Ex Parte K¿smayr et al

Patent Trials and Appeals Board

May 21, 2019

13055264 - (D) (P.T.A.B. May. 21, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/055,264 01/21/2011
123223 7590 05/23/2019
Drinker Biddle & Reath LLP (WM)
222 Delaware A venue, Ste. 1410
Wilmington, DE 19801-1621
FIRST NAMED INVENTOR
Daniel Klsmayr
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.
074008-1126-US (286151) 4197
EXAMINER
CHRISTIE, ROSS J
ART UNIT PAPER NUMBER
1731
NOTIFICATION DATE DELIVERY MODE
05/23/2019 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
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DANIEL KASMA YR, MAXIM PERETOLCHIN,
MATTHIAS PFEIFFER, and STEPHAN WEINKOTZ
Appeal2018-006787
Application 13/055,264
Technology Center 1700
Before CATHERINE Q. TIMM, CHRISTOPHER C. KENNEDY, and
JENNIFER R. GUPTA, Administrative Patent Judges.
TIMM, Administrative Patent Judge.
DECISION ON APPEAL 1
STATEMENT OF THE CASE
Appellants2 appeal from the Examiner's decision to reject claims 18,
19, 21-23, 25-32, 35-37, and 39--43. We have jurisdiction under
35 U.S.C. § 6(b ).
1 In explaining our Decision, we cite to the Specification of January 21, 2011
("Spec."), Final Office Action of July 27, 2017 ("Final"), Appeal Brief of
December 26, 2017 ("Appeal Br."), Examiner's Answer of April 20, 2018
("Ans.").
2 BASF SE is identified as the real party in interest. Appeal Br. 2.
Appeal2018-006787
Application 13/055,264
We AFFIRM.
The claims are directed to a flexible, sheet-like substrate having an
abrasive surface. See, e.g., claims 18 and 21. The abrasive surface is made
by a process involving applying an aqueous solution or dispersion
containing a heat-curable precondensate of melamine and formaldehyde to
the substrate and crosslinking the precondensate. Id. Claim 18 is
illustrative:
18. A flexible, sheet-like substrate having an abrasive surface,
obtainable by
[a] applying an aqueous solution or dispersion of at least one
precondensate of a heat-curable resin to the top and/or
bottom of a flexible, sheet-like substrate in an amount in the
range from 0.1 to 90% by weight, based on the uncoated,
dry substrate,
[b] crosslinking the precondensate and drying the treated
substrate,
wherein the aqueous solution or dispersion of at least one
precondensate of a heat-curable resin comprises
(i) a polymeric thickener selected from the group consisting of
polysaccharides, proteins, modified celluloses, modified
starches, polyvinyl alcohols, polyvinylpyrrolidones and
polyethylene glycols in an amount ranging from 0.01 % by
weight to 10% by weight and
(ii) a curative that catalyzes further condensation of the heat-
curable resin at a temperature range starting at about 60°C
and
the heat-curable resin used is a precondensate of melamine and
formaldehyde in which the molar ratio of melamine to
formaldehyde is greater than 1: 2.
Appeal Br. 29 (formatting and emphasis added).
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Application 13/055,264
The Examiner maintains the following rejections under 35 U.S.C.
§ I03(a):
A. The rejection of claims 18, 19, 21-23, 25-27, 29-32, 35, 39, and
42 as obvious over Pauls3 in view of Baumgartl4;
B. The rejection of claims 28 and 36 as obvious over Pauls in view of
Baumgart! and further in view of Smith5;
C. The rejection of claims 37 and 43 as obvious over Pauls in view of
Baumgart! and further in view of Kincaid6;
D. The rejection of claim 40 as obvious over Pauls in view of
Baumgart! and further in view of So ldanski 7; and
E. The rejection of claim 41 as obvious over Pauls in view of
Baumgart! and further in view of Patnode8•
OPINION
In arguing against the Examiner's rejections, Appellants reproduce
claims with some limitations highlighted and state that individual references
do not teach what is claimed, that various references are not analogous art,
or not related to Appellants' claimed invention, and are not combinable with
the other prior art, and that the rejections are based on hindsight
reconstruction. Appeal Br. 7-27. Appellants' arguments are by and large
meritless. We affirm for the reasons advanced by the Examiner in the Final
3 Pauls et al., US 6,713,156 Bl, issued March 30, 2004.
4 Baumgart! et al., WO 01/94436 A2, published December 13, 2001 (as
translated).
