Ex Parte Muller-Frischinger

Patent Trial and Appeal Board

Mar 23, 2018

12305039 (P.T.A.B. Mar. 23, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/305,039 12/16/2008
62068 7590 03/27/2018
HUNTSMAN INTERNATIONAL LLC
LEGAL DEPARTMENT
10003 WOODLOCH FOREST DRIVE
THE WOODLANDS, TX 77380
FIRST NAMED INVENTOR
Isabelle Marie Muller-Frischinger
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.
HAM830045 1465
EXAMINER
KARST, DAVID THOMAS
ART UNIT PAPER NUMBER
1767
NOTIFICATION DATE DELIVERY MODE
03/27/2018 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):
USPatents@Huntsman.com
Diana_E_ Ortega@Huntsman.com
sophie_bolt@huntsman.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ISABELLE MARIE MULLER-FRICHINGER
Appeal2017-006680
Application 12/305,039
Technology Center 1700
Before TERRY J. OWENS, N. WHITNEY WILSON, and
MERRELL C. CASHION, JR., Administrative Patent Judges.
OWENS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 15-17, 19-21 and 24--27. We have jurisdiction under
35 U.S.C. § 6(b).
The Invention
The Appellant claims a coating composition, a process for coating a
steel substrate with the composition, and a steel substrate coated with the
composition. Claim 15 is illustrative:
15. A steel substrate comprising an anti-corrosive coating
on a surface of the steel substrate wherein the anti-corrosive
coating consists of
a) an epoxy resin containing on average more than one
epoxy group per molecule selected from diglycidylether of
Appeal2017-006680
Application 12/305,039
bisphenol A, diglycidylether ofbisphenol F, polyglycidylether
of polyhydric phenol or cresol novolacs, mono- or
polyglycidylether of mono- or polyhydric cycloaliphatic
alcohols, mono- or polyglycidylether of mono- or polyhydric
cycloaliphatic alcohols and a mixture thereof,
b) as curing agent a hybrid hardener, whereby said
hardener is a liquid hardener blend with a viscosity of less than
150000 mPa· s at 25QC. comprising
b 1) an aminic compound selected from aliphatic,
cycloaliphatic, and araliphatic amines, whereby said aminic
compound contains, on average per molecule, at least two
reactive hydrogen atoms bound to nitrogen atoms, and
b2) a polymeric phenol novolac wherein the novolac is a
homopolymer resulting from the combination of a phenolic
compound of formula (I) with formaldehyde or
paraformaldehyde or a copolymer of different phenolic
compounds of formula (I) with formaldehyde or
paraformaldehyde:
wherein in formula (I), RI, R2, R3, R4, independently of
one another are H, or branched or unbranched alkyl radicals
containing 1 to 15 carbon atoms and optionally a reactive
diluent selected from cresylglycidyl ether, p-tert.-butyl-
phenylglycidyl ether, n-dodecyl-/n-tetradecylglycidyl ether,
1,4-butanedioldyglycidyl ether, 1,6-hexanediol-diglycidyl ether,
trimethylolpropanetriglycidyl ether,
polyoxypropylenediglycidyl ether, cyclohexane-
dimethanoldiglycidyl ether and glycidylester of neodecanoic
acid and of cyclohexanedicarboxylic acid, a cyclic carbonate,
and an inorganic and/or organic additive selected from a flow
control additive, an antifoaming agent, an anti-sag agent, a
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Application 12/305,039
pigment, a reinforcing agent, a filler, an elastomer, a stabilizer,
an extender, a plasticizer, a flame retardant, an accelerator, a
colorant, a fibrous substance, a thixotropic agent, an anti-
corrosive pigment a solvent and a mixture thereof, and
wherein the novolac is used in an amount of from 46 %
to 62 % by weight, based on the total weight of the hardener
blend bl) and b2).
Andrews
Kashiwada
Finerman
Muller-Frischinger
Hatanaka (as translated)
The References
us 4,866,133
US 2005/0276983 Al
US 2006/0020076 Al
US 8,263,687 B2
JP 7-48501 A
The Rejections
Sept. 12, 1989
Dec. 15, 2005
Jan.26,2006
Sept. 11, 1012
Feb.21, 1995
The claims stand rejected as follows: claims 15-17, 24, 25 and 27
under 35 U.S.C. § 103 over Finerman, claim 19 under 35 U.S.C. § 103 over
Finerman in view of Andrews, claims 20 and 21under35 U.S.C. § 103 over
Finerman in view of Hatanaka, claim 26 under 35 U.S.C. § 103 over
Finerman in view of Kashiwada, claims 15-17 and 20 on the ground of
nonstatutory obviousness-type double patenting over claims 1, 3, 6, 8 and 10
of Muller-Frischinger in view of Finerman and claim 27 on the ground of
nonstatutory obviousness-type double patenting over claims 1, 3 and 8 of
Muller-Frischinger.
