Ex Parte Laskowski et al

Patent Trial and Appeal Board

Jun 23, 2016

13176009 (P.T.A.B. Jun. 23, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/176,009 07/05/2011
26384 7590 06/23/2016
NAVAL RESEARCH LABORATORY
AS SOCIA TE COUNSEL (PA TENTS)
CODE 1008.2
4555 OVERLOOK A VENUE, S.W.
WASHINGTON, DC 20375-5320
FIRST NAMED INVENTOR
Matthew Laskowski
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.
98474-US3 3774
EXAMINER
FINK, BRIEANN R
ART UNIT PAPER NUMBER
1768
MAILDATE DELIVERY MODE
06/23/2016 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
Ex parte MATTHEW LASKOSKI and TEDDY M. KELLER
Appeal2014-001302 1
Application 13/176,0092
Technology Center 1700
Before DEMETRA J. MILLS, FRANCISCO C. PRATS, and
JOHN E. SCHNEIDER, Administrative Patent Judges.
PRATS, Administrative Patent Judge.
DECISION ON APPEAL
This appeal under 35 U.S.C. § 134 involves claims to a thermoset
made by curing a mixture including a phosphine oxide-containing
phthalonitrile monomer and a curing agent. The Examiner rejected the
claims as obvious.
We have jurisdiction under 35 U.S.C. § 6(b). We affirm.
1 The real party in interest in this appeal is the Government of the United
States of America, as represented by the Secretary of the Navy.
2 This application is a continuation of Application No. 11/851,411, in which
a similar rejection was affirmed in Appeal No. 2010-011889. App. Br. 2;
see also App. Br., Appendix B (includes a copy of the previous decision).
Appeal2014-001302
Application 13/176,009
STATEMENT OF THE CASE
The sole rejection before us for review is the Examiner's rejection of
claims 1---6 under 35 U.S.C. § 103(a) as obvious over Keller3 and McGrath.4
Final Action 2-5.
Claim 1, the sole independent claim, is representative and reads as
follows (App. Br. 6):
1. A thermoset made by curing a mixture comprising a
curing agent and a phthalonitrile monomer hav[ing] the
formula:
NG)). It= \1--0- . ~ EX· GN ,_. -()-til-~v-' ·.. . p ~ ;J 0-1'\'-0 f . ..
A .. . l I ~ ' I .
~'(:" ,r/ ,,;> . r;»<
.~... ,_, I ,_,.
i1
wherein each R 1 is an independently selected aromatic-
containing group;
wherein each R2 is independently selected from methyl
and phenyl; and
wherein n is a positive integer.
OBVIOUSNESS
The Examiner finds that Keller teaches a thermoset formed by curing
a phthalonitrile monomer with a curing agent, as required by claim 1, but
concedes that Keller "does not wholly teach the phthalonitrile monomer as
claimed," in that Keller's phthalonitrile monomer does not include the
phosphine oxide moiety present in the formula recited in claim 1. Final
Action 3. To address that deficiency, the Examiner cites McGrath as
teaching high-performance engineering thermoplastics composed of a
3 US Patent App. Pub. No. 2004/0181029 Al (published Sept. 16, 2004)
4 U.S. Patent No. 5,387,629 (issued Feb. 7, 1995).
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Appeal2014-001302
Application 13/176,009
repeating unit that includes the phosphine oxide moiety present in claim 1 's
phthalonitrile monomer. Id.
The Examiner notes that McGrath discloses a number of advantages
of its phosphine oxide-containing materials, including exceptional behavior
"under high temperatures (space shuttle reentry, col. 1, 11. 35-54) and
resistance to atomic oxygen, i.e. such materials exhibit high thermal and
oxidative stability; as a consequence McGrath teaches that material
containing the phosphine oxide moiety exhibits increased lifetime by
reducing etching by atomic oxygen (col. 1, 11. 44-53)." Final Action 3. The
Examiner notes also that the "phosphine oxide moiety further imparts 'self-
extinguishing' behavior via the formation of char (col. 6, 11. 37-38)." Id.
Given the references' teachings, Examiner concludes that an ordinary
artisan would have considered it obvious to incorporate McGrath's structural
repeating unit into Keller's curable phthalonitrile monomer "to incorporate
all the aforementioned benefits derived from incorporating said phosphine
oxide moiety (i.e. increased thermo-oxidative stability, self-extinguishing
behavior via char formation, [and] increased lifetime of articles formed by
the cured thermoset)." Id. at 4.
As stated in In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992):
[T]he examiner bears the initial burden . . . of presenting a
prim a facie case of unpatentability ....
After evidence or argument is submitted by the applicant
in response, patentability is determined on the totality of the
record, by a preponderance of evidence with due consideration
to persuasiveness of argument.
We select claim 1 as representative of the claims subject to this
ground of rejection. 37 C.F.R. § 41.37(c)(l)(iv). Appellants' arguments do
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Appeal2014-001302
Application 13/176,009
not persuade us that a preponderance of the evidence fails to support the
Examiner's prima facie case of obviousness as to claim 1. To the contrary,
we adopt as our own the Examiner's findings, reasoning, and conclusion that
claim 1 would have been prima facie obvious over the combination of cited
references.
As to Appellants' arguments, Appellants acknowledge McGrath's
teaching that its phosphine oxide moiety imparts desirable self-extinguishing
properties to polymers, resulting in the formation of char at yields of 20-
40%, whereas tested polymers not containing phosphorus completely
volatilized. App. Br. 3--4 (citing McGrath col. 6, 11. 37-39, col. 7, 11. 20-28).
Nonetheless, Appellants contend, an ordinary artisan would not have been
motivated to add McGrath's phosphine oxide to the phthalonitrile monomers
used in Keller's thermo sets because Keller discloses that its thermosets
"have char yields over 70% ([0123]-[0125]), and so Keller's thermosets
