Ex Parte Bachon et al

Patent Trial and Appeal Board

Sep 26, 2016

12897850 (P.T.A.B. Sep. 26, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/897,850 10/05/2010 Thomas Bachan
423 7590 09/28/2016
HENKEL CORPORATION
One Henkel Way
ROCKY HILL, CT 06067
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.
H7832/PCT/US 2693
EXAMINER
W ASHVILLE, JEFFREY D
ART UNIT PAPER NUMBER
1766
NOTIFICATION DATE DELIVERY MODE
09/28/2016 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):
rhpatentmail@henkel.com
trish.russo@henkel.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte THOMAS BACHON, LARS ZANDER, SARA GONZALEZ,
CHRISTIANE KUNZE, JOHANN KLINE, and DANIELA BRAUN
Appeal2015-000200
Application 12/897,850
Technology Center 1700
Before BEYERL YA. FRANKLIN, MICHAEL P. COLAIANNI, and
MONTE T. SQUIRE, Administrative Patent Judges.
COLAIANNI, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134 the final rejection of claims
1-3, 8-14, 20, 21, and 23. We have jurisdiction over the appeal pursuant to
35 U.S.C. § 6(b).
We AFFIRM.
Appellants' invention is directed to silane-crosslinking curable
compositions, their manufacture, and their use in adhesives and sealants and
in coating agents (Spec. i-f 2; claim 1 ).
Appeal2015-000200
Application 12/897,850
Claim 1 is illustrative:
1. A method for manufacturing a silylated polyurethane,
comprising reacting at least one polyether compound having an
OH number per DIN 53783 between 3 and 20 mg KOH/g,
made up of at least two polyoxyalkylene blocks A and B,
wherein one block contains polyoxytetramethylene units and
the other block contains polyoxypropylene units, wherein the
polyether compound is of the A-B-A block copolymer type, in
which the central block B is made up of polyoxytetramethylene,
which has an average molecular weight from 500 to 4000
daltons, onto which at both ends the polyocypropylene block A
is polymerized, with one or more isocyanatosilanes of formula
(I)
OCN-R-Si-(R 1)m(-R2)3-m (I)
in which mis equal to 0, 1, or 2, each R2 is an alkyl
residue having 1 to 4 carbon atoms, each R is a difunctional
organic group, in order to cap the hydroxyl groups of the
polyether compound with the isocyanatosilane.
Appellants appeal the following rejections:
1. Claims 1-3, 9-11, 14, 20, and 23 are rejected under 35 U.S.C. §
103(a) as unpatentable over Higuchi (US 5,068,304, iss. Nov. 26,
1991) in view of Doi (US 6,207,766 Bl, iss. Mar. 27, 2001).
2. Claims 8, 13, and 14 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Higuchi in view of Doi and Johnston (US
5,990,257, iss. Nov. 23, 1999).
3. Claims 12, 20, and 21 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Higuchi in view of Doi, Johnston, and Podola (US
5,525,654, iss. June 11, 1996).
Regarding rejections (1) and (2), Appellants' arguments focus on the
subject matter of claim 1 only (App. Br. 3-10). Accordingly, claims 2, 3,
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Application 12/897,850
8-11, 13, 14, 20, and 23 will stand or fall with our analysis of the
rejection of claim 1. Regarding rejection (3), Appellants argue the
subject matter of claim 12 only (App. Br. 12-13). Therefore, claims 20
and 21 will stand or fall with our analysis of the rejection of claim 12.
FINDINGS OF FACT & ANALYSIS
REJECTIONS (1) and (2)
The Examiner finds that the combined teaching of Higuchi and Doi
would have suggested the subject matter of claim 1. The Examiner finds
that Higuchi teaches broadly an A-B-A copolymer where the B-portion of
the copolymer includes an oxyalkylene that includes polyoxytetramethylene,
though Higuchi does not specifically teach that the B-portion of the
copolymer is polyoxytetramethylene (Final Act. 3--4; Ans. 12-13). The
Examiner finds that Doi teaches a flexible sealant composition made of a
polyoxyalkylene that may include, inter alia, polyoxyethylene,
polyoxytetramethylene, or a copolymer of at least two kinds of monoepoxide
(Final Act. 4, Ans. 13). The Examiner finds that Doi teaches that
polyoxyethylene and polyoxytetramethylene are functional equivalents
(Final Act. 5). The Examiner concludes that one of ordinary skill in the art
would have been motivated to modify the teaching of Higuchi with that of
Doi to substitute a polyoxytetramethylene unit in the copolymer for a
functionally equivalent polyoxyethylene unit (Final Act. 5). The Examiner
further finds that Higuchi provides a reason to use polyoxytetramethylene
that has 4 carbon atoms in the repeat unit instead of oxyethylene (that has 2
carbon atoms in the repeat unit) in teaching that oxyethylene has problems
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Application 12/897,850
due to its hydrophilic nature and that oxyalkylenes having at least 3 carbon
atoms are preferred (Ans. 13).
