Ex Parte Noro et al

Patent Trial and Appeal Board

Dec 27, 2016

12279623 (P.T.A.B. Dec. 27, 2016)

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.
12/279,623 12/09/2008 Noriko Noro Q109305 2848
23373 7590 12/29/2016
SUGHRUE MION, PLLC
2100 PENNSYLVANIA AVENUE, N.W.
SUITE 800
WASHINGTON, DC 20037
EXAMINER
HUHN, RICHARD A
ART UNIT PAPER NUMBER
1764
NOTIFICATION DATE DELIVERY MODE
12/29/2016 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
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte NORIKO NORO, AYAKO YANO, and
TOSHIHIKO OKAMOTO
Appeal 2015-007315
Application 12/279,623
Technology Center 1700
Before PETER F. KRATZ, BRIAN D. RANGE, and
DEBRA L. DENNETT, Administrative Patent Judges.
RANGE, Administrative Patent Judge.
DECISION ON APPEAL
SUMMARY
Appellants1 appeal under 35 U.S.C. § 134(a) from the Examiner’
decision rejecting claims 1, 4—8, 11, and 12. We have jurisdiction. 35
U.S.C. § 6(b).
We AFFIRM.
1 According to the Appellants, the real party in interest is Kaneka
Corporation. Appeal Br. 2.
Appeal 2015-007315
Application 12/279,623
STATEMENT OF THE CASE
Appellants describe the invention as relating to providing a curable
composition with excellent curability but while minimizing use of
potentially toxic organotin catalyst. Appeal Br. 6; Spec. 1 6; see also Spec. 1
37 (defining “non-organotin type curable composition” as having an
“addition level of an organotin compound not higher than 50% by weight in
the compound components each acting as a silanol condensation catalyst”).
Claim 1, reproduced below with emphases added to certain key recitations
and some formatting modifications for clarity, is the only independent claim
on appeal and is illustrative of the claimed subject matter:
1. A non-organotin one-pack curable composition which
comprises:
(A) an organic polymer containing a hydrolyzable silyl group
consisting essentially of an organic polymer containing a group
represented by a general formula (1) at the terminal:
-CH2CH2CH2-Si(OCH3)3 (1)
(B) a biguanide compound (B-l) as a silanol condensation
catalyst represented by a general formula
(3):
R4N=C(NR52)-NR6-C(=NR7)-NR82 (3)
(wherein R4, the two R5s, R6, R7 and the two R8s are
independently an organic group or a hydrogen atom,
and/or the general formula (4):
R9N=C(NR102)-N =C(NR! ^-NR1^ (4)
(wherein R9, the two R10s, the two Rns and the two R12s
are independently an organic group or a hydrogen atom),
and
(C) a plasticizer,
wherein the content of the component (B-l) is not lower than 0.1
part by weight but lower than 5 parts by weight per 100 parts by weight
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Application 12/279,623
of the component (A), the content of the component (C) is 5 to 150 parts
by weight per 100 parts by weight of the component (A), and a non-
phthalate ester plasticizer accounts for 80 to 100% by weight of the (C)
component plasticizer
wherein 100% by weight of the amount of the plasticizer (C)
is polypropylene glycol having a molecular weight of not less than
500,
wherein the non-organotin one-pack curable composition does
not contain an organic polymer containing a terminal reactive silyl
group represented by the general formula:
-SiR14X2
wherein the R14 is independently at least one selected from the
group consisting of alkyl groups containing 1-20 carbon atoms, aryl
groups containing 6-20 carbon atoms and aralkyl groups containing 7-
20 carbon atoms; and the two X groups are independently either a
hydroxyl group or a hydrolyzable group.
Appeal Br.2 15—16 (Claims App’x).
REFERENCES AND REJECTION
On appeal, the Examiner maintains rejection of claims 1, 4—8, 11, and
12 under 35 U.S.C. § 103 as unpatentable over Ito, US 2005/0234170 Al,
published Oct. 20, 2005, in view of Yagi, JP 2005-248175 A, published
Sept. 15, 2005. Appeal Br. 2.
