Ye, Sheng et al.

Patent Trials and Appeals Board

Nov 15, 2019

14775018 - (D) (P.T.A.B. Nov. 15, 2019)

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.
14/775,018 09/11/2015 Sheng Ye 71336US010 3277
32692 7590 11/15/2019
3M INNOVATIVE PROPERTIES COMPANY
PO BOX 33427
ST. PAUL, MN 55133-3427
EXAMINER
ROSWELL, JESSICA MARIE
ART UNIT PAPER NUMBER
1767
NOTIFICATION DATE DELIVERY MODE
11/15/2019 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 SHENG YE, ROBIN E. WRIGHT,
JONATHAN D. ZOOK, and SUSAN E. DEMOSS
____________

Appeal 2019-000642
Application 14/775,018
Technology Center 1700
____________

Before ROMULO H. DELMENDO, BEVERLY A. FRANKLIN, and
MERRELL C. CASHION, JR., Administrative Patent Judges.

CASHION, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE

Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s final decision to reject claims 1–20. We have jurisdiction under
35 U.S.C. § 6(b).2

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant, 3M Innovative Properties Company, identifies the
real parties in interest as 3M Company (formerly known as Minnesota
Mining and Manufacturing Company) of St. Paul, Minnesota and its affiliate
3M Innovative Properties Company of St. Paul, Minnesota. Appeal Br. 2.
2 On August 1, 2019, PTAB staff notified Appellant that a Request for Oral
Hearing filed December 5, 2018 was not filed within the time prescribed by
37 C.F.R. § 41.47(b). See Notification of Non-Compliant Request for Oral
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We AFFIRM.
The invention is generally directed to a radiation curable composition.
Spec. 1. Claim 1 illustrates the subject matter claimed and is reproduced
below:
1. A composition which is radiation curable to a
polythioether polymer, comprising:
a) at least one dithiol monomer;
b) at least one diene monomer;
c) at least one polyyne monomer comprising at least two
ethyne groups; and
d) at least one photoinitiator.

Independent claims 2 and 4 are directed to radiation curable
compositions that differ from claim 1 in that claim 2 requires at least one
diyne monomer while claim 4 requires at least one thiol terminated
polythioether polymer and at least one diyne monomer but does not require
at least one diene monomer.
Appellant requests review of the following rejections from the
Examiner’s Final Office Action:
I. Claims 1–6, 8, and 10–20 rejected under pre-AIA 35 U.S.C.
§ 103(a) as unpatentable over Zook (US 2003/0008977 A1, published
January 9, 2003) and Hoyle (US 2009/0253805 A1, published October 8,
2009).

Hearing (Notification) 1–2. The Notification instructed Appellant to file a
petition under 3 7 C.F.R. § 41.3 to suspend the timeliness requirement of 37
C.F.R. § 41.47(b) within two weeks of the mailing date of the Notification if
Appellant still desired an oral hearing. Id. at 2. The record shows that no
petition has been filed in accordance with the Notification. Therefore, we
decide this appeal based on the briefs of record.
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II. Claims 7 and 9 rejected under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over Zook, Hoyle, and McDaniel (US 2010/0210745 A1,
published August 19, 2010).

III. Claims 4 and 5 provisionally rejected on the ground of
nonstatutory double patenting as unpatentable over claim 7 of copending
Application No. 14/389,905 and Hoyle.

For Rejection I, Appellant presents arguments for independent claim 1
and relies on the same line of argument in addressing the rejection of the
remaining claims. Appeal Br. 6–9. Appellant presents separate arguments
for the prior art rejection of claims 7 and 9 (Rejection II) and the provisional
nonstatutory double patenting rejection of claims 4 and 5 (Rejection III).
We select claim 1 as representative of the subject matter claimed. Claims 2–
6, 8, and 10–20 stand or fall with claim 1. We address the additional
arguments for Rejections II and III separately.

