SABIC Global Technologies B.V.

Patent Trials and Appeals Board

Feb 28, 2022

2021001459 (P.T.A.B. Feb. 28, 2022)

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. 15/528,380 05/19/2017 Johannes DE BROUWER 14PLAS0209- US-PCT (SP1600 3975 23413 7590 02/28/2022 CANTOR COLBURN LLP 20 Church Street 22nd Floor Hartford, CT 06103 EXAMINER SHUKLA, KRUPA ART UNIT PAPER NUMBER 1787 NOTIFICATION DATE DELIVERY MODE 02/28/2022 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): usptopatentmail@cantorcolburn.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JOHANNES DE BROUWER Appeal 2021-001459 Application 15/528,380 Technology Center 1700 Before BRIAN D. RANGE, DEBRA L. DENNETT, and SHELDON M. MCGEE, Administrative Patent Judges. DENNETT, Administrative Patent Judge. DECISION ON APPEAL1 Pursuant to 35 U.S.C. § 134(a), Appellant appeals from the Examiner’s decision to reject claims 1 and 4-8, which constitute all the claims pending in this application.2 See Final Act. 1. We have jurisdiction under 35 U.S.C. § 6(b). For the reasons set forth below, we AFFIRM. 1 In our Decision, we refer to the Specification (“Spec.”) of Application 15/528,380 filed May 19, 2017 (“the ’380 App.”); the Final Office Action dated Feb. 6, 2020 (“Final Act.”); the Appeal Brief filed Aug. 25, 2020 (“Appeal Br.”); the Examiner’s Answer dated Oct. 26, 2020 (“Ans.”), and the Reply Brief filed Dec. 23, 2020 (“Reply Br.”). 2 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies SABIC GLOBAL TECHNOLOGIES B.V. as the real party in interest. Appeal Br. 2. Appeal 2021-001459 Application 15/528,380 2 BACKGROUND The subject matter of the invention relates generally to anti-fog polycarbonate compositions with optical properties. Spec. ¶ 2. According to the application, polycarbonates are often modified through the introduction of additives or fillers to combat undesirable properties or to enhance preferred qualities. Id. ¶ 4. Polycarbonate resins used as transparent materials in automotive and commercial applications can be susceptible to accumulation of moisture on the surface of the resin (fogging), which diminishes transparent and clarity of the resin. Id. ¶ 5. The application suggests that surface modifying molecules such as fluorooligomers can be blended in a thermoplastic composition, and, after molding, the oligomers can migrate to the surface of the molded material, thereby eliminating the need for a coating step. Id. ¶ 11. Claim 1, reproduced below from the Claims Appendix of the Appeal Brief, illustrates the claimed subject matter: 1. A lens article, the lens article comprising a composition comprising: a polycarbonate base resin; and an amphiphilic oligomer block additive comprising mid-domain and terminal organo-fluoro groups, wherein the mid-domain has soft and hard segments, wherein the lens article exhibits a transmission of visible light of at least about 85% as measured according to ASTM D1003-00. Appeal Br. 11 (Claims App.). Appeal 2021-001459 Application 15/528,380 3 REFERENCES The Examiner relies on the following prior art in rejecting the claims on appeal: Name Reference Date Santerre US 6,127,507 Oct. 3, 2000 Dean et al. (“Dean”) US 2005/0140051 A1 June 30, 2005 Goossens et al. (“Goossens”) US 2010/0137500 A1 June 3, 2010 REJECTIONS3 The Examiner maintains the following rejections under 35 U.S.C. § 103: 1. Claims 1 and 4-7 are rejected under 35 U.S.C. 103 over Dean in view of Santerre. Final Act. 4-6. 2. Claim 8 are rejected under 35 U.S.C. 103 over Dean, Santerre, and further in view of Goossens. Id. at 6. DISCUSSION We review the appealed rejections for error based upon the issues identified by Appellant and in light of the arguments and evidence produced thereon. Cf. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential), (cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011)) (“[I]t has long been the Board’s practice to require an applicant to identify the alleged error in the [E]xaminer’s rejections.”). After considering the evidence presented in this Appeal and each of Appellant’s arguments, we are not persuaded that Appellant identifies reversible error. Thus, we affirm the Examiner’s rejections for the reasons 3 The Examiner withdrew a § 112(a) rejection of claims 1 and 4-8 and a § 112(b) rejection of claim 5. Ans. 6. Appeal 2021-001459 Application 15/528,380 4 expressed in the Final Office Action and the Answer. We add the