Ex Parte LI

Patent Trial and Appeal Board

Jul 25, 2017

13029293 (P.T.A.B. Jul. 25, 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.
6443 1449
EXAMINER
REA, CHRISTINE
ART UNIT PAPER NUMBER
1786
MAIL DATE DELIVERY MODE
13/029,293 02/17/2011
25280 7590
Legal Department (M-495)
P.O. Box 1926
Spartanburg, SC 29304
07/26/2017
Shulong Li
07/26/2017 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 PATENT TRIAL AND APPEAL BOARD
Ex parte SHULONG LI
Appeal 2016-005171
Application 13/029,293
Technology Center 1700
Before CATHERINE Q. TIMM, CHRISTOPHER L. OGDEN, and
MICHAEL G. McMANUS, Administrative Patent Judges.
McMANUS, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner finally rejected claims 1—27 of Application 13/029,293
under 35 U.S.C. § 103(a) as obvious, under 35 U.S.C. § 112 11 for failure to
comply with the written description requirement, and under 35 U.S.C. § 112
12 as indefinite. Final Act. (Dec. 24, 2014) 2—6. Appellant1 seeks reversal
of these rejections pursuant to 35 U.S.C. § 134(a). We have jurisdiction
under 35 U.S.C. § 6.
For the reasons set forth below, we affirm.
1 Milliken & Company is identified as the real party in interest. Appeal
Br. 2.
Appeal 2016-005171
Application 13/029,293
BACKGROUND
The present application generally relates to improved adhesive
compositions and textile materials treated with such adhesives. Spec. 3.
Claim 1 is representative of the pending claims and is reproduced
below:
1. A composition for adhering textile materials and rubber-
containing articles comprising:
a) a compound selected from the group consisting of a
non-crosslinked resorcinol-formaldehyde condensate, a
resorcinol-furfural condensate, a phenol-formaldehyde
condensate, and mixtures thereof;
b) a latex component; and
c) an aldehyde component represented by Structure (1),
(2) or (3):
\
CHO
wherein X is selected from the group consisting of
oxygen, nitrogen and sulfur;
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Application 13/029,293
(2)
O *r3
r2
\C:
o
\H
R-t
or
j'
o
XH
wherein Ri, R2 and R3 may be independently selected
from the group consisting of alkyl, aryl, halo, hydrogen,
and carboxylic functional groups; and
wherein the composition is free from formaldehyde.
Appeal Br. 13 (Claims App’x.).
REJECTIONS
On appeal, the Examiner maintains the following rejections:
1. Claims 1—27 are rejected under 35 U.S.C. § 112 11 as failing to
comply with the written description requirement. Final Act. 2.
2. Claims 1—27 are rejected under 35 U.S.C. § 112 12 as
indefinite. Id. at 3.
3. Claims 1—27 are rejected under 35 U.S.C. § 103(a) as obvious
over Girgis (US 4,476,191, issued Oct. 9, 1984) in view of Durairaj (US
2007/0093596 Al, published Apr. 26, 2007). Id. at 3—6.
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Application 13/029,293
DISCUSSION
The Examiner rejected claims 1—27 for failure to comply with the
written description requirement, as indefinite, and as obvious. Id. at 2—6.
As a threshold matter, we address the issue of indefiniteness.
Indefiniteness
During prosecution, a claim is examined for compliance with
35U.S.C. § 112, ]f 2 by determining whether the claim meets threshold
requirements of clarity and precision. In re Skvorecz, 580 F.3d 1262, 1268
(Fed. Cir. 2009).
Claims 1 and 14 each require “a compound selected from the group
consisting of a non-crosslinked resorcinol-formaldehyde condensate, a
resorcinol-furfural condensate, a phenol-formaldehyde condensate . . . and
wherein the composition is free from formaldehyde.” Appeal Br. 13,16
(Claims App.). The Examiner determines that “resorcinol-formaldehyde
condensate” contains formaldehyde yet the claim is required to be “free from
formaldehyde.” Final Act. 3. Accordingly, the Examiner determined the
claim to be indefinite. Id.
Appellant argues that resorcinol-formaldehyde condensate is a
different compound from formaldehyde. Appellant submits an Exhibit2
which teaches that “[rjesorcinol or 1,3 dihydroxybenzene (figure 1 ), is a
white crystalline solid and can undergo a condensation reaction with
formaldehyde to form a resorcinol formaldehyde thermoset resin.” Appeal
2 Terry D. Dee et al., Using Resorcinol and Resorcinol-Formaldehyde
Resins to Promote Bonding of Rubber to Metal and Textile Reinforcements,
Rubber World, September 1, 2011. Appeal Br., Evid. App’x, Exhibit A.
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Application 13/029,293
Br., Exhibit A 1. Appellant further refers to the Specification which depicts
the reaction of formaldehyde and resorcinol to form resorcinol-
formaldehyde condensate. See Spec. 11 (Reaction I).