would already be self-extinguishing." Id. at 4.
Thus, Appellants contend, adding McGrath's phosphine oxide moiety
"could not impart the property of being self-extinguishing because it was
already present. A person of ordinary skill would not add phosphorous to
the thermosets of Keller to make them self-extinguishing. Keller even
shows that better char yields than in McGrath were obtained without the use
of phosphine oxide." Id. Moreover, Appellants contend, "a compound may
not be selected as lead compound when it does not possess the property to be
improved on." Id. (citing In re Otsuka, 378 F.3d 1280 (Fed. Cir. 2011) and
Takeda Chem. Indus., Ltd. v. Alphapharm Pty.,Ltd., 492 F.3d 1350, 1357
(Fed. Cir. 2007)).
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Application 13/176,009
The Examiner responds that Keller's polymers would have been
expected to have an even greater char yield with the inclusion of phosphine
oxide moieties. Ans. 6 (citing McGrath, col. 7, 11. 20-28). The Examiner
notes also that an additional advantage of the phosphine moiety taught by
McGrath is high thermal stability, and McGrath shows in certain
embodiments that the "the phosphine oxides showed TGAs
[thermogravimetric analyses] of 5% weight loss in air at a temperature of
495°C up to 520°C (Table 1 ), whereas Keller only teaches the cured
phthalonitriles as beginning to 'lose weight' at about 480°C (p. 18
Examples)." Id. at 7.
In response, Appellants contend that McGrath "only provides
evidence that inclusion of phosphine oxide may convert a material that does
not char at all into a material that does char. There is no evidence that
phosphine oxide can improve the char yield of a material that would already
char without the phosphine oxide." App. Br. 4. Appellants argue also that
the weight loss data in McGrath and Keller "tends to show that the
phosphine oxide of McGrath is merely equivalent to the phthalonitrile
groups of Keller with regard to weight loss at that temperature. This does
not provide an expectation that Keller could be improved by adding
phosphine oxide." Reply Br. 1.
Appellants' arguments do not persuade us that an ordinary artisan
lacked a reason to include McGrath's phosphine oxide moieties in the
phthalonitrile monomers used in Keller's thermo sets. As the Supreme Court
explained inKSR Int'! v. Teleflex Inc., 550 U.S. 398, 421 (2007):
When there is a design need or market pressure to solve a
problem and there are a finite number of identified, predictable
solutions, a person of ordinary skill has good reason to pursue
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Application 13/176,009
the known options within his or her technical grasp. If this
leads to the anticipated success, it is likely the product not of
innovation but of ordinary skill and common sense. In that
instance the fact that a combination was obvious to try might
show that is was obvious under § 103.
In the instant case, as to design need, Keller tested the thermal
stability and char-forming properties of its thermosets, thus demonstrating
that those are desirable properties of its thermosets. See, e.g., Keller i-f 123
("The high char yield of the cured polymer, 74% after heating to 1000° C.,
showed that the cured material had excellent thermal stability.").
McGrath, in tum, expressly teaches that its phosphorus-containing
moiety consistently imparted those properties to a variety of tested polymers.
See McGrath, col. 7, 11. 31-36 ("Similar characteristics to those of the BP
PEPO polymer were observed for any polymeric system containing
phosphorus; that is, all homopolymers, blends and copolymers with the
phosphine oxide moiety showed significant char yields at these very high
temperatures.") (emphasis added).
Given Keller's teaching that thermal stability and char formation are
desirable properties of its thermosets, and given McGrath's teaching that its
phosphorus-containing moiety consistently imparted those properties to all
polymers tested, we are not persuaded that an ordinary artisan lacked
motivation to include McGrath's phosphorus-containing moiety in Keller's
phthalonitrile monomers, with the goal of producing a thermo set with
improved thermal stability and char-forming properties. Appellants,
moreover, do not direct us to any clear or specific evidence suggesting that
the thermoset recited in claim 1 has any properties that an ordinary artisan
would have considered unexpected in view of the cited prior art.
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Further, as to reasonable expectation of success, our reviewing court
has explained that "[ o ]bviousness does not require absolute predictability of
success .... For obviousness under§ 103, all that is required is a reasonable
expectation of success." In re 0 'Farrell, 853 F.2d 894, 903-04 (Fed. Cir.
1988); accord, In re Kubin, 561F.3d1351, 1359-61 (Fed. Cir. 2009).
In the instant case, given the teachings in the references discussed
above, we agree with the Examiner that an ordinary artisan would have had
a reasonable expectation of successfully preparing the thermoset recited in
claim 1. Appellants, in contrast, do not direct us to any clear or specific
evidence suggesting that an ordinary artisan lacked a reasonable expectation
of successfully preparing the thermoset recited in claim 1.
In sum, for the reasons discussed, Appellants' arguments do not
persuade us that a preponderance of the evidence fails to support the
Examiner's prima facie case of obviousness as to claim 1. Because they
were not argued separately, claims 2---6 fall with claim 1. 37 C.F.R.
§ 41.37(c)(l)(iv).
SUMMARY
We affirm the Examiner's obviousness rejection of claims 1---6 over
Keller and McGrath.
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
7