following primarily for emphasis. Rejection of claims 1 and 4-7 as unpatentable over Dean in view of Santerre Appellant argues for patentability of each of the claims subject to this rejection separately. Claim 1 The Examiner finds that Dean teaches a composition of a polycarbonate base and non-ionic anti-fog additive that may be used for articles including goggles, lenses, and automotive head lamp lenses. Final Act. 4-5. The Examiner finds that Dean does not disclose the amphiphilic oligomer block additive of claim 1, but that Santerre discloses a surface modifying macromolecule (SMM) that is identical to the claimed amphiphilic oligomer block additive. Id. at 5. The Examiner finds that Santerre discloses the SMM can be mixed with polycarbonates to form an article. Id. The Examiner determines that it would have been obvious to one of ordinary skill in the art to use Santerre’s SMM as the non-ionic additive in Dean in order to improve surface properties as well as to obtain low fouling properties and low wetting characteristics. Id. The Examiner finds that the resulting construct would have been identical to that of claim 1, and therefore would exhibit the claimed transmission of visible light. Id. Appellant argues that to achieve anti-fog properties, either a very hydrophobic surface or a very hydrophilic surface is required, and “anything in between these extremes may not work or not work well enough.” Appeal Br. 6; see also Reply Br. 3. Appellant argues that Dean requires hydrophilicity, thus one of ordinary skill in the art would not consider Santerre’s SMM to replace Dean’s additive because Santerre’s SMM has terminal polyfluoro oligomeric groups Appeal 2021-001459 Application 15/528,380 5 known for their hydrophobic nature. Appeal Br. 6-8; see also Reply Br. 2, 3 (“Dean clearly discloses that the presence of the fluorine should be limited.”). Appellant’s arguments are unpersuasive. Dean teaches suitable anti-fog additives exhibit a balance of properties. Dean ¶ 19. Dean states “[t]he additive desirably has the ability to migrate to the surface of the article where it can provide the anti-fog property,” and “more hydrophobic groups present in the additive, such as long chain alkyls or perfluorinated alkyls, enhance the additive’s ability to migrate to the surface of the article.” Id. Dean teaches “the additive is also preferably hydrophilic enough to provide reduced surface tension of water that may be present at the surface of the article.” Id. (emphasis added). Dean also teaches that “an anti-fog additive can contain fluorine or other hydrophobic constituents and still be suitable for anti-fog.” Id. ¶ 83. Dean thus suggests a balance of hydrophilicity and hydrophobicity is beneficial in the additive, and not, as Appellant suggests, that the additive must be very hydrophilic. The teachings in Dean would not lead one of ordinary skill in the art to dismiss Santerre’s SMM because it has hydrophobic ends or is polyfluorinated. Appellant argues that none of the four preferred base polymers disclosed in Santerre are polycarbonate. Appeal Br. 7; see also Reply Br. 2, 5. However, “in a section 103 inquiry, the fact that a specific [embodiment] is taught to be preferred is not controlling, since all disclosures of the prior art, including unpreferred embodiments, must be considered.” Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989). The Examiner points out that Santerre specifically discloses use of polycarbonate with SMM. Santerre col. 4, l. 8, col. 29, ll. 13-14; Ans. 9. For purposes of section 103, a reference is prior art for all that it discloses. Symbol Techs., Inc. v. Opticon, Inc., 935 F.2d 1569, 1578 (Fed. Cir. 1991). Thus, Appellant’s argument is unpersuasive. Appeal 2021-001459 Application 15/528,380 6 Appellant argues that Santerre fails to disclose that the SMM can be used in anti-fog applications. Appeal Br. 6. This argument is unpersuasive. “Non- obviousness cannot be established by attacking references individually where the rejection is based upon the teachings of a combination of references.” In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Santerre discloses the combination of polycarbonate and SMM, and this is what the Examiner relies on the reference for. Dean teaches polycarbonate and an anti-fog additive. “[T]he test for combining references is not what the individual references themselves suggest but