Based on the foregoing, we find that “formaldehyde” is a separate and
distinct compound from its reaction product. Accordingly, Appellant has
identified a reversible error in the Examiner’s finding that formaldehyde
condensates contain formaldehyde.
Obviousness
The Examiner additionally found claims 1—27 obvious over Girgis in
view of Durairaj. Final Act. 3—6. Appellant argues that such rejection is
erroneous for several reasons. First, Appellant asserts that the proposed
combination does not teach a composition free of formaldehyde. Appeal Br.
9. Second, Appellant contends that any prima facie showing of obviousness
is rebutted by their showing of the unexpected benefits that result from the
absence of formaldehyde. Id. at 9—10. Third, Appellant argues that, in view
of the differences between the secondary reference, Durairaj, and the present
application, it would not have been obvious to a person of ordinary skill in
the art to look to Durairaj and combine its teachings with that of Girgis. Id.
at 11. We begin with the third argument.
Differences Between Durairaj and the Application at Issue
Appellant argues that there are “significant differences” between the
secondary reference, Durairaj, and the application at issue. Appeal Br. 11.
Specifically, Appellant asserts that Durairaj teaches a method of making
novolak resins which are prepared under acidic conditions although the
Appellant’s claimed composition is prepared under basic conditions. Id.
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Application 13/029,293
It is unclear whether Appellant argues that Durairaj is not analogous
art or that there would have been no reason to combine the teachings of
Girgis and Durairaj. We will address each argument.
To be analogous art, a prior art reference must (1) be reasonably
pertinent to the particular problem with which the inventor is involved or (2)
be from the same field of endeavor. See Innovention Toys, LLC v. MGA
Entm’t, Inc., 637 F.3d 1314, 1321 (Fed. Cir. 2011).
In the Background of the Invention section, Durairaj provides as
follows:
Even though the resorcinol or resorcinol-formaldehyde
(R/F) based adhesive formulations are now used for
improving the bonding performance of various synthetic fiber
materials to rubber compounds, constant adhesion
improvements needed in these materials for various high
performance applications require higher performance
resorcinolic products for use. This is particularly true for
providing a resorcinolic novolak resin solution for an
application of the most difficult adhesion enhancement between
the polyester fibers and rubber compounds. Therefore, there is a
need for a flexibilized resorcinolic novolak resins that are
useful in the adhesive formulations development for improving
or enhancing the polyester tire cords adhesion towards the
rubber compounds used by the tire industry.
Durairaj 1 83 (emphasis added). Similarly, Appellant’s Specification states
that “[t]he improved adhesion composition comprises a non-crosslinked
resorcinol-formaldehyde and/or resorcinol-furfural condensate (or a phenol-
formaldehyde condensate that is soluble in water), a rubber latex, and an
3 A “novolak” is an RF resin prepared under acidic conditions with
resorcinol/formaldehyde molar ratios of 1/0.4 up to 1/0.75. Appeal Br.,
Exhibit A 1—2.
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aldehyde component such as 2-furfuraldehyde.” Spec. 1. The Specification
further provides that “[e]nd-use articles that contain the treated textile-rubber
composite include, without limitation, automobile tires, belts, and hoses as
well as printing blankets.” Id. That is, both relate to resorcinol-
formaldehyde based adhesives for use in automobile tires. Accordingly,
Durairaj is analogous art to the present Specification.
In the alternative, Appellant may be arguing that there is no reason to
combine the teachings of Durairaj and Girgis. The Examiner found that
Durairaj teaches that “butyraldehyde can enhance water solubility, further
improving compatibility and therefore improving adhesion.” Final Act. 5
(citing Durairaj 141). The Examiner determined, therefore, that it would
have been obvious to one of ordinary skill in the art to include butyraldehyde
as taught by Durairaj in the composition taught by Girgis because
butyraldehyde can help improve adhesion. Final Act. 5.
Appellant’s argument that the resins taught by Durairaj are prepared
under acidic conditions while the present Specification teaches that the
reaction occurs under basic conditions does not bear upon one’s reason to
combine the teachings of Girgis and Durairaj — both of which, the Examiner
finds, teach that the reaction is performed under acidic conditions. Answer
9. Accordingly, Appellant has not shown error in the Examiner’s finding
that there would have been reason to combine the teachings of Girgis and
Durairaj.
A Composition Free of Formaldehyde
Appellant additionally argues that the Examiner’s proposed
combination does not teach a composition free from formaldehyde. Id. at 9.
The primary reference, Girgis, teaches to “tie up” unreacted formaldehyde as
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follows: “a small amount of concentrated ammonia (28% solution) is added
to tie up any unreacted formaldehyde so that no further resin cross-linking
occurs.” Girgis 10:33—36. This portion of Girgis teaches that it is desirable
that there be no free formaldehyde. Additionally, the Examiner finds that
Durairaj teaches to use butyraldehyde rather than formaldehyde. Answer 8.
Accordingly, Appellant’s argument is not supported by the references.
