Ex Parte ElgimiabiDownload PDFPatent Trial and Appeal BoardJun 20, 201814355052 (P.T.A.B. Jun. 20, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/355,052 04/29/2014 32692 7590 06/22/2018 3M INNOVATIVE PROPERTIES COMPANY PO BOX 33427 ST. PAUL, MN 55133-3427 FIRST NAMED INVENTOR Sohaib Elgimiabi 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. 67942US010 7327 EXAMINER NGUYEN,HAS ART UNIT PAPER NUMBER 1766 NOTIFICATION DATE DELIVERY MODE 06/22/2018 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): LegalUSDocketing@mmm.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte SOHAIB ELGIMIABI Appeal2017-008248 Application 14/355,052 Technology Center 1700 Before GEORGE C. BEST, CHRISTOPHER C. KENNEDY, and MERRELL C. CASHION, JR., Administrative Patent Judges. CASHION, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE This is an appeal under 35 U.S.C. § 134(a) from a final rejection of claims 1-9 and 11-20. We have jurisdiction under 35 U.S.C. § 6. We AFFIRM. Appeal2017-008248 Application 14/355,052 Independent claims 1 and 2 are directed to an epoxy curative and an epoxy composition comprising the epoxy curative, respectively. Claim 1 is illustrative of the subject matter on appeal and is reproduced below: 1. A composition which is an epoxy curative compnsmg: a) a Lewis base, b) calcium nitrate, and c) a polyamine amide salt. Appellant1 (App. Br. 9) requests review of the following rejections from the Examiner's Final Action: I. Claims 1-3, 5-9, and 11-20 rejected under pre-AIA 35 U.S.C. § I03(a) as unpatentable over Baldwin (US 5,629,380, issued May 13, 1997) and Yong (Virginia Yong & H. Thomas Hahn, Dispersant optimization using design of experiments for SiC/vinylester nanocomposites, 16 Nanotechnology, 354 (February 1, 2005)). II. Claims 1-9 and 11-20 rejected under pre-AIA 35 U.S.C. § I03(a) as unpatentable over Elgimiabi (US 2009/02122252 Al, published August 27, 2009) and Yong. Appellant relies on the same line of arguments in addressing independent claims 1 and 2 together in both rejections. See generally App. Br. Appellant did not present separate arguments for the dependent claims in either rejection. Accordingly, we select claim 1 as representative of the subject matter for review on appeal for this rejection. Claims 2-9 and 11-20 stand or fall with claim 1. 1 3M Innovative Properties Company is the Applicant/ Appellant. 3M Company (formerly known as Minnesota Mining and Manufacturing Company) of St. Paul, Minnesota and its affiliate 3M Innovative Properties Company of St. Paul, Minnesota are identified as the real parties in interest. App. Br. 2. 2 Appeal2017-008248 Application 14/355,052 OPINION After review of the respective positions provided by Appellant and the Examiner, we AFFIRM the Examiner's prior art rejections of claims 1-9 and 11-20 for the reasons presented by the Examiner. We add the following for emphasis. Appellant does not dispute the Examiner's findings that each of Baldwin and Elgimiabi teaches an epoxy curative composition comprising a Lewis base and calcium nitrate that lacks a polyamine amide salt. Final Act. 2-3, 6; App. Br. 3, 5---6. The Examiner also finds Yong teaches the use of polyamine amide salts in epoxy vinyl ester compositions to reduce the composition's viscosity for filler addition and distribution. Final Act. 3--4, 6-7; Yong 355. The Examiner determines it would have been obvious to one ordinarily skilled in the art to add Yong's polyamine amide salt in the epoxy curative of either Baldwin or Elgimiabi for the benefits disclosed by Yong. Final Act. 4, 7. Baldwin based rejection Appellant argues that, absent impermissible hindsight, neither Baldwin nor Yong discloses any reason to combine an epoxy curative with a polyamine amide salt. App. Br. 4. Appellant asserts the Examiner's motivation to "reduce viscosity for the compositions with fillers" is unsupported by evidence that such a modification would be desirable given that Baldwin and Yong are directed to entirely different chemistries. Id. According to Appellant, Baldwin does not contain any reference to polyester vinyl resins or silicon carbide filler that would lead one toward applying the teachings of Yong, and Baldwin never mentions resin viscosity as a problem. Id. Appellant further argues Yong does not mention filled epoxy 3 Appeal2017-008248 Application 14/355,052 resins ( as understood to contain curable epoxy groups) that would impel one of ordinary skill to look to Baldwin. Id. We are unpersuaded by these arguments. As noted by the Examiner, Baldwin discloses filled epoxy polymers and contemplates inclusion of ingredients to provide viscosity control and better mixing of the composition's components. Ans. 10; Baldwin col. 6, 11. 