Ex Parte Takano et al

Patent Trial and Appeal Board

Nov 21, 2018

12992961 (P.T.A.B. Nov. 21, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/992,961 11/16/2010
20995 7590 11/26/2018
KNOBBE MARTENS OLSON & BEAR LLP
2040 MAIN STREET
FOURTEENTH FLOOR
IRVINE, CA 92614
FIRST NAMED INVENTOR
Jun Takano
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.
OMNI3.001APC 1261
EXAMINER
HORNING, JOEL G
ART UNIT PAPER NUMBER
1712
NOTIFICATION DATE DELIVERY MODE
11/26/2018 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):
j ayna.cartee@knobbe.com
efiling@knobbe.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JUN TAKANO and TERUNORI YAMAGUCHI
Appeal2018-000733
Application 12/992,961
Technology Center 1700
Before ROMULO H. DELMENDO, LINDA M. GAUDETTE, and
MICHAEL G. McMANUS, Administrative Patent Judges.
GAUDETTE, Administrative Patent Judge.
DECISION ON APPEAL 1
1 This Decision includes citations to the following documents: Specification filed
Nov. 16, 2010 ("Spec."); Final Office Action dated May 20, 2016 ("Final");
Appeal Brief filed Apr. 12, 2017 ("Appeal Br."); Examiner's Answer dated Aug.
30, 2017 ("Ans."); and Reply Brief filed Oct. 27, 2017 ("Reply Br.").
Appeal2018-000733
Application 12/992,961
Appellants2 appeal under 35 U.S.C. § I34(a) from the Examiner's decision
finally rejecting claims 1, 2, 6, and 7 under 35 U.S.C. § I03(a) over Tojo (JP
3585833 B, pub. Aug. 13, 2004 (machine translation)) in view of Vyas (US
2008/0044715 Al, pub. Feb. 21, 2008). We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.
The present invention relates to a method for modifying a fluorine resin film
in order to impart hydrophilicity to its surface. Spec. ,r 1. The film may be used, for
example, as a back sheet for a solar battery. See id. f 10. Claim 1, the sole
independent claim on appeal, is reproduced below.
1. A method for modifying a fluorine resin film comprising,
preliminarily preparing a process gas by mixing a gas containing
fluorine atoms at a concentration of 0.001 to 99% by volume and a
gas containing oxygen atoms at a concentration of 0.001 to 20% by
volume; and contacting the process gas with the fluorine resin film for
a period of 1 second to 5 minutes, said fluorine resin film consisting
essentially of a fluorine resin film other than
ethylene/tetrafluoroethylene copolymer (ETFE), and wherein the
fluorine resin film has a specific gravity greater than 1.6 and 2.2 or
less, thereby giving hydrophilicity to a surface of the fluorine resin
film, and wherein the fluorine resin film comprises 0.1 to 90% by
weight of an organic additive having a functional group reactive with
the process gas, wherein the functional group is selected from the
group consisting of amide, amino, trialkylsilyl, silyl ether,
-Si(CH3)20-, ester, carbonate, ether, phosphorylcholine, sulfo,
2 Appellants identify Stella Chemifa Corporation as the real party in interest.
Appeal Br. 3.
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Appeal2018-000733
Application 12/992,961
sulfonyl, methyl, methylene, phenyl, -CHX-, -CHX2, -CX2, and -CX3,
wherein Xis at least one of F, Cl, Br, or I.
Appeal Br. 8.
The Examiner finds Tojo discloses or suggests the method as recited in
claim 1 with the exception that the only fluorine resin film explicitly disclosed in
Tojo is ETFE. Final 3-7 (citing, e.g., Tojo ,r,r 8, 11, 14, 19, 32, 33). The Examiner
finds Vyas relates to a method of making fluoropolymer materials hydrophilic for
use in the fluid distribution channels of fuel cells. Id. at 7. The Examiner finds the
fluoropolymer materials specifically mentioned by Vyas include ETFE and
polyvinylidene (PVDF). Id. ( citing Vyas ,r 31 ). The Examiner finds one of ordinary
skill in the art would have found it obvious to replace the ETFE in Tojo's fluorine
resin film with PVDF based on Vyas' teaching that PVDF is a suitable alternative
to ETFE. Id. The Examiner also finds one of ordinary skill in the art would have
utilized polymethyl methacrylate (PMMA) in combination with PVDF based on
Tojo's disclosure that PMMA and ETFE are suitable materials for forming films.
Id. at 6 (citing Tojo ,r 11).
Appellants' arguments on appeal raise the following issues: Have
Appellants identified reversible error in the Examiner's findings that the applied
prior art discloses or suggests (1) a method for modifying a "fluorine resin film
ha[ ving] a specific gravity greater than 1.6 and 2.2 or less" ( claim 1 ), (2) a method
comprising a step of preliminarily preparing a process gas by mixing a gas
containing fluorine atoms and a gas containing oxygen atoms at concentrations of
0.001 to 99% and 0.001 to 20% by volume, respectively, and (3) a method for
modifying a fluorine resin film comprising 0.1 to 90% by weight of an organic
additive having a functional group reactive with the process gas? See generally
Appeal Br. 6-7. We answer these questions in the negative for the reasons stated in
the Final Office Action, the Answer, and below.
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Appeal2018-000733
Application 12/992,961
A method for modifying a ''fluorine resin film ha[ving]
a specific gravity greater than 1. 6 and 2.2 or less"
A prima facie case of obviousness exists where the prior art and claimed
ranges overlap, as well as in those cases where the claimed range and the prior art
range, though not overlapping, are sufficiently close that one skilled in the art
would have expected them to have the same properties. See, e.g., In re Peterson,
315 F.3d 1325, 1329 (Fed. Cir. 2003); In re Geisler, 116 F.3d 1465, 1469 (Fed.
Cir. 1997).
Appellants do not dispute the Examiner's finding that Tojo discloses
modifying fluorine resin films having a specific gravity of 1.6 or less, a range that
touches Appellants' claimed range of "greater than 1.6 and 2.2 or less." Final 5;
see generally Appeal Br. 5-7. The burden was thus properly shifted to Appellants
to show that the prior art teaches away from the claimed invention or that the
invention achieves new and unexpected results relative to the prior art. See Iron
Grip Barbell Co. v. USA Sports, Inc., 392 F.3d 1317, 1322 (Fed. Cir. 2004).
Appellants argue Tojo discloses that polymeric materials having a specific
gravity above 1.6 cannot be made hydrophilic. Appeal Br. 6 (citing Tojo ,r 14).
Appellants, however, have not identified persuasive evidence that "a person of
ordinary skill, upon reading [Tojo], would [have been] discouraged from following
the path set out in the reference, or would [have been] led in a direction divergent
from the path that was taken by the applicant," In re Gurley, 27 F.3d 551, 553
(Fed. Cir. 1994) (discussing references that "teach away"). More specifically,
Appellants have not shown persuasively that the Examiner's finding that Tojo
merely describes a preference for modifying films having a specific gravity of 1.6
or less is erroneous or unreasonable. See Ans. 3 (citing Tojo ,r,r 8, 14); Reply Br. 3
(quoting Tojo ,r,r 8, 14, 43, 44 as "demonstrat[ing] that a material having a specific
gravity of more than 1.6 does not function for the purpose of the Tojo surface
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Appeal2018-000733
Application 12/992,961
modification"). To the contrary, the cited disclosure in Tojo favors the Examiner's
finding that Tojo, at most, indicates that films having a specific gravity of 1.6 or
less are more easily made hydrophilic. See Tojo ,r 14 (indicating that modification
of films having a specific gravity above 1.6 is more difficult); Tojo ,r,r 43--44
(stating that hydrophilicity is easily imparted to materials having a specific gravity
of not more than 1.6).
Appellants contend, "it was completely unexpected that the presently
claimed invention can be used to treat materials having a specific gravity of more
than 1.6." Appeal Br. 6. As explained by the Examiner (Ans. 2--4), Appellants have
not provided evidence showing the claimed method achieves unexpected results
when compared to Tojo's method. See In re De Blauwe, 736 F.2d 699, 705 (Fed.
Cir. 1984) ("It is well settled that unexpected results must be established by factual
evidence. Mere argument or conclusory statements in the specification does not
suffice.").
