Ex Parte Kenig

Patent Trials and Appeals Board

Jun 24, 2019

12998645 - (D) (P.T.A.B. Jun. 24, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/998,645 08/12/2011
61650 7590 06/26/2019
MYERS WOLIN, LLC
100 HEADQUARTERS PLAZA
West Tower, Floor 7
MORRISTOWN, NJ 07960-6834
FIRST NAMED INVENTOR
Shmuel Kenig
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.
P-78211-US 8843
EXAMINER
BROOKS,KREGGT
ART UNIT PAPER NUMBER
1764
NOTIFICATION DATE DELIVERY MODE
06/26/2019 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):
patent@myerswolin.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SHMUEL KENIG
Appeal2018-006452
Application 12/998,645
Technology Center 1700
Before MICHAEL P. COLAIANNI, GEORGE C. BEST, and
N. WHITNEY WILSON, Administrative Patent Judges.
WILSON, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner's
March 13, 2017 decision rejecting claims 10, 11, 15, 16, 23, 25, and 29
("Non-Final Act."). Claims 19-22, 24, and 26 are withdrawn from
consideration as directed to a non-elected invention (Non-Final Act. 1, 2).
We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We affirm-in-part.
1 Appellant identifies the real party in interest as Nanto Inc. (Appeal Br. 1 ).
Appeal2018-006452
Application 12/998,645
CLAIMED SUBJECT MATTER
Appellant's invention relates to anticorrosion paints and coatings, which
contain nanoplatelet particles consisting of inorganic aluminum-silicate (Spec.
1 :4-8). Claims 10 and 25 are representative and are reproduced below from the
Claims Appendix2 of the Appeal Brief (emphasis added):
10. Anti corrosion paint or primer formulation comprising
paint solids, an epoxy, polyurethane, acrylic, alkydic or
polyester resin or mixture thereof and less than 1 % by weight
platelet shaped nanoparticles, based on the total weight of the
formulation, wherein octadecylammonium ions are attached to
a surface of the nanoparticles, and wherein the rotational
viscosity of the formulation at 10 rpm is above 26600 mPa·s
and lower than 55000 mPa·s.
25. The anticorrosion paint or primer formulation according
to claim 1 [OJ, wherein octadecylammonium ions attached to the
surface of the nanoparticles and the viscosity of the formulation
favor the alignment of nanoparticles parallel to a substrate the
formulation is applied on.
REJECTIONS
(1) Claim 25 is rejected under 35 U.S.C. § 112, second paragraph,
as indefinite.
2 Claim 25 in the Claims Appendix incorrectly depends on canceled claim 1.
We note that Appellant filed an Amendment on Nov. 10, 2017 to correct the
dependency to claim 10, but the Amendment was not entered (Adv. Act. 2).
For purposes of this appeal, we have assumed that claim 25 depends from
claim 10. If prosecution continues, a correction must be made to the
dependency of claim 25, or it should be canceled.
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Application 12/998,645
(2) Claims 10, 11, 15, 16, 23, 25, and 29 are rejected under 35
U.S.C. § 103(a) as unpatentable over Lee,3 in view of Van Den Bergen,4 as
evidenced by Ghij sels. 5
DISCUSSION
Rejection (1) under 35 U.S.C. § 112, iJ 2
During examination, the relevant inquiry under 35 U.S.C. § 112,
second paragraph, "is to determine whether the claims do, in fact, set out and
circumscribe a particular area with a reasonable degree of precision and
particularity." In re Moore, 439 F.2d 1232, 1235 (CCPA 1971) ( emphasis
added); see also In re Packard, 751 F.3d 1307, 1310 (Fed. Cir. 2014) ("[a]
claim is indefinite when it contains words or phrases whose meaning is
unclear"). "[T]he definiteness of the language employed must be
analyzed-not in a vacuum, but always in light of the teachings of the prior
art and of the particular application disclosure as it would be interpreted by
one possessing the ordinary level of skill in the pertinent art." Moore, 439
F.2d at 1235.
In this instance, the Examiner determines that the limitation
"octadecylammonium ions attached to the surface of the nanoparticles and
the viscosity of the formulation favor the alignment of nanoparticles parallel
to a substrate" as recited in claim 25 is unclear because the Specification
does not describe what formulations favor or disfavor parallel alignment (see
Non-Final Act. 2-3).
3 Lee, WO 2007/055498 Al, published May 18, 2007.
4 Van Den Bergen, US 2005/0070655 Al, published Mar. 31, 2005.
5 A. Ghijsels, Temperature dependence of the zero-shear melt viscosity of
oligomeric epoxy resins, Polymer vol. 25, 463-66 (1984).
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Appeal2018-006452
Application 12/998,645
In response, Appellant argues that the Specification describes the use
of microscopic analysis and permeation measurements to verify that
nanoclay order and alignment at the nanometer level are disturbed due to
excessive formulation viscosity (Appeal Br. 15-16 (citing Spec. 2:9-20)).
Appellant further argues that one of ordinary skill in the art would
understand the phenomenon of nanoclay particle alignment on a painted
surface (see generally Appeal Br. 16-18).
These arguments are insufficient to show error in the rejection as
Appellant does not explain any metric or standard for determining whether a
formulation favors or disfavors parallel alignment (see Ans. 10). For
example, claim 25 is unclear as to whether a particular amount of
nanoparticles is required for parallel alignment with the substrate to meet the
claim limitation "favor" (id.). Similarly, the Specification's description of
measurement techniques to verify disturbance of nanoclay alignment lacks
sufficient guidance for one of ordinary skill in the art to determine what
degree of disturbance is disfavored.