Appellants argue that the Examiner's combination of Higuchi' s and
Doi's teachings is based upon impermissible hindsight (Br. 4). Appellants
contend that there is no reason to combine Higuchi and Doi because Higuchi
teaches away from using a polyoxytetramethylene block (Br. 7). Appellants
argue that Higuchi's disclosure that oxyethylene blocks adversely affect the
physical properties of the resulting cured product teaches away from using
polyoxytetramethylene (Br. 7-8). Appellants contend that Doi teaches away
from the use of polyoxytetramethylene because Doi only mentions
polyoxytetramethylene once and Doi teaches a preference for
polyoxypropylene polyol (Br. 8). Appellants contend that Higuchi and Doi
teach producing sealants by going in opposite directions because Doi teaches
a high molecular weight (8,000 to 50,000) and does not teach the A-B-A
block copolymer structure (Br. 8). Appellants argue that Higuchi teaches
using an A-B-A block copolymer structure only in regard to that where the
polyoxyethylene block has a molecular weight of 3,000 is used as an
initiator (Br. 8). Appellants contend that the combination of Higuchi and
Doi would have resulted in a polymer according to Higuchi that lacks the A-
B-A block structure required by the claim. Id.
Appellants argue that the Examiner has not established that the facts
in In re Fout, 675 F.2d 297 (CCPA 1982) are applicable to the facts of the
present appeal (Br. 9). Appellants contend that the only equivalence Doi
teaches is using polyoxyethylene and polyoxytetramethylene polymers
having a molecular weight of at least 8,000, not as a B segment of an A-B-A
block copolymer as in Higuchi. Id. Appellants contend that Higuchi teaches
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Application 12/897,850
that oxyethylene and other oxyalkene groups are not equivalent in that
oxyethylene has the disadvantage of being hydrophilic. Id. Appellants
contend that the holding in Kinetic Concepts, Inc. v. Bluesky Med. Corp.,
688 F.3d 1342 (Fed. Cir. 2012) is more applicable to the present facts, which
held that there would have been no reason to combine two equally effective
devices for draining a wound (Br. 10).
The preponderance of the evidence favors the Examiner's obviousness
analysis and conclusion. In the present appeal, the Examiner does not rely
solely on functional equivalency as the reason for modifying Higuchi's A-B-
A block copolymer so that the B-segment is polyoxytetramethylene instead
of polyoxyethylene. Rather, the Examiner finds that Higuchi's disclosure
that it is desired to use oxyalkylenes having at least 3 carbon atoms would
have motivated one of ordinary skill in the art to use Doi's
polyoxytetramethylene in lieu of Higuchi's oxyethylene as the B-segment in
the A-B-A copolymer of Higuchi (Final Act. 3--4; Ans. 12-13). Indeed,
Higuchi teaches that oxyethylene is hydrophilic which is disadvantageous
for the finally cured resin composition which may be used as a sealant
(Higuchi, col. 3, 11. 36-39; col. 9, 11. 34--37). Higuchi further teaches that
oxyalkylenes having 3 or 4 carbon atoms are preferred for making a
moisture-curable resin having large elongation (col. 3, 11. 39--41). Higuchi
further teaches that the higher the molecular weight, the larger the
elongation of the resulting resin (col. 1, 11. 49-51). Higuchi discloses that a
goal of the invention is to have a very large molecular weight with the end
groups of the copolymer converted to silyl group-containing terminal groups
(col. 2, 11. 39--47).
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Application 12/897,850
Doi teaches a sealant composition composed of polyoxyalkylene
polymer having a high molecular weight of from 8,000 to 50,000 (col. 1, 11.
11-16; col. 2, 11. 47-55; col. 20, 11. 31--49). Doi discloses that the material
has good flexibility when the number of functional groups is 2 or 3 and
suitable polyoxyalkylene polymers include, inter alia,
polyoxytetramethylene, polyoxyethylene or a copolymer of at least two
kinds of monoepoxide (col. 3, 11. 30--41).
Based upon these teachings, we find that one of ordinary skill would
have looked to Doi to determine suitable substitutes for oxyethylene in
Higuchi' s copolymer sealant composition. In so doing, the ordinarily skilled
artisan would have determined that polytetramethylene has 4 carbon atoms
in each repeat unit and would have satisfied Higuchi' s requirements for the
oxyalkylene group and overcome the disadvantages of using oxyethylene.