rather what the combination of disclosures taken as a whole would suggest to one of ordinary skill in the art.” In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971); see also In re Keller, 642 F.2d 413, 425 (CCPA 1981) (“The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art.”). Appellant argues that “Santerre fails to motivate one of skill in the art to consider an admixture [with] polycarbonate or that such an admixture with their surface modifying macromolecule would result in the claimed transmission such that it could be used as a lens article.” Appeal Br. 7-8; see also Reply Br. 2, 5. This argument, like that above, ignores that the rejection is based upon the teachings of a combination of references. See Merck, 800 F.2d at 1097. It is well established that “it is not necessary that the inventions of the references be physically combinable to render obvious the invention under review.” In re Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983). There is no need for Santerre to motivate use of the disclosed SMM and polycarbonate for a lens article. “[T]he Appeal 2021-001459 Application 15/528,380 7 [obviousness] analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). One of ordinary skill can use his or her ordinary skill, creativity, and common sense to make the necessary adjustments and further modifications to result in a properly functioning device. See id. In addition, we note that Appellant’s contentions regarding the understanding of one of ordinary skill in the art are unsupported by evidence. It is well settled that arguments of counsel cannot take the place of factually supported objective evidence. See, e.g., In re Huang, 100 F.3d 135, 139-40 (Fed. Cir. 1996); see also In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984). Appellant argues that the Examiner errs in finding motivation to combine the teachings of Dean and Santerre. Reply Br. 4. Appellant argues use of Santerre’s SMM as the additive in Dean’s thermoplastic articles would render Dean unsatisfactory for its intended purpose and change the principle of operation of Dean. Id. Appellant contends that one of ordinary skill in the art would view Santerre’s improvements (improved surface properties, low fouling properties, low wetting characteristics) to be the result of a more hydrophobic, droplet forming surface. Id. Appellant contrasts this with Dean’s purported “clear[] and consistent[] . . . desire for their droplets to ‘spread’ on their surface.” Id. Dean teaches: [I]t is believed that conditioning brings the hydrophilic portion of the anti-fog additive to the surface of the article in response to the aqueous environment, thereby switching the additive orientation so the anti-fog (hydrophilic) portion of the additive is at the outermost surface. Although the additive orientation can reverse upon drying the surface, it is believed that subsequent exposure to an aqueous environment (including fogging conditions) brings the hydrophilic Appeal 2021-001459 Application 15/528,380 8 portion again to the outermost surface and the time for this to occur is shorter than the time required during the conditioning step. Therefore, after conditioning, a material becomes fog resistant where it was not prior to the conditioning step. Dean ¶ 9. Dean therefore teaches achieving an anti-fog hydrophilic surface by conditioning a material comprising polycarbonate and an additive that would have a hydrophobic surface prior to conditioning. Dean teaches that “[t]he balance of hydrophobic and hydrophilic should also allow for the positioning of the hydrophilic moiety of the additive to be directed toward the surface of the article.” Id. ¶ 19. Therefore, use of Santerre’s SMM in Dean’s thermoplastic article would not render Dean unsatisfactory for its intended purpose or change its principle of operation. Our reviewing court’s precedent “does not require that the motivation be the best option, only that it be a suitable option from which the prior art did not teach away.” Par Pharm., Inc. v. TWI Pharm., Inc., 773 F.3d 1186, 1197-98 (Fed. Cir. 2014). For the above reasons, we sustain the rejection of claim 1 as obvious over Dean in view of Santerre. Claims 4 and 5 Claim 4 depends from claim 1 and further requires “wherein a surface of the lens article is resistant to water accumulation.” Appeal Br. 11. Claim 5 depends from claim 1 and further requires “wherein