Ex Parte Thomas et al

Patent Trial and Appeal Board

Jan 31, 2017

13141451 (P.T.A.B. Jan. 31, 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
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APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/141,451 06/22/2011 John Christopher Thomas 65017US005 5263
32692 7590 02/02/2017
3M INNOVATIVE PROPERTIES COMPANY
PO BOX 33427
ST. PAUL, MN 55133-3427
EXAMINER
BOYLE, KARA BRADY
ART UNIT PAPER NUMBER
1766
NOTIFICATION DATE DELIVERY MODE
02/02/2017 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):
LegalUSDocketing@mmm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN CHRISTOPHER THOMAS,
NEAL A. RAKOW,
and JOHN E. TREND
Appeal 2015-005767
Application 13/141,451
Technology Center 1700
Before ADRIENE LEPIANE HANLON, LINDA M. GAUDETTE, and
BRIAN D. RANGE, Administrative Patent Judges.
HANLON, Administrative Patent Judge.
DECISION ON APPEAL
A. STATEMENT OF THE CASE
The Appellants filed an appeal under 35 U.S.C. § 134 from a final rejection
of claims 1—13. Claims 14—19 are also pending but have been withdrawn from
consideration. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Representative claim 1 is reproduced below from the Claims Appendix of
the Appeal Brief dated January 8, 2015 (“App. Br.”).
Appeal 2015-005767
Application 13/141,451
1. A film comprising:
a hydrophobic, amorphous, substantially microporous,
organosilicate composition comprising micropores which define a
pore volume, and wherein the organosilicate composition comprises a
composition prepared from a precursor reaction mixture comprising:
a solvent;
at least two organo-fimctional hydrolysable silanes; and
an acid; and
wherein the precursor mixture is deposited on a substrate to
form a film; and heated to dry and calcine the mixture.
App. Br. 8.
The claims on appeal stand rejected as follows:
(1) claims 1—8 and 10-13 under 35 U.S.C. § 102(b) as anticipated by
Raman et al.;1 and
(2) claim 9 under 35 U.S.C. § 103(a) as unpatentable over Raman in view
of Boury et al.2
B. DISCUSSION
1. Claim 1
The Examiner finds Raman discloses essentially the same process as
disclosed by the Appellants. Ans. 3^4.3 Thus, the Examiner finds “the
microporous membranes of Raman . . . will inherently have the same properties as
the films of the instant invention, i.e. being hydrophobic, amorphous, substantially
1 N.K. Raman & C.J. Brinker, “Organic ‘Template’ Approach to Molecular
Sieving Silica Membranes,” 105 J. Membrane Sci. 273—279 (1995) (“Raman”).
2 Bruno Boury et al., “Generation of Microporosity in a Hybrid Material. Access to
Pillared Amorphous Organosilicate,” 11 Chem. Mater. 2796—2803 (1999)
(“Boury”).
3 Examiner’s Answer dated March 13, 2015.
2
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Application 13/141,451
microporous organosilicate film comprising micropores defining a pore volume” as
recited in claim 1. Ans. 4.
The Appellants argue that Raman is not preparing an organosilicate network
as claimed but rather is preparing an inorganic network. App. Br. 3. The
Appellants disclose that “the term ‘organosilicate’ refers to compositions that are
hybrids containing a covalently linked three dimensional silica network (-Si-O-Si-)
with some organo-fimctional groups R, where R is a hydrocarbon or heteroatom
substituted hydrocarbon group linked to the silica network by at least one Si-C
bond.” Spec. 3,11. \-A.
The Appellants contend the process disclosed in Raman and the claimed
process differ as follows:
Raman uses TEOS (tetraethoxysilane) and MTES (methyl
triethoxysilane), of these only MTES is an organo-fimctional silane
since TEOS contains no silicon-carbon bonds. In present claim 1 the
precursor reaction mixture contains at least two organo-fimctional
hydrolysable silanes.
App. Br. 4.
The Appellants argue that Raman prepares an inorganic matrix by heating to
pyrolyze or “bum off’ the organic groups, leaving behind an inorganic matrix.
App. Br. 4. In contrast, “[w]hile heat is applied to dry and calcine the
[Appellants’] mixture,” the Appellants argue “the organic groups are not burned
off as in Raman.” App. Br. 4.
In response, the Examiner recognizes there is only one organo-fimctional
hydrolysable silane in the example of Raman.4 However, the Examiner concludes
4 According to the Appellants’ Specification, “a precursor mixture is prepared,
coated on a substrate and heated to dry and/or calcine the precursor mixture to
form a hydrophobic, amorphous, substantially microporous, organosilicate film.”
