13307445 (P.T.A.B. Sep. 22, 2016)

Ex Parte Desbois et al

Patent Trial and Appeal BoardSep 22, 2016

13307445 (P.T.A.B. Sep. 22, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/307,445 11130/2011 Philippe DESBOIS 22850 7590 09/26/2016 OBLON, MCCLELLAND, MAIER & NEUSTADT, LLP, 1940 DUKE STREET ALEXANDRIA, VA 22314 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. 390101US99 6980 EXAMINER RIOJA, MELISSA A ART UNIT PAPER NUMBER 1767 NOTIFICATION DATE DELIVERY MODE 09/26/2016 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): patentdocket@oblon.com oblonpat@oblon.com ahudgens@oblon.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte PHILIPPE DESBOIS, DIETRICH SCHERZER, ANDREAS WOLLNY, ANDREAS RADTKE, and TOBIAS HEINZ STEINKE Appeal2014-008146 Application 13/307,445 1 Technology Center 1700 Before TERRY J. OWENS, JEFFREY T. SMITH, and BRIAND. RANGE, Administrative Patent Judges. SMITH, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal under 35 U.S.C. Â§ 134 from the Examiner's final rejection of claims 1-5, 8, 9, and 10-21. An oral hearing was held on September 15, 2016.2 We have jurisdiction pursuant to 35 U.S.C. Â§ 6(b). We AFFIRM. 1 According to the Appeal Brief, the Real Party in Interest is BASF SE. App. Br. 2. 2 A written transcript of the oral hearing will be entered into the record when the transcript is made available. Appeal2014-008146 Application 13/307,445 BACKGROUND According to Appellants, invention relates to a process for filling the pores of an open-cell foam with a polymer. (Spec. i-f 2.) Claim 1 is reproduced below from the Claims Appendix to the principal Brief: 1. A process for producing a composite material, the process compnsmg: drenching an open-cell foam (S) at least in part with a lactam monomer (M); and then, polymerizing the monomer (M) at least partially anionically in the presence of a catalyst and an activator, wherein the activator is isophorone diisocyanate or hexamethy lene diisocyanate, wherein the open-cell foam (S) has a honeycomb structure. The Examiner maintains, and Appellants appeal, the rejection under 35 U.S.C. Â§ 103(a) of: (I) claims 1-5, 8, 9, 12-17 and 19-21 over Hom (US 4,617,225 issued Oct. 14, 1986) in view of BASF, Well-protected into outer space, News Release (2006) ("BASF"); (II) claims 10 and 11 over Hom in view of News Release and Jarema (US 3,839,080 issued Oct. 1, 1974); and (III) claim 18 over Hom in view of News Release and Hodek (US 4,599,398 issued Jul. 8, 1986). OPINION3 Upon consideration of the evidence on this record and each of Appellants' contentions, we find that the preponderance of evidence on this 3 We refer to the Non-Final Office Action for a complete statement of the Examiner's rejection. (Non-Final Act. 2-7). 2 Appeal2014-008146 Application 13/307,445 record supports the Examiner's conclusion that the subject matter of Appellants' claims is unpatentable over the applied prior art. We sustain the Examiner'sÂ§ 103 rejections essentially for the reasons set out by the Examiner in the Answer. We add the following primarily for emphasis. Rejections I and 1114 Appellants argue the Examiner's rejection is premised on hindsight and there is no motivation in the cited references to employ a honeycomb structure in the process of Hom. (App. Br. 11-12). We do not agree. Hom discloses the suitability of utilizing of open cell foams that allow penetration by the lactam melt. (col. 1 11. 34---65). BASF describes the foam identified by the trademark BasotectÂ® has an open cell structure.5 (BASF pg. 1). A person of ordinary skill in the art would have reasonably expected that kno\'l/n open cell foams \'l/ould have been suitable for utilization in the process of Hom. Accordingly, we are of the opinion that one of ordinary skill in this art routinely following the combined teachings of Hom and BASF would have reasonably arrived at the claimed process for producing a composite material encompassed by claim 1 4 Appellants have presented arguments directed to independent claim 1 and dependent claim 19. Appellants have not separately addressed claims 2-5, 8, 9, 12-17, 20 and 21. Appellants also have not presented substantive arguments addressing the separate rejection of dependent claims 10 and 11, Rejection III. (App. Br. 22). We limit our initial discussion to independent claim 1 and will address separately claim 19. 