Ex Parte Jin et al

Patent Trial and Appeal Board

Jul 28, 2016

13814807 (P.T.A.B. Jul. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/814,807 02/07/2013 XinJin
109 7590 08/01/2016
The Dow Chemical Company
P.O. BOX 1967
2040 Dow Center
Midland, MI 48641
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.
69255-US-PCT 9909
EXAMINER
RODD, CHRISTOPHER M
ART UNIT PAPER NUMBER
1766
NOTIFICATION DATE DELIVERY MODE
08/01/2016 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):
FFUIMPC@dow.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte XIN JIN, RAYE. DRUMRIGHT,
BERNHARD KAINZ, JERRY E. WHITE,
and ROBERT E. HEFNER, JR.
Appeal2015-003380
Application 13/814, 807
Technology Center 1700
Before JEFFREY T. SMITH, KAREN M. HASTINGS,
and MICHAEL P. COLAIANNI, Administrative Patent Judges.
SMITH, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from the Examiner's
decision to finally reject claims 1 and 9--13. We have jurisdiction under 35
U.S.C. § 6(b ).
The claimed invention is directed to a poly epoxy ester resin
composition. App. Br. 3--4. Claim 1 illustrates the subject matter on appeal
and is reproduced below:
Appeal2015-003380
Application I3/8I4,807
1. A poly epoxy ester resin composition comprising
the following chemical structure:
where n is a number from 2 to about 3000; each m
independently has a value of 0 or I; each R0 is independently -
Hor -CH3; each R1 is independently-Hor a C1 to C6 alkylene
radical (saturated divalent aliphatic hydrocarbon radical), Ar is
a divalent aryl group or heteroarylene group; and Xis a
cycloaliphatic substructure wherein the section of the structure
denoted by
is a moiety selected from the
group consisting of a cyclohexanedialkanol, a
cyclohexenedialkanol, a cyclohexanolmonoalkanol,
acyclohexenolmonoalkanol, a decahydronaphthalenedialkanol,
an octahydronaphthalenedialkanol, a I ,2,3 ,4-
tetrahydronaphthalenedialkanol, a bicyclohexanedialkanol, a
bicyclohexanemonoalkanol, norbomanedimethanol,
bicyclooctanedimethanol, dicyclopentadienediol, and mixtures
thereof or is a blend of a bridged cyclohexanol and one of the
above-listed moieties or is a blend of an alkylene group and one
of the above-listed moieties wherein the advanced poly epoxy
ester resin polymeric composition comprises a reaction product
of (a) at least one cycloaliphatic diglycidyl ether compound
comprising a diglycidyl ether of cis- I, 3-
cyclohexanedimethanol, a diglycidyl ether of trans- I, 3-
cyclohexanedimethanol, a diglycidyl ether of cis- I, 4-
cycloexanedimethanol, a diglycidyl ether of trans- I, 4-
cyclohexanedimethanol, and/or a diglycidyl ether of I, I-
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Appeal2015-003380
Application 13/814,807
cyclohexanedimethanol and (b) at least one aromatic
dicarboxylic acid compound.
Appellants (App. Br. 4) request review of the following rejections
from the Examiner's Final Office Action:
I. Claims 1and10-13 rejected under 35 U.S.C. § 102(b) as
anticipated by Hale (US 3,395,128, issued July 30, 1968).
II. Claims 1and10-13 rejected under 35 U.S.C. § 103(a) as
unpatentable over Hale and Argyropoulos (Argyropoulos et al.,
"UNOXOL(tm) Diol: A New Liquid Cycloaliphatic Diol for Coating
Applications," Paint & Coatings Industry, pages 1-5 June 2006).
III. Claim 9 rejected under 35 U.S.C. § 103(a) as unpatentable over
Hale and Kordomenos (US 4,554,332, issued November 19, 1985).
In addition, the Examiner maintains the following rejection (Ans. 10-
13; Final Act. 11-13): 1
IV. Claims 1 and 9-13 provisionally rejected on the ground of
nonstatutory double patenting as unpatentable over claims 1 and 3-14 of
copending Application No. 13/816772.
OPINION2
We AFFIRM
1 The Examiner rejected claims 1-13 under this ground. We modified the
rejection statement to reflect the cancellation of claims 2-8. App. Br. 2.
2 For Rejections 1 and II, Appellants do not argue any claim separate from
the other. See Appeal Brief, generally. Accordingly, we select independent
claim 1 as representative of the subject matter before us on appeal. Claims
10-13 will stand or fall with claim 1.
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Appeal2015-003380
Application I3/8I4,807
Rejection I (Claim 1)
After review of the respective positions provided by Appellants and
the Examiner, we AFFIRM the Examiner's prior art rejection of
representative claim I under 35 U.S.C. § I02(b) as anticipated by Hale for
the reasons presented by the Examiner and add the following for emphasis.
Independent claim I is directed to a poly epoxy ester resin
composition comprising a reaction product of (a) at least one cycloaliphatic
diglycidyl ether compound comprising a diglycidyl ether of cis- I, 3-
cyclohexanedimethanol, a diglycidyl ether of trans- I, 3-
cyclohexanedimethanol, a diglycidyl ether of cis- I, 4-cycloexanedimethanol,
a diglycidyl ether of trans- I, 4-cyclohexanedimethanol, and/ or a diglycidyl
ether of I, I -cyclohexanedimethanol and (b) at least one aromatic
dicarboxylic acid compound.
The Examiner found Hale describes a poly epoxy ester resin
composition comprising a reaction product of a diglycidyl ether of cis- I, 4-
cycloexanedimethanol and (b) terephthalic acid (aromatic dicarboxylic acid
compound) that anticipates the subject matter of independent claim I. Final
Act. 2-3; Hale col. 7, 1. 66-col. 8, 1. 30; col. 8, 11. 70-73 (Example 6).
Appellants argue Hale does not describe a poly epoxy ester resin
polymeric composition which is a reaction product of (a) at least one of the
claimed cycloaliphatic diglycidyl ether compound and (b) at least one
aromatic dicarboxylic acid compound. App. Br. 5.
We are unpersuaded by these arguments and agree with the
Examiner's finding of anticipation for the reasons presented by the
Examiner. Ans. 3--4. The Examiner found the composition described in
Hale's Example 6 comprises a reaction product of the claimed cycloaliphatic
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Appeal2015-003380
Application 13/814,807
diglycidyl ether and aromatic dicarboxylic acid compounds. Final Act. 2-3;
Hale col. 7, 1. 66-col. 8, 1. 30; col. 8, 11. 70-73 (Example 6). Appellants'
argument do not point to any specific error in the Examiner's finding. Thus,
Appellants have not adequately established a patentable distinction between
the claimed poly epoxy ester resin and the resin of Hale.
Accordingly, we affirm the Examiner's prior art rejection under 35
U.S.C. § 102(b) for the reasons presented by the Examiner and given above.
Rejection II (claim 1) and III (claim 9)
The Examiner additionally rejected representative claim 1
under 35 U.S.C. § 103(a) over Hale and Argyropoulos (Rejection II) to
address specific embodiments encompassed by the claim related to the use
of 1,3-cyclohexanedimethanol isomers and mixtures of 1,3-
cyclohexanedimethanol mixtures or mixtures of the 1,3 and 1,4 cis/trans
cyclohexanedimethanol in forming the claimed reaction product. Final Act.
5-7. In addition, the Examiner separately rejected claim 9 under
35 U.S.C. § 103(a) over Hale and Kordomenos (Rejection III) to address the
use of a naphthalene dicarboxylic acid in forming the claimed reaction
product. Id. at 10.
Appellants' principal argument for these rejections is that the
respective secondary references do not disclose a poly epoxy ester resin
comprising a reaction product of (a) at least one of the claimed
cycloaliphatic diglycidyl ether compound and (b) at least one aromatic
dicarboxylic acid compound. App. Br. 6-7.
We are again unpersuaded by this argument for the reasons presented
by the Examiner. Ans. 7-12. As noted by the Examiner, Hale is relied upon
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Application 13/814,807
for the teaching of a composition comprising a reaction product from the
claimed compounds. Final Act. 5-7. Thus, Appellants' argument does not
point to error in the Examiner's determination of obviousness in Rejections
II and III because the argument does not address the rejection based on the
combined cited art presented by the Examiner.
Accordingly, we sustain the Examiner's prior art rejections under 35
U.S.C. § 103(a) (Rejections II and III) for the reasons presented by the
Examiner and given above.
Re} ection IV
Appellants have not contested the provisional rejection of claims 1
and 9-13 on the ground of nonstatutory double patenting as unpatentable
over claims 1 and 3-14 of copending Application No. 13/816772. See
Appeal Brief, generally. Thus, Appellants have not identified reversible
error in the Examiner's provisional obviousness-type double patenting
rejection.
Accordingly, we AFFIRM this rejection for the reasons presented by
the Examiner. Ans. 10-13; Final Act. 11-13.
ORDER
The Examiner's prior art rejection of claims 1 and 10-13 under
35 U.S.C. § 102(b) is affirmed.
The Examiner's prior art rejections of claims 1 and 9-13 under
35 U.S.C. § 103(a) are affirmed.
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Appeal2015-003380
Application 13/814,807
The Examiner's provisional rejection of claims 1 and 9--10 on the
ground of nonstatutory double patenting is affirmed.
TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l ).
AFFIRMED
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