Ex Parte RoitmanDownload PDFBoard of Patent Appeals and InterferencesMar 26, 200910987081 (B.P.A.I. Mar. 26, 2009) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte LIPA LEON ROITMAN ____________ Appeal 2008-6120 Application 10/987,081 Technology Center 1700 ____________ Decided:1 March 26, 2009 ____________ Before CHARLES F. WARREN, JEFFREY T. SMITH, and LINDA M. GAUDETTE, Administrative Patent Judges. Opinion for the Board filed by Administrative Patent Judge GAUDETTE. Opinion Concurring filed by Administrative Patent Judge WARREN. GAUDETTE, Administrative Patent Judge. DECISION ON APPEAL 1 The two-month time period for filing an appeal or commencing a civil action, as recited in 37 C.F.R. § 1.304, begins to run from the Decided Date shown on this page of the decision. The time period does not run from the Mail Date (paper delivery) or Notification Date (electronic delivery). Appeal 2008-6120 Application 10/987,081 Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s decision finally rejecting claims 1-20 (Final Office Action, mailed February 17, 2006), the only claims pending in the application. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. STATEMENT OF THE CASE The invention relates to compositions for bonding an elastomer substrate to another substrate (Spec. 1:4-5) and to a bonded article comprising an elastomer (claim 9). Claims 1, 11, 13, and 16 are illustrative of the subject matter on appeal, and are reproduced from the Claims Appendix to the Appeal Brief (“App. Br.”), filed August 22, 2007: 1. A composition comprising at least one haloalkadiene grafted polymer, at least one multi-hydroxyl aromatic compound, and at least one polyisocyanate, wherein said composition is capable of bonding an elastomer substrate to at least one other substrate. 11. The composition of claim 1, wherein the amount of phenolic resin in said composition is 0.2% or less by weight based on the total weight of said composition. 13. The composition of claim 11; further comprising at least one methylene donor compound; further comprising at least one vulcanizing agent selected from the group consisting of selenium, sulfur, tellurium, compounds thereof, alloys thereof, and mixtures thereof; wherein said haloalkadiene grafted polymer comprises at least one product of reacting at least one halogenated cyclic conjugated alkadiene with at least one 2 Appeal 2008-6120 Application 10/987,081 unsaturated polydiene that comprises 50% or more butadiene units by weight based on the weight of said unsaturated polydiene; wherein said multi-hydroxyl aromatic compound comprises resorcinol; and wherein said polyisocyanate comprises at least one polymeric polyisocyanate. 16. The composition of claim 1, wherein the amount of unsaturated elastomer crosslinker in said composition is 0.01% or less by weight based on the total weight of said composition. The Examiner relies on the following evidence to establish unpatentability (Examiner’s Answer (“Ans.”), mailed December 14, 2007): Findley 3,640,941 Feb. 08, 1972 Warren 5,128,403 Jul. 07, 1992 Compounding Ingredients Limited (CIL) WO 98/3660 June 4, 1998 Appellant requests review of the following grounds of rejection (App. Br. 7): 1. claims 1-10 under 35 U.S.C. § 103(a) as unpatentable over Warren in view of Compounding Ingredients Limited (“CIL”); 2. claims 11, 12, 14-17, 19, and 20 under 35 U.S.C. § 103(a) as unpatentable over CIL in view of Findley; and 3. claims 13 and 18 under 35 U.S.C. § 103(a) as unpatentable over CIL in view of Findley, and further in view of Warren. Appellant presents arguments with respect to the following groups of claims: claims 1-10 (App. Br. 8-15); claims 11, 12, 14, and 15 (App. Br. 15- 16); claims 16, 17, 19, and 20 (App. Br. 16-17); claim 13 (App. Br. 17); and claim 18 (App. Br. 18). Accordingly, we decide the appeal as to the first ground of rejection on the basis of claim 1, as to the second ground of 3 Appeal 2008-6120 Application 10/987,081 rejection on the basis of claims 11 and 16, and as to the third ground of rejection on the basis of claims 13 and 18. See 37 C.F.R. § 41.37(c)(1)(vii). ISSUES 1. Has Appellant shown reversible error in the Examiner’s determination that it would have been obvious to one of ordinary skill in the art at the time of Appellant’s invention to include an isocyanate as an ingredient in Warren’s composition? We answer this question in the negative. 