ANALYSIS
We review the appealed rejections for error based upon the issues
identified by Appellants and in light of the arguments and evidence
produced thereon. Cf. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)
2 In this decision, we refer to the Final Office Action mailed April 7, 2014
(“Final Act.”) and the Non-Final Office Action referenced therein mailed
September 11, 2013 (“Non-Final Act.”), the Appeal Brief filed January 26,
2015 (“Appeal Br.”), the Examiner’s Answer mailed June 3, 2015 (“Ans.”),
and the Reply Brief filed July 31, 2015 (“Reply Br.”).
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Application 12/279,623
(precedential) (cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed.
Cir. 2011) (“it has long been the Board’s practice to require an applicant to
identify the alleged error in the examiner’s rejections”)). After having
considered the evidence presented in this Appeal and each of Appellants’
contentions, we are not persuaded that Appellants identify reversible error,
and we affirm the Examiner’s § 103 rejections for the reasons expressed in
the September 11, 2013, Non-Final Office Action, in the Final Office
Action, and in the Answer. We add the following primarily for emphasis.
Appellants do not separately argue dependent claims 4—8, 11, or 12.
We therefore limit our discussion to claim 1. Claims 4—8, 11, and 12 stand
or fall with claim 1. 37 C.F.R. § 41.37(c)(l)(iv) (2013).
The Examiner finds that Ito Example 5 discloses an organic polymer
having a trimethoxysilylpropyl group at the terminal (i.e., a T-terminal group
containing polymer). Non-Final Act. 3; see also Ito Tflf 126 (Example 5),
103 (explanation of Synthetic Example 10 used in Ito’s Example 5), 104—
122 (explanation of process used for Example 5). The Examiner finds that
Ito teaches the use of guanidine as a catalyst and use of polymeric
plasticizers including polypropylene glycol. Non-Final Act. 3^4; Ito 62
(disclosing plasticizers), 73 (disclosing catalysts). The Examiner finds that
Ito does not explicitly identify a biguanide compound as recited in claim 1 as
a catalyst but finds that Yagi teaches that such catalysts have good
compatibilities with polymers having methoxysilyl group, provide
compositions with good curability, and avoid the use of toxic tin catalysts.
Non-Final Act. 4—5; Yagi 1—5, 9, 11, 16, 22. The Examiner concludes
that it would have been obvious to use a polymeric plasticizer, such as
polypropylene glycol and as taught by Ito, with Ito’s Example 5 in order to
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Application 12/279,623
retain properties of the curable composition over a long term. Non-Final
Act. 4. The Examiner also concludes that it would have been obvious to
prepare Example 5 of Ito using the biguanide condensation catalyst of Yagi
in order to avoid the use of toxic tin while maintaining good compatability
with the polymer. Id. at 5. A preponderance of the evidence supports the
Examiner’s findings and conclusion.
Appellants argue that a person of skill would not have been inclined to
utilize Example 5 of Ito “because it is evaluated as ‘B’ in ‘workability’ and
‘compreshensive evaluation as sealants.’” Appeal Br. 7. The Examiner,
however, does not err by considering all embodiments of Ito because “all
disclosures of the prior art, including unpreferred embodiments, must be
considered.” In re Lamberti, 545 F.2d 747, 750 (CCPA 1976). Moreover,
Ito generally teaches T-terminal group polymers as an option. See, e.g.,
Ito 47-48.
Appellants also argue that even if one of skill were to employ
Example 5 of Ito, they would not have substituted Example 5’s dibutyltin
dilaurate catalyst with a biguanide catalyst. Appeal Br. 7—8. Appellants
compare experimental data from Example 1 of the present application
(employing a guanidine catalyst) with Experiment 1 from the Declaration of
Ms. Ayako Yano filed April 13, 2012, (“the First Declaration”) (employing
a tin catalyst) to show that the guanidine catalyst has poor surface curability
compared to a tin catalyst. Id. at 8; see also Reply Br. 4—5. The Examiner,
however, finds that the data does not establish that a person of skill would
have recognized that biguanide catalysts identified by Yagi provide poorer
curability than tin catalysts. Ans. 3. The preponderance of the evidence
supports the Examiner’s finding because Yagi teaches, for example, that its
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catalyst excelled in compatibility with polymers and hardenability.
Yagi 1 5.
