Ex parte Gupta et al.

Board of Patent Appeals and Interferences

Mar 21, 2000

08469726 (B.P.A.I. Mar. 21, 2000)

We decide concurrently herewith Appeal No. 1996-0191 in application 08/001,697, filed January 7,1
1993, which according to appellants is the parent of the present application.
Amendment of June 6, 1995 (Paper No. 2).2
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THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
Paper No. 10
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________
Ex parte R. B. GUPTA
and ROBERT G. LEES
______________
Appeal No. 1997-43651
Application 08/469,726
_______________
ON BRIEF
_______________
Before GARRIS, WARREN and WALTZ, Administrative Patent Judges.
WARREN, Administrative Patent Judge.
Decision on Appeal and Opinion
This is an appeal under 35 U.S.C. § 134 from the decision of the examiner finally rejecting
claims 14 through 22. Claims 23 through 32 are also of record and stand withdrawn from2
consideration by the examiner under 37 CFR § 1.142(b).
We will not sustain the ground of rejection of claims 14 through 22 under 35 U.S.C. § 103 as
Appeal No. 1997-4365
Application 08/469,726
The references are listed at page 3 of the answer. We refer in our opinion to the translation of Kajiura3
prepared for the PTO by FLS, Inc. in November, 1993.
Kajiura names this compound “2,4,6-tris(N-(azacyclopentane-2-onyl))-1,3,5-triazine” (page 5, line4
8).
In evaluating the teachings of the applied references, we must, of course, consider the specific5
teachings thereof and the inferences one of ordinary skill in this art would have reasonably been
expected to draw therefrom. In re Fritch, 972 F.2d 1260, 1264-65, 23 USPQ2d 1780, 1782-83
(Fed. Cir. 1992); In re Preda, 401 F.2d 825, 826, 159 USPQ 342, 344 (CCPA 1968). In
evaluating the relevance of the various teachings of these references, we must presume skill on the part
of those of ordinary skill in this art. See In re Sovish, 769 F.2d 738, 743, 226 USPQ 771, 774 (Fed.
Cir. 1985).
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unpatentable over Macholdt et al. (Macholdt) and Iwasawa et al. (Iwasawa) and Wooten et al.
(Wooten) in view of Japanese Patent No. 58-146582 (Kajiura) and Akkapeddi et al. (Akkapeddi). 3
Contrary to appellants’ contentions (brief, page 3), we find that one of ordinary skill in this art would
have reasonably inferred from Kajiura that tris-pyrrolidonyl triazine would homo-polymerize through a4
ring opening reaction involving the pyrrolidonyl moiety to form a “thermosetting resin with excellent heat
resistance” as well as function via the ring opening reaction as a “hardener” or curing agent “for all-
purpose resins such as epoxy resins and phenolic resins” (pages 7-8; see brief, pages 3-4). We5
cannot agree with the examiner that this disclosure of Kajiura when coupled with the disclosure at page
3 with respect to “melamine” would have reasonably suggested to one of ordinary skill in this art that
resins hardened with melamine per se would “exhibit superior heat resistance” over resins hardened
with melamine resins (answer, pages 5 and 6-7; see also brief, page 4). We find that the examiner has
not alleged that the “epoxy resins and phenolic resins” hardened with tris-pyrrolidonyl triazine as taught
Kajiura will form a “film or object” which is required of the compositions specified in the appealed
claims.
Further contrary to appellants’ contentions (brief, page 3), we find that Akkapeddi discloses
that the preparation of polyether prepolymers with “2-dimethyl-amino-4,6-bis(á-pyrrolidonyl)-1,3,5-
triazine (BpT)” results in “end capped product with statistical distribution of chain extended by-
products” (pages 314 and 315). We find that one of ordinary skill in this art would have reasonably
inferred from this disclosure that chain extension would occur even where the prepolymers are end-
Appeal No. 1997-4365
Application 08/469,726
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capped, and further that where “2,4,6-tris(á-pyrrolidonyl)-1,3,5-triazine (TpT)” is employed, at least
some of the chain extension product would reasonable involve all three pyrrolidonyl moieties, thus
resulting in a branched prepolymer which is reactive with caprolactam in a ring opening reaction (pages
315 and 318-319). We find no disclosure in Akkapeddi that would suggest that the prepolymers and
polymers form a “film or object.”
Accordingly, we find that the combined teachings of Kajiura and Akkapeddi would have
reasonably suggested to one of ordinary skill in this art that tris-pyrrolidonyl triazine can be used as a
cross linking or hardening agent for epoxy and phenolic resins as well as in reactions with ether and
amido containing prepolymers and compounds. The examiner relies on these teaching along with the
contention that Macholdt, Iwasawa and Wooten “establish the conventional expedient in the art of
curing powder coatings produced from hydroxyl-functional resins with melamines” to allege that the
“combined teachings of the references clearly establish the use of tris-pyrrolidonyl triazine as a hardener