OPINION
We affirm the rejections.
Rejections under 35 US.C. § 103
The Appellant argues the claims as a group (Br. 11-17). Although the
Examiner applies references in addition to Finerman in rejecting some of the
claims, the Appellant does not separately argue those claims (Br. 17). We
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Application 12/305,039
therefore limit our discussion to one claim, i.e., claim 15. Claims 16, 17,
19-21 and 24--27 stand or fall with that claim. See 37 C.F.R.
§ 41.37(c)(l)(iv) (2012).
Finerman discloses "a sealant material for sealing a component of an
article of manufacture such as an automotive vehicle" (i-f 2). "Epoxy
materials can be particularly suitable for the sealant material" (i-f 36). The
epoxy material can be a liquid and can be a bisphenol A epichlorohydrin
ether polymer (i-f 37). "One or more curing agents and/or curing agent
accelerators may be added to the sealant material" (i-f 49). "Useful classes of
curing agents are materials selected from aliphatic or aromatic amines or
their respective adducts, amidoamines, polyamines, cycloaliphatic amines
(e.g., anhydrides, polycarboxylic polyesters, isocyanates, phenol-based
resins (such as phenol or cresol novolak resins, copolymers such as those of
phenol terpene, polyvinyl phenol, or bisphenol-A formaldehyde copolymers,
bishydroxyphenyl alkanes or the like), or mixtures thereof' (i-f 50).
The Appellant asserts that "[ t ]here is no disclosure or suggestion in
Finerman et al. that would teach one of ordinary skill in the art to select any
two hardeners to form a liquid blend or select any relative weight percentage
for each hardener in such a blend" (Br. 13).
Finerman discloses that the curing agents can be used in mixtures and
places no limitation on the relative amounts of the curing agents in the
mixtures (i1i1 49, 50). Finerman, therefore, would have led one of ordinary
skill in the art, through no more than ordinary creativity, to use any mixture
and relative amount of the curing agents. See KSR Int'! Co. v. Teleflex Inc.,
550 U.S. 398, 418 (2007) (in making an obviousness determination one "can
take account of the inferences and creative steps that a person of ordinary
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Application 12/305,039
skill in the art would employ"). Each mixture would have its particular state
(solid or liquid) at a given temperature. See In re Papesch, 315 F.2d 381,
391(CCPA1963) ("From the standpoint of patent law, a compound and all
of its properties are inseparable; they are one and the same thing").
The Appellant argues (Br. 13-14):
[P]rior art taught away from liquid hardener blends containing
phenol formaldehyde novolac above the upper limit of 25 wt.%,
based on the total weight of the hardener blend, since these
hardener blends, when formulated with epoxy resins and cured,
produced tacky surfaces and unacceptable dust free times (see
Application Text at page 1, lines 29-34). Accordingly, one
skilled in the art, when utilizing the knowledge available at the
time of the invention, would not have read Finerman et al.' s
lone teaching "or mixtures thereof' and predicted a liquid
hardener blend containing an amine and polymeric phenol
novolac at a 50:50 weight ratio could be successfully produced
at 25QC or that such a blend could be used to cure epoxy resins
without tacky surfaces and with acceptable dust free times.
Instead, one skilled in the art would have predicted that the
cured coatings produced from this final hardener blend and
epoxy resin would have exhibited the undesirable tacky surface
and dust free properties known from the teachings in the prior
art.
The portion of the Appellant's Specification relied upon in support of
that argument states:
The patent WO 99/29757 describes the use of a
phenol-formaldehyde novolac as accelerator for amine/epoxy
systems. With respect to the above mentioned polyamines, it
was, however, observed that using the upper limit of 25 wt% of
phenol-formaldehyde novolac, it was possible only to reduce
partially the blushing and exudation of such polyamines
hardeners when they were formulated with standard epoxies,
leading to tacky surface and dust free times, which are too long
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for ambient temperature cure applications (of about 23QC,
50% r.h.).
WO 99/29757 includes 1-25 wt% of a novolak in a hardener to provide the
hardener with "a comparably good acceleration effect and early water
resistance" (p. 2). That reference does not mention blushing, exudation,
tacky surfaces or dust free times. The observation of those properties
referred to in the Appellant's argument appears to be the Appellant's
observation, not an observation disclosed in the prior art. Thus, the record
does not support the Appellant's assertion that "prior art taught away from
liquid hardener blends containing phenol formaldehyde novolac above the
upper limit of 25 wt.%, based on the total weight of the hardener blend."
