Ex Parte Liu et al

Patent Trials and Appeals Board

Jan 31, 2019

14441486 - (D) (P.T.A.B. Jan. 31, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/441,486 05/07/2015
32692 7590 02/04/2019
3M INNOVATIVE PROPERTIES COMPANY
PO BOX 33427
ST. PAUL, MN 55133-3427
FIRST NAMED INVENTOR
WeiDeLiu
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.
66281US006 1000
EXAMINER
GOLDEN, CHINESSA T
ART UNIT PAPER NUMBER
1788
NOTIFICATION DATE DELIVERY MODE
02/04/2019 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):
LegalUSDocketing@mmm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WEIDE LIU, BADRI VEERARAGHA VAN,
CECIL V. FRANCIS, YIWEN CHU, and JING FANG
Appeal2018-001076
Application 14/441,486
Technology Center 1700
Before GEORGE C. BEST, MONTE T. SQUIRE,
and MICHAEL G. McMANUS, Administrative Patent Judges.
McMANUS, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner finally rejected claims 16-24 of Application
14/441,486 under 35 U.S.C. § 103. Final Act. (Sept. 14, 2016) 4--15.
Appellants 1 seek reversal of these rejections pursuant to 35 U.S.C. § 134(a).
We have jurisdiction under 35 U.S.C. § 6.
For the reasons set forth below, we AFFIRM.
1 3M Company and 3M Innovative Properties Company are identified as the
real parties in interest. Appeal Br. 3.
Appeal2018-001076
Application 14/441,486
BACKGROUND
The disclosure of the present application provides a "conductive
resilient hollow microsphere comprising a conductive layer enclosing a
resilient polymeric hollow microsphere." Spec. 1. Such conductive
microspheres may be used in the manufacture of conductive adhesives. Id.
at 1-2.
Claim 16 is illustrative of the subject matter on appeal and is
reproduced below:
16. A conductive resilient hollow microsphere comprising a
conductive layer enclosing a resilient polymeric hollow microsphere.
Appeal Br. 9 (Claims App.).
REJECTIONS
The Examiner maintains the following rejections:
1. Claims 16 and 18 are rejected under 35 U.S.C. § 103(a) (pre-AIA)
as obvious over Darvell et al. 2 in view of Rowitsch. 3 Final Act.
3-4.
2. Claim 17 is rejected under 35 U.S.C. § 103(a) (pre-AIA) as
obvious over Darvell in view of Rowitsch as informed by Gamer. 4
Id. at 4.
2 US 4,855,170, issued Aug. 8, 1989 ("Darvell").
3 US 2007 /224395 Al, published Sep. 27, 2007 ("Rowitsch").
4 US 4,075,138, issued Feb. 21, 1978 ("Gamer").
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Appeal2018-001076
Application 14/441,486
3. Claims 19--24 are rejected under 35 U.S.C. § 103(a) (pre-AIA) as
obvious over Darvell in view of Rowitsch and further in view of
Ellis et al. 5 Id. at 4--11.
DISCUSSION
Rejection 1. The Examiner rejected claims 16 and 18 as obvious over
Darvell in view of Rowitsch. Id. at 3--4. The Examiner found that Darvell
teaches a resilient polymeric hollow microsphere but does not teach a
conductive layer enclosing a resilient polymeric hollow microsphere. Id. at
3. The Examiner further finds that Rowitsch teaches a conductive hollow
microsphere comprising a conductive layer enclosing a polymeric hollow
microsphere. Id. The Examiner does not find that Rowitsch teaches
resilience. Id. The Examiner further finds that it would have been obvious
to enclose the resilient polymeric hollow micro sphere of Darvell within the
conductive layer of Rowitsch in order to provide an adhesive having
improved storage stability/shelf life, drying rate, and tack. Id.
Appellants seeks to rebut the Examiner's prima facie case of
obviousness by demonstrating unexpected results. Specifically, Appellants
argue that the microspheres exhibit an unexpectedly improved
compressibility and resilience. Appeal Br. 5---6.
Appellants may show that a claimed invention has an unexpected
property relative to the prior art "with evidence that the claimed invention
exhibits some superior property or advantage that a person of ordinary skill
in the relevant art would find surprising or unexpected." In re Mayne, 104
5 US 2005/0095370 Al, published May 5, 2005 ("Ellis").
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Appeal2018-001076
Application 14/441,486
F.3d 1339, 1343 (Fed. Cir. 1997). An examination for unexpected results is
a factual, evidentiary inquiry. Id.
"It is the established rule that 'objective evidence of non-obviousness
must be commensurate in scope with the claims which the evidence is
offered to support."' Allergan, Inc. v. Apotex Inc., 754 F.3d 952, 965 (Fed.
Cir. 2014) (quoting In re Tiffin, 448 F.2d 791,792 (CCPA 1971)). This is as
true for evidence of unexpected results as it is for any other type of objective