Moreover, the Examiner also finds that Yagi’s biguanide catalyst
would have lower toxicity than tin catalysts. Ans. 3^4. A preponderance of
the evidence supports this finding as well. Yagi 19 (explaining that its
invention avoids toxic organotin compounds). This advantage would have
led a person of skill to favor the biguanide catalyst over a tin catalyst. Cf.
Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006) (“a
given course of action often has simultaneous advantages and disadvantages,
and this does not necessarily obviate motivation to combine”).
Appellants also argue that evidence of unexpected results weigh
against the obviousness determination. Appeal Br. 8—14; Reply Br. 5—11.
Appellants’ arguments are enumerated below:
(1) Appellants argue that Comparative Example A of the Declaration of
Ms. Yano filed January 10, 2014, (“the Third Declaration”) corresponds to
Example 5 of Ito (i.e., a T-terminal group-containing polymer combined
with dibutyltin dilaurate as the catalyst and DIDP as a plasticizer) and that
the results exhibit poor depth curability as compared to Experiment 5 of the
Third Declaration3 (intended to be within the scope of claim 1—a T-terminal
group-containing polymer combined with biguanide compound as the
catalyst and polypropylene glycol as the plasticizer). Appeal Br. 9, 13.
(2) Appellants also argue that Comparative Example 2 of the
Specification illustrates that biguanide combined with a D terminal group-
3 Appellants state that Experiment 5 of the Third Declaration is the same as
Experiment 5 of the Declaration of Ms. Noriko Noro filed November 13,
2012 (“the Second Declaration”). Appeal Br. 9.
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containing polymer provides poor depth compatibility. Id. at 13; see also id.
at 11 (explaining that Comparative Examples 2 and 3 of the Specification
show that a D terminal group-containing polymer combined with biguanide
provides poor surface curability).
(3) Appellants argue that Comparative Experiments B and C of the Third
Declaration establish that use of polyethylene glycol or polytetramethylene
glycol as a plasticizer (options presented by Ito along with the polypropylene
glycol option (see Ito | 62)) in combination with a T terminal polymer leads
to poor curability and adhesiveness. Appeal Br. at 10.
We have carefully considered Appellants’ evidence and arguments,
but we ultimately find the evidence unpersuasive. Experiment 5 of the Third
Declaration is the only data set argued by Appellants as falling within the
scope of claim 1. Although Appellants’ data appears to show favorable
depth curability for that one data point, the present record does not establish
unexpectedly beneficial results commensurate with the scope of claim 1.
For example, claim 1 permits polymers of any molecular weight so long as
the polymer has a T terminal group. As the Examiner notes, Ito uses a very
different molecular weight polymer than the polymer assessed by
Appellants. Ans. 4. The record does not establish, for example, that
unexpected results will occur at the molecular weight employed by Ito.
Claim 1 is also directed to a composition “which comprises” the
recited aspects. Appeal Br. 15 (Claims App’x). Thus, claim 1 is open-ended
and could include or not include other polymers or other additives. The data
presented by Appellants do not establish whether or not beneficial
unexpected results would be obtained regardless of those additives.
Similarly, claim 1 permits a wide range of plasticizer as compared to
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polymer (from 5 to 150% of the polymer’s weight), and Appellants’ data do
not establish whether or not unexpected results are obtained at different
plasticizer/polymer ratios. These unaddressed possible variations on claim 1
led to the Examiner’s objection to Appellants’ data in that it, for example,
compares compositions having different additives and different plasticizer
ratios than Ito. Ans. 5. The record does not establish that unexpected results
will occur across claim l’s range of plasticizer/polymer ratios and across
claim l’s range of possible additives.
Because Appellants present argument with respect to only one data
point within the scope of claim 1, the data presented is not commensurate in
scope with the claim. Appellants therefore have not established unexpected
results sufficient to overcome the Examiner’s obviousness determination.
See In re Peterson, 315 F.3d 1325, 1330-31 (Fed. Cir. 2003) (explaining
that applicant may overcome a prima facie case of obviousness by showing
unexpected results but showing of unexpected results “must be
commensurate in scope with the claims which the evidence is offered to
support”) (internal quotes and citation omitted). We thus sustain the
Examiner’s rejection of claims 1, 4—8, 11, and 12 because Appellants do not
identify reversible error.
DECISION
For the above reasons, we affirm the Examiner’s rejection of claims 1,
4-8, 11, and 12.
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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