Ex Parte Kimbrell et al

Patent Trial and Appeal BoardOct 31, 2012

10340300 (P.T.A.B. Oct. 31, 2012)

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. 10/340,300 01/10/2003 Wiliam C. Kimbrell JR. 5472 5397 7590 10/31/2012 Miliken & Company P.O. Box 1927 Spartanburg, SC 29304 EXAMINER NGUYEN, TRI V ART UNIT PAPER NUMBER 1764 MAIL DATE DELIVERY MODE 10/31/2012 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 WILLIAM C. KIMBRELL and XINGGAO FANG ____________ Appeal 2011-004951 Application 10/340,300 Technology Center 1700 ___________ Before BEVERLY A. FRANKLIN, MARK NAGUMO, and KAREN M. HASTINGS, Administrative Patent Judges. HASTINGS, Administrative Patent Judge. DECISION ON APPEAL Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s final decision rejecting claims 30, 32, 33, 39, 41, 44, 48-50, and 64-69. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We AFFIRM. Appeal 2011-004951 Application 10/340,300 2 Claim 30 is illustrative of the subject matter on appeal1: 30. A composition for imparting durable oil and water repellency and stain release to a substrate, said composition comprising the combination of: (a) a fluorine-containing hydrophilic stain release agent: (b) a fluorine-containing stain repellency agent; and (c) a hydrophobic cross-linking species, said hydrophobic crosslinking species selected from the group consisting of monomers with blocked isocyanates, aromatic diisocyanates, blocked diisocyanates, blocked isocyanate-containing polymers, epoxy-containing compounds, epoxide resins, diisocyanate-containing monomers, and diisocyanate-containing polymers; wherein the concentration ratio of (a):(b):(c) is in the range of from about 10: 1: 0.1 to about 1: 10: 5 parts by weight, and wherein the composition imparts a surface energy change to the substrate such that the substrate exhibits a change in surface energy in response to a change in the substrate's environment to the extent that upon exposure to a temperature of 25 degrees C the measured surface energy is from less than about 20 millijoules per square meter, and upon exposure to a temperature of 40 degrees C, the measured surface energy is greater than about 20 millijoules per square meter. The Examiner maintains, and Appellants appeal, the following rejections under 35 U.S.C. § 103(a): Claims 30, 32, 33, 39, 41, 48-50, and 64-68 as unpatentable over Qui2; 1Independent claims 39, 41, 44, and 48 similarly recite a composition for imparting durable oil and water repellency and stain release that each includes similar components (a), (b), and (c) in the same concentration ratio as claim 30, with the same surface energy change functional language as claim 30. 2 US 2003/0026997 A1, published Feb. 6, 2003. Appeal 2011-004951 Application 10/340,300 3 Claims 30, 32, 33, 39, 41, 44, 48-50, 67 and 68 as unpatentable over Cote3; Claim 69 as unpatentable over Qui or Cote, each further with McGee4 or Caruso5. PRINCIPLES OF LAW In assessing whether a claim to a combination of prior art elements would have been obvious, the question to be asked is whether the improvement of the claim is more than the predictable use of prior art elements according to their established functions. KSR Int’l. Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). “[T]he analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” Id. at 418. ANALYSIS Appellants do not set forth separate, substantive arguments for any particular claim on appeal in either rejection 1 or 2. Accordingly, we shall select claim 30 as representative in each rejection. Upon review of this record, the arguments and issues in rejections 1 and 2 are similar and thus we shall address them simultaneously to avoid redundancy. We have thoroughly reviewed each of Appellants’ arguments for patentability. On this record, Appellants have not shown reversible error with the Examiner’s determination that the claimed subject matter would 3 US 2003/0149218 A1, published Aug. 7, 2003. 4 US 5,126,138, issued June 30, 1993. 5 US 4,076,631, issued Feb. 28, 1978. Appeal 2011-004951 Application 10/340,300 4 have been obvious to one of ordinary skill in the art within the meaning of § 103 in view of the applied prior art. Accordingly, we will sustain the Examiner’s rejections for essentially those reasons expressed in the Answer, including the Response to Argument section, and we add the following primarily for emphasis. Appellants’ main argument in the Appeal Brief is that Qui or Cote does not teach or suggest the claimed invention because Qui teaches a “condensation reaction product” (App. Br. 6) and Cote teaches a “reaction product” (App. Br. 9), such that their respective compositions “cannot possibly meet” Appellants’ claim limitation regarding the concentration ratio of (a):(b):(c) (App. Br. 6, 9). This argument is unavailing, as it is well established that “the PTO must