Ex Parte Blizzard et al

Patent Trial and Appeal Board

Aug 29, 2017

14286295 (P.T.A.B. Aug. 29, 2017)

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.
MSH-956CIP 9071
EXAMINER
BREDEFELD, RACHAEL EVA
ART UNIT PAPER NUMBER
1611
MAIL DATE DELIVERY MODE
14/286,295 05/23/2014
8131 7590 08/29/2017
MCKELLAR IP LAW, PLLC
784 SOUTH POSEYVTT.TE ROAD
MIDLAND, MI 48640
John D. Blizzard
08/29/2017 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN D. BLIZZARD and ROBERT L. MCKELLAR
Appeal 2017-000134
Application 14/286,295
Technology Center 1600
Before: DEMETRA J. MILLS, ERIC B. GRIMES and TAWEN CHANG,
Administrative Patent Judges.
MILLS, Administrative Patent Judge.
DECISION ON APPEAL
This is an Appeal under 35U.S.C. § 134. The Examiner has rejected
the claims for obviousness. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Appeal 2017-000134
Application 14/286,295
STATEMENT OF CASE
The present Specification discloses a method of preparing a specific
siloxane polymer base, the method comprising reacting a Si-H containing
polysiloxane with a specific omega diene and an ester or mixture of esters.
Spec. 2. It has been found that the addition of the esters as a first component
and the addition of the esters as the final component, provide a dry to the
touch material that is especially efficacious for providing topical
pharmaceuticals, and cosmetics. Spec. 6.
The following claim below is representative, as reproduced from
Appellants’ Brief dated Mar. 7, 2016.
15. A method of preparing a siloxane polymer base the method
comprising:
(A) reacting an Si-H containing polysiloxane of the
formula selected from the group consisting of
i. R3SiO(R’2SiO)a (R”HSiO)b SiR3
ii. HR2SiO (R’2SiO)c SiR2H, and,
iii. HR2SiO (R’ 2SiO)a (R”HSiO)b SiR2H.
wherein R, r’, R”, are alkyl groups of 1 to 6 carbon atoms; a is
0 to 250; b is 1 to 250; and c is 0 to 250;
with
(B) an alpha, omega-diene having the general formula CH2 =
CH (CH2) x CH = CH2 wherein x has a value of from 1 to 20;
(C) conducting the reaction in the presence of a noble metal
catalyst and a compound selected from the group consisting of
an ester of an alkoxylated aromatic alcohol and a fatty
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carboxylic acid, or a mixture of such esters, and continuing the
reaction until a gel is formed by cross linking and addition of
Si-H across double bonds in the alpha, omega-diene;
(D) thereafter, adding a first additional component to the gel
and subjecting the first additional component and the gel to
shear force until a siloxane paste is formed;
(E) thereafter, adding a second additional component to the
paste and blending the paste and second additional component
by mixing until a siloxane polymer base is formed.
Cited References
Schulz, Jr. et al. US 5,811,487 Sept. 22 1998
(“Schulz”)
Pereira et al. US 6,987,195 B2 Jan. 17, 2006
(“Pereira”)
Grounds of Rejection
Claims 15—16 are rejected under 35 U.S.C. §103 as being
unpatentable over Schulz in view of Pereira.
FINDINGS OF FACT
The Examiner’s findings of fact are set forth in the Final Action at
pages 4—10.
PRINCIPFES OF FAW
In making our determination, we apply the preponderance of the
evidence standard. See, e.g., Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427
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(Fed. Cir. 1988) (explaining the general evidentiary standard for proceedings
before the Office).
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR Inti Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007).
The motivation to combine references does not have to be identical to
the applicants to establish obviousness. In re Kemps, 97 F.3d 1427, 1430
(Fed. Cir. 1996).
Obviousness Rejection
Schulz discloses a modified platinum catalyzed hydrosilylation
reaction. Col. 1,11. 14—36. The Examiner finds that Shulz discloses that
polysiloxanes are reacted with an alpha omega-diene
represented by 1,5 hexadiene in the form of a platinum catalyst (a
noble metal catalyst) to form a gel and siloxane elastomer (column 2,
lines 6-12). After the gel is formed, additional solvent like low
molecular weight siloxane fluid is added to the siloxane elastomer and
sheared until a silicone paste is formed (column 2, lines 13-14).
