Ex Parte Meegan et alDownload PDFPatent Trial and Appeal BoardMay 30, 201712963823 (P.T.A.B. May. 30, 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. 12/963,823 12/09/2010 Jonathan Edward Meegan 09006S-US-NP 3639 8015 7590 06/01/2017 CYTEC INDUSTRIES INC. 1937 WEST MAIN STREET STAMFORD, CT 06902 EXAMINER ROBINSON, ELIZABETH A ART UNIT PAPER NUMBER 1787 NOTIFICATION DATE DELIVERY MODE 06/01/2017 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): S tamfordPatent @ solvay.com Cheryle. Telesco @ solvay. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JONATHAN EDWARD MEEGAN and ROBERT BLACKBURN Appeal 2016-002375 Application 12/963,8231 Technology Center 1700 Before ADRIENE LEPIANE HANLON, TERRY J. OWENS, and WESLEY B. DERRICK, Administrative Patent Judges. DERRICK, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134 from the Examiner’s maintained 35 U.S.C. § 103(a) rejections of claims 1, 5, and 7-10 over Portelli2 in view of Henton,3 of claims 1, 2, 4, 5, 7-10, and 26 over Patel,4 1 Appellants identify Cytec Technology Corp. as the real party in interest. Appeal Brief filed July 20, 2015 (“Appeal Br.”), 2. 2 Portelli et al., EP 0 441 047 A2, published August 14, 1991. 3 Henton et al., US 4,778,851, issued October 18, 1988. 4 Patel et al., GB 2460050 A, published November 18, 2009. Appeal 2016-002375 Application 12/963,823 and of claims 27 and 28 over Patel in view of Mariaggi.5,6 We have jurisdiction under 35 U.S.C. § 6. We AFFIRM. THE INVENTION The claimed subject matter of the claims on appeal relates to a formulation for liquid infusion process. Spec. Abstract. Claim 1—the sole independent claim on appeal—is representative. 1. A formulation for liquid resin infusion, comprising: a base resin comprising at least one epoxy; an aniline-based amine compound as a curing agent; core-shell rubber particles having a diameter between about 50 nm and about 800 nm; and a thermoplastic material selected from the group consisting of: poly(ether sulfone) polymers, poly(ether ether sulfones), copolymers thereof, and combinations thereof, wherein the base resin, the particles and the thermoplastic material are combined to form a modified resin system having an average viscosity of less than 5 Poise at a temperature between 80°C and 130°C, and the thermoplastic material is present in an amount of less than 7% net weight of the total weight of the modified resin system, and wherein, upon curing of the modified resin system, the thermoplastic material becomes phase separated into aggregate domains from the base resin, each domain having an island-like morphology. 5 Mariaggi et al., US 6,187,443 Bl, issued February 13, 2001. 6 The Examiner further cites Tilbrook et al., US 2008/0081170 Al, published April 3, 2008, as evidence in the rejections. 2 Appeal 2016-002375 Application 12/963,823 DISCUSSION7’8 We have reviewed Appellants’ arguments for patentability set forth in the Appeal Brief and Reply Brief, but are not persuaded of harmful error in the Examiner’s decision rejecting the claims. Appellants contend the Examiner has failed to establish a prima facie case of obviousness, proffering arguments directed to claim 1 as to both the rejection grounded on Portelli in combination with Henton and the rejections grounded on Patel. Appeal Br. 3-15. Appellants further rely on proffered data and the Meegan declaration dated March 13, 2014, as rebutting the prima facie case. Appeal Br. 15-17. Rejection over Portelli in view of Henton Portelli relates to thermosettable resin compositions used with fiber reinforcement. The Examiner relies on Portelli for its disclosure of a resin composition to be used to impregnate a fiber reinforcement comprising one or more thermosetting resins, a curative, and thermoplastic polymer particles. Final Act. 3 (citing Portelli, 3,11. 1-30). The Examiner relies on Portelli for its disclosure that the thermosetting resin can be an epoxy resin, particularly polyepoxide; that the thermoplastic material can be present at 2 to 30 parts per 100 parts of the composition, and can be a polyether sulfone; and that the curing agent can be an aniline-based amine compound curing agent, particularly bis (4-aminophenyl)-fluorene. Final Act. 3 (citing 7 We refer to the Specification filed December 9, 2010 (“Spec.”), the Final Office Action issued April 30, 2015 (“Final Act.”), the Appeal Brief filed July 20, 2015 (“Appeal Br.”), the Examiner’s Answer dated October 23, 2015 (“Ans.”), and Reply Brief filed December 22, 2015 (“Reply Br.”). 