Ex Parte Kurz

Patent Trial and Appeal Board

Feb 28, 2017

12937696 (P.T.A.B. Feb. 28, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/937,696 12/21/2010 Guenter Kurz PMPM-0039 4963
23599 7590 03/02/2017
MILLEN, WHITE, ZELANO & BRANIGAN, P.C.
2200 CLARENDON BLVD.
SUITE 1400
ARLINGTON, VA 22201
EXAMINER
FEELY, MICHAEL J
ART UNIT PAPER NUMBER
1766
NOTIFICATION DATE DELIVERY MODE
03/02/2017 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):
docketing@mwzb.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GUENTER KURZ
Appeal 2014-003972
Application 12/937,696
Technology Center 1700
Before LINDA M. GAUDETTE, KAREN M. HASTINGS, and
WESLEY B. DERRICK, Administrative Patent Judges.
GAUDETTE, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision2 finally rejecting under 35 U.S.C. § 103: (1) claims 1—4 and 6—23
as unpatentable over Fisher (US 2002/0122938 Al, pub. Sept. 5, 2002) and
Kawaguchi (US 6,790,901 B2, iss. Sept. 14, 2004); and (2) claims 1—23 as
unpatentable over Fisher, Kawaguchi, and Kurz et al. (WO 2007/051562 Al,
pub. May 10, 2007 (“Kurz”))3. We have jurisdiction under 35 U.S.C. § 6(b).
1 Appellant identifies the real party in interest as EMS-PATENT AG.
Appeal Brief filed Oct. 16, 2013 (“App. Br.”), 1.
2 Final Office Action mailed May 13, 2013 (“Final Act.”).
3 Appellant has not objected to the Examiner’s reliance on US 2008/0300347
Al as the English language translation of this reference (see Final Act. 6).
See generally, App. Br. 11—12.
Appeal 2014-003972
Application 12/937,696
We AFFIRM.
The invention relates to an adhesive formulation for the treatment of
reinforcing inserts, such as fibers and cords, used in the production of fiber-
reinforced rubber products. Specification filed Oct. 13, 2010 (“Spec.”), 1.
Claim 1, the sole independent claim on appeal, is representative of the
invention, and is reproduced below:
1. An adhesive formulation in the form of an aqueous
dispersion with a solids content of 10 to 40% by weight relative
to the adhesive formulation, which is suitable for the treatment
of reinforcing inserts for the production of reinforced polymer
products, wherein 100% by weight of the solids containing [sic]
a) 1 to 20% by weight of a bisphenol A epoxy
novolak,
b) 4 to 20% by weight of an entirely or partially
blocked isocyanate, and
c) 60 to 92% by weight of a resorcinol formaldehyde
latex.
App. Br. 13 (Claims App’x).
Fisher relates to a single dip adhesive coating composition for
application to polyester cords, which then are embedded in a rubber
composite (Fisher Abstract) for use, e.g., in the tire, conveyor belt, or hose
industries (id. 12).4 In the background of the invention section, Fisher
describes the following known, single dip, RFL-based, adhesive coating
compositions: (1) RFL only (Fisher 14); (2) RFL and about 8 wt. %
isocyanate (id. 1 5); and (3) RFL and greater than 15 wt.% epoxy-cresol-
novolak resin (id. 17). Fisher also describes a known, double dip system
4 Fisher discloses adhesive coating compositions based, at least in part, on
included resorcinol formaldehyde latex (“RFL”). Fisher Abstract.
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Application 12/937,696
wherein the first dip comprises 65—75 wt. % isocyanate and 25—35 wt. %
epoxy, and the second dip comprises RFL only. Id. 1 6. According to
Fisher, the RFL-isocyanate system (above-listed system (2)) provides a
higher adhesive peel force than the system containing only RFL (above-
listed system (1)), but brown-cord failure is still observed in the RFL-
isocyanate system. Id. ^ 5. Fisher discloses that in the above-listed system
(3), greater than 15% epoxy-cresol-novolak resin is required to obtain
sufficient adhesion of the composition to polyester cords. Id. 17. The high
amount of epoxy (i.e., 25—35 wt. %) used in the double dip system, however,
is said to have the drawback of creating a hard rigid shell whereby the
polyester-dip interface will have a tendency to crack when high heat or
flexing is applied, known as white failure. Id. 1 6. Fisher notes that the
isocyanate component of the double dip system “has good solubility
characteristics so that it readily penetrates the PET cord providing more
functional groups for binding with the epoxy.” Id.
