Ex Parte KotaniDownload PDFPatent Trial and Appeal BoardMay 9, 201813504507 (P.T.A.B. May. 9, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/504,507 07/02/2012 Jun Kotani 38834 7590 05/11/2018 WESTERMAN, HATTORI, DANIELS & ADRIAN, LLP 8500 Leesburg Pike SUITE 7500 Tysons, VA 22182 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. P22939USOO 9940 EXAMINER ROSWELL, JESSICA MARIE ART UNIT PAPER NUMBER 1767 NOTIFICATION DATE DELIVERY MODE 05/11/2018 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): patentmail@whda.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JUN KOT ANI Appeal2017-007800 Application 13/504,507 1 Technology Center 1700 Before ROMULO H. DELMENDO, KAREN M. HASTINGS, and JAMES C. HOUSEL, Administrative Patent Judges. HASTINGS, Administrative Patent Judge. DECISION ON APPEAL Appellant seeks our review under 35 U.S.C. § 134(a) of the Examiner's decision rejecting claims 1-9 and 13. We have jurisdiction over the appeal under 35 U.S.C. § 6(b ). We AFFIRM. 1 Appellant identifies the real party in interest as KANEKA CORPORATION (Appeal Br. 2). Appeal2017-007800 Application 13/504,507 Independent claim 1 below is illustrative of the subject matter on appeal: 1. A curable composition, comprising: (I) a vinyl polymer having at least one crosslinkable silyl group on average, 10 to 1000 parts by weight of (II) a vinyl polymer having at least one ultraviolet-crosslinkable group on average for each 100 parts by weight of the vinyl polymer (I), 0.01 to 10 parts by weight of (III) an ultraviolet polymerization initiator for each 100 parts by weight of the vinyl polymer (II), 0.1 to 10 parts by weight of (IV) an organic acid for each 100 parts by weight of the vinyl polymer (I), 0.1 to 10 parts by weight of (V) a ketimine compound for each 100 parts by weight of the vinyl polymer (I), 0.1 to 30 parts by weight of a dehydrating agent based on a total of 100 parts by weight of the vinyl polymer (I) and the vinyl polymer (II), which is selected from the group consisting ofhydrolyzable ester compounds and hydrolyzable organic silicon compounds, 1 to 200 parts by weight of a reactive diluent based on a total of 100 parts by weight of the vinyl polymer (I) and the vinyl polymer (II), which is selected from the group consisting of a monomer having a radical-polymerizable group and an oligomer having a radical-polymerizable group, and an antioxidant, wherein the organic acid (IV) is a fatty acid having 8 or more carbon atoms and the ketimine compound (V) is a ketimine compound obtained by reacting an aminosilane and a ketone. 2 Appeal2017-007800 Application 13/504,507 The Examiner maintains the following rejection2 : (a) claims 1-9 and 13 under 35 U.S.C. § I03(a) as being unpatentable over Hasegawa (WO 2008/041768 Al, published Apr. 10, 2008). The Examiner identifies, and relies on without objection, Hasegawa, US 2010/0105798 Al; pub. April 29, 2010, as an English language version of WO 2008/041678 Al (Ans. 2). We are in agreement that US 2010/0105798 Al appears to be an English language equivalent of WO 2008/041678 Al. Therefore, further references to "Hasegawa" will be to US 2010/0105798 Al. ANALYSIS Appellant's principal argument on appeal is that Hasegawa discloses a broad genus of suitable condensation catalysts, such as an organic acid, and discloses a broad genus of adhesion promoters, such as a ketimine compound, but does not disclose the specific combination of an organic acid and a ketimine compound in a curable composition, as recited in claim 1 (Appeal Br. 4--5; Reply Br. 2-3). Citing In re Baird, 16 F.3d 380 (Fed. Circ. 1994), Appellant asserts it would not have been obvious to select the claimed species from the broad genera of Hasegawa because there is no teaching of any benefit, preference, or desirability of the claimed species (Appeal Br. 5-7; Reply Br. 4). Appellant's arguments are unpersuasive. In re Baird regards a reference disclosing a generic diphenol formula that encompassed a species 2 We refer to the Specification, filed Apr. 27, 2012 ("Spec."); Final Office Action, notice emailed Aug. 13, 2015 ("Final Act."), Appeal Brief, filed Feb. 29, 2016 ("Appeal Br."); the Examiner's Answer, notice emailed Mar. 6, 2017 ("Ans."), and the Reply Brief filed May 1, 2017 ("Reply Br."). 3 Appeal2017-007800 Application 13/504,507 recited in the claims at issue (In re Baird, 16 F.3d at 382). However, the formula encompassed "more than 100 million different diphenols," the reference did not suggest the selection of variables in the formula that would result in the claimed species, and the reference actually preferred other species than that claimed (id.). As a result, the court determined the claimed species was not obvious over the reference (id. at 383). Here, the Examiner finds Hasegawa discloses a curable composition that can include, among other things, versatic acid as a curing catalyst and a ketimine compound obtained by reacting an aminosilane and a ketone as an adhesion promoter (Ans. 2, 5). Hasegawa discloses a curable composition