SOLUTIA INC.

Patent Trials and Appeals BoardOct 25, 2021

2020005869 (P.T.A.B. Oct. 25, 2021)

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. 15/728,671 10/10/2017 NANDAN U. UKIDWE 86239US01 7786 66024 7590 10/25/2021 EASTMAN CHEMICAL COMPANY 200 SOUTH WILCOX DRIVE KINGSPORT, TN 37660-5147 EXAMINER SHUKLA, KRUPA ART UNIT PAPER NUMBER 1787 NOTIFICATION DATE DELIVERY MODE 10/25/2021 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): estiltner@eastman.com jlmcglothlin@eastman.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte NANDAN U. UKIDWE Appeal 2020-005869 Application 15/728,671 Technology Center 1700 Before TERRY J. OWENS, JOHN A. EVANS, and BRIAN D. RANGE, Administrative Patent Judges. RANGE, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1–20. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as “Solutia Inc. . . . which is a subsidiary of Eastman Chemical Company.” Appeal Br. 3. Appeal 2020-005869 Application 15/728,671 2 CLAIMED SUBJECT MATTER2 Appellant describes the invention as relating to a polymer resin suitable for use as an interlayer in a multiple layer panel such as safety glass or a polymeric laminate. Spec. ¶¶ 1–2. Appellant identifies a need for a resin with desirable “mechanical, optical, and/or acoustic properties that can be adjusted as needed so that the resin can be utilized in a wide variety of applications.” Id. ¶ 6. Claim 1 is illustrative: 1. An interlayer comprising: a resin layer comprising: a first poly(vinyl acetal) resin having a residual hydroxyl content of less than 22 weight percent and comprising at least 50 weight percent of residues of at least one aldehyde other than n- butyraldehyde, based on the total weight of aldehyde residues of the poly(vinyl acetal) resin, a second poly(vinyl acetal) resin having a residual hydroxyl content of less than 19 weight percent and comprising at least 50 weight percent of residues of n-butyraldehyde, based on the total weight of aldehyde residues of the poly(vinyl acetal) resin blended with the first poly(vinyl acetal resin), and a plasticizer wherein each of the first and the second poly(vinyl acetal) resins are present in the resin layer in an amount of at least about 5 weight percent, based on the combined weight of the first and the second poly(vinyl acetal) resins and wherein the difference in residual hydroxyl content between the first poly(vinyl acetal) resin and the second poly(vinyl acetal) resin is at least 3.0 weight percent, wherein the resin layer has an HLD Haze of less than 1.0. Appeal Br. 23 (Claims App.). 2 In this Decision, we refer to the Final Office Action dated October 21, 2019 (“Final Act.”), the Appeal Brief filed March 17, 2020 (“Appeal Br.”), the Examiner’s Answer dated June 22, 2020 (“Ans.”), and the Reply Brief filed August 11, 2020 (“Reply Br.”). Appeal 2020-005869 Application 15/728,671 3 REJECTION AND REFERENCE On appeal, the Examiner maintains the rejection of claims 1–20 under 35 U.S.C. § 103 as obvious over Ukidwe et al., US 2016/0160032 A1, June 9, 2016 (“Ukidwe”). Ans. 4 OPINION We review the appealed rejections for error based upon the issues identified by Appellant and in light of the arguments and evidence produced thereon. 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 examiner’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 expressed in the Final Office Action and the Answer. We add the following primarily for emphasis. Appellant do not, in substance, argue any dependent claims separately. Appeal Br. 21–22. Therefore, consistent with the provisions of 37 C.F.R. § 41.37(c)(1)(iv) (2013), we limit our discussion to claims 1, 11, and 20, and all other claims on appeal stand or fall together with the claim they depend from. While we focus primarily claim 1 below, we note that the prior art’s suggested ranges also overlap with the recitations of claims 11 and 20. The Examiner finds that Ukidwe teaches a multilayer interlayer with two resin layers. Ans. 4–5 (citing Ukidwe). The Examiner finds that Ukidwe teaches that the first resin comprises at least 10% by weight resides of aldehyde other than n-butyraldehyde and a second resin comprising residues Appeal 2020-005869 Application 15/728,671 4 of n-butyraldehyde. Id. The Examiner finds that the residual hydroxyl content of the poly(vinyl)acetal resins is 14 to 45 % by weight. Id. The Examiner finds that the difference between residual hydroxyl content between resins is at least 2%. Id. The Examiner finds that the Ukidwe interlayer includes a plasticizer. Id. The Examiner finds that the Ukidwe interlayer has haze of less than 5% as measured in accordance with ASTM D1003-61—Procedure A. Id. at 4–5, 7. The Examiner finds that the Ukidwe resin layer is identical to that presently claimed and will thus inherently have the same HLD haze and also that the Ukidwe resin layer has the same ASTM D1003-61 haze as the present invention. Id. at 7. Regarding the cloud point temperature of claims 11 and 20, the Examiner finds that Ukidwe “disclose[s] the poly(vinyl acetal) resin comprising residues of an aldehyde other than n-butyraldehyde has cloud point temperature at least 1 ºC lower than cloud point temperature of poly(vinyl n-butyral) resin, i.e. residues of n-butyraldehyde.” Ans. 5. Appellant argues that Ukidwe “does not disclose a blend of resins having the specific hydroxyl contents and differences (greater than 3 wt.