give claims their broadest reasonable construction consistent with the specification . . . Therefore, we look to the specification to see if it provides a definition for claim terms, but otherwise apply a broad interpretation.” In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007). “[A]s applicants may amend claims to narrow their scope, a broad construction during prosecution creates no unfairness to the applicant or patentee.” Id. The Examiner reasonably determined that the claim language “agent” of claim 30 encompasses the compositions of either reference (e.g., Ans. 9 (“a definition [of agent] has not been provided by appellants . . . thus a broad and reasonable definition of ‘agent’ would encompass an element, a functional group, a component or chemical compound such as a monomer, oligomer, or polymer”); Ans. 14 (“The instant claims do not preclude the compound from being derived from a condensation product.”) ). Notably, Appellants’ Specification states that the cross-linking species (that is, Appeal 2011-004951 Application 10/340,300 5 component (c) of claim 30) may “induce cross-linking reactions between the chemical agents” (Spec. 18, l. 30).6 The Examiner further points out that that the instant Specification teaches curing the agents into the substrate and the use of polymers (Ans. 9, 15). Appellants’ Specification describes, similar to each of Qui and Cote, that the composition may be cured onto the substrate (e.g., Spec. 18, ll. 10- 14, 25-31; Qui, para. [00134]; Cote para [0024]). In light of these circumstances, Appellants have provided no credible evidence, or any persuasive line of technical reasoning, explaining why the Examiner’s broadest reasonable interpretation is in error (see generally Briefs). We conclude that a polymer from monomers corresponding to (a), (b), and (c) is covered by claim 30. There is no dispute that the composition of each of Qui and Cote are taught for the same purpose as Appellants, that is, to impart water and oil repellency and stain release properties to a substrate. Appellants have not challenged with sufficient specificity the Examiner’s findings that each of Qui and Cote contain components that encompass the claimed (a), (b), and (c) components in amounts that overlap the claimed concentration ratio range (e.g., Ans. 8, 14, 15; generally App. Br.; Reply Br.). No criticality, or unexpected results, for the claimed range has been established on this record. It is well established that ordinary creativity is presumed on the part of one of ordinary skill in the art. See KSR, 550 U.S. at 421 (“[a] person of 6 Indeed, claim 1 as originally filed stated “A composition for imparting durable repellency and stain release to a substrate, said composition comprising the resultant product of at least one hydrophilic stain release agent, at least one hydrophobic stain repellency agent cross-linked by at least one hydrophobic cross-linking agent.” (claim 1 as filed 1-10-2003). Appeal 2011-004951 Application 10/340,300 6 ordinary skill is also a person of ordinary creativity, not an automaton.”). Appellants have not adduced any persuasive technical reasoning or otherwise in response to the Examiner’s determination that an artisan would have, using no more than ordinary creativity, used concentration ratios within the claimed range (see, e.g., Ans. 4-6; generally App. Br.; Reply Br). Appellants’ argument that the applied prior art fails to recognize the surface energy parameter as a result effective variable (Reply Br. 2) is unavailing, as the Examiner’s rejections are not based on optimizing the surface energy parameter. Rather, the Examiner has stated that the surface energy change is a result of an intended use of the composition (Ans. 12, 17). Appellants have not shown error in the Examiner’s determination that the compositions of Qui and Cote would induce the required surface energy change when applied to an appropriate substrate, especially since the substrate is not limited, the compositions of the applied prior art have the same function as recited herein, and the required concentration ratio encompasses a wide range (e.g., Ans. 12, 17, 18). In the remaining rejection, the Examiner relies upon either of McGhee or Caruso to exemplify the known use of an antimicrobial agent in a fluorochemical substrate treating compositions. Appellants’ argument that Cote does not suggest adding any other components to its composition such that there is no motivation to add a known antimicrobial agent for its known benefits (App. Br. 12) is unavailing as it fails to consider the prior art as a whole. Accordingly, the preponderance of the evidence supports all of the Examiner’s rejections on appeal. Appeal 2011-004951 Application 10/340,300 7 DECISION The decision of the Examiner is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1). AFFIRMED kmm