Fisher’s inventive composition, which is said to overcome the
drawbacks of the aforementioned prior art compositions {id. 18), is a single
dip system comprising “about 2—12 wt. % epoxy and optionally 1—12 wt. %
isocyanate with [the] remainder being resorcinol formaldehyde latex, on a
dry wt. basis” {id. Abstract (emphasis added)). According to Fisher, the
invention’s use of lower quantities of epoxy and isocyanate overcomes the
white and brown failures of the prior art compositions, and the use of a
single dip system is advantageous over the double dip system in terms of
raw material and operations costs. Id. 1 8. Fisher discloses that the term
“isocyanate . . . means blocked diisocyanates” {id. 114) and that suitable
diisocyanates for use in the invention are
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Application 12/937,696
“4,4'-diisocyanatodiphenylenemethane (otherwise known as MDI)[,]
tolylene diisocyanate (otherwise known as TDI)[,] and naphthylene
diisocyanate (otherwise known as NDI)” {id.), i.e., the same isocyanates
used in the present invention (see Spec. 6, last para.). Fisher discloses that
“[a]ny type of epoxy is . . . suitable for the . . . invention, particularly
sorbitol epoxy or cresol-novolac epoxy.” Id. 115. Fisher also specifically
identifies several suitable phenol-novolac and cresol-novolac epoxies for use
in the inventive composition. Id. 146.
Kawaguchi relates to a fiber processing agent that exhibits excellent
heat and water resistance when attached to a fiber for use in a rubber
product, e.g., as a reinforcing material for a timing belt of a vehicle engine.
Kawaguchi 1:44^46, 54—58. Kawaguchi discloses that the fiber processing
agent comprises a 2-component dispersoid system comprising a rubber latex
and an epoxy resin. Id. at 2:50-52. Kawaguchi discloses that epoxy resins
have high strength and good adhesiveness and impregnating ability, and
therefore, the epoxy resin component of the inventive system provides a
strong, dense film on a fiber surface. Id. at 2:53—55, 60-62. Kawaguchi
further discloses that the rubber latex component provides flexibility so that
the film has adequate performance even in applications requiring flexural
fatigue resistance. Id. at 2:63—67. Kawaguchi discloses that the fiber
processing agent preferably comprises 35 to 95 wt % rubber latex and 5 to
65 wt % epoxy resin, noting that if the epoxy resin content is less than 5
wt. %, “then density . . . will no longer be exhibited, whereas if the epoxy
resin content exceeds 65 wt %, then the film formed on the fiber surface will
become hard, and the flexural fatigue resistance will be insufficient.” Id. at
3:14—22. Kawaguchi discloses that bisphenol type epoxy resin (e.g., a
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Application 12/937,696
bisphenol A type or bisphenol F type) or a polyphenol type epoxy resin (e.g.
a phenol novalac type or cresol novalac type) is preferable as the epoxy
resin. Id. at 3:54—59. According to Kawaguchi, “[i]n terms of adhesiveness
to the matrix rubber of the rubber product and versatility, it is preferable to
use a bisphenol A type or phenol novalac type epoxy resin.” Id. at 3:62—65.
Kawaguchi discloses that “there is no particular limitation on the type of the
rubber that is reinforced.” Id. at 5:5—6.
The Examiner finds Fisher discloses or suggests the invention as
claimed with the exception of a specific teaching of using bisphenol A
epoxy novolak as the epoxy resin. Final Act. 2-4; see also Examiner’s
Answer mailed Dec. 2, 2013 (“Ans.”), 11. The Examiner finds “Kawaguchi
discloses a similar adhesive composition used to bond fiber reinforcements
to rubber materials.” Final Act. 4. The Examiner further finds Kawaguchi
teaches that novolac epoxy resins of the type used in Fisher’s composition,
as well as bisphenol A epoxy novolak, are useful in Kawaguchi’s
composition. Id. The Examiner finds one of ordinary skill in the art would
have understood from Kawaguchi that bisphenol A epoxy novolak is an art-
recognized equivalent of the novolac-type epoxy resins explicitly described
in Fisher and, therefore, would have utilized a bisphenol A epoxy novolak as
the epoxy component in Fisher’s composition (Final Act. 4—5), noting Fisher
states that any type of epoxy can be used and Kawaguchi teaches that
bisphenol A novolak as a preferred epoxy resin in adhesive compositions
used in bonding fiber reinforcements to rubber materials (see id. at 9—10;
Ans. 10-11).
Appellant relies on the same arguments in traversing both grounds of
rejection (see App. Br. 11—12), and does not present separate arguments in
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Application 12/937,696
support of patentability of any dependent claims (see generally id. at 2—12).
