Ex Parte Burdeniuc et al

Patent Trial and Appeal Board

Jan 5, 2018

13178558 (P.T.A.B. Jan. 5, 2018)

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.
13/178,558 07/08/2011 Juan Jesus Burdeniuc 2010P14004 US02 8650
109357 7590 01/09/2018
Evonik Corporation
Intellectual Property Management
299 Jefferson Road
Parsippany, NJ 07054-0677
EXAMINER
COONEY, JOHN M
ART UNIT PAPER NUMBER
1765
NOTIFICATION DATE DELIVERY MODE
01/09/2018 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):
ipm-na@ evonik. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JUAN JESUS BURDENIUC, JAMES DOUGLAS TOBIAS,
RENEE JO KELLER, and YOU-MOON JEON
Appeal 2017-002733
Application 13/178,558
Technology Center 1700
Before ROMULO H. DELMENDO, JEFFREY B. ROBERTSON, and
MICHAEL G. McMANUS, Administrative Patent Judges.
DELMENDO, Administrative Patent Judge.
DECISION ON APPEAL
The Applicants (hereinafter “Appellants”)1 appeal under 35 U.S.C.
§ 134(a) from the Primary Examiner’s final decision to reject claims 1—8,
12, and 15—29.2 We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.
1 The Appellants and “AIR PRODUCTS AND CHEMICALS, INC.” are
listed as the real parties in interest (Appeal Brief filed April 18, 2016,
hereinafter “Appeal Br.,” 1—2).
2 Appeal Br. 4—13; Reply Brief filed December 9, 2016, hereinafter “Reply
Br.,” 2—5; Final Office Action entered September 29, 2015, hereinafter
“Final Act.,” 2—6; Examiner’s Answer entered October 19, 2016, hereinafter
“Ans.,” 2-8.
Appeal 2017-002733
Application 13/178,558
I. BACKGROUND
The subject matter on appeal relates to guanidine derivative-
containing additive compositions used for producing flexible polyurethane
foams (Specification filed July 8, 2011, hereinafter “Spec.,” 1 8).
Representative claim 1 is reproduced from the Claims Appendix to the
Appeal Brief (Appeal Br. 14), with key limitations emphasized, as follows:
1. A foam precursor comprising a combination of: at least
one polyol, at least one blowing agent, at least one gelling
catalyst, at least one blowing catalyst and a solution
comprising cyanoguanidine wherein cyanoguanidine is
present in the solution in an amount less than 2.0pphp of
the precursor.
II. REJECTION ON APPEAL
Claims 1—8, 12, and 15—29 stand rejected under 35 U.S.C. § 103(a)
(pre-AIA) as unpatentable over Uelzmann et al.3 (hereinafter “Uelzmann”)
in view of Andrews et al.4 (hereinafter “Andrews”) (Ans. 2—8; Final Act.
2-6).
III. DISCUSSION
In our opinion below, we address claims on an individual basis only to
the extent that arguments in support of separate patentability have been
included in the Appeal Brief pursuant to 37 C.F.R. § 41.37(c)(l)(iv).
Otherwise, all claims stand or fall together with claim 1, which we select as
representative pursuant to this rule. Furthermore, absent a showing of good
cause or a new point raised in the Answer, we decline to consider any new
3 US 3,734,868, issued May 22, 1973.
4 US 2008/0293841 Al, published November 27, 2008.
2
Appeal 2017-002733
Application 13/178,558
or modified argument in the Reply Brief not previously raised in the Appeal
Brief. See 37 C.F.R. § 41.41(b)(2).
A. Claim 1
The Examiner finds that Uelzmann describes a polyurethane precursor
formulation including every component limitation recited in claim 1 (Ans.
2—3; Final Act. 2). Regarding the amount for cyanoguanidine in the solution
relative to the amount of precursor, the Examiner finds that Uelzmann’s
disclosure would have suggested cyanoguanidine amounts that fall within
the range recited in claim 1 (Ans. 4; Final Act. 4).