2. Has Appellant shown reversible error in the Examiner’s determination that the combined teachings of CIL, Findley, and Warren disclose or suggest a composition which does not contain phenolic resin or unsaturated elastomer crosslinker? We also answer this question in the negative. FINDINGS OF FACT (“FF”) Claim Interpretation 1. Appellant’s Specification (“Spec.”) provides the following definitions for limitations found in one or more of appealed claims 1, 11, 13, 16 and 18: a. haloalkadiene grafted polymer (claims 1, 11, 13, 16 and 18) - “the product or products of reacting at least one halogenated conjugated alkadiene with at least one unsaturated polymer” (Spec. 5:17-19). According to the Specification, “[s]uch reactions are generally believed to be Diels-Alder reactions. One description of such reactions is given in US 5,128,403 4 Appeal 2008-6120 Application 10/987,081 [Warren]” (Spec. 5:19-22). The Specification identifies “hexachlorocylcopentadiene” as a “suitable halogenated conjugated cyclic alkadiene” (Spec. 6:6-7) and “polybutadiene” as a “useful unsaturated polymer” (Spec. 6:8, 14). b. multi-hydroxyl aromatic compound (claims 1, 11, 13, 16 and 18) - “any compound that contains an aromatic ring . . . with two or more hydroxyl groups” (Spec. 8:21-22, 24-26). According to the Specification, “[r]esorcinol is known to be one useful multi-hydroxyl aromatic compound” (Spec. 9:6-7). c. polyisocyanate (claims 1, 11, 13, 16 and 18) – “a compound bearing at least two isocyanate groups” (Spec. 9:16). The Specification identifies “2,4-toluene diisocyanate” as a suitable polyisocyanate (Spec. 9:19-20). d. methylene donor compound (claims 13 and 18) - “a compound capable of forming at least one methylene bridge or linkage by reacting with at least one hydroxyl group on another compound” (Spec. 10:29-11:3). The Specification identifies “hexamethylene tetramine” as a “suitable methylene donor compound” (Spec. 11:7-8). e. phenolic resin (claims 11 and 13) – “condensation products of one or more aldehydes with one or more phenolic compounds” (Spec. 12:18-19). f. unsaturated elastomer crosslinker (claims 16 and 18)– “unsaturated compounds that, when reacted with elastomers, 5 Appeal 2008-6120 Application 10/987,081 sometimes lead to crosslinking of the elastomer” (Spec. 12:24- 26). 2. According to the Specification, in making the compositions of the present invention, the ingredients may be combined by any of a wide variety of methods. For example, ingredients may be added in various orders. In some embodiments, two or more ingredients are selected and pre-combined; that is, before the selected ingredients are added to the remainder of the ingredients, the selected ingredients are mixed together and, optionally, heated together, or, optionally, stored together, or, optionally, mixed and heated and stored together, with or without stirring. For example, in some embodiments, at least one haloalkadiene grafted polymer is mixed with at least one polyisocyanate, heated to a temperature of 35ºC or higher, and kept at that temperature for one hour or longer; the result of this mixing and heating is subsequently added to other ingredients of the composition. (Spec. 14:16-27.) Rejection of claims 1-10 under 35 U.S.C. § 103(a) as unpatentable over Warren in view of CIL 3. Warren discloses an adhesive that is described as bonding metal to elastomer; as containing a Diels-Alder adduct of perhalogenated cyclic conjugated diene and an unsaturated dienophile; as containing a phenolic resin, an aromatic hydroxy compound, a formaldehyde donor, an unsaturated crosslinker, a vulcanizing agent, and a metal oxide; and as resistant to corrosive agents (Spec. 1:12-17). 6 Appeal 2008-6120 Application 10/987,081 4. Warren describes the adhesive as “predominantly utiliz[ing] environmentally acceptable components,” able to “withstand elevated temperature bonding conditions,” and “exhibit[ing] excellent resistance to high temperature fluid environments and corrosive conditions” (col. 2, ll. 15- 20). 