Appellant contends the Examiner reversibly erred in: (1) finding one of
ordinary skill in the art would have considered Kawaguchi’s disclosure as
being relevant to a three component adhesive composition, because
Kawaguchi “explicitly teaches away from a 3-component system and
stresses the importance of a 2-component dispersion system” (id. at 3);
(2) finding one of ordinary skill in the art would have utilized bisphenol A
epoxy novolak in Fisher’s composition, because neither Fisher nor
Kawaguchi provides incentive or guidance to select bisphenol A epoxy
novolak from the extensive lists of potentially useful epoxy resins (id. at 4—
5); (3) finding one of ordinary skill in the art would have considered
Kawaguchi’s teachings applicable to a composition comprising an RFF
latex, because Kawaguchi only utilizes RFF in a comparative example,
suggesting it is not a suitable rubber latex in Kawaguchi’s composition (id.
at 5); (4) failing to identify “a ‘reference composition’ that would be useful
as a starting point for one of ordinary skill in the art” as required by the
relevant case law, i.e., Otsuka Pharmaceutical Co. v. Sandoz Inc., 678 F.3d
1280 (Fed. Cir. 2012) and Unigene Labs., Inc. v. Apotex, Inc., 655 F.3d 1352
(Fed. Cir. 2011) (App. Br. 6—8); and (5) failing to give sufficient weight to
Appellant’s evidence of unexpected results (see id. at 8—11).
We have considered Appellant’s arguments, but do not find them
persuasive of reversible error in the Examiner’s conclusion of obviousness
for substantially the same reasons expressed by the Examiner in the
Response to Argument section of the Answer. See Ans. 8—13. We add the
following discussion to identify findings by the Examiner which we do not
rely upon in our decision and to explain the relevant case law.
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Turning first to the case law cited by Appellant, we have reviewed
Unigene and Otsuka, but are not persuaded that these cases stand for the
proposition that in conducting an obviousness analysis of the claims in this
appeal, the Examiner was required to select a specific embodiment, or
“reference composition” in Fisher or Kawaguchi to serve as a starting point
for one of ordinary skill in the art (see App. Br. 7; Reply Brief filed Feb. 3,
2014 (“Reply Br.”), 3). See Otsuka, 678 F.3d at 1291—93 (considering the
issue of whether the district court erred in finding clozapine and risperidone
would have been considered viable lead compounds in determining the
validity of claims to aripiprazole); Unigene, 655 F.3d at 1361—62 (“/« the
context of a composition or formulation patent where the patented
formulation was made to mimic a previously FDA-approved formulation, the
functional and pharmaceutical properties of the ‘lead compound’ can be
more relevant than the actual chemical structure (though not always
mutually exclusive). Thus, the term ‘reference composition’ is more
appropriate than ‘lead compound’ when considering obviousness for a
chemical composition that the infringer deliberately imitates'1'’ (emphasis
added).).
We find the Examiner properly identified disclosure in Fisher and
Kawaguchi in support of a finding that, at the time of Appellant’s invention,
bisphenol A epoxy novolak and the novolac-type epoxy resins described in
Fisher were known equivalents for use in adhesive compositions applied to
reinforcement materials used in reinforced rubber products (see, e.g., Final
Act. 4—5). See In re Christensen, 82 F.2d 715, 716 (CCPA 1936)
(explaining that the examiner must provide evidence to establish compounds
are well-known equivalents for a specific purpose). The Examiner also
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Application 12/937,696
found Kawaguchi teaches a preference for bisphenol A epoxy novolak, and,
thereby properly identified direction to select this compound from a number
of possible choices of epoxy compounds (see Final Act. 4—5). See
PharmaStem Therapeutics, Inc. v. ViaCell, Inc., 491 F.3d 1342, 1364 (Fed
Cir. 2007) (explaining that an obviousness rejection predicated on selection
of one or more components from numerous possible choices may be
appropriate if the prior art provides direction as to which of many possible
choices is likely to be successful). We are not persuaded, therefore, that the
Examiner’s fact finding and reasoning is insufficient to support a prima facie
case of obviousness. See In re Mayne, 104 F.3d 1339, 1340 (Fed. Cir. 1997)
(noting that the substitution of one known element for a known equivalent is
prima facie obvious); In re Fout, 675 F.2d 291, 301 (CCPA 1982) (“Express
suggestion to substitute one equivalent for another need not be present to
render such substitution obvious.”)
