13973425 (P.T.A.B. Mar. 4, 2019)

Ex Parte SCHMIDT et al

Patent Trial and Appeal BoardMar 4, 2019

13973425 (P.T.A.B. Mar. 4, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/973,425 08/22/2013 FRIEDRICH GEORG SCHMIDT 22850 7590 03/06/2019 OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P. 1940 DUKE STREET ALEXANDRIA, VA 22314 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. 420437US99CONT 9981 EXAMINER THOMPSON, CAMIE S ART UNIT PAPER NUMBER 1786 NOTIFICATION DATE DELIVERY MODE 03/06/2019 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): patentdocket@oblon.com OBLONPAT@OBLON.COM iahmadi@oblon.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte FRIEDRICH GEORG SCHMIDT, EMMANOUIL SPYROU, WERNER GRENDA, SEBASTIAN DE NARDO, and SIBYLLE PLANITZ-PENNO Appeal2017-005413 Application 13/973,425 Technology Center 1700 Before DONNA M. PRAISS, MICHAEL G. McMANUS, and MERRELL C. CASHION, JR., Administrative Patent Judges. CASHION, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE This is an appeal under 35 U.S.C. Â§ 134(a) from a final rejection of claims 17-28 and 31-34. 1 We have jurisdiction under 35 U.S.C. Â§ 6(a). We AFFIRM. 1 An oral hearing was scheduled for February 5, 2019. However, the hearing was waived on January 23, 2019. Appeal2017-005413 Application 13/973,425 Claim 17 is illustrative of Appellants' invention and is reproduced below: 17. A prepreg, comprising: (A) at least one fibrous support, and, as a matrix material, (B) at least one reactive powdery polyurethane composition comprising (1) at least one di- or polyisocyanate and (2) at least one hydroxyl group containing polymer, wherein the di- or polyisocyanate is internally blocked and/or blocked with a blocking agent, wherein the hydroxyl group containing polymer is selected from the group consisting of a polyacrylate, a polyester, a polyether, a polycarbonate, a polyurethane and mixtures thereof and has (a) one or more functional groups reactive towards an isocyanate group, (b) an OH number of 20-500 mg KOH/g and (c) an average molecular weight of 250- 6,000 g/mol, and wherein the reactive powdery polyurethane composition has a glass transition temperature (Tg) of at least 40Â°C and a curing temperature above 160Â°C. Appellants2 (see generally Appeal Brief) request review of the Examiner's decision to finally reject claims 17-28 and 31-34 under 35 U.S.C. Â§ I03(a) as unpatentable over Thyssen (US 6,008,150, issued December 28, 1999) and Spyrou (US 2005/0239992 Al, published October 27, 2005). 2 Evonik Degussa GmbH is identified as the real party in interest. App. Br. 1. 2 Appeal2017-005413 Application 13/973,425 Appellants present arguments only for independent claim 17 and dependent claim 31. See generally Appeal Brief. We select claim 17 as representative of the claims on appeal. Dependent claims 18-28 and 32-34 stand or fall with independent Claim 1 7. We address dependent claim 3 1 separately. OPINION The Prior Art Rejection After review of the respective positions provided by Appellants and the Examiner, we AFFIRM the Examiner's rejection of claims 17-28 and 31-34 for the reasons presented by the Examiner in the Final Office Action and the Answer. We add the following for emphasis. Claim 17 We refer to the Examiner's Final Office Action for a complete statement of the rejection of claim 17. Final Act. 2--4. Briefly, the Examiner finds that Thyssen discloses a prepreg comprising a reactive powdery polyurethane composition having a curing temperature at about 160 Â°C but does not teach a reactive powdery polyurethane composition comprising the claimed at least one hydroxyl group containing polymer having (a) one or more functional groups reactive towards an isocyanate group (b) an OH number of20-500 mg/KOH/g and (c) an average molecular weight of 250-6,000 g/mol. Final Act. 2-3; Thyssen col. 3, 11. 