Ex Parte Iwa et al

Patent Trial and Appeal Board

Mar 29, 2017

12376341 (P.T.A.B. Mar. 29, 2017)

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.
12/376,341 02/04/2009 Tsuyoshi Iwa 73252RCE 5861
23872 7590 03/29/2017
MCGLEW & TUTTLE, PC
P.O. BOX 9227
SCARBOROUGH STATION
SCARBOROUGH, NY 10510-9227
EXAMINER
DOLLINGER, MICHAEL M
ART UNIT PAPER NUMBER
1766
MAIL DATE DELIVERY MODE
03/29/2017 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 PATENT TRIAL AND APPEAL BOARD
_______________
Ex parte TSUYOSHI IWA, KOUICHI MARAYAMA,
TATSUYA SHIBATA, TAKASHI KANNO,
ATSUSHI SAITO, and YUTAKA WATANABE
_______________
Appeal 2014-003968
Application 12/376,341
Technology Center 1700
_______________
Before KAREN M. HASTINGS, GEORGE C. BEST, and
WESLEY B. DERRICK, Administrative Patent Judges.
BEST, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner finally rejected claims 5–10, 12–17, 19–28, 30–36, and
38 of Application 12/376,341 under 35 U.S.C. § 103(a) as obvious. Final
Act. (March 7, 2013). Appellants1 seek reversal of these rejections pursuant
to 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6.
For the reasons set forth below, we AFFIRM.

1 Mitsui Chemicals Polyurethanes, Inc. and Cemedine Co., Ltd. are
identified as the real parties in interest. Appeal Br. 1.
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Application 12/376,341
2
BACKGROUND
The ’341 Application describes a vinyl monomer-grafted
alkoxysilane-modified oxyalkylene resin, a method for producing this resin,
and a curable composition containing the resin. Spec. ¶ 1.
Claim 5 is representative of the ’341 Application’s claims and is
reproduced below from the Claims Appendix:
5. A production method for a vinyl monomer-grafted
alkoxysilane-modified oxyalkylene resin of which the peak top
molecular weight is 500 to 50,000 and which is in liquid form,
comprising the steps of:
modifying an oxyalkylene based polymer with an
alkoxysilane compound to provide an alkoxysilane-modified
oxyalkylene resin in which an alkoxysilyl group is introduced
to a terminal of the molecular chain; and
graft-reacting the alkoxysilane-modified oxyalkylene
resin with a vinyl monomer containing 50 wt% or more of one
or two or more kinds of (meth)acrylic monomers each
represented by the following formula (1), wherein a peroxy
ketal is used as a radical reaction initiator for graft-reacting the
alkoxysilane-modified oxyalkylene resin with the vinyl
monomer, and the vinyl monomer and the peroxy ketal are
added sequentially to the alkoxysilane-modified oxyalkylene
resin so that a group from said one or two or more kinds of
(meth)acrylic monomers is graft-bonded to an alkylene group of
the repeating unit of said oxyalkylene based polymer:
where R1 represents a hydrogen atom or a methyl group, and X
represents a hydrogen atom, an alkali metal atom, a
hydrocarbon group having 1 to 22 carbon atoms, or a
substituted hydrocarbon group having 1 to 22 carbon atoms and
having a functional group containing at least one kind of an
atom selected from the group consisting of a boron atom, a
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nitrogen atom, an oxygen atom, a fluorine atom, a phosphorus
atom, a silicon atom, a sulfur atom, and a chlorine atom,
wherein said oxyalkylene based polymer comprises a
polyoxyalkylene polyol or a derivative of the polyoxyalkylene
polyol, said polyoxyalkylene polyol comprising at least two
hydroxyl groups in any one of a molecule thereof, wherein a
group from said one or two or more kinds of (meth)acrylic
monomers is graft-bonded to an alkylene group of the repeating
unit of said oxyalkylene based polymer.
Appeal Br. 70–71.
REJECTIONS
On appeal, the Examiner maintains the following rejections:
1. Claims 5–10, 12–17, 19–28, 30–36, and 382 are rejected under
35 U.S.C. § 103(a) as unpatentable over the combination of
Fukatsu3 and Fujita.4 Final Act. 2.
2. Claims 5–10, 12–17, 19–28, 30–36, and 38 are rejected under
35 U.S.C. § 103(a) as unpatentable over the combination of
Fukatsu and Johnson.5 Final Act. 6.

2 Both the Final Action and the Examiner’s Answer state that claim 37 is
subject to the first ground of rejection and fail to mention claim 38. See
Final Act. 2; Answer 4. Because claim 37 has been canceled, we have
omitted it from the summary statement of the rejection. We assume, as
Appellants apparently did, see Appeal Br. 40–41, that claim 38 is subject to
this ground of rejection.