including a vinyl polymer having at least one crosslinkable functional group (referred to as a crosslinkable silyl group), a vinyl polymer having at least one crosslinkable functional group (referred to as the photo-crosslinkable group), and a photopolymerization initiator (Hasegawa ,r,r 36-38). Hasegawa discloses that the curable composition may include a curing catalyst and an adhesion promoter (id. ,r,r 327-328, and 355). Hasegawa discloses that various curing catalysts may be used, such as versatic acid (id. ,r,r 329-330) and discloses various examples of adhesion promotors, which include a ketimine compound obtained by reacting an amino group- containing silane with a ketone compound (id. ,r,r 355-356). In view of this, the Examiner correctly finds Hasegawa presents a situation similar to that in Merck & Co v. Biocraft Labs., 874 F.2d 804 (Fed. Cir. 1989) (Ans. 6-7). In Merck, a reference was found to disclose more than 1200 combinations of compounds, including the claimed combination, but did not highlight the claimed combination as being preferred (Merck, 874 F.2d at 806-807). Nonetheless, the court determined the reference 4 Appeal2017-007800 Application 13/504,507 taught that any of the combinations would produce a desired formulation (id. at 807). Specifically, the court stated: "[t]hat the [prior art] patent discloses a multitude of effective combinations does not render any particular formulation less obvious" (Merck, 874 F.2d at 807). As discussed above, Hasegawa discloses its curable composition can include a curing catalyst and an adhesion promoter. Hasegawa suggests versatic acid functions as a suitable curing catalyst and a ketimine compound (i.e., one obtained by reacting an amino group-containing silane with a ketone compound) functions as a suitable adhesion promoter by explicitly disclosing versatic acid as an exemplary curing catalyst and the claimed ketimine compound as an exemplary adhesion promoter. Thus, although a curable composition including versatic acid and the claimed ketimine compound is one of many combinations encompassed by Hasegawa's disclosure, such a combination is still suggested by Hasegawa as one effective for providing a curable composition. As a result, the Examiner has set forth a prima facie case of obviousness for claim 1 over Hasegawa. Appellant further asserts the claimed curable composition presents unexpected results in terms of moisture curability and ultraviolet ("UV") curability after storage relative to Hasegawa (Appeal Br. 7; Reply Br. 4--5). Specifically, Appellant argues Comparative Example 4 in the Specification correlates to Examples 7 and 9 of Hasegawa, Comparative Example 2 in the Specification correlates to Examples 1---6, 8, and 10 of Hasegawa, Comparative Example 3 in the Specification correlates to Example 11 of Hasegawa, and Comparative Example 1 uses an organic acid as a curing catalyst and A-1110 as an adhesion promoter (i.e., curing catalyst and adhesion promoter species disclosed by Hasegawa) (Appeal Br. 7-8). 5 Appeal2017-007800 Application 13/504,507 Appellant contends that the Comparative Examples had various problems with moisture or UV curability prior to or after storage but Examples 1--4 in Appellant's Specification exhibit excellent moisture curability and UV curability both before and after storage (Appeal Br. 8; Reply Br. 6-7). The Examiner correctly finds Examples 1--4 use one organic acid (i.e., versatic acid) and one specific ketimine compound (i.e., Sila-Ace S340 from Chisso Corp.) (Ans. 7; Spec. ,r,r 148-151). However, claim 1 recites an organic acid that "is a fatty acid having 8 or more carbon atoms" and "a ketimine compound obtained by reacting an aminosilane and a ketone," which encompass organic acids and ketimine compounds other than the sole organic acid and sole ketimine compound used in Examples 1--4. Therefore, the asserted unexpected results are not reasonably commensurate in scope with the claimed invention. See In re Tiffin, 448 F .2d 791, 792 ( CCP A 1971); In re Hiniker, 150 F.3d 1362, 1369 (Fed.Cir.1998). Appellant contends the results provided by Examples 1--4 in the Specification are commensurate in scope with the claimed invention because they vary the amount of organic acid and ketimine compound in accordance with the ranges recited in claim 1 and because one of ordinary skill in the art would have understood the mechanism they describe in their Appeal Brief (i.e., the ketimine compound being non-reactive and stable during storage but its imino group hydrolyzing upon exposure to moisture to produce an aminosilane and a ketone, with the aminosilane and the organic acid promoting a condensation reaction of crosslinkable silyl groups) would apply to other organic acids and ketimine compounds "as long as the organic acid has a carboxyl group and the ketimine compound is a reaction product 6 Appeal2017-007800 Application 13/504,507 of an aminosilane and a ketone and has an imino group, based on the comparison of Example 1 and Comparative Example 1," which demonstrates an unexpected result and "provides an adequate rationale or basis to support the conclusion that other embodiments falling within the claim will behave in the same manner" ( Appeal Br. 9--11 ). Appellant further argues "the Examiner fails to provide any arguments or evidence in disputing or rejecting our rationale or basis" (Reply Br. 5). 