Water can further be added to the paste and sheared until a silicone
emulsion is formed (column 2, lines 15-16).
Final Act. 4. According to Schulz, the reaction process can also include the
use of low molecular weight linear or cyclic, volatile or non-volatile, alkyl
and aryl siloxanes (Col. 4,1. 66—col. 5,11. 1—38), and ester or aliphatic
hydrocarbon solvents (col. 5,11. 47—54). Schulz discloses that any silicone
gel, elastomer, paste or emulsion made by this process may be “further
diluted with an additional similar or dissimilar solvent(s), to form the final
composition.” Col. 6,11. 36-48; Final Act. 6. The Examiner finds that
Schulz teaches each element claimed except that “Schulz et al do not teach
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the reaction of its polysiloxane and alpha, omega-diene is conducted in the
presence of a compound selected from an ester of alkoxylated aromatic
alcohol and a fatty carboxylic acid or a mixture of such esters.” Final Act. 5.
The Examiner relies on Pereira for this teaching. Pereira teaches “esters of
alkoxylated aromatic alcohol and fatty carboxylic acid, which are especially
suitable additives for personal care and cosmetic products (abstract).” Final
Act. 5. The Examiner finds that
Pereira et al teach the esters are highly compatible with silicon liquids,
such as cyclomethicone compounds (column 26, lines 66-67-column
27, line 1). Pereira et al teach it has been surprisingly discovered that
certain esters of alkoxylated aromatic alcohol and fatty carboxylic
acids reduce the volatility of cyclomethicones in processing without
substantially affecting their performance in antiperspirant products
(column 27, lines 5-10).
Final Act. 5—6. The Examiner concludes that “it would have been obvious
to an artisan of ordinary skill at the time the invention was made to
incorporate an ester of an alkoxylated aromatic alcohol and a fatty
carboxylic acid in the personal care compositions of Schulz et al containing
the instant siloxane elastomers.” Final Act. 6.
The Examiner further concludes that
[o]ne would have been motivated to do so because Schulz et al teach
its silicone elastomers can be reacted with an alpha, omega-diene in
the presence of a mixture of solvents including cyclomethicone and
Pereira et al teach its esters are highly compatible with
cyclomethicone. A skilled artisan would have a reasonable
expectation of success that adding Pereira’s esters to Schulz’s
cyclomethicone solvent would reduce the volatility of the solvent in
processing Schulz’s compositions without substantially affecting their
performance. Further, a skilled artisan would have a reasonable
expectation of success since Schulz et al teach its reaction products
are particularly suitable for deodorant products and Pereira et al teach
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its esters are highly compatible with cyclomethicone in antiperspirant
products.
Final Act. 6.
Appellants contend that the examiner has not shown
how one knows from either Schulz et al and/or Pereira et al that
the reaction of the alpha, omega-diene and the polysiloxane
reaction would actually go under such circumstances. In other
words, of all of the solvents that are in existence, how would
one specifically select the esters of the instant invention.
Further, how would one know that the end product would still
be serviceable for cosmetics[.]
App. Br. 3.1 Appellants state that
The instant invention grew out of the necessity of avoiding the
low molecular weight siloxane of Schulz et al and there is no
guidance in either of Schulz et al or Pereira et al to make a
substitution of the esters and still allow the silicon hydride
addition to the diene double bond. This is the problem to be
solved.
App. Br. 3. Appellants contend that it is pure speculation on the part of the
Examiner that “[a] skilled artisan would thus have a reasonable expectation
of success that adding Pereira’s esters to Schulz’s cyclomethicones solvent
would reduce the volatility of the solvent in the processing Schulz’s
composition without substantially affecting their performance.” App. Br. 4.
Appellants indicate that they do “not dispute the fact that the use of the
esters in the formulation of the end product would have been obvious from
1 All further references to the Appellants’ Appeal Brief (App. Br.) herein
refer to the Appeal Brief filed June 5, 2015, unless otherwise specified.
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the teaching in Pereira, but it would not have been obvious to include the
ester in the beginning of the preparation as a solvent for the silicon hydride
reaction with dienes.” App. Br. 4.
ANALYSIS
Appellants do not argue individual claims separately, therefore we
select claim 15 as the representative claim. We agree with the Examiner’s
fact finding, statement of the rejection and responses to Appellants’
arguments as set forth in the Final Action and Answer. We find that the
Examiner has provided evidence to support a prima facie case of
obviousness. We provide the following additional comment to the
Examiner’s argument set forth in the Final Rejection and Answer.