3 US 5,767,197, issued June 16, 1998.
4 US 6,831,130 B2, issued December 14, 2004.
5 US 6,790,519 B1, issued September 14, 2004.
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DISCUSSION
Rejection 1. As explained above, the Examiner has rejected claims
5–10, 12–17, 19–28, and 30–37 as unpatentable over the combination of
Fukatsu and Fujita. Final Act. 2.
Claim 5. Appellants argue that the rejection of independent claim 5
should be reversed because the combination of asserted references does not
describe or suggest a graft polymerization process using a peroxy ketal and a
graft polymer. See Appeal Br. 16–18. We are not persuaded by this
argument.
In rejecting claim 5, the Examiner found that the grafting reaction
would inherently occur under the conditions described in Fukatsu. See Final
Act. 4–5. The Examiner further found that Fujita describes peroxy ketal 1,1-
di(t-butylperoxy)cyclohexane as a functional equivalent of the benzoyl
peroxide used in Fukatsu. Id. at 5–6. Based upon this finding, the Examiner
concludes that it would have been obvious to a person having ordinary skill
in the art to substitute the peroxy ketal for the benzoyl peroxide in Fukatsu’s
reaction. Id. at 6.
Appellants do not challenge either of these findings in their Appeal
Brief. See Appeal Br. 16–18. In their Reply Brief, Appellants argue for the
first time that the Examiner erred by finding that Fujita describes 1,1-di(t-
butylperoxy)cyclohexane as a functional equivalent to benzoyl peroxide for
vinyl polymerization reactions. Reply Br. 1–2. Appellants’ Reply Brief also
argues, for the first time, that the Examiner’s finding that the claimed
grafting reaction inherently occurs in Fukatsu’s process is erroneous and
improperly relies upon Johnson as providing evidence without citing
Johnson in the summary statement of the grounds of rejection. Id. at 2–4.
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Appellant has not shown any good cause explaining why these
arguments were not raised in the Appeal Brief and, therefore, these
arguments have been waived. See 37 C.F.R. § 41.37(c)(1)(iv) (second
sentence); In re Hyatt, 211 F.3d 1367, 1373 (Fed. Cir. 2000) (noting that an
argument not first raised in the brief to the Board is waived on appeal); Ex
parte Nakashima, 93 USPQ2d 1834 (BPAI 2010) (informative) (explaining
that arguments and evidence not timely presented in the principal Brief will
not be considered when filed in a Reply Brief, absent a showing of good
cause explaining why the argument could not have been presented in the
Principal Brief); Ex parte Borden, 93 USPQ2d 1473, 1477 (BPAI 2010)
(informative) (“Properly interpreted, the Rules do not require the Board to
take up a belated argument that has not been addressed by the Examiner,
absent a showing of good cause.”).
We, therefore, affirm the rejection of claim 5 as unpatentable over the
combination of Fukatsu and Fujita.
Claim 6. Claim 6 depends from claim 5 and further requires that the
derivative of the oxyalkylene based polymer comprises a polyoxyalkylene
polyol derivative obtained by causing a polyoxyalkylene polyol and a
diisocyanate compound to react with each other. See Appeal Br. 71.
Appellants argue that the rejection of claim 6 should be reversed
because neither Fukatsu nor Fujita teaches or suggests a derivative of an
oxyalkylene based polymer that comprises a polyoxyalkylene polyol
derivative obtained by reacting a polyoxyalkylene polyol with a diisocyanate
compound. Appeal Br. 18–19.
As the Examiner found, Fukatsu describes reacting a polymer
comprising two or more reactive group selected from the group consisting of
a hydroxyl group, a mercapto group, a mono-substituted amine, and an
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unsubstituted amine with a diisocyanate compound. See Answer 4–5, 11
(citing Fukatsu col. 3, ll. 5–62). Fukatsu further specifies that polymers
containing two or more hydroxyl groups are useful in this process. Fukatsu
col. 4, ll. 9–21.
We, therefore, are not persuaded by Appellants’ argument, and we
affirm the rejection of claim 6 as unpatentable over the combination of
Fukatsu and Fujita.
Claim 7. Claim 7 depends from claim 5 and further requires that the
derivative of the oxyalkylene based polymer comprises a polyoxyalkylene
polyol derivative obtained by causing a polyoxyalkylene polyol to react with
a diisocyanate compound and an alkoxysilane compound having an
isocyanate group and a secondary amino group. See Appeal Br. 71.
Appellants argue that this rejection should be reversed because the
combination of Fukatsu and Fujita neither discloses nor suggests the
particular limitations added by claim 7. Appeal Br. 19–20. We are not
persuaded by this argument.
As the Examiner found, Fukatsu describes reacting a polymer
comprising two or more reactive groups selected from the group consisting
of a hydroxyl group, a mercapto group, a mono-substituted amine, and an
unsubstituted amine with a diisocyanate compound. See Answer 4–5, 11
(citing Fukatsu col. 3, ll. 5–62). Fukatsu further specifies that polymers
containing two or more hydroxyl groups are useful in this process. Fukatsu
col. 4, ll. 9–21. Fukatsu also states that γ-(N-phenyl)-aminopropyl
trimethoxysilane can be used in the processes it describes. Fukatsu col. 7, ll.
