Ex Parte Martin et al

Patent Trial and Appeal BoardMar 14, 2017

12104080 (P.T.A.B. Mar. 14, 2017)

United States Patent and Trademark Office 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. 12/104,080 04/16/2008 Sidney Edward Martin III HZT-30001 3222 141143 7590 03/16/2017 Kunzler Law Group - HZO 50 W Broadway Ste 1000 Salt Lake City, UT 84101 EXAMINER NERANGIS, VICKEY M ART UNIT PAPER NUMBER 1768 NOTIFICATION DATE DELIVERY MODE 03/16/2017 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): IP@hzo.com lauren@kunzlerlaw.com docket @ kunzlerlaw .com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte SIDNEY EDWARD MARTIN III, ERIC ROGER DAWICKI, and ANGELA MICHELE DAWICKI Appeal 2016-004097 Application 12/104,080 Technology Center 1700 Before LINDA M. GAUDETTE, DONNA M. PRAISS, and DEBRA L. DENNETT, Administrative Patent Judges. GAUDETTE, Administrative Patent Judge. DECISION ON APPEAL1 1 This Decision includes citations to the following documents: Specification filed Apr. 16, 2008 (“Spec.”); Final Office Action mailed Nov. 4, 2014 (“Final”); Appeal Brief filed July 6, 2015 (“Br.”); and Examiner’s Answer mailed Oct. 23, 2015 (“Ans.”). Appeal 2016-004097 Application 12/104,080 Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner’s decision finally rejecting claims 1, 3—9, 52, 64—67, 70, and 71. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. The invention relates to a composition containing parylene and boron nitride. Spec. 118. Parylene is said to be “the generic name for members of a unique polymer series that includes Parylene C, Parylene D, and, the most basic member of the series, Parylene N, which is poly-para-xylylene. Id. 13. The composition may be used to provide an insulative coating for objects such as electronics equipment and circuit boards. Id. H 7, 18. According to the Specification, the composition provides improved heat dissipation and increased hardness compared to conventional coatings made from parylene alone. Id. 118. Of the appealed claims, claims 1 and 64 are independent, and are reproduced below. 1. A coating composition, consisting of poly(/?-xylylene) and boron nitride, the boron nitride interspersed throughout the poly(/?-xylylene) in an amount of greater than 0% and less than 5% of a weight of the coating composition and that enables the poly(/?- xylylene) to conformally coat an exterior surface of at least one component of an electronic device. 64. A composition, comprising: a poly(/?-xylylene) having a repeating unit represented by the formula Oi /....\ & A- \u , the poly(/?-xylylene) comprising at least 95% of a weight of the composition; and 2 Appellants identify the real party in interest as HZO, Inc. Br. 2. 2 Appeal 2016-004097 Application 12/104,080 boron nitride comprising greater than 0% and less than 5% of the weight of the composition. Br., Claims App’x 1—2. Claims 52 and 67 depend, respectively, from claims 1 and 64 and recite: “wherein the poly(/?-xylylene) and the boron nitride are interspersed with one another at a molecular level.” Br., Claims App’x 2—3. The claims stand rejected under pre-AIA 35 U.S.C. § 103(a) as follows: 1. claims 1, 3, 4, 6—9, 52, 64, 66, 67, 70, and 71 over Ward (WO 2007/138302 Al, pub. Dec. 6, 2007), as evidenced by Nichols (US 4,921,723, iss. May 1, 1990), in view of Nakano (JP 56-106975, pub. Aug. 25, 1981 (English Abstract)); and 2. claims 5 and 65 over Ward, as evidenced by Nichols, in view of Nakano, and Yoon (US 5,536,282, iss. July 16, 1996). Appellants present arguments in support of patentability of independent claims 1 and 64 {see generally Br. 4—10, as well as separate arguments in support of patentability of claims 52 and 67 {id. at 9—10)). Claims 3—9, 65, 66, 70, and 71 will stand or fall with claim 1 or claim 64. The Examiner finds Ward discloses a lining for a reaction vessel, the lining being prepared from boron nitride and conformal coating parylene. Ans. 2. The Examiner relies on Nichols as evidence that “parylene” refers to a group of materials including poly-xylylene and poly-p-chloroxylylene. Id.', see Nichols 1:62—2:1 (describing Parylene N). The Examiner finds Ward discloses that the boron nitride provides electrical insulation, but does not specify the amount required to impart this property. Ans. 2. The Examiner finds Nakano teaches that a homogenous dispersion of 0.5—10 wt % boron nitride in a resin provides an insulative coating for an electrical wire. Id. The Examiner finds that, based on Nakano’s teaching, the ordinary artisan would have utilized 0.5—10 wt % boron nitride in Ward’s composition to provide the desired electrical insulative 3 Appeal 2016-004097 Application 12/104,080 properties. Id. at 2—3 (finding 0.5—10 wt % overlaps with Appellants’ claimed range of “greater than 0% and less than 5%” (claims 1, 64)). The Examiner finds Ward discloses that “the boron nitride is Toad’ed into the liner material (i.e., parylene) which suggests that boron nitride is dispersed (i.e., interspersed) in a liner