8 While the record includes both sulfone and sulphone spellings, we use the preferred U.S. spelling sulfone as used in the claims for consistency. 3 Appeal 2016-002375 Application 12/963,823 Portelli, 3—4, 7,11. 48-54). The Examiner further finds Portelli teaches that the composition can further comprise tougheners. Final Act. 3 (citing Portelli, 8,11. 35^10). As to the specific toughener—core shell rubber particles—recited in claim 1, the Examiner relies on Henton for its teaching of reactive grafted rubber particle tougheners that are core-shell particles. Final Act. 4 (citing Henton, col. 2,11. 5-25). The Examiner further relies on Henton for its teaching that these core-shell particles are for use with epoxy resins, including fiber reinforced laminates, casting, and molding resins, to provide, inter alia, improved toughness upon curing.9 Final Act. 4 (citing Henton, col. 2,11. 43-56, col. 6,11. 51-56). The Examiner further finds the cores can be polybutadiene, the shells can be acrylic, and the sizes can be 30 to 2000 nm. Final Act. 4 (citing Henton, col. 3,1. 53-col. 4,1. 52; col. 4,1. 64- col. 5,1. 6). Still further, the Examiner finds Henton discloses the particles are uniformly dispersed in the resin. Final Act. 4 (citing Henton, col. 7, 11. 26-47). The Examiner concludes that it would have been obvious to one of ordinary skill in the art at the time of the invention to have used the specified toughener of Henton as the toughener in the resin composition of Portelli to obtain, inter alia, the benefit of a composition that provides cured products with improved toughness. Final Act. 4. As to viscosity and phase separation, the Examiner determines that recited limitations to these do not patentably distinguish the instant claimed 9 The Examiner also determines that obtaining resistance to heat distortion provided upon including Henton’s core shell particles would motivate their inclusion in the resin composition. Final Act. 4. 4 Appeal 2016-002375 Application 12/963,823 compositions from those of Portelli in view of Henton because the disclosed compositions can be formed from the same materials and processed in the same manner and, thus, would have the same viscosity and phase separation. Final Act. 4. In sum, the rejection is grounded on the combination of Portelli and Henton providing, inter alia, compositions of the same materials recited in the claims, in amounts that encompass those set forth in the claims, that are processed in the same manner, and that the properties as to viscosity and phase separation are inseparable from the material itself. Appellants contend that the composition affects the morphology and mechanical properties of the cured resin matrix. Appeal Br. 3—4. Appellants further contend that Portelli’s disclosed range of resin particles encompasses thermoplastic amounts that would make the viscosity too high for liquid resin infusion and would not provide the island-like morphology recited in claim 1. Appeal Br. 5. Appellants proffer further arguments relating to various embodiments disclosed in Portelli and the Examiner’s reliance on these as to viscosity. Appeal Br. 5-6. On this record, Appellants’ arguments are not persuasive of reversible error because Portelli’s teaching of ranges outside of those claimed that do meet the limitations as to viscosity and providing island-like morphology does not negate that Portelli’s encompassing ranges also teach the ranges meeting the claims. It is the disclosure of the encompassing range that is required and Appellants fail to proffer persuasive argument or evidence that that requirement has not been met. See, e.g., In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003) (“[W]hen, as here, the claimed ranges are completely encompassed by the prior art, the conclusion [of prima facie obviousness] is 5 Appeal 2016-002375 Application 12/963,823 even more compelling . . . the existence of overlapping or encompassing ranges shifts the burden to the applicant to show that his invention would not have been obvious.”). In light of this, Appellants’ further arguments as to particular embodiments in Portelli and the Examiner’s reliance on these as to viscosity do not persuade us of harmful