5 The Specification discloses "Particular preference is given to melamine- formaldehyde foam, for example BasotectÂ® from BASF SE." (Spec. 4). 3 Appeal2014-008146 Application 13/307,445 without recourse to Appellants' Specification. See, e.g., KSR Int'! Co. v. Teleflex, Inc., 550 U.S. 398, 416 (2007) ("when a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable result"); In re Siebentritt, 372 F.2d 566, 567-68 (CCPA 1967) (express suggestion to interchange methods which achieve the same or similar results is not necessary to establish obviousness); see also In re Kahn, 441F.3d977, 985-88 (Fed. Cir. 2006); In re O'Farrell, 853 F.2d 894, 903-04 (Fed. Cir. 1988) ("For obviousness underÂ§ 103, all that is required is a reasonable expectation of success." (citations omitted)). Appellants also argue that BASF is non-analogous to the claimed invention. (App. Br. 6-11 ). Appellants' arguments have been fully considered and are not persuasive. We agree with the Examiner's response in the Answer. (Ans. 9-11 ). Appellants' arguments are inconsistent with the present Specification that indicates BasotectÂ® from BASF SE is particularly preferred for the claimed invention. (Spec. 4 ). Furthermore, Hom discloses the use of open cell melamine foams for the disclosed process. BasotectÂ® is an open cell melamine foam. The BASF reference describes BasotectÂ® open cell foams which are reasonably pertinent to the problem of providing an open cell foams which are subsequently filled by a resin as described by Hom and the present application. Appellants' arguments (App. Br. 19-22) regarding depending claim 19 are not persuasive of reversible error. Appellants acknowledge that Hom discloses the suitability of utilizing hexamethylene diisocyanate in the disclosed process. (App. Br. 20). However, Appellants argue because 4 Appeal2014-008146 Application 13/307,445 Meyer6 described disadvantages, toxicity and operational disturbances, it would not have been obvious to utilize hexamethylene diisocyanate as an activator. (App. Br. 20). We do not agree. Hom exemplifies the used of hexamethylene diisocyanate as an activator. Consequently, a person of ordinary skill in the art would have recognized the suitability of utilizing hexamethylene diisocyanate. It is recognized that Meyer discloses some disadvantages in utilizing diisocyanate compounds. However, a person of ordinary skill in the art willing to accept these known characteristics/ disadvantages would have found the use of hexamethylene diisocyanate obvious. Rejection II Appellants' arguments (App. Br. 14--19) regarding depending claim 18 are not persuasive of reversible error. The Examiner found Hom differs from the claimed invention by failing to disclose isophorone diisocyanate as an activator. To remedy this difference, the Examiner found Hodek discloses isophorone diisocyanate was known in the art as an activator for the polymerization of lactams. The Examiner determined that it would have been obvious to utilize the known isocyanate activator, isophorone diisocyanate, in the process of Hom. (Non- Final Act. 7). Appellants argue because Meyer described disadvantages, toxicity and operational disturbances, it would not have been obvious to utilize polyisocyanate compounds as an activator. (App. Br. 16). 6 Meyer (US 4,684,746) was previously cited in an earlier office action by the Examiner. 5 Appeal2014-008146 Application 13/307,445 We do not agree. Hom describes the suitability of utilizing poly isocyanates as an activators. (Hom col. 2 11. 33-37). Consequently, a person of ordinary skill in the art would have reasonably expected that polyisocyanate compounds known to be suitable as activators for lactams would have been suitable for the invention of Hom. It is recognized that Meyer discloses some disadvantages in utilizing diisocyanate. However, a person of ordinary skill in the art willing to accept these known characteristics/ disadvantages would have found the use of isophorone diisocyanate obvious. Moreover, Hodek recognizes the suitability of using isocyanates as polymerization activators. (Col. 1 11. 31--48). Appellants have not directed us to evidence that isophorone diisocyanate when utilized as an activator provides unexpected results. ORDER The Examiner's prior art rejections are affirmed. TIME PERIOD No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l). AFFIRMED 6