Ex Parte Incorvia et al

Patent Trial and Appeal Board

Dec 23, 2014

10963350 (P.T.A.B. Dec. 23, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte SAMUEL A. INCORVIA, GEORGE E. McKEDY, and
LOUIS PATRONE
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Appeal 2013-001207
Application 10/963,3501
Technology Center 1700
____________

Before BRADLEY R. GARRIS, ROMULO H. DELMENDO, and
N. WHITNEY WILSON, Administrative Patent Judges.

DELMENDO, Administrative Patent Judge.

DECISION ON APPEAL
The Appellants seek our review under 35 U.S.C. § 134(a) of a
decision of the Primary Examiner to reject claims 1–5, 7, and 15–27. We
have jurisdiction under 35 U.S.C. § 6.
We AFFIRM.

1 According to the Appellants, the Real Party in Interest is Multisorb
Technologies, Inc. (Appeal Brief filed April 23, 2012, hereinafter “Br.,” 3).
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BACKGROUND
The invention relates to a method of forming desiccant or desiccating
parts, which are capable of adsorbing moisture (Specification, hereinafter
“Spec.,” 1–2). Representative claim 1 is reproduced from page 39 of the
Appeal Brief as follows:
1. Method of forming a desiccating part comprising the
steps of:
(a) blending a composition comprising:
at least 60 wt% desiccant particles,
a wetting agent,
a processing aid, and
5–30 wt% thermosetting resin selected from the
group consisting of: alkyd resins, amino resins, polyester
resins, urea-formaldehyde resins, and silicone resins,
wherein the wetting agent is present in an amount up to
10 wt% and the processing aid is present in an amount up
to 5 wt%, said composition being formable into an
uncured dimensionally stable part or shape;
(b) forming the composition blended in step (a) into
the uncured dimensionally stable part or shape;
(c) heating the uncured dimensionally stable part or
shape of step (b) to crosslink the resin and to form a crosslinked
part or shape, and
(d) machining the crosslinked part or shape from step (c).

The Examiner rejected the claims under 35 U.S.C. § 103(a) as
follows:

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I. Claims 1–4, 15, and 17–22 as unpatentable over Lula2 alone or
Lula in view of Taylor ’5663 and Nakamichi;4
II. Claim 5 as unpatentable over Lula alone or Lula in view of
Taylor ’566 and Nakamichi, as applied against claims 1–4, 15,
and 17–22 above, and further in view of “Surfynol 104 A
Surfactant” (hereinafter “SURFYNOL”);5
III. Claim 7 as unpatentable over Lula alone or Lula in view of
Taylor ’566 and Nakamichi, as applied against claims 1–4, 15,
and 17–22 above, and further in view of “Cymel 303
crosslinking agents” (hereinafter “CYMEL”);6
IV. Claim 16 as unpatentable over Lula alone or Lula in view of
Taylor ’566 and Nakamichi, as applied against claims 1–4, 15,
and 17–22 above, and further in view of Taylor ’203;7

2 United States Patent 4,447,565 issued May 8, 1984.
3 United States Patent 4,013,566 issued March 22, 1977.
4 United States Patent 4,048,101 issued September 13, 1977.
5 The Examiner indicated that this document was retrieved from
URL:http://www.airproducts.com/surfactants/ productsummary.asp
(Examiner’s Answer entered July 23, 2012, hereinafter “Ans.,” 8). As noted
by the Appellants (Br. 22), however, the document was initially identified as
“Surfynol 104PA, Air Products and Chemicals, Inc., Pages 1–3, 1996,”
which was retrieved from
http://www.airproducts.com/Surfynol/complete_offering.asp?reg=AMR&int
ProductType... (Notice of References Cited entered January 4, 2010).
Indeed, the copy of the reference in the electronic record includes the latter
URL address at the bottom of each page.
6 CYMEL® 303 Crosslinking Agents, CRT-792, Cytec Industries Inc. (2000).
7 United States Patent Application Publication 2002/0066203 A1 published
June 6, 2002.
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V. Claim 23 as unpatentable over Lula alone or Lula in view of
Taylor ’566 and Nakamichi, as applied against claims 1–4, 15,
and 17–22 above, and further in view of Durez;8 and
VI. Claims 24–27 as unpatentable over Lula alone or Lula in view
of Taylor ’566 and Nakamichi, as applied against claims 1–4,
15, and 17–22 above, and further in view of Morii.9
(Ans. 5–14; Final Office Action entered October 21, 2011 at 3–7.)

