Ex Parte Locko et al

Patent Trial and Appeal Board

Aug 3, 2016

11950556 (P.T.A.B. Aug. 3, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
111950,556 12/05/2007 GEORGE A. LOCKO
67844 7590 08/05/2016
ARIZONA CHEMICAL COMPANY, LLC
ATTN: INTELLECTUAL PROPERTY DEPARMENT (LEGAL)
4600 Touchton Road East
Suite 1200
Jacksonville, FL 32246
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.
ARZ 038083 US 6773
EXAMINER
KAHN, RACHEL
ART UNIT PAPER NUMBER
1766
NOTIFICATION DATE DELIVERY MODE
08/05/2016 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):
iplaw@kraton.com
beth.haslam@azchem.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GEORGE A. LOCKO, GARY W. ASTROLOGES,
NANCY W. HAIRMAN, and JOHN T. CAIN
Appeal2015-002257
Application 11/950,556
Technology Center 1700
Before JEFFREY T. SMITH, CHRISTOPHER C. KENNEDY, and
AVEL YN M. ROSS, Administrative Patent Judges.
ROSS, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellants2 appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 27-39. We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
1 In our decision below, we refer to the Final Office Action appealed from,
mailed December 1 7, 2013 (Final Act.); the Appeal Brief filed September
17, 2014 (Appeal Br.); the Examiner's Answer mailed October 29, 2014
(Ans.); and the Reply Brief filed December 29, 2014 (Reply Br.).
2 Appellants identify the Arizona Chemical Company, LLC, the assignee of
the instant application, as the real party in interest. Appeal Br. 3.
Appeal2015-002257
Application 11/950,556
STATEMENT OF CASE
The claims are directed to polyamide polyols and polyurethanes.
Spec. 1. Claim 27, reproduced below, is illustrative of the claimed subject
matter:
27. A composition, comprising a compound represented by
the formula
T-[Z- (C=O)-R2-(C=O)]n-Z-T
wherein n is at least 1; each T independently is selected,
may be the same or different, and is X-RI-(C=O); each X is
independently selected, may be the same or different and is H or
OH, wherein at least one X is OH; each RI is independently
selected, may be the same or different, and is a hydrocarbon
group having from 2 to 54 carbon atoms; each R2 is
independently selected, may be the same or different, and is a
hydrocarbon group having from 2 to 54 carbon atoms; Z is of the
form NLN, a pair of nitrogen atoms joined by a hydrocarbon link
L, L may be a substituted or unsubstituted hydrocarbon group
between the nitrogen atoms, wherein at least one L comprises a
cyclical hydrocarbon group into which at least one of the
nitrogen atoms is incorporated therein, and wherein at least one
but less than all Z groups comprises a polyoxyalkyl group.
Claims Appendix at Appeal Br. 18.
REJECTIONS
The Examiner rejects claims 27-39 under 35U.S.C§103(a) as being
unpatentable over Reichert3 in view of Hartman. 4 Appellants seek our
review of the Examiner's rejection. Appellants provide no substantive
3 Reichert et al., US 5,349,011, issued September 20, 1994 (hereinafter
"Reichert").
4 Hartman et al., US 5,180,802, issued January 19, 1993 (hereinafter
"Hartman").
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Application 11/950,556
argument separate from what is argued for independent claim 27 for the
claims depending there from, i.e., claims 28-39. Appeal Br. 8-11.
Therefore, we focus our discussion on claim 27 to resolve the issues on
appeal.
OPINION
The Examiner maintains the rejection of claims 27-39 for the reasons
"previously set forth in an action mailed 8/5/13" and concludes that the
combination of Reichert and Hartman render the claims unpatentable. Final
Act. 2. Appellants do not dispute the Examiner's findings that the collective
teachings of Reichert and Hartman would have suggested the composition of
the claims (Appeal Br. 8-11.). Rather, Appellants contend that Hartman as a
whole teaches away from both Reichert and the claimed composition. Id. at
9. Specifically, Appellants argue that
Hartman describes polyamides that "do not contain appreciable
levels of active hydrogen containing species" (i.e., that do not
contain, for example, terminal -OH groups). Col. 2, lines 36-39.
To form such polyamides, Hartman employs monocarboxylic
acid or monoamine capping agents that have a functionality of
one (i.e., that do not include an active hydrogen group, such as