31‒32.

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7
Thus, we affirm the rejection of claim 7 as unpatentable over the
combination of Fukatsu and Fujita.
Claim 8. Claim 8 is an independent claim which reads:
8. A production method for a vinyl monomer-grafted
alkoxysilane-modified oxyalkylene resin of which the peak top
molecular weight is 500 to 50,000 and which is in liquid form,
comprising the steps of:
graft-reacting an oxyalkylene based polymer with a vinyl
monomer containing 50 wt% or more of one or two or more
kinds of (meth)acrylic monomers each represented by the
following formula (1), wherein a peroxy ketal is used as a
radical reaction initiator for graft-reacting the oxyalkylene
based polymer with the vinyl monomer, and the vinyl monomer
and the peroxy ketal are added sequentially to the oxyalkylene
based polymer so that a group from said one or two or more
kinds of (meth)acrylic monomers is graft-bonded to an alkylene
group of the repeating unit of said oxyalkylene based polymer;
and
modifying the vinyl monomer-grafted oxyalkylene resin
with an alkoxysilane compound to provide a vinyl monomer-
grafted alkoxysilane-modified oxyalkylene resin in which an
alkoxysilyl group is introduced to a terminal of the molecular
chain, the peak top molecular weight of the resin is 500 to
50,000, and the resin is in liquid form:
where R1 represents a hydrogen atom or a methyl group, and X
represents a hydrogen atom, an alkali metal atom, a
hydrocarbon group having 1 to 22 carbon atoms, or a
substituted hydrocarbon group having 1 to 22 carbon atoms and
having a functional group containing at least one kind of an
atom selected from the group consisting of a boron atom, a
nitrogen atom, an oxygen atom, a fluorine atom, a phosphorus
atom, a silicon atom, a sulfur atom, and a chlorine atom,
wherein a group from said one or two or more kinds of
(meth)acrylic monomers is graft-bonded to an alkylene group of
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the repeating unit of said oxyalkylene based polymer, said
oxyalkylene based polymer comprising a polyoxyalkylene
polyol or a derivative of the polyoxyalkylene polyol.
Appeal Br. 72–73.
Appellants argue that the rejection of claim 8 as unpatentable over the
combination of Fukatsu and Fujita should be reversed because the Examiner
has not established a prima facie case of obviousness. Appeal Br. 20–23.
For the reasons set forth below, we are not persuaded by Appellants’
arguments.
As the Examiner found, Fukatsu describes a process for making a
moisture curable polymer composition comprising the steps of graft-reacting
an oxyalkylene based polymer with the vinyl monomer. See Answer 4–5
(citing Fukatsu col. 3, ll. 24‒43; col. 10, ll. 28‒42). The Examiner further
found that Fujita describes peroxy ketal 1,1-di(t-butylperoxy)cyclohexane as
a functional equivalent of the benzoyl peroxide used in Fukatsu. Id. at 5–6.
Based upon this finding, the Examiner concludes that it would have been
obvious to a person having ordinary skill in the art to substitute Fujita’s
peroxy ketal for the benzoyl peroxide in Fukatsu’s reaction. Id. at 6.
Appellants also argue that the combination of references does not
describe or suggest the claimed sequential addition of the vinyl monomer
and the peroxy ketal. Appeal Br. 21. This argument is not convincing.
Each of these process steps is known in the prior art. Absent unexpected
results—and Appellants have not argued that any exist as a result of the
claimed order of addition—the selection of any order for performing known
process steps is prima facie obvious due to a reasonable expectation of
obtaining the same outcome. See In re Burhans, 154 F.2d 690, 692 (CCPA
1946). Reordering the performance of known steps is merely a “predictable
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Application 12/376,341
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use of prior art elements according to their established functions.” KSR Int’l
Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007).
Furthermore, in arguing for reversal of this rejection, Appellants
attack the references individually, rather than addressing the teachings
suggested by the combination of Fukatsu and Fujita. When a claim is
rejected as obvious over a combination of references, the question is not
what the references teach individually, but whether the differences between
the claimed invention and the prior art would have been obvious over the
combined teachings of the references and what these teachings would have
suggested to a person of ordinary skill in the art. In re Mouttet, 686 F.3d
1322, 1332–33 (Fed. Cir. 2012). In this case, we do not discern reversible
error in the Examiner’s conclusion that the combination of Fukatsu and
Fujita describes or suggests each limitation recited in claim 8.
In view of the foregoing, we affirm the rejection of claim 8 as
unpatentable over the combination of Fukatsu and Fujita.