5 Smith et al., US 2003/0124935 Al, published July 3, 2003.
6 Kincaid et al., US 2004/0029511 Al, published Feb. 12, 2004.
7 Soldanski et al., US 2005/0176614 Al, published Aug. 11, 2005.
8 Patnode, US 2009/0269290 Al, published Oct. 29, 2009.
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Application 13/055,264
Office Action and Examiner's Answer and add the following primarily for
emphasis.
Rejection A
In arguing against the Examiner's rejection of claims 18, 19, 21-23,
25-27, 29-32, 35, 39, and 42 as obvious over Pauls in view of Baumgart!,
Appellants argue claim 21 separately from the other claims. Appeal Br. 12-
14. We select claims 18 and 21 as representative for deciding the issues on
appeal for Rejection A.
Claim 18
The Examiner and Appellants agree that Pauls teaches a flexible,
sheet-like substrate having an abrasive surface, which is made by, for
example, spraying, foaming, or printing a solution or dispersion of a
polymer composition onto a sheet-like substrate to create an irregular, non-
homogeneous surface on the substrate and curing the polymer composition.
Final 3--4; Appeal Br. 9; Pauls col. 4, 11. 1-13. As noted by the Examiner,
Appellants' claim uses product-by-process language and it is the end-
product structure implied by the process language that limits the claim, not
the process steps themselves. Ans. 17. Pauls, like Appellants, applies an
aqueous solution or dispersion containing a polymerizable polymer
composition and optional adjuvants and specifically lists polyvinyl alcohol
as a useful adjuvant, one of the thickeners recited in claim 18. Pauls col. 2,
11. 40-53; col. 3, 11. 53----67.
Pauls teaches a variety of curable polymers for use in the polymer
composition in one portion of the reference (Pauls col. 3, 11. 8-19), but
specifically states in another portion that "[f]unctional polymers with
external crosslinkers, such as melamine formaldehydes, may also be
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Application 13/055,264
effective." Pauls col. 3, 11. 50-53. As acknowledged by Appellants those of
ordinary skill in the art would have understood Pauls as teaching the use of
"compositions heat-curable with formaldehyde, such as melamine." Spec.
1:21-31.
As pointed out by Appellants, Pauls specifies using polymer
compositions "having a minimum film-forming temperature (MFFT) above
- 10° C" and with a Tg preferably above 0° C. Appeal Br. 9-10; Pauls
col. 40-61. The polymer composition must be hard enough at the end-use
temperature to serve as an abrasive and with a MFFT below the processing
temperature to allow for bonding to the substrate, which is in most
applications below 105 °C. Id.
Appellants contend that "[t]he pre-condensate of a heat-curable resin
and the resulting cross-linked and dried products of the instant invention
differ from the polymer composition in Pauls chemically and structurally."
Appeal Br. 10. According to Appellants, "[t]he minimum film-forming
temperatures (MFFT) and the T g value cannot be detected, because the
resulting cross-linked products/resins are polycondensates and not
polymerisates." Id.
We understand Appellants to be arguing that their crosslinked product
is a polycondensate while Pauls' product is a polymerisate. Appellants
appear to be arguing that their polycondensate product does not have a
minimum film forming temperature and its Tg value cannot be detected.
This argument fails for several reasons.
First, Appellants have not persuaded us that the resulting crosslinked
product of Pauls is different from the end-product of claim 18. A
polycondensate is merely a polymer (polymerisate) formed by condensation
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Application 13/055,264
polymerization. Thus, a polycondensate is a form of polymerisate. Pauls
specifically teaches using melamine and formaldehyde, the same
components as Appellants, and Appellants provide no persuasive evidence
that Pauls is suggesting forming something different than a condensate using
these two components. Based on the chemistry involved, it is reasonable to
conclude that the product would be the same or substantially the same and
Appellants provide no persuasive evidence to the contrary.
Second, Appellants offer no evidence in support of the contention that
polycondensates fail to have minimum film forming temperatures, which is a
measurement of the solution or dispersion, not a measurement of the
resulting cured coating. Nor do Appellants off er evidence in support of the
contention that polycondensates fail to have a glass transition temperature.
Again, Pauls specifically teaches using melamine formaldehydes, the same
chemical entities as claimed. Appellants do not persuade us that Pauls'
solution or dispersion of melamine and formaldehyde fails to be a
precondensate or that curing fails to involve polycondensation.