hydroxyl group, once reacted to cap the polyamide ). Col. 4, lines
25-31.
Id. Therefore, urge Appellants, because Reichert prefers reactive capping
agents (Id.) and the instant invention which contains at least one terminal -
OH group (Id. at 10), Hartman teaches away from Reichert and the instant
application. Further, Appellants argue that even if one of skill in the art
would combine Reichert and Hartman, "they would arrive at a polyamide
free from terminal active hydrogen groups (e.g., terminal -OH groups), not a
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Application 11/950,556
compound including at least one terminal-OH group as recited in the
claims." Id. at 11.
We agree with the Examiner (Final Act. 3--4; Ans. 3--4), that one of
ordinary skill in the art would not have viewed Hartman's teachings as a
teaching away from the combination as proposed by the Examiner nor would
the combination have resulted in a polyamide free of terminal active
hydrogen groups. Appellants' arguments are not germane to the
fundamental basis of the Examiner's rejection. Both Hartman and Reichert
teach preparation of a polyamide rheological additive. Hartman, col. 1, 11.
6-11; Reichert, col. 4, 11. 33-37. But, Reichert does not teach using a
diamine monomer "having at least two amino groups which has a formula
according to the presently recited 'NLN' group (i.e., wherein a pair of
nitrogen atoms is joined by hydrocarbon L, and wherein at least one L
comprises a cyclical hydrocarbon group ... )." Final Act. 3. Hartman
teaches that polyamides may be formed of suitable polyamine compounds
that meet the claimed "NLN group," including piperazine, N-
aminoethylpiperazine, bis-(3-aminopropyl)piperazine and 1,3-di-4-piperidyl
propane. Hartman, col. 6, 11. 37--40. In addition, Hartman teaches that
certain polyamine compounds taught by Reichert are similarly suitable for
preparation polyamide rheological additives of Hartman. Compare Hartman,
col. 6, 11. 27-47 with Reichert, col. 5, 11. 54-63. Thus, the skilled artisan at
the time would have understood a simple substitution of the cyclic
polyamine of Hartman for the polyamine of Reichert-known to be
equivalent for preparing polyamide additives, i.e., to obtain a predictable
result-to be obvious. KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 416
(2007) ("The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.").
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Application 11/950,556
Moreover, Appellants have failed to explain how Hartman would
supplant the existing teachings of Reichert and discourage the skilled artisan
from following the path of Reichert and the instant claims, i.e., to use
capping agents having unsaturation or an-OH group. When the prior art
teaches away from a combination, that combination is more likely to be
nonobvious. KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007).
However, to teach away, a reference must discourage one of ordinary skill in
the art from following the path set out in the reference, or lead that person in
a direction divergent from the path taken by the applicant. In re Gurley, 27
F.3d 551, 553 (Fed. Cir. 1994). Here, Hartman teaches that end capping
agents having-OH functionality is known, but that in water sensitive
applications, it is not preferred. Hartman, col. 2, 11. 19-26 and Abstract.
Hartman also explains that
[t]he polyamide rheological additives of the invention are useful
in both reactive systems, i.e. systems that are reactive with or are
sensitive toward water or other active hydrogen containing
materials and non-reactive systems, i.e. systems that do not react
with or are not sensitive toward water or other active hydrogen
containing materials.
Id. at col. 5, 11. 4--10. Based on these teachings of Hartman, Appellants have
not established that Hartman teaches away from the claims nor does it
preclude a composition having terminal active hydrogen groups.
CONCLUSION
The Examiner did not reversibly err in rejecting claims 27-39 under
35 U.S.C §103(a) as being unpatentable over Reichert in view of Hartman.
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DECISION
For the above reasons, the Examiner's rejection of claims 27-30 is
affirmed.
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).
AFFIRMED
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