Claim 9. Claim 9 depends from claim 8 and further requires that the
step of modifying the vinyl monomer-grafted oxyalkylene resin includes
causing a vinyl monomer-grafted oxyalkylene resin and a diisocyanate
compound to react with each other and modifying the reaction product with
the alkoxysilane compound. See Appeal Br. 73.
Appellants argue that the Examiner erred by finding that the prior art
describes or suggests the step of causing a vinyl monomer-grafted
oxyalkylene resin to react with a diisocyanate compound. Appeal Br. 23.
This argument is not persuasive. The Examiner found that a vinyl-
grafting reaction occurs inherently under the conditions used in Fukatsu for
the co-polymerization of an acrylic monomer having one polymerizing the
unsaturated group and an acrylic monomer having at least two
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(meth)acryloyloxy groups in the presence of a polyoxyalkylene resin. Final
Act. 4–5. As discussed above, Appellants do not challenge this finding in
their Appeal Brief. Taking this finding into consideration, it is clear that
Fukatsu describes reacting a vinyl-grafted oxyalkylene resin with a
diisocyanate compound and modifying the reaction product with the
alkoxysilane compound. See Fukatsu col. 3, ll. 25–41.
We, therefore, affirm the rejection of claim 9 as unpatentable over the
combination of Fukatsu and Fujita.
Claim 10. Claim 10 depends from claim 8 and further requires that
the step of modifying the vinyl monomer-grafted oxyalkylene resin includes
causing the resin to react with a diisocyanate compound and an alkoxysilane
compound having an isocyanate group and a secondary amino group and
further modifying the reaction product with the alkoxysilane compound.
Appeal Br. 73.
Appellants argue that the rejection of claim 10 should be reversed
because the Examiner erred by finding that the combination of Fukatsu and
Fujita describe or suggest causing a vinyl monomer-grafted oxyalkylene
resin to react with a diisocyanate compound and with an alkoxysilane
compound having an isocyanate group and a secondary amino group.
Appeal Br. 24.
As we discussed in connection with claim 9, the Examiner correctly
found that Fukatsu describes or suggests the creation of a vinyl-grafted
oxyalkylene resin. This vinyl grafted oxyalkylene resin is then treated with
a solution comprising a diisocyanate compound and an alkoxysilane.
Fukatsu col. 3 ll. 33–42. Fukatsu also states that γ-(N-phenyl)-aminopropyl
trimethoxysilane can be used in the processes it describes. Fukatsu col. 7, ll.
31‒32.
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Thus, we affirm the rejection of claim 10 as unpatentable over the
combination of Fukatsu and Fujita.
Claim 12. Claim 12 depends from claim 5 and further requires that
the polyoxyalkylene polyol has a hydroxyl value of 25 mg KOH/g or less.
Appeal Br. 74.
Appellants argue that the combination of Fukatsu and Fujita do not
describe or suggest the use of a polyoxyalkylene polyol that has a hydroxyl
value of 25 mg KOH/g or less. Id. at 24–25.
The Examiner, however, calculated that the polypropylene glycol used
in Fukatsu’s Example 1 had a hydroxyl value of 11.2 mg KOH/g. Answer
5‒6, 12. Appellants have not demonstrated error in the Examiner’s
calculations.
We, therefore, affirm the rejection of claim 12 as unpatentable over
the combination of Fukatsu and Fujita.
Claim 13. Claim 13 depends from claim 5 and further requires that
the polyoxyalkylene polyol have two hydroxyl groups in any one of its
molecules. Appeal Br. 74.
Appellants argue that this rejection should be reversed because the
asserted prior art does not describe or suggest the use of a polyoxyalkylene
polyol having two hydroxyl groups in any one of its molecules. Id. at 25–
26.
This argument is not convincing because, as the Examiner found,
Fukatsu’s Example 1 describes the use of polypropylene glycol as the
polyoxyalkylene polyol. Thus, we affirm the rejection of claim 13 as
unpatentable over the combination of Fukatsu and Fujita.
Claim 14. Claim 14 depends from claim 5 and further requires that
the alkoxysilane compound comprises one of an alkoxysilane compound
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12
having an isocyanate group and an alkoxysilane compound having a
secondary amino group. Appeal Br. 74.
Appellants argue that the combination of Fukatsu and Fujita does not
describe or suggest vinyl-graft reacting an alkoxysilane modified
oxyalkylene resin with a vinyl monomer. Id. at 26. Appellants also argue
that the asserted prior art does not describe or suggest reacting the vinyl-
grafted resin with an alkoxysilane comprising a secondary amino group. Id.
These arguments are not persuasive. As discussed above, the
Examiner found that the vinyl grafting reaction inherently occurs under the
copolymerization conditions used to perform Fukatsu’s process. Fukatsu
also states that γ-(N-phenyl)-aminopropyl trimethoxysilane—an
alkoxysilane having a secondary amino group—can be used in the processes
it describes. Fukatsu col. 7, ll. 31‒32.