Appellants further contend that "[f]urthermore, Pauls teaches styrene
and acrylate polymers as synthetic polymers in the polymer compositions
(column 3, lines 10-19). A person of ordinary skill in the art would regard
pre-condensate of heat-curable resins as polymerisates." Appeal Br. 10. It
is not clear what Appellants are arguing. However, that Pauls teaches other
embodiments using polymers made from other monomers, such as styrene
and acrylate, does not negate the teaching of using melamine formaldehyde.
The Examiner applies Baumgart! as evidence to show that it was
known in the art to use ratios of melamine and formaldehyde within the
greater than 1 :2 ratio of claim 18 when forming melamine formaldehyde
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condensates. Final 7. Appellants respond by stating that Baumgart! does
not teach what is recited in claim 18, reproducing the claim with portions
highlighted, and asserting that Baumgart! is non-analogous art and the
rejection based on impermissible hindsight. Appeal Br. 11-12.
Appellants' conclusory statements do not identify a reversible error in
the Examiner's finding of a reason to select melamine/formaldehyde ratios
within the range of claim 18. Baumgart! provides evidence that melamine
and formaldehyde were known to provide hard crosslinked foams with high
hardness that can be used for slightly abrasive cleaning. Baumgart! 4. We
agree with the Examiner that those of ordinary skill in the art would have
viewed Baumgart! as relevant to the problem of finding a melamine
formaldehyde resin hard enough to be used as an abrasive in Pauls'
melamine formaldehyde coated abrasive substrate. Ans. 22-23. Moreover,
Pauls alone is sufficient to support the conclusion of obviousness given that
the ordinary artisan would have conducted routine experimentation to
determine the ratio of melamine to formaldehyde providing the hardness
required to meet Pauls' requirements.
Appellants have not identified a reversible error in the Examiner's
conclusion of obviousness.
Claim 21
Claim 21 recites a narrower ratio of melamine to formaldehyde of
1 : 1. 0 to 1 : 1. 9. There is no question that Baumgart! teaches a preference for
the ratio recited in claim 21. Appeal Br. 13; Baumgart! 2. Appellants
simply reiterate the same argument made against claim 18. For the reasons
we stated above, Appellants have not persuaded us of a reversible error in
the Examiner's finding of a reason use a ratio within the range of claim 21.
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Rejection B
The Examiner rejects claims 28 and 36 as obvious over Pauls in view
of Baumgart! and further in view of Smith. Final 12-14. Appellants argue
claims 28 and 36 separately.
Claim 28
Claim 28 further requires the aqueous solution or dispersion of the
precondensate be applied to the substrate in the form of a pattern.
Pauls suggests applying the coating so it is non-continuous and further
suggests spraying or printing so that some of the substrate will have no
polymer coated on it. Pauls col. 4, 11. 56-61. However, Pauls does not
expressly disclose spraying or printing in a pattern. Thus, the Examiner
turns to Smith. Final 12-13. Smith forms flexible scrubbing pads by
printing heat-curable epoxy resin onto a fabric to form a discontinuous
abrasive layer or plates 108 on the fabric. Smith ,r,r 27, 50---51. The printing
can be performed in a pattern. See Smith ,r 52 ("This resin material can be
printed using conventional screen printing techniques with good definition in
a variety of patterns, sizes, and shapes.").
Appellants merely contend that Smith does not teach what is required
by claim 18 without addressing the Examiner's specific finding that Smith
suggests forming a pattern by printing. Appeal Br. 14--18. Given that Pauls
teaches printing and Smith teaches that printing can be used to form a
pattern, Appellants have not persuaded us that the Examiner reversibly erred
in finding a suggestion within the prior art for forming a pattern using Pauls'
melamine formaldehyde formulation. Cf In re Lovin, 652 F.3d 1349, 1357
(Fed. Cir. 2011) ("[T]he Board reasonably interpreted Rule 41.37 to require
more substantive arguments in an appeal brief than a mere recitation of the
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claim elements and a naked assertion that the corresponding elements were
not found in the prior art.").
Claim 36
Claim 36 limits the substrate to paper or a fibrous nonwoven web
composed of cellulose fibers, or tissues composed of cellulose fibers.
Pauls expressly teaches using paper and paper board. Pauls col. 5,
11. 7-15. Smith teaches using regenerated cellulose. Smith ,r 56. A
preponderance of the evidence supports the Examiner's conclusion of
obviousness with regard to claim 3 6.