OPINION
Rejection I (under 35 U.S.C. § 103(a))
After review of the respective positions the Appellant provides in the
Appeal and Reply Briefs and the Examiner provides in the Final Action and
the Answer, we affirm the Examiner’s rejections of claims 1–6, 8, and 10–20
under 35 U.S.C. § 103(a) for the reasons the Examiner provides. We add the
following for emphasis.
Claim 1
Claim 1 is directed to a radiation curable composition comprising at
least one polyyne monomer comprising at least two ethyne groups.
Zook is directed to sealant, coating and electrical potting
formulations, or compositions. Zook ¶¶ 9, 12. The Examiner finds that
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Zook teaches a radiation curable composition that differs from the subject
matter of claim 1 in that Zook does not teach the composition further
comprises a polyyne monomer. Final Act. 2–3; Zook ¶¶ 44, 138 (Example
1).
Hoyle is directed to gas barrier films including packaging of food and
liquids, electronics, pharmaceuticals, and chemicals. Hoyle ¶ 2. The
Examiner finds Hoyle teaches a photocurable thiol-ene composition, suitable
for use as coating on electronics, comprising multifunctional thiol
monomers, and multifunctional ene compounds, such as alkynes like
octadiyne. Final Act. 3; Hoyle ¶¶ 5, 15, 23 (Table 2). Hoyle also suggests a
mixture of alkenes and alkynes to make the desired composition. Ans. 11;
Hoyle ¶ 6. The Examiner finds that Zook and Hoyle are analogous art
because they are both concerned with the same field of endeavor, namely
thiol-ene compositions suitable for use as coatings on electronics. Final Act.
3.
The Examiner determines that it would have been obvious to one
skilled in the art to add the alkyne monomer (such as octadiyne) to Zook’s
composition to achieve a crosslinked network having good barrier (e.g.,
oxygen/gas) properties (i.e., low gas permeability), as suggested by Hoyle.
Final Act. 3; Hoyle ¶ 6.
Appellant does not contest the Examiner’s specific findings on Zook.
Appeal Br. 6. Instead, Appellant argues Hoyle contains exactly one
reference to a diyne in Table 2 but does not disclose a process for making
the disclosed compound. Id. Appellant contends that all of Hoyle’s
disclosed syntheses concern polyenes and none concern polyynes. Id.
Appellant further argues Hoyle does not name the compound represented by
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the disclosed entry “l, 4-Butanedithiol + octadiyne” nor describes the
structure or characteristics of such a product. Id. at 6–7. Thus, Appellant
asserts that Hoyle does not enable reproduction of the synthesis of “1, 4-
Butanedithiol + octadiyne.” Id. at 7.
The arguments do not persuade us of reversible error in the
Examiner’s determination of obviousness for the reasons the Examiner
presents in the record. Ans. 11.
Where a process for making the compound is not developed until after
the date of invention, the mere naming of a compound in a reference,
without more, cannot constitute a description of the compound. In re
Hoeksema, 399 F.2d 269, 273–74 (CCPA 1968). Note, however, that a
reference is presumed operable until applicant provides facts rebutting the
presumption of operability. In re Sasse, 629 F.2d 675, 681 (CCPA 1980).
As the Examiner notes, Hoyle describes a process of making thiol-ene
compositions that comprise using a mixture of enes including alkenes and
alkynes. Ans. 11; Hoyle ¶¶ 6, 15. Hoyle also describes a general process
for making the desired compounds. Ans. 11; Hoyle ¶¶ 16–23. Therefore,
Hoyle provides one skilled in the art with adequate guidance to make thiol-
ene compositions using alkynes. Appellant’s argument that all of Hoyle’s
disclosed syntheses concern polyenes and none concern polyynes (Appeal
Br. 6) appears to address Hoyle’s preferred embodiments. It is well settled
that a reference may be relied upon for all that it discloses and not merely
the preferred embodiments as suggested by Appellant. See Merck & Co.,
Inc. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (“[A]ll
disclosures of the prior art, including unpreferred embodiments, must be
considered.” (quoting In re Lamberti, 545 F.2d 747, 750 (CCPA 1976))); In
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re Fracalossi, 681 F.2d 792, 794 n.1 (CCPA 1982) (explaining that a prior
art reference’s disclosure is not limited to its examples). Appellant has not
explained adequately how Hoyle’s preferred embodiments limit the broader
disclosure for making thiol-ene compositions.
In addition, Appellant directs us to no objective evidence showing that
a process for making the composition was not known to rebut the
presumption of operability. Appellant, at most, has provided mere attorney
arguments and such arguments of counsel cannot take the place of evidence.
See In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984); In re Payne, 606
F.2d 303, 315 (CCPA 1979).
Appellant argues Zook, directed to curable seals, and Hoyle, directed
to fully cured packaging films, are non-analogous art with unrelated and
distinctly different requirements. Appeal Br. 7–8; Zook Abstr.; Hoyle ¶ 17.
Thus, Appellant contends there is no motivation to combine Zook and Hoyle
in the manner presented. Appeal Br. 8.
These arguments are also unpersuasive of reversible error in the
Examiner’s determination of obviousness for the reasons presented by the
Examiner. Ans. 13.