In sum, we are not persuaded of reversible error in the Examiner's finding
that the applied prior art discloses or suggests a method for modifying a "fluorine
resin film ha[ ving] a specific gravity greater than 1. 6 and 2 .2 or less" ( claim 1 ).
A method comprising a step of preliminarily preparing a process gas by mixing a
gas containing fluorine atoms and a gas containing oxygen atoms at
concentrations of 0.001 to 99% and 0.001 to 20% by volume, respectively
Appellants contend "Tojo discloses that an oxygen gas is contacted with a
material to be treated, and then that a fluorine gas is introduced for fluorination,"
but "does not disclose that these gases are simultaneously contacted with a material
to be treated at an initial stage." Appeal Br. 6-7 (citing Tojo ,r,r 19, 32).
As explained by the Examiner, Appellants' argument is not persuasive
because it is not commensurate in scope with the claim language. See Ans. 4
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Appeal2018-000733
Application 12/992,961
("[T]he claims do not require exposing the film to this gas mixture 'in an initial
stage'. They only require exposing the film to a mixture of oxygen and fluorine."). 3
Moreover, we note that Appellants' own Specification (see Spec. 2: 19-3:2)
describes Tojo's surface-modifying method as including a step of "bringing a
mixed gas composed of fluorine gas and a single gas containing an oxygen element
into contact with the synthetic or natural polymeric material" (id. at 2 :24--3: 1 ). See
Tojo ,r 19 ("Processing time contacted in fluorine gas and gas containing oxygen
will be minutes - several hours .... ").
In sum, we are not persuaded of reversible error in the Examiner's finding
that the applied prior art discloses or suggests a method comprising a step of
preliminarily preparing a process gas by mixing a gas containing fluorine atoms
and a gas containing oxygen atoms at concentrations of 0.001 to 99% and 0.001 to
20% by volume, respectively. 4
3 See also Final 8 ( determining that "even if the gases were required to be mixed
before the substrate is exposed to any of them ... , it would still be obvious to mix
them before any such exposure" because selecting "any order of performing
process steps is prima facie obvious in the absence of new or unexpected results").
4 We need not address Appellants' contention that the claim 1 recitation requiring a
process "gas containing oxygen atoms at a concentration of 0.001 to 20%"
distinguishes the claim over the applied prior art (see Reply Br. 2), as it is not
apparent why this argument could not have been raised in the Appeal Brief. We
note, however, that the Specification indicates this range is not critical. See Spec.
15:4--11 ("The method of the invention for modifying a fluorine resin film can be
performed in such a range that the oxygen-atom-containing gas concentration is
from 0. 001 to 99% by volume of the whole of the process gas. However, the
oxygen-atom-containing gas can produce an advantageous effect thereof
sufficiently even in a small amount. It is therefore preferred from the viewpoint of
treatment costs also that the gas concentration is low.").
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Appeal2018-000733
Application 12/992,961
A method for modifying a fluorine resin film comprising 0.1 to 90% by weight of
an organic additive having a functional group reactive with the process gas
Appellants argue that Tojo describes the use of various synthetic polymeric
materials, individually, but not in combination. Appeal Br. 7. Appellants thus
contend the Examiner reversibly erred in finding Tojo discloses or suggests a
fluorine resin film that includes an additive having a functional group reactive with
the process gas. Id.
Appellants' argument is not persuasive because it fails to address the facts
and reasons relied on by the Examiner, namely, that this claim limitation is
suggested by the combination of Tojo and Vyas. See Ans. 4--5.
In sum, we are not persuaded of reversible error in the Examiner's finding
that the applied prior art discloses or suggests a method for modifying a fluorine
resin film comprising 0.1 to 90% by weight of an organic additive having a
functional group reactive with the process gas.
Any additional arguments advanced by Appellants that are not discussed
herein have been addressed by the Examiner and are unpersuasive for the reasons
stated in the Final Office Action and the Answer. We note that Appellants' do not
present separate arguments in support of patentability of dependent claims 2, 6,
and 7. See Appeal Br. 7. Accordingly, we sustain the rejection of claims 1, 2, 6,
and 7. See 37 C.F.R. § 4I.37(c)(iv).
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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