Ex Parte Finch et al

Board of Patent Appeals and Interferences

Feb 4, 2011

11480739 (B.P.A.I. Feb. 4, 2011)

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.
11/480,739 07/03/2006 William C. Finch A01759 2133
21898 7590 02/04/2011
ROHM AND HAAS COMPANY
PATENT DEPARTMENT
100 INDEPENDENCE MALL WEST
PHILADELPHIA, PA 19106-2399
EXAMINER
TISCHLER, FRANCES
ART UNIT PAPER NUMBER
1765
MAIL DATE DELIVERY MODE
02/04/2011 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte WILLIAM C. FINCH and XUN TANG
__________

Appeal 2010-009754
Application 11/480,739
Technology Center 1700
__________

Before ERIC GRIMES, LORA M. GREEN, and
JEFFREY N. FREDMAN, Administrative Patent Judges.

FREDMAN, Administrative Patent Judge.

DECISION ON APPEAL1
This is an appeal under 35 U.S.C. § 134 involving claims to a curable
aqueous binder composition. The Examiner rejected the claims as obvious.
We have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part.

1 The two-month time period for filing an appeal or commencing a
civil action, as recited in 37 C.F.R. § 1.304, or for filing a request
for rehearing, as recited in 37 C.F.R. § 41.52, begins to run from
the “MAIL DATE” (paper delivery mode) or the
“NOTIFICATION DATE” (electronic delivery mode) shown on
the PTOL-90A cover letter attached to this decision.
Appeal 2010-009754
Application 11/480,739

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Statement of the Case
The Specification teaches that the “invention relates to low cost
curable aqueous binder compositions having low binder cure energy
requirements, to methods of use thereof as binders for fibrous substrates and
composites, and to the products produced by those methods” (Spec. 1 ¶
0002).
The Claims
Claims 1-8 and 11-13 are on appeal. Claims 1 and 6 have been
separately argued. The remaining claims have not been argued separately
and therefore they stand or fall together with claim 1. 37 C.F.R. §
41.37(c)(1)(vii). Claims 1 and 6 are representative and read as follows:
1. A curable composition comprising:
(i) one or more polymeric polyacid comprising at
least two carboxylic acid groups, anhydride groups, or
salts thereof;
(ii) optionally, one or more polyol comprising at
least two hydroxyl groups; and
(iii) one or more reactive β-hydroxyamide group
containing polyol of the following formula (I),which is
the reaction product of a lactone or other cyclic ester and
an alkanolamine:

in which formula, R and R" independently
represent H, or any monovalent C1 to C18 linear or
branched alkyl radical, which radical may comprise one
or two aryl or cycloalkyl group, one or more hydroxyl,
amine, thiol, amide, carboxyl or alkenyl group, or
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Application 11/480,739

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combinations thereof; R’ represents either a covalent
bond or a divalent C1 to C5 alkylene radical where the
alkylene radical may bear alkyl group substituents; y is
the integer 1 or 2; x is 0 or 1, such that (x + y) =2;
wherein the ratio of the number of equivalents of
said carboxylic acid groups, anhydride groups, or salts
thereof to the number of equivalents of said hydroxyl
groups is from 1/0.01 to 1/3.

6. A composition as claimed in claim 1, further
comprising one or more reactive waterproofing agent.

The issue2
The Examiner rejected claims 1-8 and 11-13 under 35 U.S.C. § 103(a)
as obvious over Arkens3 and Stanssens4 (Ans. 3-7).
The Examiner finds that Arkens teaches
a curable composition suitable for use as a binder
comprising (i) polymeric polyacid with at least two
carboxylic acid groups, anhydride groups or salts thereof,
such as polyacrylic acid, with a molecular weight of less
than about 1,000 or with a molecular weight of from 300 -
10,000,000; (ii) polyol with at least two hydroxyl groups,
including ethylene glycol, glycerol or alkanolamine;
(iii) reactive beta-hydroxyamide group containing polyol.