error. Cf. Shinseki v. Sanders, 556 U.S. 396, 409 (2009) (“the burden of showing that an error is harmful normally falls upon the party attacking the agency’s determination.”). Appellants contend that the Examiner has failed to establish a sufficient basis for combining the teachings of Portelli and Henton. Appeal Br. 6-8. Appellants argue that “[t]he broad disclosure of ‘tougheners’ in Portelli potentially encompasses an infinite number of possible materials . . . [and,] without more, is insufficient to establish that the specifically claimed CSR particles would have been obvious.” Appeal Br. 7. Appellants further argue that the Examiner has failed to establish that addition of Henton’s core-shell particles would have been expected to provide improved toughness to a resin already toughened by inclusion of thermoplastic particles, that the Examiner has failed to establish that Portelli’s resin was deficient as to “heat distortion,” and that “improved properties disclosed by Henton are for Henton’s composition, which is chemically different from Portelli’s composition.” Appeal Br. 8. Appellants’ arguments are not persuasive of reversible error for reasons relating to improved toughness as well-expressed by the Examiner. Ans. 4-5. As set forth by the Examiner, Portelli teaches that its composition comprising thermoplastic resins can further include tougheners and Henton—in the same field of endeavor—teaches core-shell particles as tougheners that provide improved toughness in cured products of similar 6 Appeal 2016-002375 Application 12/963,823 composition. As to Appellants’ argument that Henton only discloses improved properties for its particular composition, it is unpersuasive because it fails to take into account what Henton would reasonably be understood to teach the skilled artisan. In re Preda, 401 F.2d 825, 826 (CCPA 1968) (“[I]n considering the disclosure of a reference, it is proper to take into account not only specific teachings of the reference, but also the inferences which one skilled in the art would reasonably be expected to drawn therefrom.”); In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994) (quoting In re Samour, 571 F.2d 559, 562 (CCPA 1978)) (“The “prior art reference must be ‘considered together with the knowledge of one of ordinary skill in the pertinent art.’”). Appellants contend that the Examiner has failed to articulate an adequate reason for the obviousness of the claimed viscosity and island-like morphology. Appeal Br. 8-9. Appellants proffer further arguments relating to Tilbrook and Yu, and the Examiner’s reliance on these as to phase separation. Appeal Br. 9-11. Appellants’ arguments are not persuasive of reversible error. From the standpoint of patent law, a compound and all its properties are inseparable; they are one and the same thing.” In re Papesch, 315 F.2d 381, 391 (CCPA 1963). As explained above, the rejection is grounded on the combination of Portelli and Henton providing, inter alia, compositions of the same materials recited in the claims, in amounts that encompass those set forth in the claims, where the compositions are processed in the same manner. The limitations as to viscosity and island-like morphology do not, in this circumstance, patentably distinguish the claims from the prior art. See In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990) (“The discovery of a 7 Appeal 2016-002375 Application 12/963,823 new property or use of a previously known composition, even when that property and use are unobvious from the prior art, can not impart patentability to claims to the known composition”); see also Par Pharmaceutical Inc. et al. v. TWIPharmaceuticals Inc., 773 F.3d 1186, 1195-96 (Fed. Cir. 2014) (A claim limitation can be met inherently when “the limitation . . . [is] the natural result of the combination of elements explicitly disclosed by the prior art.”). In light of this, Appellants’ further arguments relating to Tilbrook and Yu, and the Examiner’s reliance on these as to phase separation, do not persuade us of harmful error. For the reasons above, we are unpersuaded that the Examiner erred in determining the claims are prima facie obvious over Portelli in view of Henton. Rejection over Patel (and over Patel in view of Mariaggi) Patel relates to a resin system for making a composite material that is infused into fibrous reinforcement before being cured. Patel, Abstract. The Examiner relies on Patel for its disclosure of a base resin for liquid resin infusion that can be formed from epoxy; can include an aniline-based amine compound curing agent, particularly bis(4-amino-phenyl)fluorine; and can include “a combination of toughening particles/agents that can be polyether sul[f]one (thermoplastic material) and core-shell rubber particles.” Final Act. 5 (citing Patel, 1,11. 3-5, 6,1. 17-7,1. 4, 11,1. 11-12,1. 17, 16,11. 18- 23, 17,1. 18-18,1. 13). The Examiner further finds Patel teaches that the toughening particles/agents should be present in 0.1 to 35 wt.%, are preferably sized at less than or equal to 1000 nm, and that they are selected such that they are not filtered by the fiber reinforcement. Final Act. 5 (citing Patel, 18,11. 15-18, 19,11. 1^1). 8 Appeal 2016-002375 Application 12/963,823 The Examiner finds Patel teaches that toughening agents and particles can be used in combination and that polyether sulfone and core-shell rubber particles are preferred. Ans. 7 (citing Patel 18,11. 1-13). The Examiner notes that the particular core shell particles disclosed in Patel are also used in the instant application. Final Act. 5 (citing Patel, 18,11. 9-13); Spec. ^ 30 (describing Kaneka MX411 particles as suitable). The Examiner also finds Patel teaches that its resin system should have improved toughness and suitable viscosity for the liquid molding process and that it is known that thermoplastic toughening agents can increase resin viscosity. Final Act. 5-6 (citing Patel, 2,1. 6-3,1. 9). The Examiner concludes that it would have been obvious to one of ordinary skill in the art at the time of the invention to have used the two preferred materials—polyether sulfone and core-shell rubber particles—in combination (Ans. 7) and to have adjusted the amount of polyether sulfone to have a viscosity for the resin system suitable for liquid molding (Final Act. 6; Ans. 7). As to phase separation, the Examiner determines that the recited limitation does not patentably distinguish the instant claimed compositions from those taught by Patel having the same amount of the same materials. Ans. 7-8. In sum, the rejection is grounded on Patel teaching, inter alia, compositions of the same materials recited in the claims, in amounts that encompass those set forth in the claims, that are processed in the same manner, and that the properties as to viscosity and phase separation are inseparable from the material itself. 9 Appeal 2016-002375 Application 12/963,823 Appellants contend that Patel’s general listings of “toughening particles/agents that include “core shell rubber” and polysulfones “potentially encompass an infinite number of possible combinations of materials,” that its more specific disclosures teach polyether sulfone and core shell rubber particles in the alternative, with core shell rubber particles being preferred, and that the working examples only contain core shell rubber particles as toughening agent. Appeal Br. 11-12 (citing Patel, 17, 1. 18-18,1. 13). Appellants argue that “at best, Patel suggests the use of either [polyether sulfone] or core shell rubber particles, with the preference for [core shell rubber] particles, but not the combination thereof.” Appeal Br. 12; see also Reply Br. 4.10 Appellants’ arguments are not persuasive of reversible error because they fail to squarely address that Patel teaches that toughening particles/agents included can be used in combination and that polyether sulfone and core-shell rubber particles are preferred, and the Examiner’s reasonable conclusions grounded on Patel’s teachings to use the two preferred toughening agents in combination. Appellants contend that Patel’s disclosed range of toughening particles/agents encompasses thermoplastic concentrations that are not useful and that the higher concentrations would “result in cured resins with morphologies and properties that are different from cured resins containing lower concentrations of thermoplastic material.” Appeal Br. 12. On this record, Appellants’ arguments are not persuasive of reversible error because Patel’s teaching of ranges that encompass concentrations giving rise to resins that are not useful or that result in cured resin 10 The Reply Brief lacks pagination; we refer to the pages sequentially. 