We, therefore, affirm the rejection of claim 14 as unpatentable over
the combination of Fukatsu and Fujita.
Claim 15. Claim 15 depends from claim 14 and further requires that
the alkoxysilane compound having an isocyanate group comprises
isocyanate triethoxysilane. Appeal Br. 74.
Appellants argue that neither Fukatsu nor Fuita describe or suggest
using isocyanate triethoxysilane to produce a curable composition. Appeal
Br. 26‒27.
This argument is not convincing because, as the Examiner found,
Fukatsu describes the use of isocyanato propyltriethoxysilane. Answer 6
(citing Fukatsu col. 7, line 47). We, therefore, affirm the rejection of claim
15.
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Claim 16. Claim 16 depends from claim 14 and further requires that
the alkoxysilane compound having a secondary amino group have a
specified structure. Appeal Br. 74–75.
Appellants argue that this rejection should be reversed because neither
Fukatsu nor Fujita describe the use of a compound having the structure
specified in claim 16. Appeal Br. 27.
This argument is not persuasive because Fukatsu states that γ-(N-
phenyl)-aminopropyl trimethoxysilane—an alkoxysilane having a secondary
amino group—can be used in the processes it describes. Fukatsu col. 7, ll.
31‒32.
We, therefore, affirm the rejection of claim 16 as unpatentable over
the combination of Fukatsu and Fujita.
Claim 17. Claim 17 depends from claim 16 and specifies that the
alkoxysilane compound having a secondary amino group comprises N-
phenylaminopropyltrimethoxysilane. Appeal Br. 75.
Appellants argue that this rejection should be reversed because neither
Fukatsu nor Fujita describe or suggest the use of the claimed compounds.
Appeal Br. 28.
This argument is not persuasive because Fukatsu states that γ-(N-
phenyl)-aminopropyl trimethoxysilane—an alkoxysilane having a secondary
amino group—can be used in the processes it describes. Fukatsu col. 7, ll.
31‒32.
We, therefore, affirm the rejection of claim 17 as unpatentable over
the combination of Fukatsu and Fujita.
Claim 19. Claim 19 depends from claim 5 and further specifies that
the peroxy ketal comprises 1,1-di(t-butylperoxy)cyclohexane. Appeal Br.
75.
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Appellants argue that, even though Fujiita describes the use of a
peroxy ketal as an initiator, the rejection of claim 19 should be reversed
because neither Fukatsu nor Fujita describe or suggest the use of the peroxy
ketal in a vinyl-grafting reaction. Appeal Br. 28‒29.
As discussed above, the Examiner found that a vinyl-grafting reaction
inherently occurs under the reaction conditions described in Fukatsu. See
Final Act. 4‒5. Appellants have not demonstrated error in this finding.
Accordingly, we affirm the rejection of claim 19 as unpatentable over
the combination of Fukatsu and Fujita.
Claim 20. Claim 20 depends from claim 5 and further specifies the
structure of the (meth)acrylic monomer. Appeal Br. 75–76.
Appellants argue that this rejection should be reversed because neither
Fukatsu nor Fujita describe or suggest the use of a (meth)acrylic silane
monomer having the claimed structure. Appeal Br. 29.
This argument is not persuasive because, as the Examiner found,
Fukatsu describes the use of γ-acryloyloxypropyltrimethoxy silane as a
monomer. Answer 6 (citing Fukatsu col. 5, line 6).
We, therefore, affirm the rejection of claim 20 as unpatentable over
the combination of Fulatsu and Fujita.
Claim 21. Claim 21 is an independent claim which reads:
21. A vinyl monomer-grafted alkoxysilane-modified
oxyalkylene resin in which an alkoxysilyl group is introduced
to a terminal of the molecular chain and of which the peak top
molecular weight is 500 to 50,000 and in liquid form, wherein
the resin is produced by the production method according to
claim 5, comprising the steps of:
modifying an oxyalkylene based polymer with an
alkoxysilane compound to provide an alkoxysilane-modified
oxyalkylene resin; and
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graft-reacting the alkoxysilane-modified oxyalkylene
with the vinyl monomer containing 50 wt% or more of one or
two or more kinds of (meth)acrylic monomers each represented
by the following formula (1), wherein a peroxy ketal is used as
a radical reaction initiator for graft-reacting the alkoxysilane-
modified oxyalkylene resin with the vinyl monomer, and the
vinyl monomer and the peroxy ketal are added sequentially to
the alkoxysilane-modified oxyalkylene resin so that a group
from said one or two or more kinds of (meth)acrylic monomers
is graft-bonded to an alkylene group of the repeating unit of
said oxyalkylene based polymer:
where R1 represents a hydrogen atom or a methyl group, and X
represents a hydrogen atom, an alkali metal atom, a
hydrocarbon group having 1 to 22 carbon atoms, or a
substituted hydrocarbon group having 1 to 22 carbon atoms and
having a functional group containing at least one kind of an
atom selected from the group consisting of a boron atom, a
nitrogen atom, an oxygen atom, a fluorine atom, a phosphorus
atom, a silicon atom, a sulfur atom, and a chlorine atom.
