Ex Parte Zagdoun et al

Patent Trial and Appeal BoardFeb 9, 2016

12993978 (P.T.A.B. Feb. 9, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 12/993,978 02/14/2011 Georges Zagdoun 22850 7590 02/11/2016 OBLON, MCCLELLAND, MAIER & NEUSTADT, LLP, 1940 DUKE STREET ALEXANDRIA, VA 22314 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. 371344US99PCT 9864 EXAMINER NAKARANI, DHIRAJLAL S ART UNIT PAPER NUMBER 1787 NOTIFICATION DATE DELIVERY MODE 02/11/2016 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): patentdocket@oblon.com oblonpat@oblon.com ahudgens@oblon.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte GEORGES ZAGDOUN and EDDY ROYER1 Appeal2014-000474 Application 12/993,978 Technology Center 1700 Before PETER F. KRATZ, WESLEY B. DERRICK, and JEFFREY W. ABRAHAM, Administrative Patent Judges. ABRAHAM, Administrative Patent Judge. This is a decision on an appeal under 35 U.S.C. Â§ 134 from the decision of the Examiner finally rejecting claims 1, 3-12, 14, and 16-21. We have jurisdiction pursuant to 35 U.S.C. Â§ 6(b). We reverse. BACKGROUND Appellants' claimed invention relates to a glass substrate having a temporary protection film. Abstract. 1 According to the Appeal Brief, the Real Party in Interest is Saint-Gobain Glass France. Br. 2. Appeal2014-000474 Application 12/993,978 Claim 1 is the only independent claim on appeal,2 and is reproduced below from the Claims Appendix (Br. 18): 1. A glass substrate, comprising a coating, said coating being a temporary protection film, said film comprising a stack of discernible colloidal polymer particles comprising a same or different polymer, wherein an average diameter of the colloidal polymer particles is from 40 to 500 nm. The Examiner maintains, and Appellants appeal, the rejection of claims 1, 3---6, 11, 12, 14, and 16-21under35 U.S.C. Â§ 103(a) as obvious over Medwick (US 6,849,328 Bl, issued Feb. 1, 2005) in view ofRiiger (US 5,407,792, issued Apr. 18, 1995). OPINION The Examiner finds that Medwick discloses a glass coated with a temporary removable film or coating made from a water dispersible polymer such as polyvinyl acetate or ethylene/acrylic acid polymers. Non-Final Office Action dated September 24, 2012 ("Non-Final Act.") at 3.3 The Examiner further finds that Medwick's film comprises colloidal polymer particles because it is dried under a heat lamp (id. (referring to Medwick 17:45, Ex. 4)), which, according to the Examiner, is used to heat the ambient air to minimize drying time, not to heat the coating itself (Ans. 5 (citing Medwick 9:43--45)). The Examiner thus determines that "[t]he coating is 2 In the Answer, the Examiner withdrew the rejection of claims 7-10 under 35 U.S.C. Â§ 103(a) as obvious over Medwick in view of Ruger. Ans. 3. 3 In the Final Action, the Examiner rejected the appealed claims "for the reasons of record set forth in paragraph 4 of the Office Action mailed September 24, 2012." Final Act. 2. 2 Appeal2014-000474 Application 12/993,978 considered having stack of colloidal particles unless shown otherwise." Non-Final Act. 3; Ans. 5. The Examiner states that Medwick fails to disclose the particle size of the colloidal polymer particles, and relies on Ruger as disclosing that limitation. Non-Final Act. 3--4. Appellants argue, inter alia, that the Examiner failed to provide a reasonable basis for the conclusion that Medwick' s temporary coating/film includes a stack of colloidal particles, as required by claim 1. Br. 7. Specifically, Appellants contend that the Examiner relied on "unsupported conjecture" in determining that "Medwick's materials include colloidal particles and/or that drying an ethylene/acrylic acid copolymer under a heat lamp results in the formation of colloidal particles." Id. at 7-8. As a result, Appellants argue that the Examiner failed to establish a prima facie case of obviousness and erroneously attempted to shift the burden of proof to Appellants. Id. at 8. After review of the respective positions provided by Appellants and the Examiner, we find that the Examiner has failed to establish a prima facie case of obviousness. The Examiner bears the initial burden of factually supporting any prima facie conclusion of obviousness. See In re Warner, 379 F.2d 1011, 1016 (CCPA 1967). "Only ifthat burden is met, does the burden of coming forward with evidence or argument shift to the [Appellant]." In re Rijckaert, 9 F.3d 1531, 1532 (Fed. Cir. 1993). The Examiner's initial burden can be met by showing a "sound basis for believing the products of the applicant and the prior art are the same." In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990). Here, however, the Examiner has failed to provide sufficient factual support or a technical explanation to establish the requisite sound basis for believing that Medwick' s temporary 3 Appeal2014-000474 Application 12/993,978 coating or film comprises "a stack of discernable colloidal polymer particles" as required by claim 1. We are not persuaded by the Examiner's determination that Medwick discloses "discernible colloidal polymer particles" because it teaches applying an ethylene/acrylic acid dispersion to a surface and drying it with the aid of a heat lamp. As Appellants point out in the Specification, "[t]oo high a [drying] temperature runs the risk of creating a film consisting no longer of small discernible hard spheres but of particles bonded together" (Spec. 5 :22-25), and "[ e ]xcessively long or excessively strong heating or drying runs the risk of forming films in which the polymer particles are no longer discernible, but instead bonded together" (id. at 5:36- 6:1). Nor are we persuaded by the Examiner's position that the heat lamp in Medwick is used to heat ambient air, not the coating itself, because Medwick states that drying via convective air flow with heated air can provide "a reactive curing film-forming mechanism." Medwick 9:40-45. In view of this, we find that the Examiner fails to direct us to sufficient information to determine or to reasonably conclude that Medwick discloses a coating or film having discernible colloidal particles as opposed to particles bonded together or coalesced during drying. See Spec. 5: 19---6:3. Therefore, we agree with Appellants that the Examiner has failed to demonstrate that Medwick discloses each element recited in claim 1. Because the Examiner does not demonstrate that Ruger cures this deficiency, we reverse the Examiner's rejection of independent claim 1, and claims 3---6, 11, 12, 14, and 16-21, which depend therefrom. 4 Appeal2014-000474 Application 12/993,978 CONCLUSION We reverse the Examiner's final rejection of claims 1, 3---6, 11, 12, 14, and 16-21. REVERSED sl 5