Rejection C
To reject claims 37 and 43, the Examiner adds Kincaid. Final 14.
Appellants argue claims 37 and 43 separately.
Claim 37
Claim 37 further limits the curative of claim 18 to the active
components salts of acids with ammonia or amines or adducts of Lewis
acids with ammonia or amines.
As found by the Examiner, Pauls teaches curing by heat, UV or IR
radiation, or gamma radiation, controlled Radio Frequency, or using acid or
base catalysts. Final 14; Pauls col. 5, 11. 19-22. As further found by the
Examiner, Kincaid provides evidence that Lewis acid complexes including
BF 3-diethlyamine and BCh-amine complex were known thermal catalyst
curing agents. Final 15; Kincaid ,r 56.
Appellants contend that Kincaid is related to a different type of
abrasive article (Appeal Br. 21-23), but Appellants overlook the fact that
Pauls teaches using acid or base catalysts. Kincaid provides evidence that
Lewis acids of the type claimed were known acid catalysts for thermal
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curing. Appellants have not identified a reversible error in the Examiner's
finding of a suggestion to select Lewis acids of the type encompassed by
claim 3 7 for use in Pauls' composition.
Claim 43
Claim 43 requires the curative be in an amount from 0.01 to 70 % by
weight, based on the resin.
Appellants contend that Kincaid is not related to an abrasive article
using a heat-curable precondensate of melamine and formaldehyde in the
molar ratio required by Appellants' claims and there would have been no
reason to combine Kincaid with Pauls and Baumgart! to arrive at the claimed
invention. Appeal Br. 23-25.
Again, Appellants overlook the teachings of Pauls. Pauls teaches
using an acid catalyst curative. Pauls col. 5, 11. 19-22. When using Lewis
acids of Kincaid as the acid catalyst suggested by Pauls, the ordinary artisan
would have conducted routine experimentation to determine the workable or
optimal concentration of catalyst to use. Appellants have not persuaded us
that the Examiner reversibly erred.
Rejection D
Claim 40 further requires the polymeric thickener be hydroxyethyl
starch or hydroxypropyl starch. To reject claim 40, the Examiner adds
Soldanski.
Pauls teaches adding "adjuvants designed to keep the polymer on the
surface of the substrate, such as starch, polyvinyl alcohol, thickening agents,
rheology modifiers, stearates, surfactants, and coalescents (Pauls col. 3, 11.
59-63)," but does not specifically teach using hydroxyethyl starch or
hydroxypropyl starch. Thus, the Examiner adds Soldanski as evidence that
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it was known in the art to use polysaccharides and modified starches as
polymeric thickeners. Final 17. Soldanski discloses hydroxyethyl starch as
a useful thickener. Soldanski ,r 30. Given that Pauls specifically lists starch
as an adjuvant and Soldanski lists hydroxyethyl starch as a thickener, a
preponderance of the evidence supports the Examiner's finding of a
suggestion within the art to use hydroxyethyl starch in the composition of
Pauls. Appellants' arguments against the combination of prior art fail
because Pauls specifically teaches adding starch and thickeners and
Soldanski indicates that hydroxyethyl starch was known to act as a
thickener.
Rejection E
Claim 41 limits the polymeric thickener to gelatin or casein. The
Examiner adds Patnode to reject claim 41.
As we discuss above, Pauls teaches adding "adjuvants designed to
keep the polymer on the surface of the substrate, such as starch, polyvinyl
alcohol, thickening agents, rheology modifiers, stearates, surfactants, and
coalescents." Pauls col. 3, 11. 59---63. Pauls does not specifically teach using
gelatin or casein. Thus, the Examiner turns to Patnode. Final 18-19.
Patnode discloses gelatin as a polymeric thickener in a list of
polysaccharide starches or vegetable gums; proteins such as albumin,
gelatin, hydrolyzed vegetable protein, or collagen; and polyacrylate or
polyacrylamide thickeners. Patnode ,r 30. Thus, Patnode provides evidence
that gelatin was a known thickener and given the overlap in useful
thickeners taught by Pauls and Patnode, a preponderance of the evidence
supports the Examiner's determination that it would have been obvious to
select gelatin as a thickener in the composition of Pauls.
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CONCLUSION
We sustain the Examiner's rejections.
DECISION
The Examiner's decision is affirmed.
TIME PERIOD FOR RESPONSE
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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