Appeal Br. 76–77.
Appellants argue that the rejection of claim 21 should be reversed
because neither Fukatsu nor Fujita describes or suggests the creation of a
graft copolymer. Appeal Br. 29–31.
We are not persuaded by this argument. In rejecting claim 21, the
Examiner found that the grafting reaction would inherently occur under the
conditions described in Fukatsu. See Final Act. 4–5; Answer 6–7. As part
of this finding, the Examiner cites Johnson as evidence that the claimed
grafting reaction would occur under the conditions described in Fukatsu.
See, e.g., Answer 6 (citing Johnson col. 2, ll. 14–16).
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Appellants do not challenge this finding in their Appeal Brief. See
Appeal Br. 29–31. In their Reply Brief, Appellants argue for the first time
that Examiner’s finding that the grafting reaction inherently occurs under the
conditions described in Fukatsu is erroneous and that the Examiner’s
reliance upon Johnson as providing evidence without citing Johnson in the
summary statement of the rejection is improper. Reply Br. 2–4.
Appellants have not shown any good cause explaining why these
arguments were not raised in the Appeal Brief and, therefore, these
arguments have been waived. See 37 C.F.R. § 41.37(c)(1)(iv); Hyatt, 211
F.3d at 1373; Nakashima, 93 USPQ2d 1834 ; Borden, 93 USPQ2d at 1477.
Upon the Examiner’s finding—which was unchallenged in
Appellants’ Appeal Brief—that the grafting reaction would inherently occur
under the conditions described in Fukatsu, we affirm the rejection of claim
21 as unpatentable over the combination of Fukatsu and Fujita.
Claim 22. Claim 22 depends from claim 21 and is directed to a
curable composition comprising the resin produced according to the method
of claim 21 and a curing catalyst. Appeal Br. 77.
Appellants argue that the rejection of claim 22 should be reversed for
the same reasons they have proffered with respect to the rejection of claim
21. See id. at 31–32. As discussed above, we have determined that the
Examiner did not commit reversible error in rejecting claim 21 as
unpatentable over the combination of Fukatsu and Fujita. We, therefore,
also affirm the rejection of claim 22 as unpatentable over this combination
of references.
Claim 23. Claim 23 depends from claim 21 and is directed to a
curable composition comprising two or more resins produced according to
the method of claim 21 and a curing catalyst. Appeal Br. 77.
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Appellants argue that the rejection of claim 23 should be reversed for
the same reasons they have advanced for reversal of the rejection of claim
21. Id. at 32. As discussed above, we have determined that the Examiner
did not commit reversible error in rejecting claim 21 as unpatentable over
the combination of Fukatsu and Fujita. Thus, we also affirm the rejection of
claim 23 as unpatentable over these references.
Claim 24. Claim 24 depends from claim 23 and further specifies that
the two or more resins include an alkoxysilane-modified oxyalkylene resin
and an alkoxysilane-modified oxyalkylene resin comprising a
polyoxyalkylene polyol. Appeal Br. 78.
Appellants argue that the rejection of claim 24 should be reversed
because neither Fukatsu nor Fujita describe or suggest use of one or more
kinds of resins including an alkoxysilane-modified oxyalkylene resin and an
alkoxysilane-modified oxyalkylene resin comprising a polyoxyalkylene
polyol as claimed in claim 24. Id. at 32–33.
This argument is not persuasive. Fukatsu describes a wide range of
resins that can be used to produce the curable compositions it describes. At
the time of the invention, a person of ordinary skill in the art would have
known that mixtures of these starting materials could be used in the
production process to tailor the properties of the resulting composition.
Indeed, we note that Fujita specifically states that mixtures of various polyol
starting materials may be used in the reaction it describes. See, e.g., Fujita
col. 6, ll. 64 – 67. We, therefore, conclude that the differences between the
claimed invention and the prior art combination would have been obvious to
a person having ordinary skill in the art at the time of the invention.
Claim 25. Claim 25 ultimately depends from claim 21 and further
specifies that the curable composition comprises an adhesive, a potting agent
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for electronic or optical part, a sealer for electronic or optical part, a sealing
material, or a paint. Appeal Br. 78.
Appellants argue that the rejection of claim 25 should be reversed for
the same reasons they advanced in arguing for reversal of the rejection of
claim 21. Id. at 33–34. As discussed above, we have determined that the
Examiner did not commit reversible error in rejecting claim 21 as
unpatentable over the combination of Fukatsu and Fujita. Thus, we also
affirm the rejection of claim 25 as unpatentable over these references.
Claim 26. Claim 26 depends from claim 8 and further specifies that
the polyoxyalkylene polyol has a hydroxyl value of 25 mg KOH/g or less.
Appeal Br. 78.
Appellants argue that the rejected claim 26 should be reversed
because the combination of Fukatsu and Fujita neither describes nor
suggests a polyoxyalkylene polyol having a hydroxyl value of 25 mg KOH/g
or less. Id. at 34.
We are not persuaded by this argument. The Examiner has calculated
that the polypropylene glycol used in Fukatsu’s Example 1 has a hydroxyl
value of 11.2 mg KOH/g. Answer 6, 12. Appellants have not demonstrated
error in the Examiner’s calculations. We, therefore, affirm the rejection of
claim 26 as unpatentable over the combination of Fukatsu and Fujita.
Claim 27. Claim 27 depends from claim 8 and further specifies that
the polyoxyalkylene polyol has two hydroxyl groups in any one of its
molecules. Appeal Br. 78.
Appellants argue that the rejection of claim 27 should be reversed
because neither Fukatsu nor Fujita describes or suggests a polyoxyalkylene
polyol that has two hydroxyl groups in any one of its molecules. Id. at 34–
35.
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Application 12/376,341
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This argument is not persuasive because, as the Examiner found,
Fukatsu’s Example 1 describes the use of polypropylene glycol as the
polyoxyalkylene polyol. Thus, we affirm the rejection of claim 27 as
unpatentable over the combination of Fukatsu and Fujita.
Claim 28. Claim 28 depends from claim 8 and further specifies that
the alkoxysilane compound comprises one of an alkoxysilane compound
having an isocyanate group and an alkoxysilane compound having a
secondary amino group. Appeal Br. 78.
Appellants argue that the combination of Fukatsu and Fujita does not
describe or suggest vinyl-graft reacting an alkoxysilane modified
oxyalkylene resin with a vinyl monomer. Id. at 35 – 36. Appellants also
argue that the asserted prior art does not describe or suggest reacting the
vinyl-grafted resin with an alkoxysilane comprising a secondary amino
group. Id.
These arguments are not persuasive. As discussed above, the
Examiner found that the vinyl grafting reaction inherently occurs under the
copolymerization conditions used to perform Fukatsu’s process. Fukatsu
also states that γ-(N-phenyl)-aminopropyl trimethoxysilane—an
alkoxysilane having a secondary amino group—can be used in the processes
it describes. Fukatsu col. 7, ll. 31‒32.
We, therefore, affirm the rejection of claim 28 as unpatentable over
the combination of Fukatsu and Fujita.
Claim 30. Claim 30 depends from claim 8 and further specifies the
structure of the (meth)acrylic monomer. Appeal Br. 79.
Appellants argue that this rejection should be reversed because neither
Fukatsu nor Fujita describe or suggest the use of a (meth)acrylic silane
monomer having the claimed structure. Id. at 36.
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This argument is not persuasive because, as the Examiner found,
Fukatsu describes the use of γ-acryloyloxypropyltrimethoxy silane as a
monomer. Answer 6 (citing Fukatsu col. 5, line 6).
We, therefore, affirm the rejection of claim 30 as unpatentable over
the combination of Fulatsu and Fujita.
Claim 31. Claim 31 is directed to a resin having specific properties
and produced according to the method of claim 8. Appeal Br. 79–80.
Appellants argue that the rejection of claim 31 should be reversed
because neither Fukatsu nor Fujita describes or suggests the creation of a
graft copolymer. Appeal Br. 36 – 37.
We are not persuaded by this argument. In rejecting claim 31, the
Examiner found that the grafting reaction would inherently occur under the
conditions described in Fukatsu. See Final Act. 4–5; Answer 6–7. As part
of this finding, the Examiner cites Johnson as evidence that the claimed
grafting reaction would occur under the conditions described Fukatsu. See,
e.g., Answer 6 (citing Johnson col. 2, ll. 14–16).
Appellants do not challenge this finding in their Appeal Brief. See
Appeal Br. 36 – 37. In their Reply Brief, Appellants argue for the first time
that Examiner’s finding that the grafting reaction inherently occurs under the
conditions described in Fukatsu is erroneous and that the Examiner’s
reliance upon Johnson as providing evidence without citing Johnson in the
summary statement of the rejection is improper. Reply Br. 2–4.
Appellant has not shown any good cause explaining why these
arguments were not raised in the Appeal Brief and, therefore, these
arguments have been waived. See 37 C.F.R. § 41.37(c)(1)(iv); Hyatt, 211
F.3d at 1373; Nakashima, 93 USPQ2d 1834 ; Borden, 93 USPQ2d at 1477.
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Upon the Examiner’s finding—which was unchallenged in
Appellants’ Appeal Brief—that the grafting reaction would inherently occur
under the conditions described in Fukatsu, we affirm the rejection of claim
21 as unpatentable over the combination of Fukatsu and Fujita.
Claim 32. Claim 32 depends from claim 31 and is directed to a
curable composition comprising the resin according to claim 31 and a curing
catalyst. Appeal Br. 80.
Appellants argue that the rejection of claim 32 should be reversed for
the same reasons they have advanced in arguing for reversal of the rejection
of claim 31. Id. at 37–38. For the reasons set forth above, we have affirmed
the rejection of claim 31 as unpatentable over the combination of Fukatsu
and Fujita. We, therefore, also affirm the rejection of claim 32 as
unpatentable over this combination of references.
Claim 33. Claim 33 is directed to a curable composition comprising
two or more resins produced according to the method claim 31 and a curing
catalyst. Appeal Br. 81.
Appellants argue that the rejection of claim 33 should be reversed for
the same reasons they have advanced in arguing for reversal of the rejection
of claim 31. Id. at 38. For the reasons set forth above, we have affirmed the
rejection of claim 31 as unpatentable over the combination of Fukatsu and
Fujita. Thus, we also affirm the rejection of claim 33 as unpatentable over
this combination of prior art references.
Claim 34. Claim 34 depends from claim 33 further specifies that the
two or more kinds of resin include and an alkoxysilane-modified
oxyalkylene resin and the alkoxysilane-modified oxyalkylene resin
comprising a polyoxyalkylene polyol. Appeal Br. 81.
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Appellants argue that the rejection of claim 34 should be reversed
because neither Fukatsu nor Fujita teach or suggest two or more kinds of
resins that include an alkoxysilane-modified oxyalkylene resin and an
alkoxysilane-modified oxyalkylene resin comprising a polyoxyalkylene
polyol as claimed. Id. at 38 – 39.
This argument is not persuasive. Fukatsu describes a wide range of
resins that can be used to produce the curable compositions it describes. At
the time of the invention, a person of ordinary skill in the art would have
known that mixtures of these starting materials could be used in the
production process to tailor the properties of the resulting composition.
Indeed, we note that Fujita specifically states that mixtures of various polyol
starting materials may be used in the reaction it describes. See, e.g., Fujita
col. 6, ll. 64 – 67. We, therefore, conclude that the differences between the
claimed invention and the prior art combination would have been obvious to
a person having ordinary skill in the art at the time of the invention.
Claim 35. Claim 35 ultimately depends from claim 21 and further
specifies that the curable composition comprises an adhesive, a potting agent
for electronic or optical part, a sealer for electronic or optical part, a sealing
material, or a paint. Appeal Br. 81.
Appellants argue that the rejection of claim 35 should be reversed for
the same reasons they have advanced with respect to the rejection of claim
21. Id. at 39–40. For the reasons set forth above, we have already affirmed
the rejection of claim 21 as unpatentable over the combination of Fukatsu
and Fujita. We, therefore, also affirm the rejection of claim 35 as
unpatentable over the combination of prior art references.
Claim 36. Claim 36 ultimately depends from claim 31 and further
specifies that the curable composition comprises an adhesive, a putting agent
Appeal 2014-003968
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for electronic or optical part, a sealer for electronic or optical part, a ceiling
material, or a paint. Appeal Br. 81.
Appellants argue that the rejection of claim 36 as unpatentable over
the combination of Fukatsu and Fujita should be reversed for the same
reasons they advanced in arguing for reversal of the rejection of claim 31.
Id. at 40. As discussed above, we have already affirmed the rejection of
claim 31. Thus, we also affirm the rejection of claim 36 as unpatentable
over this combination of prior art references.
Claim 38. Claim 38 ultimately depends from claim 31 and further
specifies that the curable composition comprises an adhesive, a putting agent
for electronic or optical part, a sealer for electronic or optical part, a ceiling
material, or a paint. Appeal Br. 81–82.
Appellants argue that the rejection of claim 38 should be reversed for
the same reasons they have advanced in arguing for reversal of the rejection
of claim 31. Id. at 40–41. For the reasons set forth above, we have already
affirmed the rejection of claim 31. We, therefore, also affirm the rejection
of claim 38 as unpatentable over the combination of Fukatsu and Fujita.
Rejection 2. The Examiner rejected claims 5–10, 12–17, 19–28, 30–
36, and 38 as unpatentable over the combination of Fukatsu and Johnson.
Final Act. 6–8.
As discussed above, we have already affirmed the Examiner’s
rejection of these claims as unpatentable over the combination of Fukatsu
and Fujita. We, therefore, decline to reach and express no opinion regarding
the question of whether the Examiner properly rejected these claims as
unpatentable over the combination of Fukatsu and Johnson.
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CONCLUSION
For the reasons set forth above, we affirm the rejection of claims 5–
10, 12–17, 19–28, 30–36, and 38 as unpatentable over the combination of
Fukatsu and Fujita. We do not reach and, therefore, express no opinion
upon the Examiner’s rejection of these claims as unpatentable over the
combination of Fukatsu and Johnson.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED