Ex Parte Setiabudi

Patent Trial and Appeal Board

Dec 29, 2016

13058354 (P.T.A.B. Dec. 29, 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.
13/058,354 02/10/2011 Frans Setiabudi HAM830061 1670
62068 7590 01/03/2017
HUNTSMAN INTERNATIONAL LLC
LEGAL DEPARTMENT
10003 WOODLOCH FOREST DRIVE
THE WOODLANDS, TX 77380
EXAMINER
NGUYEN, HA S
ART UNIT PAPER NUMBER
1766
NOTIFICATION DATE DELIVERY MODE
01/03/2017 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):
Martha_Victory @ Huntsman, com
USPatents@Huntsman.com
Diana_E_Ortega@ Huntsman.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte FRANS SETIABUDI
Appeal 2015-007473
Application 13/058,354
Technology Center 1700
Before TERRY J. OWENS, JAMES C. HOUSEL, and
MONTE T. SQUIRE, Administrative Patent Judges.
SQUIRE, Administrative Patent Judge.
DECISION ON APPEAL1
Appellant2 appeals the Examiner’s final rejection of claims 1, 5, 7—11,
and 14—18. 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.
1 In this decision, we refer to the Final Office Action appealed from, mailed
June 27, 2013 (“Final Act.”); the Appeal Brief dated January 9, 2014 (“App.
Br.”); and the Examiner’s Answer to the Appeal Brief dated April 18, 2014
(“Ans.”).
2 Appellant identifies Huntsman Advanced Materials Americas LLC as the
Real Party in Interest. App. Br. 3.
Appeal 2015-007473
Application 13/058,354
The Claimed Invention
Appellant’s disclosure relates to a thermosetting composition
comprising at least one phosphorous-free dihydrobenzoxazine component
and at least one sulfonium salt. Spec. 1,11. 5—6; Abstract. Claim 1 is
illustrative of the claims on appeal and is reproduced below from the Claims
Appendix to the Appeal Brief (App. Br. 19—21):
1. A thermosetting composition comprising
(a) at least one phosphorous-free bis(dihydrobenzoxazine) of
formula (I):
wherein
each R1 is independently Ci-Cig alkyl, C3-C12 cycloalkyl, C3-C12
cycloalkyl which is substituted with a Ci-C4-alkyl; C6-Cig aryl
which is unsubstituted or substituted by one or more C1-C6
alkyl groups or C1-C6 alkoxy groups;
each R2 is independently hydrogen, dialkylamino; alkylthio;
alkylsulfonyl; Ci-Cig alkyl; Ci-Qg alkenyl; Ci-Qg alkoxy; Ci-
Cis alkoxy-Ci-Cig-alkylene; C5-C12 cycloalkyl which is
unsubstituted or substituted by one or more C1-C6 alkyl groups
or C1-C6 alkoxy groups; C6-C12 aryl which is unsubstituted or
substituted by one or more C1-C6 alkyl groups or C1-C6 alkoxy
groups; or C6-C12 aryl-Ci-Cig-alkylene wherein the aryl moiety
is unsubstituted or substituted by one or more C1-C6 alkyl
groups or C1-C6 alkoxy groups;
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Application 13/058,354
X1 is a bivalent bridging group selected from -0-, -S-, -S(O)-, -
S(0)2-, -C(O)-, -N(R3)-,-0-C(0)-, -0-C(0)-0-, -S(0)2-0-, -O-
S(0)2-0-, Ci-Cis alkylene, C2-Cig alkenediyl, C3-Ci2
cycloalkylene, Cs-Ci2 cycloalkenediyl, -Si(OR3)2- and -Si(R3)2-;
and
R3 is H, Ci-Ci2 alkyl, C5 or Ce cycloalkyl, C5 or Ce cycloalkyl
substituted with methyl, ethyl, phenyl; benzyl or phenyleth-2-
yl; and
(b) at least one sulfonium salt compound of formulae (XIII) -
(XVIII)
Ar-CH2-S+(A)-CH2-arylene-CH2-S+(A)-CH2-Ar1 2Q" (XVII),
Ar-CH2-S+(-CH2-A)-CH2-arylene-CH2-S+(-CH2-A)-CH2-Ar1
2Q- (XVIII)
and any mixture thereof, in which A is C1-C12 alkyl, C3-C8
cycloalkyl which is unsubstituted or mono- or polysubstituted
by Ci-Cg alkyl, C4-C10 cycloalkyl-alkylene, phenyl which is
unsubstituted or mono- or polysubstituted by Ci-Cg alkyl, C1-C4
alkoxy, halogen, nitro, phenyl, phenoxy, alkoxycarbonyl
having 1-4 C atoms in the alkoxy radical or acyl having 1-12 C
atoms;
Ar, Ar1 and Ar2, independently of one another, are each phenyl
which is unsubstituted or mono- or polysubstituted by Ci-Cg
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Application 13/058,354
alkyl, C1-C4 alkoxy, halogen, nitro, phenyl, phenoxy,
alkoxycarbonyl having 1 -4 C atoms in the alkoxy radical or
acyl having 1-12 C atoms or is naphthyl which is unsubstituted