50-63. The Examiner relies on Spyrou for this feature. Final Act. 3--4; Spyrou ,r 83. The Examiner determines that it would have been obvious to use Spyrou's material in place of Thyssen' s reactive material to enhance levelling and 3 Appeal2017-005413 Application 13/973,425 flexibility of the coating, which benefits are disclosed by Spyrou. Final Act. 4; see Spyrou ,r 12. Appellants' principal dispute is that neither reference suggests using materials with curing temperatures above 160 Â°C. App. Br. 4--5. Specifically, Appellants argue that both references teach away from curing temperatures above 160 Â°C. App. Br. 4--5, 7; Thyssen col. 3, 11. 50-63; Spyrou ,r 57. We are unpersuaded of Examiner error by these arguments. We agree with the Examiner's determination that, when reading each reference as a whole, they disclose embodiments comprising the use of reactive materials that have a curing temperature greater than 160 Â°C. Ans. 6-8. For example, Spyrou specifically discloses use of coating materials having curing temperatures above 160 Â°C. Ans. 8; Spyrou ,r 105 (specifically reciting curing temperatures of 170, 180, 190, 200, and 210Â° C). Thyssen, as recognized by Appellants, discloses a preference for materials that cure at less than 160 Â°C. App. Br. 4--5; Thyssen col. 3, 11. 66-67. Appellants also recognize that Thyssen discloses the use of material that cures at 180 Â°C, even if in small amounts. App. Br. 4--5; Thyssen col. 3, 11. 57-61. Moreover, both Appellants and the Examiner recognize that Thyssen specifically discloses using materials that cure between 120 and 220 Â°C. Ans. 6; App. Br. 4--5; Thyssen col. 3, 11. 57---61. While Thyssen discloses a preference for materials, it is well settled that a reference may be relied upon for all that it discloses and not merely the preferred embodiments as suggested by Appellants. See Merck & Co., Inc. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) ("' ... [A]ll disclosures of the prior art, including unpreferred embodiments, must be considered."' ( quoting In re 4 Appeal2017-005413 Application 13/973,425 Lamberti, 545 F.2d 747, 750 (CCPA 1976))); In re Fracalossi, 681 F.2d 792, 794 n.1 (CCPA 1982) (explaining that a prior art reference's disclosure is not limited to its examples). Appellants have not directed us to any portion of Thyssen or Spyrou that limits the use of curing materials to those that cure up to 160 Â°C. Appellants have not adequately explained how the references' disclosures of materials that cure at 160 Â°C detract from their respective broader teaching of materials that cure above 160 Â°C. Claim 31 Claim 31 requires that the prepreg be storage-stable for several weeks at 40Â°C and below. We refer to the Examiner's Final Office Action for a statement of the rejection of claim 31. Final Act. 5---6. Appellants contend that the Examiner failed to adequately establish that Spyrou's reactive powdery polyurethane compositions would inherently be storage-stable as claimed. App. Br. 8. We are unpersuaded of Examiner error. Moreover, Thyssen recognizes the desirability of making prepregs that are storage-stable. Thyssen col. 1, 11. 58-59; col. 8, 11. 8-9. Thyssen further discusses the need to store the powder coating materials without loss of reactivity. Thyssen col. 4, 11. 49-66, col. 7, 1. 55. Spyrou, on the other hand, recognizes the importance of stable powder coatings for heat resistant substrates. Spyrou ,r,r 12, 83. Thus, one skilled in the art would have had a reasonable expectation that the use of Spyrou' s compositions in Thyssen' s prepreg would also exhibit an appropriate level of storage stability prior to curing, as desired by Thyssen. Appellants have not adequately explained why one 5 Appeal2017-005413 Application 13/973,425 skilled in the art would not have been capable of determining the appropriate storage conditions for a prepreg comprising Spyrou's material. Appellants have not directed us to any evidence of criticality of the claimed storage conditions. Accordingly, we affirm the Examiner's prior art rejection of claims 17-28 and 31-34 under 35 U.S.C. Â§ 103(a) for the reasons presented by the Examiner and given above. ORDER The Examiner's prior art rejection of claims 17-28 and 31-34 under 35 U.S.C. Â§ 103(a) is affirmed. TIME PERIOD No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l). AFFIRMED 6