(Ans. 3). The Examiner finds that the “difference between the prior art and
the present invention is that the present invention claims a beta-

2 The propriety of the Examiner’s restriction requirement and
subsequent rejoinder is not an appealable issue but, rather is
petitionable to the technology center director. See Manual of Patent
Examining Procedure § 1002.02(c)(2) (8th ed., rev. 8, July 2010).
3 Arkens et al., US 5,661,213, issued Aug. 26, 1997.
4 Stanssens et al., US 6,706,853 B1, issued Mar. 16, 2004.
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Application 11/480,739

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hydroxyamide (formula (I) in the claim) which is made from the reaction
product of a lactone or other cyclic ester and an alkanolamine” (Ans. 4).
The Examiner finds that Stanssens teaches “a curable composition suitable
for use as a binder comprising the reaction of an oxygen-containing cyclic
compound, such as a lactone, with an alkanolamine, to form a beta-
hydroxyamide” (Ans. 5).
The Examiner finds it obvious to “have used Stanssens’ beta-
hydroxyamide of figure 5 which is made from a lactone or other cyclic ester
and an alkanolamine in lieu of Arkens’ beta-hydroxyamide . . . since both
disclose to use a beta-hydroxyamide for the same purpose of reacting it with
a polymeric polyacid” (Ans. 6).
Appellants contend that “Arkens fails to disclose any β-hydroxyalkyl
amide that reads on the instantly recited compounds. In the cited portion of
Arkens relating to Arkens’ formula (I), the parameter A in Arkens does not
include a hydroxyalkyl group” (App. Br. 5). Appellants contend that
“Stannsens [sic Stanssens] fails to disclose any polymer or polymeric
polyacid in combination with the Stannsens binder” (App. Br. 5).
Appellants also contend that “the suggested combination of Arkens with
Stannsens would require a substantial reconstruction and redesign of the
combination to avoid the viscosity buildup issues disclosed in Stannsens”
(App. Br. 6).
Appellants contend that “in the instant specification, ample data
confirms the unexpectedly superior curing rate of the instantly recited
curable aqueous composition in comparison to a mix of TEA and polyacrylic
acid (pAA) which represents the closest art of Arkens” (App. Br. 7).
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Application 11/480,739

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Appellants contend that “the evidence on the record shows an unexpected
improvement over Arkens using two different reactive β-hydroxyamide
group containing polyols and four different polyacids over a wide range of
polyacid to polyol ratios” (App. Br. 8).
Appellants contend that “nothing in Arkens reads on any reactive
waterproofing agent. The rejection utterly fails to point to any reason for
rejecting instant claim 6” (App. Br. 9).
The issues with respect to this rejection are:
(i) Does the evidence of record support the Examiner’s conclusion
that the combination of Arkens and Stanssens renders claims 1 and 6
obvious?
(ii) and, if so, have Appellants presented evidence of unexpected
results that outweighs the evidence supporting a conclusion of obviousness?
Findings of Fact
1. Arkens teaches “a formaldehyde-free curable aqueous
composition and the use thereof as a binder for heat-resistant nonwovens”
(Arkens, col. 2. l. 66 to col. 3, l. 1)
2. Arkens teaches that “composition contains (a) a polyacid
containing at least two carboxylic acid groups, anhydride groups, or salts
thereof; (b) a polyol containing at least two hydroxyl groups” (Arkens, col.
3, ll. 1-4).
3. Arkens teaches that the composition also contains “(c) a
phosphorous-containing accelerator, wherein the ratio of the number of
equivalents of said carboxylic acid groups, anhydride groups, or salts thereof
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to the number of equivalents of said hydroxyl groups is from about 1/0.01 to
about 1/3” (Arkens, col. 3, ll. 4-8).
4. Arkens teaches that the composition “preferably includes a
highly reactive polyol such as, for example, a β-hydroxyalkylamide of the
formula

wherein A is a bond, hydrogen or a monovalent or polyvalent organic
radical” (Arkens, col. 7, ll. 31-38).
5. Table 3.1 of Arkens is reproduced below:

“The test results for Samples 1-5 and Comparatives A-B . . . are presented in
Table 3.1” (Arkens, col. 10, ll. 34-37).
6. Stanssens teaches “a compound or salts thereof suitable for use
as a binder for mineral fibres, i.e. man made vitreous fibres (MMVF), for
example glass slag or stone wool” (Stanssens, col. 1, ll. 5-7).
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7. Figures 4 and 5 of Stanssens are reproduced below:

“FIGS. 4 and 5 show respectively the reaction between dimethyl adipate and
caprolactone with diethanolamine in order to provide compounds”
(Stanssens, col. 5, ll. 12-14).
8. The Examiner finds that Stanssens teaches that a
“hydroxyamide is reacted with a polyacid acid with at least two carboxyl
groups, such as acrylate monomers, with a molecular weight of less than
1000” (Ans. 5).
9. The Examiner finds that the β-hydroxyamide of Figure 4 is a β-
hydroxyalkylamide of the formula shown in Arkens and finds that the
hydroxyamides of Figure 4 and 5 of Stanssens “are functionally equivalent”
(Ans. 5).