3
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Application 13/141,451
that claim 1 “is recited in the product-by-process format, and different starting
materials can produce the same precursor product.”* * 5 Ans. 9 (emphasis omitted).
According to the Examiner, during hydrolysis of TEOS and MTES in Raman, an
acid catalyst reacts with two Si-OR bonds to form a Si-O-Si bond with an R-O-R
byproduct. That is, hydrolysable groups (-OMe and -OEt) are removed from
silicon atoms during hydrolysis, leaving only non-hydrolysable groups (-Me) as in
the Appellants’ process. See Ans. 10 (the groups removed during hydrolysis are
the only differences between the Appellants’ reactants and the reactants in Raman).
The Appellants do not direct us to any error in the Examiner’s finding that
non-hydrolysable groups remain after hydrolysis of TEOS and MTES in Raman.
Rather, the Appellants argue that TEOS “is a major constituent forming 45—90
mol % of the reaction mixture used to form the network [in Raman].” Reply Br. 26
(citing Raman, Section 2.2). The Appellants argue:
Because the precursor products of Raman are based upon a non-
organofimctional hydrolysable silane (that is to say triethoxy silane
(Si(OEt)4)) [TEOS], the precursor product of Raman is going to have
a low organic content, because only a small proportion of
organosilicate bonds (that is to say Si-C bonds) are present because
the starting materials in Raman are not 2 organofimctional
hydrolysable silanes, but rather [are] an inorganic silane and 1
organofimctional hydrolysable silane.
Spec. 7,11. 11—13. The Appellants disclose that “[t]he precursor mixture contains
at least one hydrolysable silane.” Spec. 7,1. 25.
5 “If the product in a product-by-process claim is the same as or obvious from a
product of the prior art, the claim is unpatentable even though the prior product
was made by a different process.” In re Thorpe, 111 F.2d 695, 697 (Fed. Cir.
1985).
6 Reply Brief dated May 13, 2015. We note that the pages of the Reply Brief are
not numbered. Therefore, we refer to the page numbers of the Reply Brief
automatically generated in the electronic file of the instant Application.
4
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Application 13/141,451
Reply Br. 3 (emphasis added).
Significantly, claim 1 does not exclude TEOS. See Reply Br. 2 (recognizing
that “claim 1 does have comprising language meaning that additional elements
could be added to it”). Moreover, claim 1 does not recite the amount of the at least
two organo-fimctional hydrolysable silanes in the precursor reaction mixture or the
organic content in the precursor product. Thus, the Appellants’ argument is not
persuasive of reversible error.
Next, the Examiner finds Raman’s precursor product is heated to
temperatures of 150°C, 400°C, or 550°C, and the Appellants’ precursors are
calcined at temperatures ranging from 200°C to 500°C, with 450°C being a
representative temperature. Ans. 11. The Examiner finds:
Regardless of whether the term “inorganic” is used to describe the
materials of Raman and “organosilicate” is used in the instant claims,
the same precursor ... is exposed to the same or lower temperatures
in Raman ... as described in the instant invention, which can and will
produce the same results as heating the same precursor ... to the same
or higher temperatures.
Ans. 11.
The Examiner also finds:
Raman specifically states that at temperatures of 450°C to 600°C are
when methyl ligands are pyrolyzed. This means that at the
temperatures of the instant specification which “calcine” the
precursors of the invention, such as 450°C which are preferred, the
methyl ligands must also at least begin to be removed, and at the
lower temperatures in Raman . . ., i.e. 150°C and 400°C, they still
remain in the organosilicate.
Ans. 12.
Referring to the disclosure in Raman Section 3.1 teaching calcination
temperatures of 150°C and 400°C, the Appellants argue:
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Application 13/141,451
[T]he Raman reference is a research journal article, and that Raman is
using these lower temperature regimes to show what happens during
the intermediate phases of the heating regime, and is not teaching that
a xerogel that is heated to 150°C is a useful material, rather they are
studying the progressive densification of the material as is described
in the second paragraph of section 3.1.... In this paper they
characterize the intermediate stages of calcination, to show the effect
of the organic templates, but the teaching of this reference is to
making an inorganic network by pyrolyzing the methyl groups.
Reply Br. 4.
It is of no moment, in the § 102(b) rejection on appeal, that Raman
characterizes the product heated to 150°C as an intermediate product. “The
anticipation analysis asks solely whether the prior art reference discloses and
enables the claimed invention, and not how the prior art characterizes that
disclosure or whether alternatives are also disclosed.” Hewlett-Packard Co. v.