the lens article exhibits an increase in fog resistance compared to a similar lens article that does not comprise the amphiphilic oligomeric block additive.” Id. The Examiner finds that, because the lens article of Dean in combination with Santerre is identical to the lens article claimed, it is obvious or inherent that the lens article of the prior art has the claimed properties. Final Act. 6. Appeal 2021-001459 Application 15/528,380 9 Regarding claim 4, Appellant argues that Santerre fails to indicate that the admixture of a base polymer and the SMM would result in an article that is resistant to water accumulation, and would not have motivated the skilled artisan to consider polycarbonate. Appeal Br. 8. Regarding claim 5, Appellant argues that one of ordinary skill in the art presented with Dean and Santerre would have no way of known that the claimed lens article could exhibit a transmission of visible light of at least about 85% and would exhibit an increase in the claimed fog resistance. Id. Appellant does not address the Examiner’s finding that the properties are obvious or inherent. See generally, Appeal Br.; and Reply Br. Appellant’s arguments are unpersuasive. Where the claimed and prior art products are identical or substantially identical, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product. In re Best, 562 F.2d 1252, 1256 (CCPA 1977). Appellant does not provide the necessary proof that the prior art lens article does not have the claimed properties. Also, regarding the selection of polycarbonate, Appellant fails to address the combined reference teachings-- instead focusing on whether the requisite motivation appears in Santerre. Such arguments focused on the references individually are unpersuasive. See Merck, 800 F.2d at 1097. We sustain the rejection of claims 4 and 5 as obvious over Dean in view of Santerre. Claims 6 and 7 Claim 6 depends from claim 1 and further requires “wherein a surface to air interface of lens article exhibits a contact angle of greater than about 90°. Appeal Br. 11. Claim 7 depends from claim 1 and further requires “wherein a surface to air interface of the lens article exhibits a contact angle of greater than about 100°.” Id. Appeal 2021-001459 Application 15/528,380 10 The Examiner finds that, because the lens article of Dean in combination with Santerre is identical to the lens article claimed, it is obvious or inherent that the lens article of the prior art has the claimed properties. Final Act. 6. Appellant argues that Dean was concerned with reducing the contact angle of their article, and the desired additive should have a certain hydrophilicity to cause reduction in surface tension. Appeal Br. 9. Appellant’s arguments are unpersuasive for the same reasons discussed in relation to claims 4 and 5. Appellant does not provide proof that the lens article of Dean in view of Santerre does not have the claimed properties. See Best, 562 F.2d at 1256. We sustain the rejection of claims 6 and 7 as obvious over Dean in view of Santerre. Rejection of claim 8 as unpatentable over Dean in view of Santerre, further in view of Goossens Claim 8 depends from claim 1 and further requires that the lens article has a thickness between about 1 mm and about 12 mm. Appeal Br. 11. The Examiner relies on the findings regarding Dean in view of Santerre discussed in relation to claim 1, supra. Final Act. 6. The Examiner finds that Goossens disclosed an article such as an automotive head light lens prepared from polycarbonate composition can have a thickness of 3.2 mm. Id. The Examiner finds that it would have been obvious to one of ordinary skill in the art to use the lens article of Dean in view of Santerre to prepare an automotive head light lens having a thickness of 3.2 mm. Id. Appellant relies on arguments made against the combination of Dean and Santerre in relation to claim 1. Appeal Br. 10. Appeal 2021-001459 Application 15/528,380 11 For the reasons given regarding the rejection of claim 1, we do not find Appellant’s arguments persuasive. We sustain the rejection of claim 8 as obvious over Dean in view of Santerre and Goossens. CONCLUSION The Examiner’s rejections are sustained. DECISION SUMMARY In summary Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 4-7 103 Dean, Santerre 1, 4-7 8 103 Dean, Santerre, Goossens 8 Overall Outcome 1, 4-8 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED