Ex Parte Kolowrot et al

Patent Trial and Appeal Board

Aug 13, 2018

13121875 (P.T.A.B. Aug. 13, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/121,875 03/30/2011
32692 7590 08/15/2018
3M INNOVATIVE PROPERTIES COMPANY
PO BOX 33427
ST. PAUL, MN 55133-3427
UNITED ST A TES OF AMERICA
FIRST NAMED INVENTOR
Dirk Kolowrot
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.
64342US006 2643
EXAMINER
ZHAO, XIAO SI
ART UNIT PAPER NUMBER
1712
NOTIFICATION DATE DELIVERY MODE
08/15/2018 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):
LegalUSDocketing@mmm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DIRK KOLOWROT and MATTHIAS POPP
Appeal2017-010794
Application 13/121,875
Technology Center 1700
Before JEFFREY B. ROBERTSON, JENNIFER R. GUPTA, and
SHELDON M. MCGEE, Administrative Patent Judges.
ROBERTSON, Administrative Patent Judge.
DECISION ON APPEAL 1
1 In this Decision, we refer to the Specification filed March 30, 2011, the
Non-Final Office Action dated July 29, 2016 ("Office Act."), the Appeal
Brief filed March 30, 2017 ("Appeal Br."), the Examiner's Answer dated
August 16, 2017 ("Ans."), and the Reply Brief filed August 17, 201 7
("Reply Br.").
Appeal2017-010794
Application 13/121,875
STATEMENT OF CASE
Appellants2 appeal under 35 U.S.C. § 134 from the Examiner's
rejections of pending claims 1 and 6-19. We have jurisdiction under
35 U.S.C. § 6(b ).
We AFFIRM.
THE INVENTION
Appellants state that the invention relates to a two-part epoxy-based
structural adhesive that may be applied to both clean substrates as well as
substrates contaminated with hydrocarbon-containing materials.
(Spec. ,r 12.)
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A two-part adhesive composition having a first part and a second part,
said composition comprising:
at least one aromatic epoxy resin in the first part;
at least one amine curing agent in the second part; and
at least one ester in at least one of the first and/ or second
part, wherein the ester corresponds to the general formula
R2-CO-OR1
wherein
R 1 is an organic moiety comprising at least one of
(i) at least one epoxy group or
(ii) at least one acryl group; and
R2 contains less than 20 carbon atoms and is of the general
formula
-C(Ri)(Rii)(Riii),
wherein
Ri represents methyl or ethyl,
2 According to the Appellants, the Real Party in Interest is 3M Company
(formerly known as Minnesota Mining and Manufacturing Company) of
St. Paul, Minnesota and its affiliate 3M Innovative Properties Company of
St. Paul, Minnesota. (Appeal Br. 2.)
2
Appeal2017-010794
Application 13/121,875
Rii represents an alkyl group having from 1 to 12 carbon
atoms, and
Riii an alkyl group having from 1 to 12 carbon atoms.
(Appeal Brief, Claims Appendix 10.)
THE REJECTIONS
The Examiner rejected the claims under pre-AIA 35 U.S.C. § I03(a)
as follows:
Claims 1, 6, and 10-19 as obvious over Baldwin et al. (WO 96/09352,
published March 28, 1996) (hereinafter "Baldwin") in view of Bums
(US 2004/0063870 Al, published April 1, 2004);
Claim 7 as obvious over Baldwin in view of Bums and further in view
of Saito (US 2006/017 8454 A 1, published August 10, 2006) (hereinafter
"Saito"); and
Claims 8 and 9 as obvious over Baldwin in view of Bums further in
view of Yang et al. (US 2005/0227031 Al, published October 13, 2005)
(hereinafter "Yang").
( Office Act. 3-7.)
Claims 1, 6, and 10---19 as obvious over Baldwin in view of
Burns
ISSUE
Appellants do not present separate arguments for the claims subject to
this rejection. (See Appeal Br. 5-8.) Accordingly, we select claim 1 as
representative, and decide the appeal as to this rejection on claim 1 alone.
(37 C.F.R. §4I.37(c)(l)(iv).)
3
Appeal2017-010794
Application 13/121,875
The Examiner's findings and conclusions regarding whether the
combination of Baldwin and Bums discloses an aromatic epoxy resin, an
amine curing agent, and an ester recited in claim 1 are not in dispute. (Non-
Final Act. 3--4; Appeal Br. 5-8.) Rather, the dispute in this appeal centers
around the Examiner's finding that the glycidyl ester of neodecanoic acid
disclosed in Bums as a reactive diluent (Bums ,r 65) meets the formula for
the ester recited in claim 1. More specifically, the Examiner found that
neodecanoic acid corresponds to 2,2-dimethyloctanoic acid, or a mixture of
carboxylic acids inclusive of 2,2-dimethyloctanoic acid. (Non-Final Act. 3-
4; Ans. 4--7.)
Appellants contend that neodecanoic acid is properly understood as
7, 7-dimethyloctanoic acid, which is not tertiary at the acid function and
therefore cannot be the tertiary ester recited in the claims. (Appeal Br. 6.)
Appellants argue that because neodecanoic acid is used in conflicting ways
in the chemical arts, the use of such a term cannot put the skilled practitioner
in possession of the tertiary ester recited in the present claims. (Appeal
Br. 6; Reply Br. 2-3.)
Therefore, the dispositive issue on appeal is:
Does a preponderance of the evidence support the Examiner's
position that neodecanoic acid in Bums is 2,2-dimethyloctanoic acid, or a
mixture of carboxylic acids inclusive of 2,2-dimethyloctanoic acid?
DISCUSSION
We are unpersuaded by Appellants' arguments. Bums discloses:
"Commercially available monofunctional epoxy resin reactive diluents
include those from Pacific Epoxy Polymers, Richmond, Miss., under the
4
Appeal2017-010794
Application 13/121,875
trade designations PEP-6770 (glycidyl ester of neodecandoic [sic] acid) ...
" (Bums ,r 65.)
As discussed above, the primary dispute on appeal is whether
"neodecanoic acid" is 2,2-dimethyloctanoic acid as set forth by the
Examiner or 7, 7-dimethyloctanoic acid as set forth by Appellants. The
structures of each isomer are set forth below ( as reproduced from
Appellants' Appeal Brief, page 6):
OH
7, 7-Dimet:bylnctanoic A~id 2,2-Dimdhylodanoic Acid
OH
As indicated by the portion reproduced from Appellants' Appeal
Brief, the structure above left is 7, 7-dimethyloctanoic acid having two
methyl groups substituted on carbon seven and the structure above right is
2,2-dimethyloctanoic acid having two methyl groups substituted on carbon
two. Both Appellants and the Examiner offer evidence in support of each
interpretation of neodecanoic acid.
Appellants provide evidence that the prefix "neo" indicates the
presence of a tertiary-butyl group, which supports the interpretation that
neodecanoic acid is 7, 7-dimethyloctanoic acid. (Appeal Br. 7, citing
5
Appeal2017-010794
Application 13/121,875
Illustrated Glossary of Organic Chemistry3 and Nomenclature of Alkanes. 4)
In addition, Appellants cite several sources identifying neodecanoic acid as
7, 7-dimethyloctanoic acid. 5
On the other hand, the Examiner provides several sources identifying
neodecanoic acid as 2,2-dimethyloctanoic acid with CAS number 26896-20-
8. (Ans. 4 citing NIST Chemistry WebBook, SRO 69; CDC datasheet for
neodecanoic acid which lists 2,2-dimethyloctanoic acid; Wikipedia page for
"neodecanoic acid.")
Although we appreciate Appellants' explanation regarding the prefix
"neo" in the context of alkanes and the evidence offered in support of the
interpretation of neodecanoic acid as 7, 7 -dimethy loctanoic acid, such
evidence is insufficient to establish that one of ordinary skill in the art would
have understood neodecanoic acid to be 7, 7-dimethyloctanoic acid to the
exclusion of 2,2-dimethyloctanoic acid. That is, Appellants have not
sufficiently demonstrated that the Examiner's evidence supporting the
3 Illustrated Glossary of Organic Chemistry, available from UCLA at:
http://www.chem.ucla.edu/-harding/IGOC/C/common name.html. (Appeal
Br., Exh. 1.)
4 Jonathan Mooney (McGill University), Nomenclature of Alkanes,
available at: (Appeal Br. Exh. 2.)
5 Appeal Br. 7, citing Neodecanoic Acid, sections 1-4, listing at Pub Chem
Open Chemistry Database, maintained by the NIH U.S. National Library of
Medicine, available at: htt12s://pubchem.ncbi .nlm.nih.gov/compound/7 7-
dimethvloctanoic acid; Neodecanoic Acid, listing at Chemical Book.com,
available at: http://www. chemical book. com/chemical productproperty en_
cb 8 719106. Htm; Neodecanoic Acid, listing at Sigma-Aldrich, available at:
http://www.sigmaaldrich.com/catalog/search?term=l30776-67-
9&interface=CASN o. &N =O&mode=partialmax&lang=en®ion= US&foc
us=product. (Appeal Br. Exh. 3-5.)
6
Appeal2017-010794
Application 13/121,875
interpretation that neodecanoic acid would have been understood to be 2,2-
dimethyloctanoic acid is in error. Rather, the Examiner's evidence
demonstrates that one of ordinary skill in the art would have also understood
neodecanoic acid to be 2,2-dimethyloctanoic acid.
The Examiner relies on the CDC datasheet and Wikipedia page to
support the position that the discrepancy between the different isomerized
structures known for neodecanoic acid may be explained in view of the
common knowledge that neodecanoic acid includes different isomers and
that the skilled practitioner would have recognized that neodecanoic acid is
inclusive of 2,2-dimethyloctanoic acid. (Ans. 6-7.) We agree with the
Examiner that such evidence is sufficient to demonstrate that neodecanoic
acid includes 2,2-dimethyloctanoic acid. Indeed, the Wikipedia article
discloses that the mixture of carboxylic acids falling under neodecanoic acid
not only includes 2,2-dimethyloctanoic acid, but also that "[c]omponents of
the mixture are acids with the common property of a 'trialkyl acetic acid'
having three alkyl groups at carbon two." (Emphasis added.) Importantly,
this disclosure is consistent with the disclosure of isomers in the CDC
datasheet. We further observe that these additional isomers disclosed in the
Wikipedia article and the CDC datasheet appear to also fall within the
formula for the ester disclosed in claim 1. Accordingly, we do not agree
with Appellants (App. Br. 6) that use of neodecanoic acid cannot put the
skilled practitioner in possession of the tertiary ester recited in the present
claims.
Thus, contrary to Appellants' arguments, the preponderance of the
evidence supports the Examiner's position that the skilled artisan would
have appreciated that the glycidyl ester of neodecanoic acid disclosed in
7
Appeal2017-010794
Application 13/121,875
Bums includes 2,2-dimethyloctanoic acid and other isomers within the
definition of tertiary esters as recited in claim 1 and is not exclusively
limited to 7, 7-dimethyloctanoic acid. Appellants' citation to general organic
glossaries and nomenclature does not outweigh the evidence directed to the
specific compound disclosed in the prior art.
Claim 7-9
Appellants do not provide separate arguments regarding the rejections
of claim 7-9. (Appeal Br. 9.) Accordingly, we affirm the Examiner's
rejections of these claims for the same reasons as expressed for claim 1.
CONCLUSION
A preponderance of the evidence supports the Examiner's position
that neodecanoic acid in Bums is 2,2-dimethyloctanoic acid, or a mixture of
carboxylic acids inclusive of 2,2-dimethyloctanoic acid.
DECISION
We affirm the Examiner's rejections of claims 1 and 6-19.
No time for taking any action connected with this appeal may be
extended under 37 C.F.R. § 1.136(a)(l). See 37 C.F.R. § 41.50([).
AFFIRMED
8