Mustek Sys., Inc., 340 F.3d 1314, 1324 n.6 (Fed. Cir. 2003).
In this case, Raman describes a precursor product comprising non-
hydrolysable groups (-Me) that is calcined to a temperature (i.e., 400°C)7 within
the range used by the Appellants.8 See Spec. 9,11. 11—12 (“Typically the coated
precursor mixture is heated to a temperature in the range of about 200°C to about
500°C.”). Thus, the Examiner’s finding that Raman’s product is produced by
substantially the same process as the Appellants’ product is supported by a
preponderance of the evidence.
Based on the foregoing, we find the burden properly shifted to the
Appellants to show that Raman’s precursor product, which is calcined to 400°C,
does not inherently possess the characteristics of the claimed invention. See In re
1 Raman 276—277 (Section 3.1); Raman Fig. 2.
8 The organosilicate composition is subsequently tested to show N2 adsorption.
See Raman Fig. 2.
6
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Best, 562 F.2d 1252, 1255 (CCPA 1977) (where the claimed and prior art products
are produced by substantially identical processes, the Examiner “can require an
applicant to prove that the prior art products do not necessarily or inherently
possess the characteristics of his claimed invention”). The Appellants have failed
to satisfy that burden. Therefore, the § 102(b) rejection of claim 1 is sustained.
The Appellants do not present arguments in support of the separate
patentability of any of dependent claims 2—8 and 10-13. Therefore, the § 102(b)
rejection of claims 2—8 and 10-13 is also sustained.
2. Claim 9
The Examiner relies on Boury to teach the organo-fimctional alkoxy silane
recited in claim 9.9 Ans. 9.
The Appellants argue that Raman and Boury “cannot be combined because
the two references teach different networks and methods for forming the
networks.” App. Br. 6.
The Appellants’ argument is not persuasive of reversible error. In the
§ 103(a) rejection on appeal, the Examiner merely relies on Boury to teach the
organo-fimctional alkoxy silane recited in claim 9. Ans. 6—7, 14. The Examiner
provides the following rationale for combining Raman and Boury:
Both references are from the same field of endeavor (specifically
microporous xerogel materials produced using an organosilicate
precursor material), and it would have been obvious to use an
organosilane B10 [as claimed] ... in the microporous, composition of
9 Claim 9 depends from claim 7, which depends from claim 1, and recites that “at
least one organo-fimctional alkoxy silane is of the formula: (R30)3Si-R5-Si(0R4)3
wherein R3 and R4 are alkyl or aryl groups, and R5 is an alkylene, arylene or
aralkylene group. App. Br. 9.
10 The Examiner finds organosilane B disclosed on page 2797, second column, of
Boury falls within the scope of the organosilane recited in claim 9. Ans. 14.
7
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Raman ... in order to narrow the pore size distribution in the
membranes (films) of Raman . . . [as] Boury . . . teaches that in the
materials of the invention, increasing the pore distribution in the
xerogels of the invention becomes narrow as the amount of B is
increased.
Ans. 14; see also Ans. 7. The Appellants do not direct us to any error in the
Examiner ’ s rationale.
The Appellants also argue that “even if Raman could be modified with the
monomers of Boury, the resultant network would be a network of the Raman
invention and thus would be an inorganic silica network and not an organosilicate
network.” App. Br. 6.
In the rejection on appeal, the Examiner relies on the organosilicate
composition formed at the lower temperatures disclosed in Raman (e.g., 400°C)
and modifies that composition with organosilane B disclosed in Boury. The
Appellants do not direct us to any evidence showing that modifying Raman as
proposed by the Examiner would not result in an organosilicate composition.
Rather, the Appellants argue that Raman teaches away from an organosilicate
composition. App. Br. 6. We disagree.
We recognize that Raman discloses that organic membranes have certain
disadvantages.11 See, e.g., Raman 274, col. 2 (disclosing a trade-off between
permeability and selectivity in organic membranes). Nonetheless, Raman does not
disclose that organic membranes are inoperable for their intended purpose. See In
re Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984) (reference “teaches away” from
proposed modification when modification would render apparatus disclosed in that
11 “[A] given course of action often has simultaneous advantages and
disadvantages, and this does not necessarily obviate motivation to combine.”
Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006).
8
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reference “inoperable for its intended purpose”). Indeed, Raman discloses that
CO2/CH4 separation using polymeric membranes is economically attractive.
Raman 273, col. 1.
For the reasons set forth above, the § 103(a) rejection of claim 9 is sustained.
C. DECISION
The Examiner’s decision 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
9