DISCUSSION
I
In arguing against Rejection I, the Appellants rely on the same
arguments for claims 1–4, 15, and 17–22 (Br. 16–20). Therefore, we
confine our discussion to claim 1, which we select as representative pursuant
to 37 C.F.R. § 41.37(c)(1)(iv). Claims 2–4, 15, and 17–22 stand or fall with
claim 1.
With respect to the ground of rejection based on the combined
teachings of Lula, Taylor ’566, and Nakamichi, the Appellants contend that
Lula does not describe the limitations “said composition being formable into
an uncured dimensionally stable part or shape” of step (a) and “forming the
composition blended in step (a) into the uncured dimensionally stable part or
shape,” as recited in claim 1 (Br. 17). Specifically, the Appellants argue that
Lula explicitly discloses heating the resin to its melting point prior to curing

8 Material Data Sheet, Durez Resin No. 29733, Durez Corp. (2003).
9 United States Patent Application Publication 2003/0236345 A1 published
December 25, 2003.
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the resin such that the resin is flowable within the mold and, therefore, does
not disclose a “dimensionally stable part or shape” (id.).
For the reasons well-stated on pages 12–13 of the Answer, we discern
no merit in the Appellants’ argument. Here, the Appellants fail to direct us
to any particular definition in the Specification for the phrase “dimensionally
stable part or shape” that would serve as a basis for distinguishing the
uncured composition of claim 1 over Lula’s melted flowable composition
prior to curing. In this regard, the language in claim 1 fails to positively
exclude melting of the resin prior to curing, as in Lula. As pointed out by
the Examiner (id. at 12), the phrase “dimensionally stable part or shape”
appears to refer generally to a curable composition that is “capable of being
pressed or otherwise molded into shape . . . .” (Spec. 2, 4). Lula describes
exactly that––a method including a step of blending a thermosetting resin
with microspheres and desiccant to form a composition that is capable of
being pressed or molded into shape (col. 1, l. 55–col. 2, l. 10; col. 5, ll. 4–
25). Moreover, the current Specification, like Lula, describes a preferred
embodiment in which the flowability of the blend is improved by adding
molecular sieve 4A for the purpose of providing a “relatively free-flowing
blend” (Spec. 5). Under these circumstances, the Appellants’ argument
based on the disputed limitations is unpersuasive to show reversible error.
The Appellants further contend that the combination of Lula and
Taylor ’566 is improper because Lula teaches away from flexible materials,
such as those disclosed in Taylor ’566 (Br. 18). In support, the Appellants
refer to Lula’s disclosure at column 1, lines 25–25.
We disagree with the Appellants that the cited portion of Lula’s
disclosure teaches away from forming flexible materials. Contrary to the
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Appellants’ position, Lula merely states that certain prior art documents
disclose materials having high flexibility and high tensile strength, but none
of these documents “disclose a low density syntactic foam article nor a
method for molding such an article to size” (Lula col. 1, ll. 25–29). That
disclosure falls short of a teaching away of flexible materials. In any event,
the Examiner relied on Taylor ‘566 as an alternative basis for resolving
obviousness, particularly the desiccant particles amount limitation recited in
claim 1 (Ans. 7). The Examiner also found that Lula teaches that the
desiccant amount is a result-effective variable that would have been
optimized by one of ordinary skill in the art to an amount within the
Appellants’ claimed range (id.). We detect no error in that analysis because
Lula explicitly teaches that the desiccant content is 4.35–60% by weight
(Lula col. 3, ll. 29–30). In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir.
2003).
For these reasons, we uphold Rejection I. Because we have affirmed
the Examiner’s rejection based on Lula, Taylor ’566, and Nakamichi, we
need not address the alternative ground of rejection based on Lula alone. Cf.
Beloit Corp. v. Valmet Oy, 742 F.2d 1421, 1423 (Fed. Cir. 1984) (having
decided a single dispositive issue, the ITC was not required to review other
matters decided by the presiding officer).

II
Claim 5, which depends from claim 1, recites that “the wetting agent
is isopropyl alcohol” (Br. 40). With respect to the rejection of this claim, the
Appellants do not dispute the Examiner’s determination that a person of
ordinary skill in the art would have been prompted to combine the
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SURFYNOL with Lula, Taylor ’566, and Nakamichi (Br. 23–24). Rather,
the Appellants argue that “one of ordinary skill in the art will recognize that
it is the nonionic surfactant [in SURFYNOL® 104PA] that provides the
benefits of wetting and foam control, and not the isopropyl alcohol” (id. at
24).
We are not persuaded by the Appellants’ argument because it is not
necessary for the prior art to explicitly teach the isopropyl alcohol to impart
the same benefits of interest to the Appellants because the motivation for
combining the references need not be the same as that of the Appellants. In
re Kemps, 97 F.3d 1427, 1430 (Fed. Cir. 1996).
For these reasons, we uphold Rejection II.

III–VI
The Appellants rely on the same arguments discussed above, adding
that the other references fail to cure the deficiencies in the Examiner’s
combination of Lula, Taylor ’566, and Nakamichi. Because we found those
arguments unpersuasive, we affirm Rejections III–VI for the same reasons.

SUMMARY
Rejections I–VI are 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)(1).
AFFIRMED

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