Ex Parte Kuhlmann

Patent Trial and Appeal Board

Sep 29, 2016

12599011 (P.T.A.B. Sep. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/599,011 0111112010
33249 7590 10/03/2016
Hexion Inc.
12650 Directors Drive, Suite 100
Stafford, TX 77477
FIRST NAMED INVENTOR
Gunda Kuhlmann
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.
06-23-EP.US 5879
EXAMINER
CAI,WENWEN
ART UNIT PAPER NUMBER
1763
NOTIFICATION DATE DELIVERY MODE
10/03/2016 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):
tammy.hodges@hexion.com
lisa.jones@hexion.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GUNDA KUHLMANN
Appeal2015-004909
Application 12/599,011
Technology Center 1700
Before PETER F. KRATZ, BRIAND. RANGE, and
DEBRA L. DENNETT, Administrative Patent Judges.
RANGE, Administrative Patent Judge.
DECISION ON APPEAL
SUMMARY
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1-7 and 14. We have jurisdiction. 35 U.S.C.
§ 6(b ).
We AFFIRM.
1 According to the Appellant, the real party in interest is Momentive
Specialty Chemicals Inc. Appeal Br. 3.
Appeal2015-004909
Application 12/599,011
STATEMENT OF THE CASE
Appellant describes the present invention as relating to a resin
dispersion. Spec. i-f 1. The resin dispersion could be applied to, for example,
textile, mineral, metallic, polymeric surfaces. Spec. i-f 1. Claim 1,
reproduced below with emphasis added, is the only independent claim on
appeal and is illustrative of the claimed subject matter:
1. An aqueous resin dispersion comprising:
10 wt.% to 50 wt.% solids content, wherein the solids content
comprises:
(I) an epoxy resin and a curative novolak resin,
wherein the epoxy resin comprises from 30 to 80 weight percent
based on the mass of both resin components; and
(II) a codispersant based on castor oil ethoxylate,
hydrogenated castor oil ethoxylate, alkylphenol ethoxylate, fatty
alcohol ethoxylate, oleic acid ethoxylate, oxo process alcohol
ethoxylate, fatty alcohol alkoxylate, polyvinyl alcohol, or
combinations thereof, wherein the codispersant comprises 4 to
18 weight percent based on the overall mass of the aqueous resin
dispersion; and
water, wherein the dispersion comprises an absence of an
additional curative.
Appeal Br.2 25 (Claims Appendix).
2 In this decision, we refer to the Non-Final Office Action mailed December
5, 2013 ("Non-Final Act."), Final Office Action mailed April 1, 2014 ("Final
Act."), the Appeal Brief filed September 30, 2014 ("Appeal Br."), the
Examiner's Answer mailed January 28, 2015 ("Ans."), and the Reply Brief
filed March 25, 2015 ("Reply Br.").
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Application 12/599,011
REFERENCES
The Examiner relied upon the prior art below in rejecting the claims
on appeal:
Bozzi et al. (hereinafter "Bozzi")
Warren
Craun et al. (hereinafter "Craun")
Ogawa et al. (hereinafter "Ogawa")
us 4,115,328
us 5,200,455
us 5,342,864
US 2003/0088025 Al
Sept. 19, 1978
Apr. 6, 1993
Aug. 30, 1994
May 8, 2003
Crystallization of Liquid Epoxy Resins, Dow Technical Bulletin, Dec. 2007
(hereinafter "the Dow Bulletin").
REJECTIONS
The Examiner has withdrawn claim rejections under 35 U.S.C. § 112.
Ans. 2. The Examiner maintains the following rejections on appeal:
Rejection 1. Claims 1, 2, 4, 5, and 7 under 35 U.S.C. § 103 as
unpatentable over Bozzi in view of Ogawa. Final Act. 3.
Rejection 2. Claim 3 under 35 U.S.C. § 103 as unpatentable over
Bozzi in view of Ogawa and as evidenced by the Dow Bulletin. Id. at 4.
Rejection 3. Claims 6 and 14 under 35 U.S.C. § 103 as unpatentable
over Bozzi in view of Ogawa and further in view of Warren and Craun. Id.
at 4.
ANALYSIS
We review the appealed rejections for error based upon the issues
identified by Appellant and in light of the arguments and evidence produced
thereon. Cf Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)
(precedential) (cited with approval inin re Jung, 637 F.3d 1356, 1365 (Fed.
Cir. 2011) ("it has long been the Board's practice to require an applicant to
identify the alleged error in the examiner's rejections")). After having
considered the evidence presented in this Appeal and each of Appellant's
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Application 12/599,011
contentions, we are not persuaded that Appellant identifies reversible error,
and we affirm the Examiner's rejections for the reasons expressed in the
December 5, 2013, Non-Final Office Action, the Final Office Action, and the
Answer. We add the following primarily for emphasis.
Rejection 1, claims 1, 5, and 7. The Examiner rejects claims 1, 2, 4, 5,
and 7 as obvious over Bozzi in view of Ogawa. The Appellant does not
separately argue claims 5 or 7. We therefore focus on claim 1, and claims 5
and 7 stand or fall with that claim. 37 C.F.R. § 41.37(c)(l)(iv) (2013).
The Examiner finds that Bozzi teaches ranges overlapping those of
claim 1, teaches an aqueous dispersion comprising epoxy, and teaches a
nonionic surfactant such as ethoxylated alkylphenol. Non-Final Act. 3;
Bozzi 3:15-32 (providing ranges); 5:55-56 (teaching ethoxylated
alkylphenol); 6:27-34 (teaching percent solids). Bozzi also teaches use of a
phenoplast curing agent in a heat-curable coating composition. Non-Final
Act. 3; Bozzi 6:27-34. Bozzi lists certain phenoplasts that "may be
employed" (9:24--31 ), but the Examiner agrees with Appellant that Bozzi