Accordingly, we affirm the rejection of claim 25 under 35 U.S.C. § 112,
second paragraph.
Rejection (2) under 35 U.S.C. § 103(a)
To resolve the appeal of this rejection, we need only address claim 10.
It is well understood that "[r]ejections 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
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Application 12/998,645
invention would not have made 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).
Here, the Examiner finds, inter alia, that Lee's paint formulation,
comprising organically modified nanoparticles, such as Cloisite 30B, and an
epoxy resin, teaches or suggests each component and limitation of the
claimed anticorrosion paint formulation, with the exception that Lee does
not teach surface modification of nanoparticles with octadecylammonium
ions (Ans. 4, citing Lee 5, 6:25, 7, 8:12-20, 8-9, 13-14; claim 1). The
Examiner, however, finds that Van Den Bergen's interchangeable use of
Nanofil 848's octadecylammonium ions or Cloisite 30B "teaches organoclay
composite materials that may be used in composites and coatings[] and ...
that the nanoclays may be treated with octadecylammonium ions" (Ans. 4
(citing Van Den Bergen Table 6; ,-J 98)).
The Examiner finds that although the combined teachings of Lee and
Van Den Bergen do not disclose the requisite viscosity at 10 rpm of above
26600 and below 55000 mPa·s, Ghijsels provides evidence that "it is well
known in the art that the viscosity of epoxy resins, [which is] the major
component of [Lee's] composition ... , is dependent on temperature"
(Ans. 4, citing Ghijsels 465; Fig. 3). According to the Examiner, Ghijsels'
evidence "makes it reasonable for one of ordinary skill in the art to conclude
that [Lee's] composition ... containing bisphenol A epoxy resin is capable
of meeting the recited viscosity between 26600 and 55000 mPa[Js ... at
some temperature" (Ans. 5, emphasis added).
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Appeal2018-006452
Application 12/998,645
The Examiner determines that it would have been obvious to one
having ordinary skill in the art at the time of the invention to modify Lee's
composition,
including using nanoclay in the recited range, as taught by Lee
to be a suitable amount of nanoclay for epoxy coatings, further
using octadecylammonium ions as Van [D]en Bergen teaches
such treated nanoclays can be used alternatively as a treating
agent equivalent to the Cloisite 30B used in the examples of
Lee, further that such compositions would meet the recited
viscosity at some temperature, given the temperature
dependence of epoxy resins, thereby arriving at the invention of
claim[] 10.
(id. at 5, emphasis added).
Appellant argues, inter alia, that "merely because a paint composition
having less than 1 wt[.]% nanoparticles is capable of obtaining a viscosity in
the range does not make it obvious to provide a formulation with a viscosity
that falls in the range" (Appeal Br. 12). Appellant further argues that the
Examiner has not provided a reason why the ordinarily skilled artisan at the
time of the invention would have modified the temperature such that "the
rotational viscosity of the formulation at 10 rpm is above 26600 mPa·s and
lower than 55000 mPa·s," as recited in claim 10 (id. at 14).
There is no dispute that Lee does not teach or suggest an anticorrosion
paint formulation having the requisite rotational viscosity (Ans. 4; see
generally Appeal Br. 3-15, Reply Br. 2-7). Nor is there any dispute that
Van Den Bergen's composition exhibits a measured viscosity lower than
what is recited in claim 10 (Ans. 8; Appeal Br. 10).
Nevertheless, the Examiner asserts that "it is not necessary for there to
be a motivation to prepare a composition with nanoparticles having the
recited viscosity range," because Ghijsels provides evidence that "the
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Application 12/998,645
viscosity of epoxy resins, and thus resin compositions having nanoparticles,
varies widely depending on the temperature, including in the recited
viscosity range" (Ans. 8).
We, however, agree with Appellant that the Examiner has not
provided a sufficient reason why one of ordinary skill in the art would have
modified the temperature at which the composition's viscosity is measured
"solely so that viscosity corresponds to the claimed range" (Reply Br. 6).
Without such reasoning, the Examiner has not established a prima facie case
of obviousness.
Thus, Appellant has identified reversible error in the Examiner's
determination that the disclosure of Lee in view of Van Den Bergen renders
claim 10 obvious. On the basis of limitations recited in independent claim
10, Appellant persuasively argues for the reversal of the obviousness
rejection of dependent claims 11, 15, 16, 23, 25, and 29 (see generally
Appeal Br. 3-15; Reply Br. 2-7). Accordingly, claims 11, 15, 16, 23, 25,
and 29 will stand with independent claim 10 for this rejection. 37 C.F.R.
§ 41.37(c)(l)(iv). Therefore, we reverse the obviousness rejection of claims
10, 11, 15, 16, 23, 25, and 29.
We express no opinion with respect to Appellant's other arguments
urging reversal of the Examiner's§ 103(a) rejection.
CONCLUSION
We AFFIRM the rejection of claim 25 under 35 U.S.C. § 112, ,-J 2, as
indefinite.
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Appeal2018-006452
Application 12/998,645
We REVERSE the rejection of claims 10, 11, 15, 16, 23, 25, and 29
under 35 U.S.C. § 103(a) as unpatentable over Lee, in view of Van Den
Bergen, as evidenced by Ghijsels.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l .136(a)(l )(iv).
AFFIRMED-IN-PART
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