material (i.e., parylene) matrix,” and that “Nakano [also] teaches that boron nitride is [homogeneously] dispersed in coating material in order to effectively provide for electrically insulative and thermally conductive properties.” Id. at 4; see also id. at 2. With respect to claims 52 and 67, the Examiner finds that although Ward fails to describe the parylene and boron nitride as being interspersed on a molecular level, one of ordinary skill in the art would have uniformly mixed the two components to ensure the entire lining material was insulative, thereby necessarily resulting in the components being “interspersed with one another at a molecular level,” as recited in claims 52 and 67. Id. at 3. Appellants argue “[n]one of Ward, Nakano or Nichols teaches a method of creating a composition containing boron nitride dispersed throughout parylene and, . . . simply combining the teachings of each of these references would not have successfully led to such a composition.” Br. 7. Appellants argue, more specifically, that there is no disclosure in Ward indicating the term “loaded” means interspersed, and that Nakano’s teaching of a homogenous dispersion of boron powder in an insulation paint would have enabled the ordinary artisan to develop a composition of boron nitride interspersed throughout poly(/?-xylylene). Id.', see also id. at 10 (“Ward merely teaches loading a liner material with boron nitride without elaborating what is meant by ‘loading’ or how the ‘loading’ is achieved.”). As an initial matter, we determine Appellants’ argument that the applied prior art fails to teach or suggest boron nitride “interspersed” throughout poly(/?- 4 Appeal 2016-004097 Application 12/104,080 xylylene) is not persuasive of reversible error in claims 64, 65, 70, and 71, because these claims do not recite the word “interspersed,” and Appellants have not explained why, under the broadest reasonable claim construction, these claims properly are construed as including this limitation. We additionally note that Appellants do not contend the claims patentably distinguish over the prior art by virtue of a difference in the meaning of the claim term “interspersed” (or the Specification term “inter-dispersed”) and Nakano’s term “dispersion.” We have reviewed the Specification and do not find an explicit definition of the term “inter-dispersed” or “interspersed ... at a molecular level.” Nor do we find any disclosure in the Specification that indicates a particular method is required to prepare a composition having “the boron nitride interspersed throughout the poly(/?-xylylene)” (claim 1) or “wherein the poly(/?-xylylene) and the boron nitride are interspersed with one another at a molecular level” (claims 52 and 67). Accordingly, it was reasonable for the Examiner to find that one of ordinary skill in the art would have understood that dispersing the boron nitride throughout the coating material is necessary to provide effective electrically insulative and thermally conductive properties, and that the ordinary artisan would have ensured uniform mixing of the parylene and boron nitride components of Ward’s composition. Ans. 4—5 (noting Nakano’s homogeneous dispersion of boron nitride in a coating material provides effective electrically insulative and thermally conductive properties, and further explaining that the alternative to interdispersion is agglomeration of the boron nitride, which would not be expected to provide good electrically insulative and thermally conductive properties). It was also reasonable for the Examiner to find that Ward’s composition, if uniformly mixed, would have resulted in a composition wherein “the boron nitride [was] interspersed throughout the poly(/?-xylylene)” (claim 1) and “wherein the poly(/?- 5 Appeal 2016-004097 Application 12/104,080 xylylene) and the boron nitride [were] interspersed with one another at a molecular level” (claims 52 and 67). Appellants’ arguments alone, i.e., without persuasive evidentiary support, are insufficient to show error in the Examiner’s findings. In re Crish, 393 F.3d 1253, 1259 (Fed. Cir. 2004) (“[W]henthe prior art evidence reasonably allows the PTO to conclude that a claimed feature is present in the prior art, the evidence ‘compels such a conclusion if the applicant produces no evidence or argument to rebut it.’” (quoting In re Spada, 911 F.2d 705, 708 n.3 (Fed. Cir. 1990))). Any additional arguments raised by Appellants in the Appeal Brief have been fully addressed by the Examiner in the Answer, and are unpersuasive of reversible error in the Examiner’s conclusion of obviousness for the reasons stated therein. In conclusion, for the reasons stated in the Answer and above, Appellants have not argued persuasively that the Examiner reversibly erred in determining claims 1, 3—9, 52, 64—67, 70, and 71 would have been obvious under 35 U.S.C. § 103(a). Accordingly, we sustain the Examiner’s rejections of these claims. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). AFFIRMED 6