3 Appellant, however, has not provided evidence or sufficient technical reasoning to support their assertion that other organic acids and ketimine compounds encompassed by claim 1 would exhibit the unexpected results they assert. Appellant's assertion is based upon attorney argument without supporting factual evidence that the other organic acids and ketimine compounds encompassed by claim 1 would behave in the same way. Unexpected results must be established by factual evidence. Attorney argument does not suffice. See In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) ( Attorney argument is not the kind of factual evidence that is required "to rebut a prima facie case of obviousness.")). The argument that other organic acids having a carboxyl group and all other ketimine compounds encompassed by claim 1 would necessarily function in the manner described also does not rest upon sufficient technical reasoning explaining why this 3 Appellant offers to amend claim 1 to limit the organic acid to eight compounds if such an amendment would render the 35 U.S.C. § 103(a) rejection moot (Reply Br. 6). The application, however, is no longer under the jurisdiction of the Examiner while it is before us on appeal. Therefore, any amendment will not even be considered for entry until it is returned to the Examiner for further examination. Moreover, such an amendment would still encompass organic acids besides the one (i.e., versatic acid) used in Examples 1--4 in the Specification. 7 Appeal2017-007800 Application 13/504,507 would be true for the various organic acids and ketimine compounds encompassed by claim 1. Moreover, Appellant's Specification does not describe the results exhibited by Examples 1--4 as "unexpected" and Appellant does not direct us to any evidence to support their argument that the results would indeed have been unexpected to one of ordinary skill in the art. See In re De Blauwe, 736 F.2d 699, 704 (CCPA 1984) (Mere argument does not establish that results are unexpected.). In addition, it is not clear that the results exhibited by Examples 1--4 demonstrate unexpected results. The Specification states that a cured product was obtained for Examples 1--4 but that Comparative Examples 1--4 had various issues with ultraviolet and/or moisture curability before or after storage (Spec. ,r,r 148-155). However, the Specification merely states a cured product was obtained or not obtained without describing a methodology for determining the degree of curing or whether a product was cured or not. Such conclusory statements may not suffice to demonstrate unexpected results (see De Blauwe, 736 F.2d at 705 ("Mere argument or conclusory statements in the [S]pecification does not suffice.")). Appellant further contends the asserted unexpected results demonstrate a lack of functional equivalence between the curing catalysts and adhesion promoters disclosed by Hasegawa because the Comparative Examples, which used curing catalysts and adhesion promoter species disclosed by Hasegawa, exhibited poor curability (Reply Br. 2-3). This argument is also unpersuasive. As discussed above, Hasegawa discloses various curing catalysts and adhesion promoters, including the species recited in claim 1, and suggests they function to provide a curable 8 Appeal2017-007800 Application 13/504,507 composition. Indeed, the Specification states that a cured composition was obtained from Comparative Examples 1--4 either before or after storage via UV irradiation or without UV irradiation (Spec. ,r,r 152-155). As stated by the court in Merck, "the fact that a specific [embodiment] is taught to be preferred is not controlling, since all disclosures of the prior art, including unpreferred embodiments, must be considered" (Merck, 874 F.2d at 807 (quoting In re Lamberti, 545 F.2d 747, 750 (CCPA 1976)) (emphasis added)). Thus, to the extent Appellant's Comparative Examples 1--4 may demonstrate some curing catalysts and adhesion promoters do not work as effectively as others (i.e., may not be preferable), they nevertheless provide curable compositions. Based on the foregoing, the unexpected results asserted by Appellant are entitled to little weight. A preponderance of the evidence supports the Examiner's obviousness determination for claim 1. Appellant does not argue claims 2-9 and 13 separately from claim 1 (Appeal Br. 11 ). For the reasons discussed above and those set forth in the Examiner's Answer, we sustain the Examiner's§ 103(a) rejection of claims 1-9 and 13 over Hasegawa. DECISION The Examiner's rejection of claims 1-9 and 13 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). AFFIRMED 9 Copy with citationCopy as parenthetical citation