Ex Parte Remaury et al

Patent Trial and Appeal Board

Aug 11, 2016

13083488 (P.T.A.B. Aug. 11, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/083,488 04/08/2011 Stephanie Remaury
26646 7590 08/15/2016
KENYON & KENYON LLP
ONE BROADWAY
NEW YORK, NY 10004
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.
15236/46101 8269
EXAMINER
LEE,DORISL
ART UNIT PAPER NUMBER
1764
NOTIFICATION DATE DELIVERY MODE
08/15/2016 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):
uspto@kenyon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEPHANIE REMAURY, PASCALE NABARRA, OLIVIER
GUILLAUMON, and SERGE REYMOND
Appeal2015-000150
Application 13/083,488 1
Technology Center 1700
Before RICHARD M. LEBOVITZ, GEORGE C. BEST, and
MONTE T. SQUIRE, Administrative Patent Judges.
LEBOVITZ, Administrative Patent Judge.
DECISION ON APPEAL
This appeal involves claims relating to a composition comprising a
base component and a hardener component, where the base component
comprises at least one pigment based on gallium oxide-doped zinc oxide.
The Examiner has finally rejected the claims as obvious under 35 U.S.C.
§ 103(a). We have jurisdiction under 35 U.S.C. § 134. The Examiner's
rejection is affirmed.
STATEMENT OF CASE
Appellants appeal from the Examiner's final rejection of claims 1-16.
There are two independent claims on appeal, composition claim 1 and
1 "The '488 Application."
Appeal2015-000150
Application 13/083,488
method claim 12. Claim 12 is a method of making a composition having the
same components of claim 1. Claim 1 is representative and reads as follows:
1. A composition comprising a base component and a hardener
component; wherein the base component comprises at least one
pigment based on zinc oxide doped with gallium oxide, a binder
of the silicon polymer type and a solvent of said binder; and
wherein the hardener component comprises at least one
hardener.
Claims 1, 2, and 5-16 stand rejected under 35 U.S.C. § 103(a) as
obvious in view of Long et al., (US 5,770,269, issued June 23, 1998) and
Hayashi et al., (US 5,312,614, issued May 17, 1994). Final Rej. 2.
Claims 3 and 4 stand rejected under 35 U.S.C. § 103(a) as obvious in
view of Long, Hayashi, and Temoir (US 5,275,645, issued Jan. 4, 1994). Id.
REJECTIONS
Claim 1 is directed to a composition comprising a base component
and a hardener component. The base component comprises: 1) "at least one
pigment based on zinc oxide doped with gallium oxide", 2) "a binder of the
silicon polymer type", and 3) "a solvent of said binder". The Examiner
found that Long describes a composition with base and hardener
components, where the base comprises 1) zinc oxide doped with gallium, 2)
a silicon polymer binder, and 3) a solvent. Answer 2. The Examiner found
that the only difference between Long and claim 1 is that Long does not
describe the gallium dopant in the zinc oxide as gallium oxide as required by
the claim. Id. To meet this deficiency, the Examiner cited Hayashi for its
teaching of zinc oxide doped with gallium oxide. Id., 3. The Examiner
concluded that it would have been obvious to one of ordinary skill in the art
at the time of the invention "to use the gallium oxide of Hayashi as the
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Application 13/083,488
dopant of Long ... in order to receive the expected benefit of producing a
white, electrically conductive pigment (Hayashi, col. 1, lines 5-15)." Id.
Appellants contend that the Examiner erred. Specifically, Appellants
argue that Long does not disclose that gallium oxide would be an acceptable
dopant for zinc oxide. Thus, there would have been no motivation to
combine Long and Hayashi. Appeal Br. 3.
Hayashi "includes gallium oxide in a list with other dopants, and does
not particularly point towards the selection of gallium oxide over the other
listed dopants." Id.
Hayashi "directs one of ordinary skill in the art to use a mixture of
dopants." Id.
Appellants also contend that a composition of claim 1 "unexpectedly
improves the surface resistivity." Id. at 3--4.
Selection of gallium oxide
Findings of Fact
FF 1. Long describes "coatings applied to surfaces, and, more
particularly, to a white coating that aids in controlling the surface
temperature of the article to which it is applied and is also sufficiently
electrically conductive to dissipate static charge." Long, col. 1, 11. 8-12.
FF2. The coating described in Long "comprises a silicone polymeric
matrix having doped zinc oxide pigment particles distributed therein." Id.,
col. 2, 11. 8-10.
FF3. Long teaches that the "preferred dopant for the zinc oxide
particles is aluminum, but boron, gallium, indium, zinc, tin, and/or hydrogen
may also be used." Id., col. 3, 11. 16-18.
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Application 13/083,488
FF4. Hayashi describes a white, electrically conductive zinc oxide for
use, inter alia, as a conductive coating agent. Hayashi, col. 1, 11. 7-11.
FF5. Hayashi teaches adding a dopant to the zinc oxide (id., col. 2, 11.
35-36). Hayashi teaches that dopant can be "at least one metal oxide
selected from the group consisting of tin oxide, gallium oxide, indium oxide
and aluminum oxide." Id., col. 2, 1. 66 to col. 3, 1. 1
FF6. Hayashi teaches that "[t]hese dopants provide acceptable effects
if they are used alone, but more preferable effects can be achieved if they are
used in combination with at least two of them (combined addition)." Id., col.
3, 11. 37--40.
FF7. Claim 2 of Hayashi recites that zinc oxide includes:
one or more of the water-soluble metal compounds are present
in the aqueous solution in an amount effective to form a
coprecipitate selected from the group consisting of tin oxide,
aluminum oxide, gallium oxide and indium oxide in the range
from 0.005 to 5.0 parts by weight relative to zinc oxide.
Id. col. 10, 11. 6----'28.
Discussion
Appellants contend that the skilled worker would not have picked
gallium oxide from Hayashi because Long does not teach that gallium oxide
is an acceptable dopant for zinc oxide. Appeal Br. 3.
This argument does not persuade us that the Examiner erred. Long
describes a white coating comprising doped zinc oxide which is electrically
conductive. FFl, FF2. Hayashi also describes a white, electrically
conductive zinc oxide for use a coating. FF4. While Long does not teach
using gallium oxide as dopant in zinc oxide, Hayashi describes an
electrically conductive zinc oxide coating doped with gallium oxide (FF5).
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Appeal2015-000150
Application 13/083,488
Consequently, based on Hayashi, the skilled worker would have had
reasonable basis to believe that gallium oxide was a suitable dopant for zinc
oxide when used in an electrically conductive coating. It is unnecessary that
Long teaches that gallium oxide is an acceptable dopant because Hayashi
contains such a teaching for the same type of coating described by Long.
Appellants argue that Long discloses "a long list of suitable dopants,"
and describes aluminum as the preferred dopant. Appeal Br. 4--5.
Appellants also argue that Hayashi "merely includes gallium oxide in a list
with other dopants, and does not particularly point towards the selection of
gallium oxide over the other listed dopants." Id., 3. For these reasons,
Appellants also contend that the skilled worker would not have picked
gallium oxide.
While Long states aluminum is a preferred dopant, as admitted by
Appellants, Long teaches that gallium is suitable. FF3; Appeal Br. 4. The
"long list" of dopants in Long referred to by Appellants (Appeal Br. 4) has
seven listed elements. Appellants have not explained how a list that can be
counted on one's fingers is "long." Hayashi has a list of four dopants, one of
which is gallium oxide, and teaches each are suitable dopants to be used
with zinc oxide. FF5, FF7. Again, Appellants have not established that a
list of four dopants is so "long" that one of ordinary skill in the art would not
have recognized that each member is suitable dopant for zinc oxide.
Long teaches a zinc oxide coating. Because Hayashi expressly lists
gallium oxide as a dopant in a list of four possible dopants that can be used
in a zinc oxide coating, a person of ordinary skill in the art would readily
have been lead to use it as a dopant for this purpose. It is true that Hayashi
states that combinations of dopants provide "more preferable effects," but
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Appeal2015-000150
Application 13/083,488
Appellants have not identified language in claim 1 that excludes more than
one dopant. In addition to this, while a combination of dopants is preferred
by Hayashi, Hayashi explicitly states each of the four dopants "provide
acceptable effects if they are used alone." FF6. Consequently, we do not
find that Appellants have demonstrated an error in the Examiner's
determination that it was obvious to have selected gallium oxide as the
dopant to use in Long's zinc oxide coating.
Unexpected results
To support the nonobviousness of the claimed subject matter,
Appellants provided a declaration by Stephanie Remaury, Ph.D. ("Remaury
Deel."), a research engineer and co-inventor of the '488 Application, to
demonstrate that the claimed composition has unexpected properties.
A showing of "unexpected results" can be used to demonstrate the
non-obviousness of a claimed invention. In re Soni, 54 F.3d 746, 750 (Fed.
Cir. 1995):
One way for a patent applicant to rebut a prima facie case of
obviousness is to make a showing of 'unexpected results,' i.e.,
to show that the claimed invention exhibits some superior
property or advantage that a person of ordinary skill in the
relevant art would have found surprising or unexpected.
