Ex Parte Elgimiabi

Patent Trial and Appeal Board

Jun 20, 2018

14355052 (P.T.A.B. Jun. 20, 2018)

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.
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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
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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
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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
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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
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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
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