We turn next to Appellant’s contentions that Kawaguchi teaches away
from using bisphenol A epoxy novolak in a three-component dispersoid
system such as Fisher’s. See App. Br. 3, 5. Appellant argues Kawaguchi
requires a two component system consisting essentially of a latex and an
epoxy, and teaches away from a three component system. App. Br. 3. In
response to this argument, the Examiner found Kawaguchi’s system does not
exclude components such as cross-linking agents and, therefore, “appears to
embrace the optional blocked isocyanate used by Fisher.” Ans. 10. In its
Reply Brief, Appellant contends the Examiner erred in this finding, directing
us to page 2, paragraph 2, and page 6, paragraph 1 of the Specification as
evidence that Fisher’s blocked isocyanate is a dispersoid, and expressly
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Application 12/937,696
excluded from Kawaguchi’s two component dispersoid system (see
Kawaguchi 3:1—11). Reply Br. 1.
We find it unnecessary to and, therefore, do not adopt the
aforementioned finding by the Examiner in the Response to Argument
section of the Answer (see Ans. 10) in finding Kawaguchi does not teach
away from the claimed invention.
“A reference may be said to teach away when a person of ordinary
skill, upon reading the reference, would be discouraged from following the
path set out in the reference, or would be led in a direction divergent from
the path that was taken by the applicant.” In re Gurley 27 F.3d 551, 553
(Fed. Cir. 1994). As acknowledged by Appellant, Kawaguchi does not
explicitly describe RFF as a suitable latex for use in its composition (see
App. Br. 5) and, therefore, does not clearly discourage or lead the ordinary
artisan away from a three component dispersoid system comprising RFF,
bisphenol A epoxy novolak, and a blocked isocyanate, as required by the
appealed claims. Moreover, even if true, the fact that Kawaguchi, alone,
might not have suggested a three component system as claimed is not
persuasive in showing error in the Examiner’s conclusion of obviousness,
because the Examiner’s rejections are based on the combined teachings of
Fisher and Kawaguchi, and rely on Kawaguchi solely to establish that
bisphenol A epoxy novolak and the novolac-type epoxy resins described in
Fisher were known equivalents at the time of the invention. See Final Act
2-4; Ans. 10—11. As is apparent from the above-cited disclosure in Fisher
(see supra 2-4), one of ordinary skill in the art would have understood from
Fisher that drawbacks associated with a two component system comprising
RFF and greater than 15 wt. % epoxy-cresol-novolak resin (Fisher 17) are
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Application 12/937,696
overcome by either a two component system comprising RFL and any type
of epoxy (id. 115) in lower amounts of about 2—12 wt. % or a three
component system that further includes 2—12 wt. % blocked isocyanate (id. 1
8). We additionally note that Kawaguchi’s disclosure does not support
Appellant’s argument that Kawaguchi teaches RFL as being unsuitable for
use in its inventive composition. See App. Br. 5. With respect to
Kawaguchi’s comparative example, relied on by Appellant in support of this
argument, Kawaguchi clearly states that the poor results were caused by the
absence of an epoxy resin (not the presence of RFL) in the composition.
Kawaguchi 7:11—16 (“[I]t was found that, because the glass fiber cord and
the toothed belt of the comparative example were treated using a fiber
processing agent not containing an epoxy resin, the water resistance was
poor, and the heat resistance deteriorated, and hence the drop in the retention
rate H was marked.”).
Turning to Appellant’s argument that the Specification provides
evidence of unexpected results, we agree with the Examiner’s finding (see
Ans. 13) that Appellant’s evidence (see App. Br. 8—11) is not persuasive of
unexpected results because Appellant has not provided an adequate basis to
support a finding that other embodiments falling within the scope of the
claims will behave in the same manner demonstrated by the single example
relied on by Appellant (see id. at 10 (arguing “[t]he data rather clearly shows
that a significant improvement occurs when the epoxy of the present claims
is used in the claimed invention versus the epoxy used from the closest
example of the prior art”)). See In re Kao, 639 F.3d 1057, 1068 (Fed. Cir.
2011) (“If an applicant demonstrates that an embodiment has an unexpected
result and provides an adequate basis to support the conclusion that other
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Application 12/937,696
embodiments falling within the claim will behave in the same manner, this
will generally establish that the evidence is commensurate with [the] scope
of the claims.”); In reKlosak, 455 F.2d 1077, 1080 (CCPA 1972) (stating
that the burden of analyzing and explaining data to support nonobviousness
rests with the Appellant). Appellant’s arguments attempt to improperly shift
the burden to the Examiner to show that other embodiments falling within
the scope of the claims would not exhibit the same type of unexpected
results demonstrated by the single, tested embodiment. See Reply Br. 5
(“[N]o allegation has been made why one would, for example, expect
differing results with varying certain parameters, despite the remarkable
difference demonstrated among the example according to the claims versus
the comparison example.”).
In sum, Appellant has not persuaded us of reversible error in the
Examiner’s conclusion of obviousness. Accordingly, we sustain the
rejections of claims 1—23
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)(iv).
AFFIRMED
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