These results must be "surprising or unexpected" to one of ordinary
skill in the art when comparted to closest prior art. Soni, 54 F.3d at 750.
"This objective evidence must be 'considered as part of all the evidence, not
just when the decision maker remains in doubt after reviewing the art."'
Transocean Offshore Deepwater Drilling, Inc. v. Maersk Drilling USA, Inc.,
699 F.3d 1340, 1349 (Fed. Cir. 2012) (internal citations omitted).
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Appeal2015-000150
Application 13/083,488
Dr. Remaury prepared three examples (Examples 1-3) of
"compositions of the invention." Second Remaury Deel. i-f 5. Dr. Remaury
compared Examples 1-3 to a composition described in Long. Id. Dr.
Remaury stated that "the experimental conditions disclosed in Long et al
(see column 5) have been reproduced with the Examples 1-3." Id. at 3. For
each example, Dr. Remaury measured the electrical surface resistance of the
resulting composition when used as a coating on aluminum and kapton
substrates. Id. at 2-3. Based on the measurements of electrical surface
resistance comparing Examples 1-3 to Long, Dr. Remaury stated that
"Examples 1-3 exhibit a dramatically improved surface resistance that could
not have been expected in view of the prior art." Id.
The table summarizing Examples 1-3 of the Remaury declaration is
reproduced below.
~~~~-~f ~ ~= r=: _:=~:~:~I;~-= r =~[r ,;1l1:;~=-1
I component l hex1~meti1yidi~ii!oxfH'1>~; 1
1
hexamdhyi!.r.- . !.- :;. ~ ~ ' ~ I ! 100 g of I mo ~l of I Vvith silanci 1
I ! 1r'"dilT 1 0t''"~'·ilox·,1n"' jl poiy
! l i och:1•<>•i1"1'"'"i'<"x13:·,,, !
6ckn-:~~=00014i;;;:;;;m=-:= =-o,;515,;;;,,;;;-d.:. :~;i~~:i'.~::j
The Examiner did not find the evidence to sufficient to establish
nonobviousness of the claimed subject matter. Specifically, the Examiner
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Application 13/083,488
found that the showing is not commensurate in scope with the claimed
subject matter because the claimed subject matter is unrestricted as to the
amounts of gallium oxide, the type of silicon polymer, and the type of
hardener, but the examples only used a narrow range of gallium oxide (i.e.,
1.5% and 2%) and specific silicon polymers and hardeners (see table
reproduced above). Answer 6-7. For this reason, the Examiner concluded
that unexpected results had not been shown for the full scope of claim 1. Id.
at 7.
Unexpected results must be "commensurate in scope with the degree
of protection sought by the claimed subject matter." In re Harris, 409 F.3d
1339, 1344 (Fed. Cir. 2005). As held in Harris: "[e]ven assuming that the
results were unexpected, Harris needed to show results covering the scope of
the claimed range. Alternatively Harris needed to narrow the claims." Id.
In In re Kollman, 595 F.2d 48, 56 (CCPA 1979), the court stated:
\Ve feel that the unobviousness of a broader claimed range can,
in certain instances, be proven by a nmTower range of data.
Often, one having ordinary skill in the art may be ab 1e to
ascertain a trend in the exemplified data which would allow him
to reasonably extend the probative value thereof.
In this case, Appellants have not demonstrated that the limited showing
described by Dr. Remaury established unexpected results for the full scope
of the claim. For example, Appellants have not demonstrated a trend in the
data which could be extrapolated to other amounts of gallium oxide and
other materials encompassed by the claim.
We additionally note that the column 5 of Long is cited by Dr.
Remaury as showing the "experimental conditions" (Remaury Deel., p. 3).
However, column 5 does not disclose the base component and hardener
components. It appears that such materials are disclosed on columns 3--4 of
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Appeal2015-000150
Application 13/083,488
Long. Appellants have not established that the same base and hardener
components described by Long in columns 3--4 were used in Examples 1-3.
Consequently, it cannot be determined whether differences in the dopant
were responsible for the differences in the electrical resistivity or whether
the specific base and hardener components utilized in Examples 1-3 were
responsible for the differences in electrical resistivity.
In sum, after considering the totality of the evidence before us, we
conclude that Appellants have not established the nonobviousness of claim 1
in view of Long and Hayashi. Appellants did not provide separate reasons
for the patentability of claims 2 and 5-12, or claims 3 and 4 as rejected
under Long, Hayashi, and Temoir. Appeal Br. 5, 6. These claims therefore
fall with claim 1. See 37 C.F.R. § 41.37(c)(iv).
TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 3 7 C.F .R. § 1.13 6( a )(1 )(iv).
AFFIRMED
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