5. According to Warren, “[t]he . . . adhesive composition contains a Diels-Alder adduct” which “is formed by reacting at least one halogenated cyclic conjugated diene and at least one polyalkadiene dienophile having a high vinyl content” (col. 2, ll. 20-25 and 43-46). According to Warren, “[t]he halogenated cyclic dienes are readily prepared by well-known methods and at least one, hexachlorocyclopentadiene, is a wellknown [sic, well known] article of commerce” (col. 3, ll. 11-14). Warren discloses that the polyalkadiene dienophile “can be unmodified, e.g., polybutadiene, . . . or modified, as by having hydroxyl or carboxyl termination and including chain-extended hydroxyl-terminated and carboxyl-terminated polymeric materials” (col. 3, l. 66-col. 4, l. 3). According to Warren, the polyalkadiene dienophiles are characterized by high molecular weight which can be modified by conventional chain extension techniques (col. 3, ll. 43-46, and col. 4, ll. 31-38). According to Warren, “[c]hain extending reaction conditions are wellknown [sic, well known] in the art. . . . As an example of such reaction conditions, the chain extension of a dihydroxy polyalkadiene prepolymer with a diisocyanate chain-extender such as 2,4-toluene diisocyanate is effected at room temperature or at a moderately elevated temperatures” (col. 4, ll. 38-44). Warren states that “[a] full description of the chain extension of reactive substituted polyalkadiene dienophiles, including representative chain extending compounds, is found in Polaski 7 Appeal 2008-6120 Application 10/987,081 U.S. Pat. No. 3,894,982, particularly from Col. 5, line 16 through Col. 8, line 51, which disclosure is incorporated herein by reference” (col. 4, ll. 50-56). 6. CIL “relates to adhesives, particularly, but not exclusively to adhesives for bonding elastomers such as polyurethane, particularly to rubber, and to the manufacture of automobile [tires] and retreads using such adhesives” (p. 1, 1st para.). CIL specifically teaches an adhesive comprising a highly chlorinated Diels-Alder adduct of hexachlorocyclopentadiene and polybutadiene (p. 2) and an isocyanate (p. 3). 7. The Examiner finds that Warren discloses an adhesive composition as claimed in claim 1 with the exception of a polyisocyanate component. (Ans. 4.) The Examiner further finds that the isocyanates in CIL “serve to provide crosslinking to polyurethane elastomer substrates and improve flexibility and dynamic fatigue resistance in the adhesive layer.” (Id.) The Examiner contends that “it would have been prima facie obvious to include polyisocyanate materials in the adhesive compositions of Warren’s invention to improve adhesion to polyurethane elastomer substrates and/or to improve flexibility and dynamic fatigue resistance to the adhesives.” (Id.) 8. Appellant argues that one of ordinary skill in the art would not have been motivated to add polyisocyanate to Warren’s composition based on CIL’s disclosure because: (1) the effect on the corrosion resistance property of Warren’s composition was unknown and (2) dynamic fatigue resistance was not a property essential to the proper function of Warren’s composition. (Reply Brief (“Reply Br.”), filed February 11, 2009, 3-4.) Appellant also argues that one of ordinary skill in the art would not have 8 Appeal 2008-6120 Application 10/987,081 been motivated to add an isocyanate compound to Warren’s composition because Warren expressly teaches a composition containing “non-toxic, environmentally acceptable components.” (Id. at 5 (quoting Warren, col. 2, ll. 3-7).) 9. The Examiner maintains that the above-cited disclosure in Warren establishes that Warren “suggests isocyanate compounds in any capacity to form the compounds in the adhesive” and “does not consider isocyanate compounds as toxic” (Ans. 7). 