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10. Table 2 of the Specification on page 28 is reproduced below:

Table 2 shows that “all formulations comprising reactive β-hydroxyamide
group containing polyols show higher wet tensile strength than the control
and the tensile strength develops faster” (Spec. 26 ¶ 0099)
Principles of Law
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). “If a person of
ordinary skill can implement a predictable variation, § 103 likely bars its
patentability.” Id. at 417. Moreover, an “[e]xpress suggestion to substitute
one equivalent for another need not be present to render such substitution
obvious.” In re Fout, 675 F.2d 297, 301 (CCPA 1982). As noted by the
Court in KSR, “[a] person of ordinary skill is also a person of ordinary
creativity, not an automaton.” 550 U.S. at 421.
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The fact that an invention provides results which would not
have been expected by those skilled in the art is strong
evidence in rebuttal of an assertion that the invention would
have been obvious. However, the burden of showing
unexpected results rests on he who asserts them. Thus it is
not enough to show that results are obtained which differ
from those obtained in the prior art: that difference must be
shown to be an unexpected difference.

In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972).
Analysis
Claim 1
Arkens teaches a curable composition which comprises “(a) a
polyacid containing at least two carboxylic acid groups, anhydride groups,
or salts thereof; (b) a polyol containing at least two hydroxyl groups”
(Arkens, col. 3, ll. 1-4; FF 1-2). Arkens further teaches that the curable
composition ““preferably includes a highly reactive polyol such as, for
example, a β-hydroxyalkylamide of the formula

wherein A is a bond, hydrogen or a monovalent or polyvalent organic
radical” (Arkens, col. 7, ll. 31-38; FF 4). Arkens also teaches that the
composition contains an accelerator where “the ratio of the number of
equivalents of said carboxylic acid groups, anhydride groups, or salts thereof
to the number of equivalents of said hydroxyl groups is from about 1/0.01 to
about 1/3” (Arkens, col. 3, ll. 4-8; FF 3).

