Ex Parte Chasser et al

Patent Trial and Appeal Board

Sep 6, 2016

12370100 (P.T.A.B. Sep. 6, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/370,100
24959 7590
PPG Industries, Inc.
IP Law Group
One PPG Place
39th Floor
Pittsburgh, PA 15272
02/12/2009
09/06/2016
FIRST NAMED INVENTOR
Anthony M. Chasser
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.
08006009Al 5097
EXAMINER
LISTVOYB, GREGORY
ART UNIT PAPER NUMBER
1765
MAILDATE DELIVERY MODE
09/06/2016 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 ANTHONY M. CHASSER, LAWRENCE J. FITZGERALD, and
VENKA TESHWARLU KALSANI
Appeal2015-003043
Application 12/370,100
Technology Center 1700
Before BRADLEY R. GARRIS, N. WHITNEYWILSON, and
JULIA HEANEY Administrative Patent Judges.
HEANEY, Administrative Patent Judge.
DECISION ON APPEAL
Appellants seek our review pursuant to 35 U.S.C. § 134(a) of a
decision of the Examiner to reject claims 1, 3-13, and 15-22 of Application
12/370,100. We have jurisdiction under 35 U.S.C. § 6(b). We reverse.
BACKGROUND
The subject matter on appeal relates to a polycarbodiimide compound.
Br. 1. Claims 1 and 13, reproduced below from the Claims Appendix, are
representative of the claimed subject matter:
Appeal2015-003043
Application 12/370, 100
1. A polycarbodiimide comprising an unbranched
backbone and terminal onium salt groups, wherein the terminal onium
salt groups comprise a trialkyl onium group and a halogen counterion.
13. A polycarbodiimide comprising an unbranched backbone
and terminal trialkyl onium salt groups.
REFERENCES
The Examiner relied upon the following prior art in rejecting the
claims on appeal:
Imashiro et al. us 5,865,014 January 5, 1999
Nakamura et al. US5,929,188 July27, 1999
THE REJECTION
Claims 1, 3-13, and 15-22 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Imashiro in view ofNakamura. 1
DISCUSSION
Appellants argue against the rejection of independent claims 1 and 13,
as a group, on the grounds that (1) Imashiro fails to teach or suggest terminal
trialkyl onium salt groups; and (2) a person of ordinary skill in the art would
not have had a reason to substitute the trialkyl onium chloride of Nakamura,
2-hydroxyethyltrimethylammonium chloride (Nakamura 4:53), for the self-
1 In the Final Rejection dated March 11, 2014 ("Final Act."), the Examiner
also issued a provisional rejection of all claims on the ground of
nonstatutory obviousness-type double patenting as being unpatentable over
claims of copending Application No. 12/370123 in view of Nakamura.
Appellants filed a terminal disclaimer on July 23, 2014, which obviated the
double patenting rejection. See App. Br. 2.
2
Appeal2015-003043
Application 12/370, 100
emulsifying terminal groups of Imashiro, with a reasonable expectation of
success. App. Br. 3-7.
The Examiner acknowledges that Imashiro does not teach a terminal
trialkyl onium group. Non-Final Rejection mailed June 3, 2013 ("Non-Final
Act.") at 4. The Examiner determines, however, that it would have been
obvious to a person of ordinary skill in the art to substitute a terminal onium
salt, such as 2-hydroxyethyltrimethylammonium chloride disclosed in
Nakamura, for the terminal hydrophilic segment of Imashiro. Id. at 4--5,
citing Nakamura 3:45, 4:50, and Examples 3-5; Ans. 4--5. The Examiner's
basis for that obviousness determination is that Imashiro and Nakamura are
in the same field of endeavor, i.e., paint or pigment dispersion components,
both references teach solubility or dispersability in water is an important
requirement, and both references teach polycarbodiimide can be terminated
by a quatemized cationic group. Non-Final Act. 5; Ans. 4. The Examiner
thus concludes that a person of ordinary skill in the art would have been
motivated to use an onium salt terminated polycarbodiimide in order to
increase solubility/dispersability in water. Ans. 5.
Having reviewed the record before us, we do not find evidence to
support the Examiner's conclusion. Although the basis for the rejection is
that both references teach the importance of solubility in water, the
Examiner has not pointed to any teaching in Nakamura that its terminal
onium chloride would provide self-solubilizing functionality. We find
persuasive Appellants' argument that the Examiner fails to provide
persuasive evidence to support the conclusion that it would have been
obvious to use Nakamura's cation terminated onium salt in order to increase
solubility/dispersability in water "especially in light of the fact that Imashiro
already teaches terminal cationic quaternary ammonium salt groups that are
3
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Application 12/370, 100
'especially useful' for this purpose." App. Br. 7, citing Imashiro 4:31-35
(emphasis removed).
Accordingly, we conclude that the Examiner reversibly erred and has
not established a prima facie case of obviousness with respect to claims 1
and 13. Our conclusion also applies to dependent claims 3-12 and 15-22,
which contain the same limitations directed to a polycarbodiimide having a
terminal trialkyl onium salt group.
SUMMARY
We reverse the rejection of claims 1, 3-13, and 15-22 as unpatentable
under 35 U.S.C. § 103(a).
REVERSED
4