10. Appellant concedes that Warren teaches the use of isocyanates as a reactant, but maintains that “Warren makes no teaching or suggestion that isocyanate compounds themselves exist in his adhesive” (Reply Br. 5). In support of this contention, Appellant relies on the chemical structure identified in Polaski as the product of the reaction between hydroxyl- substituted polyalkadiene and 2,4 – toluene diisocyanate (App. Br. 14 (citing Polaski, col. 8, ll. 7-63)). In particular, Appellant notes that “the structure shows repeating urethane groups but no isocyanate groups.” (App. Br. 14.) Rejection of claims 11, 12, 14-17, 19, and 20 under 35 U.S.C. § 103(a) as unpatentable over CIL in view of Findley and Rejection of claims 13 and 18 under 35 U.S.C. § 103(a) as unpatentable over CIL in view of Findley, and further in view of Warren 11. Findley discloses an adhesive composition which “is particularly useful for bonding vulcanizable rubber to metal surfaces” (col. 1, ll. 12-13) comprising a “a graft polymer formed from the combination of 9 Appeal 2008-6120 Application 10/987,081 polybutadiene or halogenated polybutadiene and substituted cyclopentadiene monomer” and “dibasic lead phosphite” (col. 1, ll. 14-16). Findley discloses that a suitable “substituted cyclopentadiene” is “hexachlorocyclopentadiene” which produces a bond several times stronger than the bond resulting from the use of cyclopentadiene (col. 3, ll. 29-33). Findley states that the dibasic lead phosphite is used as an acid acceptor and corrosion inhibitor (col. 3, ll. 44-45). According to Findley, “[t]he inclusion of resorcinol in this adhesive results in a substantial improvement in its bonding characteristics as compared with the adhesion of the graft polymer and dibasic lead phosphite alone” (col. 3, ll. 71-74). Findley discloses that a formaldehyde donor, such as “hexamethylenetetramine” may be included in the adhesive composition to enhance adhesion (col. 4, ll. 51-53). According to Warren, “[w]hile [Findley’s] composition avoids the use of aromatic nitroso compounds, it requires the utilization of a lead-containing compound which can be detrimental to the environment and hazardous to the health of persons handling the adhesive composition” (col. 1, l. 66-col. 2, l. 2). 12. The Examiner finds that CIL discloses a composition as claimed in claims 11, 12, 14-17, 19 and 20 with the exception of a multi- hydroxyl aromatic compound (see claim 1) and a methylene donor compound. (See Ans. 5.) The Examiner further finds that “Findley teaches adhesive compositions for bonding rubber to substrates, where resorcinol and methylene donor compounds are added to a halogenated graft polymer to improve the adhesion (abstract; col. 3 line 71-col. 4 line 65)” (Ans. 5). The Examiner contends that “it would have been prima facie obvious to 10 Appeal 2008-6120 Application 10/987,081 include the resorcinol and methylene donor compounds in the adhesives of [CIL] to increase the adhesion of the elastomer substrates”. (Id.). 13. Appellant argues that neither CIL nor Findley, alone or in combination, teaches or suggests adhesive compositions with little or no phenolic resin (claim 11) or with little or no unsaturated elastomer crosslinker (claim 16). (App. Br. 16.) 14. The Examiner contends that CIL does not require the use of phenolic resins or unsaturated elastomer crosslinkers. (Ans. 8.) 15. The Examiner relies on Warren for a teaching of the claimed vulcanizing agents. (Ans. 5.) 16. Appellant does not dispute the Examiner’s contention that Warren discloses the claimed vulcanizing agents, but argues that Warren teaches away from a composition containing phenolic resin (claim 13) and unsaturated elastomer crosslinker (claim 18) in the amounts claimed. (App. Br. 17-18.) 17. Appellant also argues that one of ordinary skill in the art would not have combined Warren or Findley with CIL since the first two references are directed to adhesives for bonding to metal, while CIL is directed to bonding polyurethane elastomers to rubber (see App. Br. 8-9, 15, and 17-18). 18. Warren states that “[a]lthough the adhesives . . . are preferred for bonding elastomeric materials to metal, the present adhesive compositions may be applied . . . to any surface or substrate capable of 11 Appeal 2008-6120 Application 10/987,081 receiving the adhesive” (col. 7, ll. 42-46). Findley’s composition is said to be useful in bonding both rubber to metal and rubber to rubber (col. 8, ll. 53- 55). PRINCIPLES OF LAW During examination, claims terms must be given “their broadest reasonable construction consistent with the specification.” In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1378-79 (Fed. Cir. 2007). The broadest reasonable interpretation of the claims must also be consistent with the