We are not persuaded by Appellants’ arguments that the Examiner has
not presented evidence of a reasonable expectation of success. We agree
that the Examiner has provided evidence of a reasonable expectation of
success because
the end product of the reaction would still be serviceable because
Schulz teaches its compositions comprising cyclomethicone are
particularly suitable for deodorant products and Pereira teaches its
esters are highly compatible with cyclomethicone in antiperspirant
products. It should also be noted that Schulz teaches hundreds of
different solvents are suitable in its compositions (see column 5, lines
39- 67-column 6, line 35) and therefore, a skilled artisan would have a
reasonable expectation that other solvents including the instant ester,
would also be suitable.
Ans. 4. It is Appellants’ burden to rebut the findings of the Examiner with
respect to the issue of reasonable expectation of success based the
disclosures of Schulz and Pereira, for example, by providing evidence
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showing the incompatibility of multiple other solvents in the claimed
reaction process. Appellants have not carried this burden by a
preponderance of the evidence.
Appellants argue that they solve the problem of the necessity of
avoiding the low molecular weight siloxane of Schulz, and that there is no
guidance in either of Schulz or Pereira to make a substitution of the esters
and still allow the silicon hydride addition to the diene double bond. App.
Br. 3.
However, it is well settled in the patent law that the motivation to
combine references does not have to be identical to the Appellants to
establish obviousness. In re Kemps, 97 F.3d 1427, 1430 (Fed. Cir. 1996).
Therefore, even if Schulz and Pereira were not concerned with solving
Appellants’ problem, they provide an alternative motivation in the prior art
for combining the claimed ester with a cyclomethicone in a similar reaction
process. For example, Schulz discloses that siloxane fluids such as
cyclomethicone may also be used in its silylation reactions. Col. 2,11. 6-15;
col. 3,11. 44-50. Pereira suggests that to reduce the volatility of
cyclomethicones in cosmetic products such as antiperspirants, certain esters
of alkoxylated aromatic alcohols and fatty carboxylic acids may be
combined with the cyclomethicones. Col. 27,11. 1-10. Thus, the cited prior
art provides an alternative reason for including esters of alkoxylated
aromatic alcohols and fatty carboxylic acids in a silylation reaction, as
claimed. A skilled artisan would reasonably expect that Pereira’s inclusion
of esters of alkoxylated aromatic alcohols and fatty carboxylic acids would
stabilize volatile silicones such as cyclomethicones in cosmetic products.
Pereira, col. 27,11. 1-10.
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Appellants argue that cyclomethicones do not appear in the pending
claims. Reply Br. 2. However, we agree with the Examiner that claim 15
uses the transitional phrase “comprising,” which makes the claim open to
additional claim elements, such as cyclomethicones, as in the related process
of Schulz. “‘Comprising’ is a term of art used in claim language which
means that the named elements are essential, but other elements may be
added and still form a construct within the scope of the claim.” Genentech,
Inc. v. Chiron Corp., 112 F.3d 495, 501 (Fed. Cir. 1997).
Appellants do “not dispute the fact that the use of the esters in the
formulation of the end product would have been obvious from the teaching
in Pereira, but [argue that] it would not have been obvious to include the
ester in the beginning of the preparation as a solvent for the silicon hydride
reaction with dienes.” App. Br. 4. We are not persuaded. We agree with
the Examiner that
Schulz’s examples utilize cyclomethicone within its reaction
vessels along with the instant Si-H containing polysiloxane and
omega-diene (see Example 1). Therefore, it would have been obvious
to incorporate Pereira’s esters with cyclomethicone in the reaction
vessel of Schulz (at the beginning of the preparation) since the ester is
highly compatible with cyclomethicone and would presumably reduce
the volatility of the cyclomethicone at this time.
Ans. 7.
The remaining of Appellants’ arguments in the Appeal Brief have
been addressed fully in the Examiner’s Final Action and Answer. The
obviousness rejection is affirmed for the reasons of record.
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CONCLUSION OF LAW
The cited references support the Examiner’s obviousness rejections,
which are affirmed for the reasons of record. All pending, rejected claims
(15, 16) fall.
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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