does not teach that the phenoplast resin is a novolak resin. Non-Final Act. 4.
The Examiner finds that Ogawa "discloses a similar composition" and
use of a novolak resin. Non-Final Act. 4; Ogawa i-fi-121, 41. The Examiner
concludes that it would have been obvious to one of ordinary skill to make
use of a novolak type phenol resin to cure the epoxy of Bozzi because, as
taught by Ogawa, "novolak type resin have little formaldehyde and good
reactivity with the epoxy resin." Non-Final Act. 4; Ogawa i141. We agree
with the Examiner's findings and conclusion.
Appellant argues that Bozzi lacks novolak and that Ogawa does not
teach the ranges recited in claim 1. See, e.g., Appeal Br. 9-11. These
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Application 12/599,011
arguments fail to identify reversible error. One cannot show nonobviousness
by attacking references individually when the rejection is based on a
combination of references. In re Keller, 642 F .2d 413, 425 (CCP A 1981 ).
Appellant also argues that there is "no suggestion or motivation" in
Bozzi or Ogawa to combine the teachings of Bozzi and Ogawa. Appeal Br.
12. Appellant appears to argue that Bozzi only teaches optional phenoplasts
"if forming a heat-curable composition is desired" and that Ogawa is "non-
curing." Reply Br. 4. This argument is factually incorrect. Ogawa is heat
curable. Ogawa i-fi-19 ("heating in a designated shape to cure said resin
composition"), 41 ("the condensation is reacted by heating").
Moreover, the Examiner provides adequate reason as to why one of
skill, in light of Ogawa's teachings regarding the advantages ofnovolaks,
would have utilized a novolak as the phenoplast in Bozzi (Non-Final Act. 4,
Ans. 3--4), and Appellant does not persuasively rebut the Examiner's
reasoning. Moreover, Bozzi lists the use of certain phenoplasts that "may"
be employed; it does not indicate those example phenoplasts represent an
exclusive list of phenoplasts from which list a phenoplast curing agent only
may be selected. Bozzi 9:24--31. Also, contrary to Appellant's arguments
(see, e.g., Appeal Br. 12), the references do not need to include an explicit
suggestion to combine in order for the combination to be proper. KSR
Intern. Co. v. Teleflex Inc., 590 U.S. 398, 419 (2007) ("Helpful insights ...
need not become rigid and mandatory formulas; and when it is so applied,
the TSM [teaching, suggestion, or motivation] test is incompatible with our
precedents . . . . In many fields it may be that there is little discussion of
obvious techniques .... ").
We thus sustain the Examiner's rejection of claims 1, 5, and 7.
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Rejection 1, claim 2. Appellant argues that Bozzi does not suggest a
novolak resin as the phenoplast and therefore does not teach relative
amounts of an epoxy resin and the novolak. Appeal Br. 14. The argument
fails to address the combination of Bozzi and Ogawa as explained above.
We thus sustain the Examiner's rejection of claim 2.
Rejection 1, claim 4. Appellant argues that Bozzi does not disclose
the claim 4's recitation that "the novolak resin is a phenol-formaldehyde
resin prepared using a phenol: formaldehyde ratio in the range from 1 :0.4 to
1:0.8." Appeal Br. 14. Appellant's argument is unpersuasive because it
does not address the combination of Bozzi and Ogawa. Moreover, the
Examiner persuasively explains how the additional recitations of claim 4 are
met, and Appellant does not rebut this explanation. Non-Final Act. 4.
Rejection 2, claim 3. The Examiner rejects claim 3 as obvious over
Bozzi in view of Ogawa and as evidenced by the Dow Bulletin. Id. at 4.
Claim 3 recites "[t]he resin dispersion of claim 1 wherein the epoxy resin
melts at a temperature of less than 90Q C." Appeal Br. 25 (Claims
Appendix). The Examiner finds that Bozzi teaches that the epoxy can be a
condensation product of Bisphenol A and epicholorhydrin and finds that, as
evidenced by the Dow Bulletin, bisphenol A diglycidyl ether epoxy resin
melts at a temperature below 90Q C. Non-Final Act. 5; Bozzi 4:50-68; Dow
Bulletin 1. Appellant does not persuasively dispute these findings of fact.
Rather, Appellant unpersuasively argues the references individually and
repeats arguments we have addressed above. Appeal Br. 13-17. We thus
sustain the Examiner's rejection of claim 3.
Rejection 3, claims 6 and 14. The Examiner rejects claims 6 and 14
under 35 U.S.C. § 103 as unpatentable over Bozzi in view of Ogawa and
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further in view of Warren and Craun. Id. at 4. The Appellant does not
separately argue claim 14 so we focus on claim 6. Appellant again
unpersuasively argues the references separately rather than addressing the
Examiner's combination. Appeal Br. 18-24. Appellant does not
persuasively identify any error in the Examiner's explanation for combining
the teachings of Warren and Craun with the Bozzi/Ogawa combination.
Final Act. 4; Warren 2:25-38; 3:13-22; Craun 5:2-5. We thus sustain the
Examiner's rejection of claims 6 and 14.
DECISION
For the above reasons, we affirm the Examiner's rejection of claims
1-7 and 14.
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
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