The Appellant argues (Br. 14--15):
[A]s shown in Examples 1-3 and Comparative Examples 1-2 in
Table 2, compositions containing the inventive liquid hardener
blend and an epoxy resin, when cured at 5QC and 23QC,
exhibited significantly improved curing times, dust free times
and aspect when compared to epoxy compositions cured with a
state of the art aliphatic amine hardener or with a state of the art
liquid hardener containing an aliphatic amine and 25% by
weight of phenol formaldehyde novolac (see Application text at
page 14). This was especially surprising and unexpected since
the polymeric phenol novolac is a latent hardener (i.e., reacts
with epoxy resins at elevated temperatures) and therefore one
would have not expected such a significant improvement in
curing times at the low temperatures of 5QC and 23QC.
For the following reasons, the Appellant's relied-upon evidence,
considered with the prior art, supports a conclusion of obviousness of the
claimed invention.
First, it is not enough for the Appellant to show that the results for the
Appellant's invention and the comparative examples differ. The difference
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must be shown to be an unexpected difference. See In re Freeman, 474 F.2d
1318, 1324 (CCPA 1973); In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972).
The Appellant's Comparative Example 2 contains, in addition to the
9.96 wt% DETA (diethylenetriamine) in Comparative Example 1, 2.89 wt%
novolac resin (supraplast 3616), and shows improved full cure time, dust
free time and aspect relative to Comparative Example 1. The Appellant's
Examples 1-3 contain, in addition to approximately the same amount of
DETA as in Comparative Example 1, larger amounts of novolac resin than
in Comparative Example 2, and show improved full cure time, dust free time
and aspect relative to that comparative example. The Appellant states that
"[ w ]hile Comparative Examples 1 and 2 do have a different total amount of
hardener relative to the amount of epoxy resin compared to that for
Examples 1-3, the stoichiometric amount of diethylenetriamine with respect
to the epoxy resin was kept constant in all Examples since it is known to
have a much higher reactivity at the lower temperatures of 5QC and 23QC
than the novolac latent hardener" (Br. 15-16). As pointed out above, the
Appellant's Comparative Examples 1 and 2 indicate that adding novolac
resin to DET A improves the results at 5QC and 23QC. The Appellant does
not provide evidence that such improvement would have been unexpected
by one of ordinary skill in the art. The Appellant's mere attorney argument
to that effect cannot take the place of evidence. See In re De Blauwe, 736
F.2d 699, 705 (Fed. Cir. 1984).
Second, the evidence is not commensurate in scope with claim 15. 1
See In re Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983); In re Clemens, 622
1 Contrary to the Appellant's assertion (Br. 16), providing evidence that is
commensurate in scope with the claims is not an undue burden.
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F.2d 1029, 1035 (CCPA 1980). That claim encompasses a very broad range
of epoxy resins, aminic compounds and polymeric polyol novolacs, has a
novolac amount range of 46-62 wt% of the hardener blend, and is not
limited with respect to curing temperature. The Appellant's relied-upon
evidence, however, encompasses only one epoxy resin, aminic compound
and novolac resin, only novolac amounts of 50.0, 51.0 and 54.0 wt% of the
hardener blend, and only two curing temperatures. We find in the evidence
of record no reasonable basis for concluding that the Appellant's test results
are representative of the results which would be obtained using the great
number of materials encompassed by the Appellant's claim 15 cured at any
temperature. See In re Lindner, 457 F.2d 506, 508 (CCPA 1972); In re Susi,
440 F.2d 442, 445-46 (CCPA 1971).
Thus, we are not persuaded of reversible error in the rejections under
35 U.S.C. § 103.
Obviousness-type double patenting rejections
The Appellant does not challenge the obviousness-type double
patenting rejections (Br. 18). Accordingly, we summarily affirm those
rejections.
DECISION/ORDER
The rejections under 35 U.S.C. § 103 of claims 15-17, 24, 25 and 27
over Finerman, claim 19 over Finerman in view of Andrews, claims 20
and 21 over Finerman in view of Hatanaka and claim 26 over Finerman in
view of Kashiwada, and the obviousness-type double patenting rejections of
claims 15-17 and 20 over claims 1, 3, 6, 8 and 10 ofMuller-Frischinger in
view of Finerman and claim 27 over claims 1, 3 and 8 of Muller-Frischinger
are affirmed.
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It is ordered that the Examiner's decision 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).
AFFIRMED
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