Wolf. Therefore, the Examiner's final decision to reject claim 1 is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l). AFFIRMED kmm 6