Moreover, Zook discloses electrical potting formulations or
compositions that can provide good pot life. Zook ¶ 9. One skilled in the art
would infer from this disclosure that Zook’s potting formulation protects the
electrical components from exposure to the elements, including air and
moisture. See In re Fritch, 972 F.2d 1260, 1264–65 (Fed. Cir. 1992)
(holding that a reference stands for all of the specific teachings thereof as
well as the inferences one of ordinary skill in the art would have reasonably
been expected to draw therefrom). Given that the compositions of Zook and
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Hoyle are similar (Ans. 11) and serve similar protection purposes (see Hoyle
¶¶ 4, 7 (discussing improvement of gas barrier properties to protect contents
in a package)), Appellant has not adequately explained why the addition of
alkynes to Zook’s composition would make it unsuitable to continue
providing the desired protection for electrical components.
Accordingly, we affirm the Examiner’s prior art rejections of claims
1–6, 8, and 10–20 under 35 U.S.C. § 103(a) for the reasons the Examiner
presents and we provide above.
Rejection II (under 35 U.S.C. § 103(a))
Claim 7 recites the use of at least one nanoparticulate filler in the
claimed composition. Claim 9 specifically recites the use of nanoparticle
calcium carbonate.
We refer to the Examiner’ Final Action for a statement of the rejection
of these claims. Final Act. 8. Briefly, the Examiner relies on McDaniel to
teach the claims’ nanoparticle calcium carbonate. Final Act. 8; McDaniel
¶¶ 1257, 1359.
Appellant’s arguments do not contest the Examiner’s findings for the
rejection of these claims. Appeal Br. 9. Instead, Appellant asserts that
Examples in the Specification demonstrate an unexpected advantage
obtained with the addition of nanoparticulate filler and nanoparticle calcium
carbonate in particular. Appeal Br. 9. According to Appellant, inventive
Examples 2, 4, and 6, each comprising nanoparticle calcium carbonate, cures
more readily that comparative Examples 1, 3, and 5 that lack the
nanoparticle calcium carbonate. Appeal Br. 9–10; Spec. 4–5, 7 (Table 1).
Appellant asserts that the Examiner points to no teaching in any of the cited
references suggesting this beneficial result. Appeal Br. 10.
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When evidence of secondary considerations is submitted, we begin
anew and evaluate the rebuttal evidence along with the evidence upon which
the conclusion of obviousness was based. In re Rinehart, 531 F.2d 1048,
1052 (CCPA 1976). The burden of establishing unexpected results rests on
the Appellant. Appellant may meet this burden by establishing that the
difference between the claimed invention and the closest prior art was an
unexpected difference. See In re Klosak, 455 F.2d 1077, 1080 (CCPA
1972). The unexpected results must be established by factual evidence;
attorney statements are insufficient to establish unexpected results. See In re
Geisler, 116 F.3d 1465, 1470–71 (Fed. Cir. 1997). Further, a showing of
unexpected results supported by factual evidence must be reasonably
commensurate in scope with the degree of protection sought by the claims
on appeal. In re Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983); In re
Clemens, 622 F.2d 1029, 1035 (CCPA 1980).
First, it is not clear that Appellant has compared the claimed invention
against the closest prior art (Zook). Further, Examples 2, 4, and 6 comprise
respectively 1.888 g, 1.894 g, and 1.545 g of nanoparticle calcium carbonate.
Spec. 4–5. However, the claims are silent as to the amount of nanoparticles
used. At best, the Examples in the Specification exemplify a narrow range
of amounts for the nanoparticles which is not commensurate in scope with
the claims. Appellant has also not explained adequately why this narrow
range is representative of the broad scope of the claims for this component.
Thus, on this record, Appellant has not adequately explained why the
evidence relied upon would have been unexpected by one of ordinary skill in
the art or is reasonably commensurate in the scope with the claims.
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Accordingly, we affirm the Examiner’s prior art rejection of claims 7
and 9 under 35 U.S.C. § 103(a) for the reasons the Examiner presents and
we provide above.
Rejection III (under the provisional ground of nonstatutory double
patenting)
We refer to the Examiner’s Final Action for a complete statement of
rejection for claims 4 and 5.
We have considered Appellant’s arguments (Appeal Br. 10) for this
rejection and are unpersuaded of reversible error in the Examiner’s
determination under this ground of rejection.
As the Examiner notes, Appellant’s arguments do not address the
rejection presented by the Examiner. Ans. 14–15.
Accordingly, we affirm the Examiner’s provisional rejection of claims
4 and 5 on the ground of nonstatutory double patenting for the reasons the
Examiner presents and we provide above.

CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–6, 8,
10–20
103(a) Zook, Hoyle 1–6, 8,
10–20

7, 9 103(a) Zook, Hoyle,
McDaniel
7, 9
4, 5 Nonstatutory
double
patenting
Application No.
14/389,905, Hoyle.
4, 5
Overall
Outcome
1–20

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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) (2017).

AFFIRMED