10 Appeal 2016-002375 Application 12/963,823 morphologies that are different from those desired does not negate that Patel’s encompassing ranges also teach the ranges meeting the claims. It is the disclosure of the encompassing range that is required and Appellants proffer no persuasive argument or evidence that that requirement has not been met. Peterson, 315 F.3d at 1330. Appellants contend that “Patel is also silent as to forming a resin formulation that will result in phase separation of the thermoplastic material into island-like morphology upon curing” and that “the cured resin morphology changes as the concentration of thermoplastic changes.” Appeal Br. 12-13. Appellants further contend that Patel’s teaching that addition of high molecular mass thermoplastic toughening agents leads to an increase in viscosity discouraging its use in resin formulation for RTM [resin transfer molding]. Appeal Br. 13-14 (citing Patel, 2,11. 9-12). Appellants’ arguments grounded on Patel’s silence as to phase separation and formation of the island-like morphology are not persuasive of reversible error because it follows that Patel’s broader disclosure of compositions with encompassing ranges, as applied by the Examiner, will include compositions that have the recited characteristics. See Spada, 911 F.2d at 708 (“The discovery of a new property or use of a previously known composition, even when that property and use are unobvious from the prior art, can not impart patentability to claims to the known composition”); see also Par Pharmaceutical, 773 F.3d at 1195-96 (A claim limitation can be met inherently when “the limitation . . . [is] the natural result of the combination of elements explicitly disclosed by the prior art.”). Regarding Appellants’ nascent argument that Patel teaches away from addition of high molecular mass thermoplastic toughening agents, we find no teaching away 11 Appeal 2016-002375 Application 12/963,823 on this record, particularly where polyether sulfone is taught as a preferred toughening agent. Appellants further contend that Patel discusses the addition of thermoplastic in the form of undissolved particles and that incorporating undissolved particles would not produce the phase separation and island- morphology characteristic of the claimed resin formulation. Appeal Br. 14 (quoting Patel, 2,11. 14-18). On this record, we find Appellants’ argument unpersuasive of reversible error because we are directed to no evidence that Patel’s disclosure of polyether sulfone for use as a toughening agent does not teach polyether sulfones that, upon being cured in a manner consistent with the claim, produce the phase separation and island-morphology characteristic of the claimed resin formulation. See generally Appeal Br.; Reply Br. As to polyether sulfone being maintained in particulate form, we further note that it appears undisputed that Portelli, published in 1991, reasonably suggests that polyether sulfones that are soluble at a temperature below the onset of curing and completely dissolve during curing were known when Patel was filed, in 2008, and at the later date of the instant invention (Appeal Br. 10, citing Portelli, 7,11. 39^10, 45^47). Appellants further argue that the Examiner is improperly relying on inherency as to the cured morphology because “[ojbviousness cannot be predicated on what is unknown.” Reply Br. 3 (quoting In re Rijckaert, 9 F.3d 1531, 1533 (Fed. Cir. 1993). The rejection is, as explained above, grounded on Patel’s disclosure of, inter alia, compositions of the same materials recited in the claims, in amounts that encompass those set forth in the claims, and, having failed to 12 Appeal 2016-002375 Application 12/963,823 establish that the Examiner erred as to such compositions according to the claims falling within Patel’s broader disclosure, or to establish any meaningful difference in the process used to prepare the compositions, it follows that we are not persuaded of reversible error grounded on the absence of an explicit teaching as to viscosity and phase separation because the properties of a composition are inseparable from the material itself. For the reasons above, we are unpersuaded that the Examiner erred in determining that claims 1, 2, 4, 5, and 7-10 are prima facie obvious over Patel. Further, as Appellants rely on the arguments as to Patel rather than any further substantive argument as to claims 27 and 