interpretation that those skilled in the art would reach. In re Cortright, 165 F.3d 1353, 1358 (Fed. Cir. 1999). Because the meaning of a claim term as understood by persons of skill in the art is often not immediately apparent, and because patentees frequently use terms idiosyncratically, the court looks to “those sources available to the public that show what a person of skill in the art would have understood disputed claim language to mean.” Those sources include “the words of the claims themselves, the remainder of the specification, the prosecution history, and extrinsic evidence concerning relevant scientific principles, the meaning of technical terms, and the state of the art.” Phillips v. AWH Corp., 415 F.3d 1303, 1314 (Fed. Cir. 2005) (quoting Innova/Pure Water, Inc. v. Safari Water Filtration Systems, Inc., 381 F.3d 1111, 1116 (Fed. Cir. 2004) (internal cites omitted)). "[A] reasonable expectation of success, not absolute predictability" supports a conclusion of obviousness. In re Longi, 759 F.2d 887, 896-97 (Fed. Cir. 1985). While “it can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does”, an obviousness 12 Appeal 2008-6120 Application 10/987,081 “analysis need not seek out precise teachings [in the prior art] directed to the specific subject matter of the challenged claim.” KSR Int'l Co. v. Teleflex Inc., 127 S. Ct. 1727, 1740-41 (2007). In considering the question of the obviousness of a claimed invention in view of the prior art relied upon, we are guided by the basic principle that the question under 35 U.S.C. § 103 is “not merely what the references expressly teach but what they would have suggested to one of ordinary skill in the art at the time of the invention.” See Merck & Co., Inc. v. Biocraft Labs., Inc., 874 F.2d 804, 807-08 (Fed. Cir. 1989) (quoting In re Lamberti, 545 F.2d 747, 750 (CCPA 1976)); In re Keller, 642 F.2d 413, 425 (CCPA 1981) (“The test for obviousness is not . . . that the claimed invention must be expressly suggested in any one or all of the references.”). “A person of ordinary skill is also a person of ordinary creativity, not an automaton.” KSR 127 S. Ct. at 1742. See also, DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1367-68 (Fed. Cir. 2006) (“Our suggestion test is in actuality quite flexible and not only permits, but requires, consideration of common knowledge and common sense”). ANALYSIS Claim Interpretation Claim 1 is directed to a composition which is “capable of bonding an elastomer substrate to at least one other substrate.” Interpreting this language in light of the Specification and claims, we determine that the broadest reasonable interpretation of claim 1 reads on a composition, prepared by pre-combining some of the recited ingredients, which are 13 Appeal 2008-6120 Application 10/987,081 ultimately capable of forming an adhesive bond by reaction and/or other processing (e.g., mixing, heating, and the like) of the recited ingredients. Our interpretation is based on the language found on pages 14-15 of the Specification which states, for example, that two or more ingredients may be selected and pre-combined. Specifically, the Specification describes mixing the haloalkadiene grafted polymer with the polyisocyanate, heating to a temperature of 35 ºC or higher and holding at that temperature to produce a product which is then added to other ingredients of the composition. (See FF 2.) Rejection of claims 1-10 under 35 U.S.C. § 103(a) as unpatentable over Warren in view of CIL Appellant asserts that Warren teaches against including an isocyanate in the final adhesive composition because of its toxicity. (FF 8.) Appellant also asserts that one of ordinary skill in the art would not have been motivated to include an isocyanate in Warren’s adhesive composition because it might adversely effect corrosion resistance of the adhesive. (FF 8.) Appellant’s arguments are not persuasive because they are based on an improper interpretation of claim 1 as limited to a final adhesive composition. As explained above, we interpret claim 1 as broadly including intermediate compositions used to form a final adhesive composition, e.g., a composition prepared by pre-combining an isocyanate with a haloalkadiene grafted polymer prior to addition of the