Ex Parte HENDERSON et al

Patent Trials and Appeals Board

Feb 6, 2019

14173193 - (D) (P.T.A.B. Feb. 6, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/173, 193 02/05/2014
157 7590 02/08/2019
Covestro LLC
1 Covestro Circle
PITTSBURGH, PA 15205
FIRST NAMED INVENTOR
DERICK HENDERSON
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.
BMS132019US /MDll-28 4510
EXAMINER
USELDING, JOHN E
ART UNIT PAPER NUMBER
1763
NOTIFICATION DATE DELIVERY MODE
02/08/2019 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):
US-IPR@covestro.com
laura.finnell@covestro.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DERICK HENDERSON and JAY JOHNSTON
Appeal 2018-003 518
Application 14/1 73, 193
Technology Center 1700
Before KAREN M. HASTINGS, N. WHITNEY WILSON, and
LILAN REN, Administrative Patent Judges.
REN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants 1 appeal under 35 U.S.C. § 134(a) from a rejection2 of
claims 1-21. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 The real party in interest is identified as "Covestro LLC of Pittsburgh,
Pennsylvania." Appeal Brief of August 7, 2017 ("Br."), 1.
2 Final Office Action of March 6, 2016 ("Final Act."). In this opinion, we
also refer to the Examiner's Answer of November 24, 2017 ("Ans."). No
Reply Brief was filed.
Appeal 2018-003 518
Application 14/1 73, 193
CLAIMED SUBJECT MATTER
The claims are directed to a one-component, moisture-curing
composition. Claim 1, reproduced below, is illustrative of the claimed
subject matter:
1. A one-component composition comprising:
1) a ketimine which is the reaction product of:
a) a dimer diamine; and
b) a ketone; and
2) a blocked isocyanate.
Claims Appendix, Br. 1 7.
REFERENCES 3
The prior art references at issue on appeal are:
Higginbottom
Barron
Nicholas
us 4,501,864
us 4,507,443
us 5,786,437
Feb.26, 1985
Mar. 26, 1985
July 28, 1998
Dual-purpose derivatives, European Coatings Journal, May 2009
("European Journal")
New bio-based polymers: Ambitions and progress at CRODA, Biobased
Performance Materials Symposium, Has Ridderikhoff, June 15,
2011 ("Ridderikhoff')
REJECTIONS
Claims 1, 4, and 6-8 are rejected under 35 U.S.C. § 103 as being
unpatentable over Nicholas in view of European Journal. Final Act. 2.
3 The Examiner cites additional references for the rejections but they are not
at issue on appeal.
2
Appeal 2018-003 518
Application 14/1 73, 193
Claims 1 and 4--8 are rejected under 35 U.S.C. § 103 as being
unpatentable over Barron in view of European Journal. Final Act. 3.
Claims 2 and 9--13 are rejected under 35 U.S.C. § 103 as being
unpatentable over Barron, European Journal, and Higginbottom. Final Act.
4, 5.
Claims 1-8 are rejected under 35 U.S.C. § 103 as being unpatentable
over Barron, European Journal, Ridderikhoff, and additional references.
Final Act. 6.
Claims 9--13 are rejected under 35 U.S.C. § 103 as being unpatentable
over Barron, European Journal, Ridderikhoff, and additional references.
Final Act. 8.
Claims 14--21 are rejected under 35 U.S.C. § 103 as being
unpatentable over Barron, European Journal, Ridderikhoff, and additional
references. Final Act. 10.
OPINION
Rejection of Claim 1 (Nicholas and European Journal) 4
Appellants argue that the Examiner reversibly erred in rejecting claim
1 over Nicholas and European Journal because the European Journal teaches
the use of a dimer diamine with a polyamide but does not teach the recited
blocked isocyanate. Br. 5. Appellants argue that neither reference teaches
or suggests that the recited composition "would behave in a similar manner"
as would the prior art composition. Id.
4 Appellants do not present separate arguments claims 4 and 6-8 for the
obviousness rejection over Nicholas and European Journal and they stand or
fall with claim 1 for this rejection. Br. 4--5; see also 37 C.F.R.
§ 4I.37(c)(1)(iv)(2013).
3
Appeal 2018-003 518
Application 14/1 73, 193
From the outset, the claim recites a composition without reciting any
characteristics. Appellants' argument, directed to whether the prior art
composition "would behave in a similar manner" (id.), is not persuasive at
least because it argues a feature not recited in the claim. In re Self, 671 F .2d
1344, 1348 (CCPA 1982) (holding that "appellant's arguments fail from the
outset because ... they are not based on limitations appearing in the
claims"). As the Examiner points out, the argument does not address - and
does not dispute - the Examiner's finding that a skilled artisan would
substitute the dimer diamine taught in the European Journal with the diamine
in Nicholas to arrive at the recited composition. Ans. 3--4; see also Final
Act. 2-3.
We further note that,"[ w ]here ... the claimed and prior art products
are identical or substantially identical ... the PTO can require an applicant
to prove that the prior art products do not necessarily or inherently possess
the characteristics of his claimed product. ... [The] fairness [ of the
burden-shifting] is evidenced by the PTO' s inability to manufacture products
or to obtain and compare prior art products." In re Best, 562 F.2d 1252,
1255 (CCPA 1977). In this case, the Examiner shows that a combination of
prior art elements renders the claim obvious, and Appellants have not shown
otherwise. See KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,417 (2007).
Based on the foregoing, we are unpersuaded that the Examiner
reversibly erred here.
4
Appeal 2018-003 518
Application 14/1 73, 193
Rejection of Claim 1 (Barron and European Journal) 5
Appellants argue that the Examiner reversibly erred in rejecting claim
1 over Barron and European Journal again because neither reference teaches
or suggests that the recited composition "would behave in a similar manner"
as would the prior art composition. Br. 6. As analyzed in detail with regard
to the rejection of claim 1 over Nicholas and European Journal supra, this
argument is unpersuasive of reversible error in the Examiner's findings.
We are also not persuaded by Appellants' argument that a skilled
artisan would not consult European Journal because no deficiencies are
taught or suggested by Barron. Id. at 7. Appellants do not address - and
certainly do not dispute - the Examiner's rationale that a skilled artisan
would have combined the prior art teachings for various improvements in
properties. See Ans. 5---6; see also Final Act 3--4 ( citing European Journal at
2-9 for "improved physical and chemical resistance, moisture resistance,
adhesion, physical and thermal properties" as a rationale to combine the
references). We are unpersuaded that the Examiner reversibly erred in
rejecting claim 1 over Barron and European Journal.
Rejection of Claims 2 and 9-13 (Barron, European Journal, and
Higginbottom)
For the rejection of claims 2 and 9-13, Appellants' sole argument is
that "Higginbottom fails to add the missing teaching or suggestion to cure
the weaknesses of those combined references to lead one of ordinary skill in
the art to the instantly claimed invention as Higginbottom .... " Br. 7, 9.
5 Appellants do not present separate arguments claims 4--8 for the
obviousness rejection over Barron and European Journal and they stand or
fall with claim 1 for this rejection. Br. 5-7; see also 37 C.F.R.
§ 4I.37(c)(1)(iv)(2013).
5
Appeal 2018-003 518
Application 14/1 73, 193
We accordingly sustain the Examiner's rejection of claims 2 and 9--13 based
on the analysis for the rejection of claim 1 over Barron and European
Journal supra.
Rejection of Claim 1 (Barron, European Journal, Ridderikhoff, and
additional references) 6
Appellants argue that the Examiner reversibly erred in rejecting claim
1 over the cited references because "Ridderikhoff is a sales offering made to
look like a technical publication, ... none of which suggests blocked
isocyanates as instantly recited." Br. 11. Appellants do not explain why
Ridderikhoff fails to qualify as prior art, nor do Appellants cite any case law
or regulation explaining why a presentation at the "Biobased Performance
Materials Symposium" may not be considered as prior art. Id. We are
unpersuaded that the Examiner reversibly erred here.
Rejection of Claims 9--13 (Barron, European Journal, Ridderikhoff, and
additional references)
Appellants repeat the argument that the Examiner reversibly erred in
rejecting claims 9--13 over the cited references because "Ridderikhoff is a
sales offering made to look like a technical publication, ... none of which
suggests blocked isocyanates as instantly recited." Br. 13. For the reasons
provided with regard to the rejection of claim 1 over Barron, European
Journal, Ridderikhoff, and additional references supra, we are unpersuaded
that the Examiner reversibly erred here.
6 Appellants do not present separate arguments claims 2-8 for the
obviousness rejection over Barron, European Journal, Ridderikhoff, and
additional references and they stand or fall with claim 1 for this rejection.
Br. 9--11; see also 37 C.F.R. § 4I.37(c)(1)(iv)(2013).
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Appeal 2018-003 518
Application 14/1 73, 193
Rejection of Claims 14-21 (Barron, European Journal, Ridderikhoff, and
additional references)
Appellants repeat the argument that the Examiner reversibly erred in
rejecting claims 14--21 over the cited references because "Ridderikhoff is a
sales offering made to look like a technical publication, ... none of which
suggests blocked isocyanates as instantly recited." Br. 15. For the reasons
provided with regard to the rejection of claim 1 over Barron, European
Journal, Ridderikhoff, and additional references supra, we are unpersuaded
that the Examiner reversibly erred here.
DECISION
The Examiner's decision is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
7