for hydroxyl-functional resins based on the reactivity of the pyrrolidonyl with the hydroxyl groups” and
thus one of ordinary skill in this art would have been motivated to “harden the hydroxyl-functional resins
of [Macholdt], [Iwasawa] and [Wooten] with tris-pyrrolidonyl triazine of [Kajiura]” in expectation of
enhancing the “heat resistance of the crosslinked films” (answer, pages 5 and 6). Appellants submit that
there is no disclosure in Macholdt that melamine resins are curing agents for epoxy resins shown in
Kajiura and that Kajiura does not “support a general interchangeability of tris-pyrrolidonyl triazine . . .
with ‘other compounds having a triazine ring’ for all applications’ or for “producing crosslinked films
and objects by reaction with a polyfunctional active hydrogen containing material” (brief, page 4;
emphasis in original deleted). In view of the evidence in Macholdt, Iwasawa, Wooten and Kajiura, we
find ourselves in agreement with appellants.
We agree with the examiner and appellants that each of Macholdt, Iwasawa and Wooten
discloses preparing a film with a powder coating composition using a hydroxy-functional resin and a
cross-linking agent and find, as pointed out by appellants, that a “variety of crosslinking agents” are
used, including, inter alia, melamine resins (e.g., answer, page 4; brief, pages 3-4). Indeed, we find
that Iwasawa discloses that thermosetting powder coating compositions “containing an acrylic resin and
Appeal No. 1997-4365
Application 08/469,726
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a melamine derivative, namely ‘melamine-acrylic resin,’” wherein the “melamine derivative” is
“hexakisloweralkoxymethyl-melamine obtained by etherifying hexakismethylolated melamine with lower
alcohol,” were known and teaches powder coating compositions comprising acrylic resins and
“hexamethylolmelamine” derivatives which are particular etherified products (e.g., col. 1, lines 8-14,
and col. 2, lines 17-39). We find that Wooten discloses that alkoxymelamine and hexamethoxymethyl
melamines are among melamines that are useful for thermosetting resins containing functional hydroxyl
groups such as polyester resins in thermosetting powder coating compositions (e.g., col. 1, lines 14-16,
and col. 2, lines 53-65). We find that “melamine resin” is disclosed in Macholdt as a “curing
component for hydroxyl-containing polyester resins” in powder coating compositions and, as pointed
out by appellants (brief, page 4), not for epoxy resins (e.g., col. 1, lines 55-66).
Based on this evidence, we find that the combined teachings of Iwasawa, Wooten and
Macholdt would have suggested to one of ordinary skill in this art that, in addition to melamine resins,
etherified melamine derivatives can be used to cure hydroxyl-functional acrylic and polyester powder
coating resins, thus forming a “film or object,” none of which is “melamine” per se as disclosed in
Kajiura or contains a pyrrolidonyl moiety as does tris-pyrrolidonyl triazine that is taught in this
reference. Furthermore, we fail to find in Macholdt or the other two powder coating references any
suggestion to use melamine resins or a melamine derivative to cure epoxy resins, whether in powder
compositions as in this reference or as “all-purpose resins” as in Kajiura (page 8), and we agree with
appellants that the combined teachings of these references does not establish the general
interchangeability of hardening agent compounds containing a triazine ring (brief, page 4). Thus, at best,
the use of crosslinking agents containing a triazine ring in the powder compositions as disclosed by the
combined teachings of Iwasawa, Wooten and Macholdt would have suggested to one of ordinary skill
in this art “to try” other triazine ring containing crosslinking agents, including the tris-pyrrolidonyl triazine
of Kajiura, which is “not the standard under § 103.” In re O’Farrell, 853 F.2d 894, 903-04, 7
USPQ2d 1673, 1681 (Fed. Cir. 1988) (“In [other cases], what was ‘obvious to try’ was to explore a .
. . general approach that seemed to be a promising field of experimentation where the prior art gave
only general guidance as to the particular form of the claimed invention or how to achieve it. [Citations
Appeal No. 1997-4365
Application 08/469,726
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omitted.]”).
Accordingly, it is manifest that the only direction to appellants’ claimed invention as a whole on
the record before us is supplied by appellants’ own specification. In re Vaeck, 947 F.2d 488, 493, 20
USPQ2d 1438, 1442 (Fed. Cir. 1991), citing In re Dow Chemical Co., 837 F.2d 469, 473, 5
USPQ2d 1529, 1531(Fed. Cir. 1988)(“Both the suggestion and the reasonable expectation of success
must be founded in the prior art, not in the applicant’s disclosure.”).
The examiner’s decision is reversed.
Reversed
BRADLEY R. GARRIS )
Administrative Patent Judge )
)
)
)
CHARLES F. WARREN ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
THOMAS A. WALTZ )
Administrative Patent Judge )
Appeal No. 1997-4365
Application 08/469,726
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Bert E. Lerman
Cytec Industries Inc
1937 West Main Street PO Box 60
Stamford, CT 06904-0060