evidence of non-obviousness. See In re Peterson, 315 F.3d 1325, 1330 (Fed.
Cir. 2003) ("the applicant's showing of unexpected results must be
commensurate in scope with the claimed range"); In re Clemens, 622 F.2d
1029, 1035 (CCP A 1980) ("In order to establish unexpected results for a
claimed invention, objective evidence of non-obviousness must be
commensurate in scope with the claims which the evidence is offered to
support.").
Appellants assert that the improved compressibility and resilience are
the "unexpected" result of their discovery that "using vapor deposition
2: about 2Pa, under conditions such that the metal vapor condenses onto the
substrate with low energy, it is possible to coat metal ( e.g., silver), onto
resilient polymeric hollow microspheres without collapsing the
microspheres." Spec. 6.
Appellants argue that the conductive resilient hollow microspheres of
Examples 1 to 4 of the Specification show improved compressibility relative
to nickel particles (Comparative Example A) and silver-coated glass bubbles
(Comparative Example B). Appeal Br. 5; see Spec. 18-19. Appellants
further argue that the conductive resilient hollow microspheres of Examples
6 to 8 of the Specification show both improved compressibility and
resilience ("recovery"). Appeal Br. 5.
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Appeal2018-001076
Application 14/441,486
A silver coating was applied to the micro spheres of Examples 1--4 at a
pressure of 1 mPa. Spec. 17. Table 1 in the Specification indicates that the
micro spheres of Examples 1--4 are compressible but do not exhibit
"recovery."6 That is, the microspheres of Examples 1--4 are not resilient.
Accordingly, they do not fall within the scope of claim 16 or its dependents.
Further, the reported results of testing the microspheres of Examples 1--4
suggests one may achieve compressibility without using the high pressure
metal application described in the Specification. As a consequence,
Appellants have not shown that obtaining a conductive compressible hollow
micro sphere is an unexpected result of their high pressure metal deposition
process.
The primary thrust of Appellants' argument is that the claimed
invention is nonobvious because the compressibility of the microspheres is
unexpected. Appeal Br. 4---6. One may, however, also view Appellants'
brief as arguing that the resilience of the micro spheres is also an unexpected
benefit.
A silver coating was applied to the micro spheres of Examples 6-8 at
higher pressures (Ex. 6, 3.3 Pa; Ex. 7, 6.7 Pa, Ex. 8, 10 Pa). Spec. 20, Table
2. Each of the coated hollow spheres of Examples 6-8 are stated to exhibit
both compressibility and resilience (recovery). Id.
We credit the inventors' statement in the Specification that the
condensation of metal on hollow microspheres at higher than normal
6 The Specification includes a description of a "Resiliency Test" indicating
that a sample of microspheres having an initial volume of 0.9 mL would be
considered resilient if it recovered to a volume of at least 0.8 mL after
compression under a pressure of 20 MPa. Spec. 16.
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Appeal2018-001076
Application 14/441,486
pressures yields the unexpected benefit of not collapsing the microspheres.
Spec. 6; see In re Marzocchi, 439 F.2d 220,224 (CCPA 1971).
Despite this, it is not apparent that the unexpected benefit (recovery)
is commensurate in scope with the claims. While claim 16 merely states that
the microsphere is "resilient," such term must be construed in light of the
Specification. As noted above, the Specification indicates that a 0.9 mL
sample of microspheres is resilient where it recovers to a volume of at least
0.8 mL after compression (that is, it recovers 8/9 of its original volume).
Spec. 16. We adopt this guidance for purposes of claim construction.
Appellants have not supplied information indicating that the tested
microspheres exhibit the entire claimed range of resilience (greater than 8/9
recovery). It may be, for example, that none of Appellants' samples exhibit
recovery beyond 0.81 mL after compression. In such a case, Appellants'
would be seeking claim coverage for recovery to, for example, .89 mL,
despite the absence of commensurate results.
In view of the foregoing, we determine that Appellants have not
demonstrated unexpected results commensurate in scope with the claims
sufficient to rebut the prima facie case of unpatentability.
CONCLUSION
The rejection of claims 16-24 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).
AFFIRMED
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