%) such that the blend has a low HLD haze (of less than 1%).” Appeal Br. 14; Reply Br 2–3. Appellant’s argument is unpersuasive because Ukidwe suggests an interlayer having claims’ recited characteristics. In particular, Ukidwe teaches or suggests: (1) a first poly(vinyl acetal) resin having a residual hydroxyl content of “at least about 14 . . . weight percent” which overlaps with claim 1’s recited “less than 19 weight percent” (Ukidwe ¶ 32); Appeal 2020-005869 Application 15/728,671 5 (2) the first poly(vinyl acetal) resin comprising “at least about 50 . . . “weight percent of an aldehyde other than n-butyraldehyde” (id. ¶ 24; see also id. at ¶ 29 (teaching blend of two resins)); (3) a second poly(vinyl acetal) resin having a hydroxyl content of “at least about 14 . . . weight percent” which overlaps with claim 1’s “less than 19 weight percent” (id. ¶ 323); (4) the second poly(vinyl acetal) resin “comprising residues of n- butyraldehyde” (i.e., 100% n-butyraldehyde overlapping claim 1’s at least 50%) (id. ¶ 29); (5) a plasticizer (id. ¶ 38); and (6) “at least one of the resins can have a residual hydroxyl content that is at least 2 weight percent different than the other” (id. ¶ 34). Ukidwe thus suggests a two resin interlayer where each resin having the same chemical characteristics as claims 1, 11, and 20. Ukidwe further suggests that minimizing haze (i.e., enhancing optical properties and clarity) is achieved by its embodiments. Id. ¶ 83. Ukidwe teaches a haze as low as less than 0.5 percent as measured in accordance with ASTM D-1003-61. Id. The present Specification identically teaches that its embodiments may have a haze of less than 0.5 percent as measured by ASTM D-1003-61. Spec. ¶ 86. Although Ukidwe does not explicitly teach HLD haze values for its compositions, the evidence regarding ASTM D-1003-61 haze values nonetheless supports that Ukidwe suggests low haze. 3 Ukidwe paragraph 32 refers to the characteristics of “one or more of the poly (vinyl acetal) resins present.” Appeal 2020-005869 Application 15/728,671 6 Appellant also argues that Ukidwe does not suggest the cloud point recitation of claims 11 and 20. Appeal Br. 15; Reply Br. 4–5. Ukidwe, however, provides similar teachings regarding cloud point: “the poly(vinyl acetal) resin comprising residues of an aldehyde other than n-butyraldehyde can have a cloud point temperature that is at least about 1 . . . ºC lower than the cloud point temperature of a comparable poly(vinyl n-butyral) resin in a given plasticizer.” Ukidwe ¶ 54. Ukidwe and the claims, therefore, both encompass a cloud point difference of exactly 1 ºC or even slightly less than 1 ºC (because Ukidwe teaches a difference of at least about 1 ºC). This overlapping range is sufficient for the Examiner’s prima facie obviousness determination. Ans. 8. Appellant further argues that the Examiner picks and chooses from Ukidwe’s disclosure without adequately explaining why a person of skill in the art would have selected the features and properties as claimed. Appeal Br. 15–21. As the Examiner explains, however, the rejection is based on what Ukidwe “fairly discloses.” Ans. 9. As we explain above, Ukidwe suggests each parameter of claims 1, 11, and 20. Ukidwe’s express teachings provide reason to reach those parameters. A person of skill in the art would have expected the resins Ukidwe suggests to successfully result in a useful polymer interlayer because Ukidwe teaches that its resins are “suitable for use in polymer interlayers.” Ukidwe ¶ 2. As we explain above, although Ukidwe does not expressly suggest HLD haze values, it does encourage clarity (i.e., low haze). As such, Appellant’s argument does not persuade us of error in the Examiner’s position. For the foregoing reasons, we sustain the Examiner’s rejection. Appeal 2020-005869 Application 15/728,671 7 DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–20 103 Ukidwe 1–20 TIME PERIOD FOR RESPONSE 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