Ex Parte Scheim et alDownload PDFPatent Trial and Appeal BoardSep 21, 201613130672 (P.T.A.B. Sep. 21, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/130,672 05/23/2011 22045 7590 09/23/2016 BROOKS KUSHMAN P,C 1000 TOWN CENTER TWENTY-SECOND FLOOR SOUTHFIELD, MI 48075 FIRST NAMED INVENTOR UweScheim 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. WAS1104PUSA 9669 EXAMINER NGUYEN, HAS ART UNIT PAPER NUMBER 1766 NOTIFICATION DATE DELIVERY MODE 09/23/2016 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 following e-mail address( es): docketing@brookskushman.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PA TENT TRIAL AND APPEAL BOARD Ex parte UWE SCHEIM1 and Detlev Ostendorf Appeal2015-001746 Application 13/130,672 Technology Center 1700 Before BRADLEY R. GARRIS, MARK NAGUMO, and CHRISTOPHER C. KENNEDY, Administrative Patent Judges. NAGUMO, Administrative Patent Judge. DECISION ON APPEAL Uwe Scheim and Detlev Ostendorf ("Wacker") timely appeal under 35 U.S.C. § 134(a) from the Final Rejection2 of claims 11-31, which are all of the pending claims. We have jurisdiction. 35 U.S.C. § 6. We reverse. 1 The real party in interest is identified as Wacker Chemie AG ("Wacker"). (Appeal Brief, filed 27 May 2014 ("Br."), 3.) 2 Office action mailed 3 December 2013 ("Final Rejection"; cited as "FR"), as modified by the Advisory Action ("Adv.") mailed 17 March 2014, entering amendments correcting typographical errors. Appeal2015-001746 Application 13/130,672 A. Introduction3' 4 OPINION The subject matter on appeal relates to one-component sealants that cure at room temperature on exposure to water (the typical water content of air is said to be sufficient to cross-link the compositions of the invention; Spec. 23, 11. 21-22) but that are storable with the exclusion of water (id. at 1, 11. 8-10). Such one-component compositions are said to vulcanize to elastomers at room temperature on exposure to water, and are referred to as "R TV-1 compositions." (Id. at 11. 10-11.) The '672 Specification teaches that the compositions of interest are based on polymers terminated by silyl groups having hydrolyzable substituents such as OH or alkoxy groups that may be cross-linked. (Id. at 11. 13-17.) Of particular interest are crosslinking agents that do not give off elimination products that are objectionable from a health standpoint. 5 (Id. at 11. 21-25.) Moreover, in order to enable the silicone-based sealants to adhere to a multiplicity of different substrates (id. at 11. 28-30; 24, 11. 27-33), adhesion promotors such 3 Application 13/130,672, Cross-linkable masses based on organosilicon compounds, filed 23 May 2011 as the national stage under 35 U.S.C. § 371 of PCT/EP2009/067152, which was filed 15 December 2009, claiming the benefit of an application filed in Germany on 23 December 2008. We refer to the '"672 Specification," which we cite as "Spec." 4 An extensive Preliminary Amendment to the Specification was filed upon entry to the national stage (pp. 2-26). Most of the amendments appear to conform terminology and usage to American standards. A substitute Specification does not appear to have been filed. 5 Thus others have developed systems that produce "only elimination products which are completely free from toxic methanol." Scheim '948, Abstract, last sentence [complete cite at 5 n.9, infra]. 2 Appeal2015-001746 Application 13/130,672 as silyl-substituted isocyanurates and epoxy-functional silanes are known (id. at 1, 11. 30-34, citing Fujimoto [full cite infra at 5 n.8]). However, such alkoxy-functional silane compositions are said to be unstable under storage, and "instead cure fully within a short time when the polymer components are mixed with the crosslinkers." (Id. at 11. 35-38; see also Spec. 29, Comparative Example 1, reporting a composition made in accord with Fujimoto.) The key points are summarized in the Abstract, which reads: Curable organosilicon compositions with good adhesion to substrates and good workability contain [(A)] a condensable base organopolysiloxane, [(B)] a carbamato-alkylfunctional alkoxysilane, and [(C)] a heterocycle substituted at a heteroatom by an alkoxysilylmethyl group. (Spec., Abstract; bracketed letter labels to corresponding elements in sole independent claim 11 added.) Sole independent claim 11 is representative and is reproduced in the Appendix to this Opinion. The Examiner maintains the following grounds of rejection6 : A. Claims 11-31 stand rejected under 35 U.S.C. § 103(a) in view of the combined teachings of Bauer7 and Fujimoto. 8 Al. Claims 11, 12, 22, and 24-31 stand rejected under 35 U.S.C. § 103(a) in view of the combined teachings of Bauer and Scheim. 9 6 Examiner's Answer mailed 16 September 2014 ("Ans."). 