The Appellants’ principal contention is that neither reference
describes “a solution comprising cyanoguanidine,” as recited in claim 1, and
that the Examiner’s refusal to give patentable weight to these words
constitutes reversible error (Appeal Br. 5). According to the Appellants,
Uelzmann discloses using guanidine compounds that are insoluble in a
polyol and that “[t]o conclude, without reasoning or support that the
insoluble components of Uelzmann would result in a solvated component in
a polyol containing precursor composition is erroneous” (id.) (emphasis
added). The Appellants also argue that the Examiner erred in concluding
that the cyanoguanidine amounts specified in claim 1 would have been
obvious to a person having ordinary skill in the art (id. at 7). According to
the Appellants, “the Examiner cannot simply optimize based on the
properties and conditions of Uelzmann and expect the same compositional
range as claimed when the conditions and properties are different” (id.).
The Appellants’ arguments fail to identify any reversible error in the
Examiner’s rejection as to claim 1. In re Jung, 637 F.3d 1356, 1365 (Fed.
Cir. 2011).
3
Appeal 2017-002733
Application 13/178,558
Uelzmann describes a composition for improving the load carrying
capacity of flexible polyurethane foams (Uelzmann, col. 1,11. 13—18).
Specifically, Uelzmann teaches using, in conjunction with tertiary amine
catalysts, certain primary and secondary amine compounds that are insoluble
at temperatures up to about 100° F in the polyol component of
polyetherpolyol- or polyesterpolyol-polyisocyanate formulations containing
water, metal catalyst, and surfactant to produce low density, flexible
polyurethanes having, e.g., improved load bearing characteristics at a given
density {id., col. 2,11. 23—34). Uelzmann teaches that cyanoguanidines are
particularly preferred as the primary amine {id., col. 3,11. 1—2).
Although Uelzmann does not describe adding the cyanoguanidines in
solution form, we discern no reversible error in the Examiner’s
determination that “upon their inclusion in the precursors of [claim 1], the
identity of the solution as an independent component is no longer retained
and can be met and/or provided for by any component(s) in the precursor
mixture” (Ans. 5). Contrary to what appears to be the Appellants’ belief
(Appeal Br. 5), claim 1 does not require the cyanoguanidine to be solvated in
a polyol. Rather, we interpret claim 1 to require only that the claimed
precursor—in finally mixed form—includes components that could make up
“a solution comprising cyanoguanidine” as a starting material to be
combined with the remaining components. Here, the Appellants do not
refute the Examiner’s reasonable finding that Uelzmann’s cyanoguanidine
“would be expected to dissolve within materials such as water and bis-N, N-
dimethylaminopropyl amine to some degree” (Ans. 6). Cf. In re Thorpe,
111 F.2d 695, 697 (Fed. Cir. 1985) (“If the product in a product-by-process
claim is the same as or obvious from a product of the prior art, the claim is
4
Appeal 2017-002733
Application 13/178,558
unpatentable even though the prior product was made by a different
process.”).
Significantly, the Appellants do not direct us to any objective
evidence establishing that formulating the precursor by using a
cyanoguanidine in solution form imparts a material, patentable difference
over Uelzmann in which cyanoguanidine is added, but not in solution form,
but otherwise the components making up the precursor are indistinguishable
from those recited in claim 1. Therefore, we find no basis to overturn the
Examiner’s rejection on the basis that Uelzmann does not describe the
“solution comprising cyanoguanidine” limitation.