Unexpected Benefit of Being Free of Formaldehyde
Appellant further argues that any prima facie showing of obviousness
is rebutted by the showing of the unexpected benefits accruing from a
composition that is free of formaldehyde. Appeal Br. at 9—10.
Establishing unexpected results requires providing a side-by-side
comparison of the claimed invention with the closest prior art which is
commensurate in scope with the claims, and showing that the result would
have been unexpected by one of ordinary skill in the art. See In re Baxter
Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991); In re De Blauwe, 736
F.2d 699, 705 (Fed. Cir. 1984).
The Examiner finds Appellant’s showing is not commensurate with
the scope of the claims (“Appellant’s examples all teach the use of 2-
furfuraldehyde”) and that Appellant’s comparative examples lack sufficient
quantitative results to evaluate the claim of unexpected results. Answer 9.
These findings are unrebutted.
Moreover, as above, Girgis teaches “to tie up any unreacted
formaldehyde so that no further resin cross-linking occurs.” Girgis 10:33—
3 6. This indicates that the benefits arising from the absence of free
formaldehyde were known. Accordingly, after considering the totality of the
evidence anew, we determine that Appellant has failed to rebut the prima
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facie case of obviousness by showing unexpected benefits arising from a
composition that is free of formaldehyde.
Written Description
The Examiner rejected claims 1—27 for failure to comply with the
written description requirement. Final Act. 2. The Examiner determined
that the claim limitation “wherein the composition is free from
formaldehyde,” found in claims 1 and 14, lacks support in the Specification.
Id. The Examiner finds that the Specification teaches a resorcinol-
formaldehyde resin and there “is no support in the specification for a
‘formaldehyde free’ composition.” Id. The Examiner further states that
“[njowhere in the specification does Applicant use the term ‘free from
formaldehyde’ or ‘formaldehyde free.’” Answer 6.
Appellant argues that the Specification provides support for the “free
from formaldehyde” limitation. Id. at 7—8. In support of such argument,
Appellant cites to several portions of the Specification which indicate that 1)
2-furfuraldehyde has a higher boiling point than formaldehyde, 2) 2-
furfuraldehyde is less toxic than formaldehyde, and 3) adhesive
compositions made using 2-furfuraldehyde are preferable to those made with
formaldehyde. Id. at 7 (citing Spec. 2:18—26, 38:9-17, 39:14—20, and
44:19-45:2).
For an applicant to comply with the written description requirement,
the specification must “convey with reasonable clarity to those skilled in the
art that, as of the filing date sought, he or she was in possession of the
invention.” Carnegie Mellon Univ. v. Hoffmann-La Roche Inc., 541 F.3d
1115, 1122 (Fed. Cir. 2008) (quoting Vas-Cath Inc. v. Mahurkar, 935 F.2d
1555, 1563-64 (Fed. Cir. 1991)).
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Here, the “free from formaldehyde” limitation is a negative limitation.
A negative limitation is supported where the specification describes
disadvantages of the feature in question. See Santarus, Inc. v. Par
Pharmaceutical, Inc., 694 F.3d 1344, 1351 (Fed. Cir. 2012) (“[njegative
claim limitations are adequately supported when the specification describes
a reason to exclude the relevant limitation. Such written description support
need not rise to the level of disclaimer.”)
Appellants cite to the Background of the Invention portion of the
Specification. That portion teaches that resorcinol formaldehyde latex
(RFL) compositions are known in the art but have certain disadvantages.
Spec. 1. For example, the Specification teaches that “[t]he presence of
formaldehyde in traditional RFL compositions can present multiple health
hazards.” Spec. 1. Additionally, the Specification teaches that 2-
furfuraldehyde has a higher boiling point than formaldehyde, is less toxic,
and yields a more stable composition. Id. at 2, 44.
The Specification additionally includes certain example compositions
where a resorcinol formaldehyde condensate is combined with either 2-
furfuraldehyde or formaldehyde. The Specification indicates that the 2-
furfuraldehyde containing compositions are more adhesive and more stable.
Spec. 38-39.
The Specification additionally discloses a composition having an
“excess amount of aldehyde.” Id. at 16. This is similar to Girgis’ disclosure
regarding excess “unreacted formaldehyde.” Girgis 10:24—36. The
Specification, however, teaches this as an alternative to a composition with
excess phenolic monomers. Spec. 16. Accordingly, the Specification
includes a description of a manner of making the composition with
resorcinol-formaldehyde condensate yet without excess unreacted
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formaldehyde originating from the resorcinol formaldehyde condensate resin
mixture.
In view of the foregoing, we reverse the Examiner’s finding that the
Specification does not include a written description reasonably conveying to
one of ordinary skill in the art that Appellants had possession of a
composition that is “free from formaldehyde.”
CONCLUSION
We reverse the rejection of claims 1—27 for failure to comply with the
written description requirement, reverse the rejection of claims 1—27 as
indefinite under 35 U.S.C. § 112 12, and affirm the rejection of claims 1—27
as obvious under 35 U.S.C. § 103.
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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