7 Andreas Bauer et al., DE 10 2007 037 196 Al (11 September 2008) (machine translation, origin not provided), assigned to Wacker Chemie AG (present real-party-in-interest). 8 Tetsuo Fujimoto and Masayoshi Anzai, Room temperature-curable silicone rubber composition, U.S. Patent No. 5,093,454 (1992). 3 Appeal2015-001746 Application 13/130,672 A2. Claims 13-21 and 23 stand rejected under 35 U.S.C. § 103(a) in view of the combined teachings of Bauer, Fujimoto, and Scheim. B. Discussion Findings of fact throughout this Opinion are supported by a preponderance of the evidence of record. The Examiner finds that Bauer teaches, in Example 1, a condensation reaction crosslinkable composition comprising an a,co-dihydroxysiloxane (corresponding to component (A)) and N-(trimethoxysilylmethyl)- tetrahydro-1,4-oxazine (corresponding to component (C)), as well as several optional components. (FR 3.) The Examiner finds that Bauer does not teach a compound corresponding to component (B) or a compound corresponding to optional component (D). (Id. at 4, 1. 3.) The Examiner finds further that Bauer teaches the compositions are particularly suitable for R TV compositions as low modulus sealants. (Id. at 3, 11. 23-24.) The Examiner finds that Fujimoto describes RTVs having compounds corresponding to components (A), (B), and (D) (id. at 4), and concludes that it would have been obvious to include components corresponding to (B) and to (D) in the compositions of Bauer "because Fujimoto further teaches that the epoxyalkoxysiloxane serves to improve adhesive properties." (Id. at 5, 11. 1-7.) Similarly, the Examiner finds that Scheim teaches compounds corresponding to (B), namely Scheim formula II and hydrolysates thereof, 9 Uwe Scheim et al., Alkoxy-crosslinking RTVJ silicone rubber mixtures, U.S. Patent No. 6,001,948 (1999). 4 Appeal2015-001746 Application 13/130,672 for rapid curing of R TV 1 silicone rubber mixtures. (Id. at 7, 11. 2-14.) The Examiner concludes that it would have been obvious to include compounds corresponding to Scheim's formula II in the foamable compositions described by Bauer for the rapid curing. (Id. at 7, 1. 15, to 8, 1. 2.) Wacker limits its arguments for patentability to claim 11. Wacker argues initially that Bauer is nonanalogous art because the claimed invention is concerned with solid silicone elastomers, which is, in Wacker's view, "an entirely different field of endeavor" than silicone foams. (Br. 13.) A major problem with this argument is that claim 11 does not recite any properties of the claimed composition beyond the recitation in the preamble that the composition is moisture-curable, storage stable in the absence of water, and cross-linkable by condensation reaction. Moreover, the transitional phrase "comprising" leaves the composition open to unrecited components including blowing agents necessary to make foams. The silence of the supporting Specification does not limit the scope of the claims, and we decline to read limitations from preferred embodiments into the claims. Wacker' s arguments that there is insufficient reason to combine the components described by Fujimoto or Scheim with the compositions of Bauer are more substantive. In particular, Wacker urges that the compositions of Fujimoto are not storage stable, as indicated by the description in the '672 Specification (Spec. 1, 11. 29-38: "[t]he compositions described therein [i.e., in Fujimoto] using alkoxy-functional silanes are not stable on storage, however, but instead cure fully within a short time when the polymer components are mixed with the crosslinkers"), and Comparative Example 1 (id. at 29: "Samples of the product were stored at 23 ° C for 24 hours in cartridges with airtight and moisturetight sealing before the 5 Appeal2015-001746 Application 13/130,672 properties were assessed. Further assessment of the product was impossible, since it had already cured and could no longer be extruded from the cartridges.") Indeed, as Wacker points out, Bauer teaches that "[t]he compositions characteristic of RTVl low cure rate is disadvantageous for the production of foams in general." (Bauer [ 0004].) Thus, Wacker urges, the artisan would not have looked to relatively slowly-curing compositions such as R TV-1 silicone compositions for preparing foamable compositions such as those taught by Bauer. Moreover, as Wacker indicates, Bauer teaches that "[ c ]ompositions of this type [i.e., polydiorganosiloxane foams] react without inhibitors even when they are mixed and are thus not suitable for production of one- component, storage stable formulations." (Bauer [0003]; emphasis added.) Compositions said to contain a blowing agent for the production of silicone foams are said to have "[t]he disadvantage [] that an elaborate two-chamber packaging must be used here." (Id.) Similarly, Wacker urges that "Scheim is directed to R TV-1 caulks and sealants, which must cure slowly enough that they may be pressed into the joint and then modeled ('tooled,' 'smoothed') prior to cure." (Br. 24, 11. 