We also find no persuasive merit in the Appellants’ argument based
on the amounts recited for the cyanoguanidine in the specified solution. As
the Examiner finds (Ans. 4), Uelzmann discloses amounts sufficient to
satisfy the disputed claim limitations. Specifically, Uelzmann teaches
“cyanoguanidine (Example 1-D), provided outstanding results at only 2 parts
by weight or about 1A parts by weight per 100 parts by weight of polyol
and polyisocyanate” (Uelzmann, col. 8,11. 47—51; emphasis added)—a
range that would necessarily fall within or overlap with the Appellants’
specified range, which is based on 100 parts by weight of the precursor. In
re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003) (“Aprima facie case of
obviousness typically exists when the ranges of a claimed composition
overlap the ranges disclosed in the prior art.”).
For these reasons, we uphold the Examiners’ rejection as to claim 1.
5
Appeal 2017-002733
Application 13/178,558
B. Claims 17,18, and 27
For claims 17, 18, and 27, the Appellants argue that “the Examiner . . .
erred in dismissing the limitation ‘wherein [when] the foam precursor is
contacted with an isocyanate, a dimensionally stable flexible foam is
produced without mechanical crushing’” (Appeal Br. 6—7). We disagree.
Consistent with the Examiner’s position (Ans. 3, 7), Uelzmann’s
composition would reasonably appear to possess the claimed capability or
characteristic when contacted with an isocyanate in view of its structural
similarity to the claimed precursor. Indeed, as discussed above, Uelzmann
teaches that the described formulations produce flexible polyurethanes
having improved load bearing characteristics at a given density. Therefore,
the resulting product would reasonably be expected to be dimensionally
stable without mechanical crushing. The Appellants do not direct us to
objective evidence in support of a contrary finding.
Accordingly, we sustain the rejection as to claims 17, 18, and 27.
C. Claim 19
The Appellants argue that Uelzmann does not disclose bis-N,N-
dimethylaminopropyl amine as specified in claim 19 (Appeal Br. 8). As the
Examiner finds (Ans. 7), that compound is disclosed in Andrews (116). The
mere fact that Uelzmann discloses this compound as one of many suitable
compounds does not necessarily compel a conclusion of nonobviousness.
Merck & Co. v. Biocraft Labs. Inc., 874 F.2d 804, 807 (Fed. Cir. 1989)
(“That the [reference] discloses a multitude of effective combinations does
not render any particular formulation less obvious.”).
Therefore, we uphold the rejection of claim 19.
6
Appeal 2017-002733
Application 13/178,558
D. Claims 20 and 29
Claim 20 recites that the “solution comprises cyanoguanidine and
dimethyl sulfoxide [DMSO]” (Appeal Br. 15). Claim 29 recites “a 30%
solution of dimethyl sulfoxide” (id. at 17). The Appellants argue that
“[njeither Uelzmann nor the Office Action provide any basis for concluding
that dimethyl sulfoxide is present in Uelzmann’s [cyanojguanidine
compound (id. at 9). The Appellants also argue that the Examiner failed to
provide any basis for finding that DMSO would be present in amounts
sufficient to form a guanidine solution (id. ).
The Examiner responds that Uelzmann provides for the presence of
dimethyl sulfoxide (DMSO) in the preparation of guanidines and that
DMSO would be present in residual amounts in Uelzmann’s composition
(Ans. 4—6).
We agree with the Appellants. Uelzmann teaches that
“benzoguanamine can be prepared from benzonitrile and dicyandiamide in
the presence of sodium and liquid ammonia or potassium hydroxide and
dimethyl sulfoxide” (Uelzmann, col. 3,11. 39-42) (emphasis added). Even
assuming that DMSO is present in residual amounts in the cyanoguanidine,
such amounts have not been shown to be sufficient to form a solution for the
cyanoguanidine amounts disclosed in Uelzmann (id., col. 8,11. 47—56).
Therefore, we do not sustain the rejection of claims 20 and 29.
IV. SUMMARY
The Examiner’s final decision to reject claims 1—8, 12, 15—19, and
21—28 is affirmed. The Examiner’s final decision to reject claims 20 and 29
is reversed.
7
Appeal 2017-002733
Application 13/178,558
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED-IN-PART
8