other recited ingredients. Appellant argues that Warren fails to disclose or suggest the presence of an isocyanate compound in the final adhesive composition. (FF 10.) However, Appellant has not explained why claim 1 would not have been obvious in view of the 14 Appeal 2008-6120 Application 10/987,081 Warren/CIL combination since, as acknowledged by Appellant (FF 10), Warren discloses the use of isocyanates as a reactant in forming a final adhesive composition. In other words, Appellant’s arguments regarding a teaching away from including, or lack of motivation to include isocyanate in a final adhesive composition, fail to address the Examiner’s determination that it would have been obvious to have included isocyanate in a pre- combination of ingredients used in a composition which is capable of forming an adhesive (see FF 7 and 9). Therefore, Appellant’s contentions fail to establish error in the Examiner’s obviousness determination. Rejection of claims 11, 12, 14-17, 19, and 20 under 35 U.S.C. § 103(a) as unpatentable over CIL in view of Findley and Rejection of claims 13 and 18 under 35 U.S.C. § 103(a) as unpatentable over CIL in view of Findley, and further in view of Warren Appellant’s arguments fail to persuade us of reversible error on the part of the Examiner in rejecting claims 11-20. Appellant argues that neither CIL, Findley, nor Warren, alone or in combination, teaches or suggests adhesive compositions with little or no phenolic resin or with little or no unsaturated elastomer crosslinker. However, Appellant has not directed us to any teaching in CIL, i.e., the primary reference relied upon by the Examiner, which establishes that CIL’s compositions necessarily include phenolic resins or unsaturated elastomer crosslinkers. Nor has Appellant otherwise explained why the Examiner erred in finding that CIL does not require the inclusion of phenolic resins. 15 Appeal 2008-6120 Application 10/987,081 CONCLUSION Appellant has not identified reversible error in the Examiner’s obviousness determination. The decision of the Examiner rejecting claims 1-20 is affirmed. No time period for taking any subsequent action in connection with this appeal maybe extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED 16 Appeal 2008-6120 Application 10/987,081 WARREN, Administrative Patent Judge, Concurring: I concur with and join in the decision of the majority of this panel to affirm the decision of the Primary Examiner. I separately address only Appellants’ contention that Warren would have taught away from including CIL’s polyisocyanates in Warren’s adhesive compositions. App. Br. 11-14; Reply Br. 4-6. Appellants submit no contention establishing that one of ordinary skill in this art would have been led away from combining Warren and CIL as a matter of chemistry. Indeed, whether one of ordinary skill in this art would consider polyisocyanates “environmentally” acceptable or unacceptable depends solely on that person’s perspective. Furthermore, even if this person did consider polyisocyanates “environmentally” unacceptable, this person could still make the scientific decision to include polyisocyanates in Warren’s composition as a matter of chemistry as it is known that polyisocyanates are useful in such compositions. Cf., e.g., In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994) (“We share Gurley’s view that a person seeking to improve the art of flexible circuit boards, on learning from Yamaguchi that epoxy was inferior to polyester-imide resins, might well be led to search beyond epoxy for improved products. However, Yamaguchi also teaches that epoxy is usable and has been used for Gurley’s purpose.”). Thus, Warren provides no disclosure which would have discouraged one of ordinary skill in this art from modifying Warren’s compositions by the addition of CIL’s polyisocyanates, which results in compositions falling within appealed claim 1. See, e.g. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (prior art “disclosure does not criticize, discredit, or otherwise discourage the solution claimed”). 1 Appeal 2008-6120 Application 10/987,081 ssl ROHM AND HAAS COMPANY PATENT DEPARTMENT 100 INDEPENDENCE MALL WEST PHILADELPHIA, PA 19106-2399 2 Copy with citationCopy as parenthetical citation