Ex Parte Meegan et al

Patent Trial and Appeal Board

May 30, 2017

12963823 (P.T.A.B. May. 30, 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.
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.
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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.
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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.
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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
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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
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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
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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).
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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.
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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.
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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
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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
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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).
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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
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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.
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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
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