29-53. Given that Yong teaches the use of polyamine amide salts to reduce viscosity of a compound to improve dispersion (mixing) of its components in epoxy-type compounds (Yong 354--355), Appellant has not adequately explained why one skilled in the art would not have been capable of using polyamine amide salts as an adjuvant in the epoxy curative/composition of Baldwin and reasonably expect this adjuvant to function as a viscosity control to better mix the components of Baldwin's composition. In re O'Farrell, 853 F.2d 894, 904 (Fed. Cir. 1988) ("For obviousness under§ 103, all that is required is a reasonable expectation of success."). Appellant also argues that Baldwin and Yong are directed to different types of epoxy compounds and that Yong does not employ an epoxy curative. App. Br. 3. However, these arguments are misplaced because the Examiner is only relying on Yong for its teaching that polyamine amide salts reduce the viscosity of an epoxy-type resin to improve mixing of its components. Final Act. 6; Ans. 10-11. It is well established that the obviousness inquiry does not ask "whether the references could be physically combined but whether the claimed inventions are rendered obvious by the teachings of the prior art as a whole." In re Etter, 756 F.2d 852, 859 (Fed. Cir. 1985) (en bane); see also In re Keller, 642 F.2d 413,425 (CCPA 1981) (stating "[t]he test for obviousness is not whether the features 4 Appeal2017-008248 Application 14/355,052 of a secondary reference may be bodily incorporated into the structure of the primary reference"). Appellant's arguments are unavailing because it does not address the rejection presented by the Examiner. Thus, Appellant's arguments do not point to Examiner error. Elgimiabi based rejection Appellant argues that there is no reason to combine Elgimiabi and Yong because Elgimiabi discloses the desirability of low viscosity materials and does not mention a viscosity problem. App. Br. 6. Appellant further argues Elgimiabi and Yong are directed to different materials. Id. Elgimiabi is directed to injectable and extrudable epoxy compositions which comprise fillers. Final Act. 6; ans. 14; Elgimiabi ,r,r 7-8, 25-26. As recognized by Appellant, Elgimiabi discloses an embodiment of the disclosed formulation "of low density and low viscosity such that it can be extruded or injected into irregular shaped objects." App. Br. 6; Elgimiabi ,r 108. Appellant asserts that, given Elgimiabi's disclosure, there is no reason to use Yong's polyamine amide salt in Elgimiabi's composition when Elgimiabi does not acknowledge a viscosity problem. App. Br. 6. The arguments are unpersuasive of error for reasons presented by the Examiner. Ans. 13-14. As noted by the Examiner and Appellant, Elgimiabi discloses the desirability of low density and low viscosity for its epoxy resins. Ans. 14; App. Br. 6. Appellant has not adequately explained why one skilled in the art, using no more than ordinary creativity, would not have been capable of using a known viscosity modifier, such as Yong's polyamine amide salt, to achieve a desirable viscosity in Elgimiabi' s epoxy composition. KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007) ("A person of ordinary skill is also a person of ordinary creativity, not an 5 Appeal2017-008248 Application 14/355,052 automaton."); see also In re Sovish, 769 F.2d 738, 743 (Fed. Cir. 1985) (presuming skill on the part of one of ordinary skill in the art.). Appellant's arguments, thus, do not point to error in the determination of obviousness. Unexpected results Appellant argues that evidence in the Specification shows the polyamine amide salt provides substantial advantages in both filled and unfilled systems that results in a dramatic improvement in the extrusion rate for the disclosed materials. App. Br. 4; Specification 9, 12 (Examples 1, 3 and Comparative Example 2 shown in Tables 1 and 2). When evidence of secondary considerations is submitted, we begin anew and evaluate the rebuttal evidence along with the evidence upon which the conclusion of obviousness was based. In re Rinehart, 531 F.2d 1048, 1052 (CCP A 197 6). The burden of establishing unexpected results rests on the Appellant. Appellant may meet this burden by establishing that the difference between the claimed invention and the closest prior art was an unexpected difference. See In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972). The unexpected results must be established by factual evidence, and attorney statements are insufficient to establish unexpected results. See In re Geisler, 116 F.3d 1465, 1470-71 (Fed. Cir. 1997). Further, a showing of unexpected results supported by factual evidence must be reasonably commensurate in scope with the degree of protection sought by the claims on appeal. In re Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983); In re Clemens, 622 F.2d 1029, 1035 (CCPA 1980). We agree with the Examiner that, taking into account all of the Graham factors, the evidence of obviousness outweighs Appellant's evidence in support ofnonobviousness. Ans. 12-13. As noted by the 6 Appeal2017-008248 Application 14/355,052 Examiner, it is not clear that Appellant's evidence compares the claimed invention against the closest prior art. Id. at 13. In addition, we agree with the Examiner that the showing is limited to a single composition without any explanation of why this composition is representative of the broader claimed epoxy curative compositions. Id. at 12. On this record, Appellant has not adequately explained why the evidence relied upon would have been unexpected by one of ordinary skill in the art or is reasonably commensurate in the scope with the claims. Accordingly, we affirm the Examiner's prior art rejections of claims 1-9 and 11-20 under 35 U.S.C. § 103 (a) (Rejections I and II) for the reasons presented by the Examiner and given above. DECISION The Examiner's prior art rejections of claims 1-9 and 11-20 under 35 U.S.C. § 103(a) 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. § 1.136(a)(l )(iv). AFFIRMED 7 Copy with citationCopy as parenthetical citation