The Examiner's rejection is not based upon hindsight, but, rather, the
teachings of Higuchi and Doi taken as a whole. Neither Higuchi, nor Doi,
teaches away from the claimed invention. Rather, Higuchi teaches problems
with using oxyethylene and favors 3 and 4 carbon oxyalkylenes, which
would include polyoxytetramethylene as taught by Doi. Doi' s preference for
polyoxypropylene does not constitute a teaching away from the disclosed
polyoxytetramethylene.
Appellants' argument regarding the high molecular weight of the
polyoxyalkylene taught by Doi being contrary to that required by Higuchi is
not persuasive. Higuchi may exemplify using oxyethylene with a molecular
weight of 3,000 as an initiator (col. 9, 11. 57---60). Higuchi further teaches,
however, that the desirable elongation increases with greater molecular
weight and the goal is to use as a starting material polyoxyalkylene polyol
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having "a very large molecular weight" (col. 1, 11. 49-51; col. 2, 11. 39--41 ).
Higuchi does not place a particular limit on the molecular weight of the
polyoxyalkylene. Doi teaches the desirability of using a polyoxyalkylene
having a molecular weight between 8,000 to 50,000 because it provides a
sealant with good flexibility and strength (col. 20, 11. 31--49). The combined
teachings of Higuchi and Doi would have suggested using a high molecular
weight polyoxyalkylene as taught by Doi to provide good
elongation/flexibility to the sealant.
Appellants' argument regarding the applicability of the Fout and
Kinetic decisions are not persuasive because the Examiner does not rely
solely on Fout as a basis for the rejection. Rather, the Examiner makes
findings that the teachings of Higuchi and Doi would have suggested the
modification as noted supra.
For the above reasons, we affirm the Examiner's rejections (1) and
(2).
REJECTION (3): Claim 12
The Examiner finds that Higuchi, Doi, and Johnston are silent
regarding a mono-functional compound with respect to an isocyanate as
recited in claim 12 (Final Act. 9-12). The Examiner finds that Podola
teaches adding monofunctional alcohols to a polyurethane that is
alkoxysilane-terminated so that the monofunctional alcohol reacts with the
urethane groups to form a plasticizer (Final Act. 12). The Examiner finds
that this reaction avoids the use of known plasticizers that can be toxic (Ans.
20). The Examiner concludes that it would have been obvious to modify
Higuchi by adding a monofunctional alcohol as taught by Podola in forming
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Application 12/897,850
a hydrolysable silyl group-containing polyether compound that "avoids the
disadvantages of known plasticizers" (Final Act. 12).
Appellants argue that Higuchi at column 3, lines 12-19 teaches away
from the presence of mono-ols due to their adverse effect on the physical
properties of the resin (Br. 13). Appellants contend that the reaction that
forms Higuchi' s resin does not go to completion so there will be some
mono-ols present and one of ordinary skill would not have added more
mono-ols in light of Higuchi' s teachings. Id.
The nature of Higuchi' s teachings is that the degree of unsaturation on
the polyol should be no higher than 0.07 meq/g to avoid a deterioration of
the physical properties due to an unsaturated mono-ol as a by-product (col.
3, 11. 15-19). Higuchi's teachings are directed to the degree ofunsaturation
being a certain concentration to avoid the mono-ol byproduct. In other
words, Higuchi wants to minimize the amount of byproduct produced so that
the amount of desired resin is maximized. The nature of Higuchi' s teachings
is to maximize resin production by controlling the degree of unsaturation so
as to avoid making the mono-ol byproduct.
Podola teaches that by adding a mono-functional alcohol to a
polyurethane based sealing adhesive produces a plasticizer by reaction of the
alcohol with the diurethane groups (col. 5, 11. 42-50). Podola discloses that
by using the diurethane plasticizer reacted with the monofunctional alcohol,
the problems with plasticizer migration may be avoided (col. 1, 11. 25-39).
Accordingly, by adding the monofunctional alcohol as taught by Podola to
Higuchi' s sealant a plasticizer may be incorporated in the resin without
concern for its migration from the sealing resin.
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Appeal2015-000200
Application 12/897,850
Based upon the teachings of the references as a whole, Podola
provides a sufficient reason for adding a mono-functional alcohol to
Higuchi' s produced resin to avoid the addition of plasticizer that may
migrate from the resin. Accordingly, the teachings of Higuchi may be to
avoid the byproduct production of a mono-functional alcohol, but Podola
teaches the benefit of providing such a mono-functional alcohol to Higuchi' s
formed resin: formation of a plasticizer that does not migrate from the resin.
On this record, we affirm the Examiner's rejection (3).
DECISION
The Examiner's decision is affirmed.
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).
AFFIRMED
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