Appeal 2010-009754
Application 11/480,739

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Arkens does not teach a β-hydroxyalkylamide of formula I of the
instant claim 1 (see Ans. 5). Stanssens teaches a curable binder where
polyols with two hydroxyl groups reacted to form β-hydroxyalkylamides
(FF 6-9). In particular, Stanssens teaches one reaction in figure 4 which
results in a β-hydroxyalkylamide which falls within Arkens’ formula and
teaches a second reaction in figure 5 which results in a β-hydroxyalkylamide
which falls within formula I of the instant claim 1. The Examiner
reasonably finds that the hydroxyamides of Figure 4 and 5 of Stanssens “are
functionally equivalent” since they are used for similar reactions to result in
similar compositions for the same purpose (Ans. 5; FF 9).
Applying the KSR standard of obviousness to the findings of fact, we
conclude that the person of ordinary creativity would have predictably
substituted the β-hydroxyalkylamide of figure 5 of Stanssens for the β-
hydroxyalkylamide of Arkens, since these are shown by Stanssens to be
predictably equivalent. “[W]hen the question is whether a patent claiming
the combination of elements of prior art is obvious”, KSR directs that “a
court must ask whether the improvement is more than the predictable use of
prior art elements according to their established functions.” KSR, 550 U.S. at
417. Here, the β-hydroxyalkylamides are predictably used as suggested by
Stanssens.
Appellants contend that “Stannsens fails to disclose any polymer or
polymeric polyacid in combination with the Stannsens binder” (App. Br. 5).
Appellants also contend that “the suggested combination of Arkens with
Stannsens would require a substantial reconstruction and redesign of the
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combination to avoid the viscosity buildup issues disclosed in Stannsens”
(App. Br. 6).
We are not persuaded. Stanssens expressly teaches the equivalence of
the β-hydroxyalkylamides and Arkens teaches the application of β-
hydroxyalkylamide to the synthesis of the curable compositions as described
above (FF 1-9). While we are aware that hindsight bias often plagues
determinations of obviousness, Graham v. John Deere Co., 383 U.S. 1, 36
(1966), we are also mindful that the Supreme Court has clearly stated that
the “combination of familiar elements according to known methods is likely
to be obvious when it does no more than yield predictable results,” KSR, 550
U.S. at 401. Appellants have provided no evidence that substituting the β-
hydroxyalkylamide of Stanssens into the reaction of Arkens would result in
viscosity buildup.
Appellants contend that Arkens is the closest prior art (App. Br. 6)
and that “in the instant specification, ample data confirms the unexpectedly
superior curing rate of the instantly recited curable aqueous composition in
comparison to a mix of TEA and polyacrylic acid (pAA) which represents
the closest art of Arkens” (App. Br. 7). Appellants contend that “the
evidence on the record shows an unexpected improvement over Arkens
using two different reactive β-hydroxyamide group containing polyols and
four different polyacids over a wide range of polyacid to polyol ratios”
(App. Br. 8).
While we agree with Appellants that Arkens is reasonably identified
as the closest prior art, we are not persuaded by the cited evidence that the
claimed invention is unexpectedly superior to Arkens. Appellants point out
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that polyols within the scope of the claim “always provide at least 32%
higher wet tensile strength than the closest art of Arkens” (App. Br. 7).
However, simply because the wet tensile strength of a claimed composition
different than Arkens shows some improvement does not mean that the
result is unexpected. Appellants have the burden of showing that the
claimed invention imparts not just any improvement, but an unexpected
improvement. In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972).
Appellants do not provide declaration evidence, a statistical analysis
or other discussion to distinguish which results are truly “unexpected” and
which simply differ slightly from the “expected” values due to random
chance or other variables.
We are not persuaded that this data demonstrates unexpected results.
Additionally, even if there may be one or two β-hydroxyalkylamide
compounds for which the data shows results which are superior, the data
presented is not commensurate in scope with the claim, which specifically
claims any compound of formula I, and is not limited to any particular β-
hydroxyalkylamides. See In re Harris, 409 F.3d 1339, 1344 (Fed. Cir.
2005) (Unexpected results must also be “commensurate in scope with the
degree of protection sought by the claimed subject matter.”)
Claim 6
The Examiner finds that “[o]ne of ordinary skill in the art would know
to choose a waterproofing agent among the various conventional treatment
components, depending on the use of the composition” (Ans. 13).
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Appellants contend that “nothing in Arkens reads on any reactive
waterproofing agent. The rejection utterly fails to point to any reason for
rejecting instant claim 6” (App. Br. 9).
We find that Appellants have the better position. The Examiner has
not provided any evidence that a single additive compound in either Arkens
or Stanssens is a waterproofing agent. The Examiner states that
hydrophobizing agents are “believed to be waterproofing agents” (Ans. 13).
However, no evidence is presented to support this belief. Further, the
hydroxyamide cannot serve as the composition and the additive. See Becton,
Dickinson and Co. v. Tyco Healthcare Group, LP, 616 F.3d 1249, 1254
(Fed. Cir. 2010) (Where a claim lists elements separately, “the clear
implication of the claim language” is that those elements are “distinct
component[s]” of the patented invention).
Conclusion of Law
The evidence of record supports the Examiner’s conclusion that the
combination of Arkens and Stanssens renders claim 1 obvious. The
evidence of record does not support the Examiner’s conclusion that the
combination of Arkens and Stanssens renders claim 6 obvious.
Appellants have not presented evidence of unexpected results that
outweighs the evidence supporting a conclusion of obviousness.
SUMMARY
In summary, we affirm the rejection of claim 1 under 35 U.S.C.
§ 103(a) as obvious over Arkens and Stanssens. Pursuant to 37 C.F.R.
§ 41.37(c)(1)(vii)(2006), we also affirm the rejection of claims 2-5, 7, 8, and
11-13 as these claims were not argued separately.
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We reverse the rejection of claim 6 under 35 U.S.C. § 103(a) as
obvious over Arkens and Stanssens.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv)(2006).

AFFIRMED-IN-PART

alw

ROHM AND HAAS COMPANY
PATENT DEPARTMENT
100 INDEPENDENCE MALL WEST
PHILADELPHIA, PA 19106-2399