28 (Appeal Br. 15), we are likewise unpersuaded of any reversible error in the Examiner’s rejection of claims 27 and 28 rejected over Patel in view of Mariaggi. Appellants ’ Rebuttal to Prima Facie Case Appellants contend that data included in the Specification and submitted with the Meegan declaration supports the patentability of the claims. Appeal Br. 15-17. The data cited contrasts differences in the amounts of polyether sulfone required for a particular fracture toughness, and in the resulting viscosity, with or without further inclusion of core-shell rubber particles, as well as the greater amount of core-shell rubber particles required for the same strength in the absence of polyether sulfone. Appeal Br. 15-16. Appellants contend that “such results would not have been predictable in view of Portelli and Henton, or in view of Patel.” Appeal Br. 16. Appellants further rely on micrographs demonstrating differences. Appeal Br. 16 (citing Meegan declaration, Figs. 4, 4A, 4B). 13 Appeal 2016-002375 Application 12/963,823 Appellants contend that “[t]he tested formulations, which represent the claimed invention, contained polyethersulfone (PES) and CSR particles, as recited in claim 1.” Appeal Br. 17. Appellants further contend that the PES and epoxies used in the tested formulations are sufficiently similar or representative of the corresponding material recited in claims 1 and 4, respectively. Appeal Br. 17. Appellants further point to claims 26 and 27 for curing agents corresponding to that included in the tests. Finally, Appellants contend claim 28 recites components that were used in the tested formulation. It is well established that Appellants bear the burden of showing that the claimed invention imparts unexpected results. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972). To meet the burden, Appellants must establish that the results actually would have been unexpected, and that the unexpected results are reasonably commensurate with the scope of protection sought by the claims on appeal. In re Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983,)/ In re Clemens, 622 F.2d 1029, 1035 (CCPA 1980); Klosak, 455 F.2d at 1080. On this record, Appellants fail to rebut the prima facie case of obviousness. Critically, we are directed to no assertion, let alone persuasive evidence, that the results would have been unexpected to one of ordinary skill in the art at the time of the invention. Rather, Appellants proffer a mere assertion that some of the results would not have been predictable in view of Portelli and Henton, or in view of Patel; a statement that, even if it were deemed established by the facts it asserts, does not support the required burden of establishing that the result would have been unexpected by one of ordinary skill at the time of the invention. See, e.g., Geisler, 116 F.3d at 14 Appeal 2016-002375 Application 12/963,823 1471. Further, on this record, Appellants fail to direct us to any assertion that the results were unexpected in the Specification or in any evidentiary submission, nor do we discern any such statement in the Meegan declaration. We also find Appellants’ position that the proffered data is commensurate with the scope of the claims ill-founded because there is no persuasive evidence, or even cogent argument, as to the similarity of what was used in testing and what is encompassed by the claims at issue. Appeal Br. 17. Even claim 28, the most constrained claim argued, provides little limitation as to what material can be included, or in what amounts, beyond that it includes a base resin comprising a particular epoxy, a poly(ether sulfone) as the thermoplastic material, which due to the dependency from claim 1 is limited to less than 7% net weight of the resin system, and MCDEA as the curing agent. In re Harris, 409 F.3d 1339, 1344 (Fed. Cir. 2005) (“Even assuming that the results were unexpected, Harris needed to show results covering the scope of the claimed range. Alternatively Harris needed to narrow the claims.”). On balance, the evidence of record weighs most heavily in favor of the Examiner’s conclusion of obviousness. DECISION The Examiner’s decision rejecting claims 1, 2, 4, 5, 7-10, and 26-28 is AFFIRMED. 15 Appeal 2016-002375 Application 12/963,823 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 16 Copy with citationCopy as parenthetical citation