Ex Parte LIDownload PDFPatent Trial and Appeal BoardJul 25, 201713029293 (P.T.A.B. Jul. 25, 2017) Copy Citation 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; 2 Appeal 2016-005171 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. 3 Appeal 2016-005171 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. 4 Appeal 2016-005171 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. 5 Appeal 2016-005171 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. 6 Appeal 2016-005171 Application 13/029,293 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 7 Appeal 2016-005171 Application 13/029,293 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 8 Appeal 2016-005171 Application 13/029,293 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)). 9 Appeal 2016-005171 Application 13/029,293 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 10 Appeal 2016-005171 Application 13/029,293 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 11 Copy with citationCopy as parenthetical citation