9- 11.) Bauer, in contrast, "requires a very fast rate of cure so that his silicone foam will not collapse." (Id. at 11-12.) Wacker argues further that Bauer chooses to use an a-silane, N-(trimethoxysilylmethyl)-tetrahydro-1,4- oxazine, to increase the rate of cure. (Id. at 25, 11. 10-14, citing Bauer [0075].) Thus, in Wacker's view, the prior art would have provided no reason "to add the slower curing compounds (II) of Scheim into Bauer's formulation." (Br. 25, 11. 24-25.) 6 Appeal2015-001746 Application 13/130,672 The preponderance of the evidence is that Fujimoto teaches compositions that have been shown to be unsuitable for single component, storage-stable RTV-1 compositions. The Examiner has not come forward with evidence or a satisfactory explanation of what teachings would have suggested that particular components present in Fujimoto's compositions would have been expected to be useful in the storage stable compositions described by Bauer. Similarly, the Examiner has not explained satisfactorily what teachings would have suggested using slower curing components described by Scheim in an R TV-1 composition in the fast-curing silicone foam compositions described by Bauer. On the present record, the only such suggestions come from the '672 Specification. Accordingly, we reverse the rejections on appeal. C. Order It is ORDERED that the rejection of claims 11-31 is reversd. REVERSED 7 Appeal2015-001746 Application 13/130,672 APPENDIX: CLAIM 11 Sole independent claim 11 reads: A moisture curable composition which is storage stable in the absence of water, crosslinkable by condensation reaction, compnsmg: (A) at least one organosilicon compound having at least two condensable groups; (B) at least one organosilicon compound of the formula (R30)3-nSiR2n-(CR12)m-NR7-CO-Rs (I), where R1 each is identical or different and is hydrogen or a monovalent, optionally substituted hydrocarbon radical, R2 each is identical or different and is a monovalent, optionally substituted hydrocarbon radical optionally interrupted by oxygen atoms, R3 each is identical or different and is hydrogen or a monovalent, optionally substituted hydrocarbon radical optionally interrupted by oxygen atoms, R7 each individually is hydrogen or a monovalent, optionally substituted hydrocarbon radical, which is optionally attached to nitrogen via a carbonyl group, Rs each individually is a monovalent, optionally substituted hydrocarbon radical, with the proviso that R7 and Rs are also optionally covalent bonds linking two organosilicon compounds (I) together at the nitrogen atom and at the carbon of the CO moiety to form a uretdione ring, or linking three organosilicon compounds (I) at the nitrogen atom and the carbon atom of the CO moiety to form an isocyanurate or iminooxadiazine ring, m is an integer from 1 to 8, and n is 0, 1 or 2, and/or the partial hydrolysates thereof; 8 Appeal2015-001746 Application 13/130,672 (C) at least one heterocyclic compound of the formula A[CR42SiR5 a(OR6)3-a]x (V), where A is a radical derived from a heterocycle AHx and comprises at least one ring-forming element selected from the group consisting of nitrogen, oxygen, and sulfur, in which x hydrogen atoms are replaced by chemical bonds to the CR 42 radical, at least one of these bonds being located on a nitrogen, sulfur, or oxygen ring-forming element, and wherein at least one ring forming element is nitrogen, R4 each is identical or different and is hydrogen or a monovalent, optionally substituted hydrocarbon radical, R5 each is identical or different and is a monovalent, optionally substituted hydrocarbon radical optionally interrupted by oxygen atoms, R6 each is identical or different and is hydrogen or a monovalent, optionally substituted hydrocarbon radical optionally interrupted by oxygen atoms, a is 0 or 1, and x is 1, 2 or 3, and/or the partial hydrolysates thereof, with the proviso that radical A does not comprise a ring carbon atom that has oxygen or sulfur atoms attached by a double bond and that has direct bonding to a ring-forming heteroatom of main group 3 or 5 which is bonded to a CR42 radical of the formula (V), (D) optionally, epoxy-functional organosilicon compounds, and (E) optionally, calcium carbonate coated with stearic acid, and (F) optionally, one or more alkoxysilane crosslinkers, with the proviso that condensable alkoxy groups are present in the composition in at least one of components (A) and (F). (Br., Claims App. 1-2, some indentation, paragraphing, and emphasis added.) 9 Copy with citationCopy as parenthetical citation