or mono-or polysubstituted by Ci-Cg alkyl, C1-C4 alkoxy,
halogen, nitro, phenyl, phenoxy, alkoxycarbonyl having 1-4 C
atoms in the alkoxy radical or acyl having 1-12 C atoms;
arylene is phenylene which is unsubstituted or mono- or
polysubstituted by Ci-Cg alkyl, C1-C4 alkoxy, halogen, nitro,
phenyl, phenoxy, alkoxycarbonyl having 1-4 C atoms in the
alkoxy radical or acyl having 1-12 C atoms or naphthylene
which is unsubstituted or mono-or polysubstituted by Ci-Cg
alkyl, C1-C4 alkoxy, halogen, nitro, phenyl, phenoxy,
alkoxycarbonyl having 1-4 C atoms in the alkoxy radical or
acyl having 1-12 C atoms;
Q is BF4, PF6, SbF6, AsF6, SbF5OH or CF3S03;
A1 has independently the meaning of Ar;
A2 is C1-C12 alkyl, C3-Cg cycloalkyl which is unsubstituted or
mono- or polysubstituted by Ci-Cg alkyl, or C4-C10 cycloalkyl-
alkylene; and
Z is a single bond, -0-, -S-, -S+(A Q')- wherein A and Q have
the same meaning as mentioned above, -C(O)- or -CH2-.
The Examiner relies on the following references as evidence in
rejecting the claims on appeal:
The References
Roth et al.,
(hereinafter “Roth”)
US 5,013,814 May 7, 1991
Bums et al.,
(hereinafter “Bums”)
US 2008/0076886 Al Mar. 27, 2008
Tsuei WO 2006/103185 Al Oct. 5, 2006
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Application 13/058,354
The Rejections
On appeal, the Examiner maintains the following rejections:
1. Claims 1,5, 7—11, 14, 17, and 18 are rejected under
35 U.S.C. § 103(a) as being unpatentable over Bums in view of Roth. Ans.
3; Final Act. 2.
2. Claims 15 and 16 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Tsuei in view of Bums, and in further view of Roth.
Ans. 9; Final Act. 8.
OPINION
Having considered the respective positions advanced by the Examiner
and Appellant in light of this appeal record, we affirm the Examiner’s
rejections for the reasons set forth in the Answer to the Appeal Brief and
Final Office Action appealed from, which we adopt as our own. We
highlight and address specific findings and arguments for emphasis.
Rejection 1
Appellant argues claims 1, 5, 7—11, 14, 17, and 18 as a group. We
select claim 1 as representative of this group and the remaining claims stand
or fall with claim 1. 37 C.F.R. § 41.37(c)(l)(iv).
The Examiner finds that the prior art combination of Bums and Roth
suggests a thermoset composition satisfying all of the limitations of claim 1
and concludes that the combination would have rendered claim 1 obvious.
Ans. 3—7 (citing Bums, Tflf 66, 72, 73, 75, 78, 87; Roth, col. 1,11. 5—8, col. 1,
11. 24—28, col. 1,11. 30-55, col. 1,1. 55-col. 2,1. 10, col. 6,11. 21-22, col. 7,
11. 59-62). The Examiner finds that Bums teaches the majority of claim 1 ’s
limitations, but that it does not explicitly teach “wherein the sulfonium salt
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(b), is selected from the group consisting of compounds of formulae (XIII)
to (XVIII),” as recited in the claim. Id. at 4. The Examiner, however, relies
on Roth for suggesting this missing limitation. Id. at 6.
In particular, the Examiner finds that Roth teaches sulfonium salts
used in curing mixtures for polymerizable compounds such as epoxy resins
and that read on claim 1. Ans. 6, 7 (citing Roth, col. 1,11. 5—8, col. 1,11. 30-
55, col. 1,1. 55—col. 2,1. 10, col. 6,11. 21—22). The Examiner finds further
that Roth teaches that when mixed with polymerizable compounds, the
sulfonium salts have certain properties, including a “distinct latency” and
“an unusually long pot life at room temperature,” which provide processing
advantages. Id. at 7 (citing Roth, col. 1,11. 24—28, col. 7,11. 59—62).
Based on the above findings regarding the teachings of the prior art,
the Examiner concludes that it would have been obvious to one of ordinary
skill in the art at the time of invention to have selected Roth’s sulfonium
salts as the curing agent for Bums’ thermosetting resin because Roth teaches
that the sulfonium salts, when mixed with polymerizable compounds, have a
distinct latency and an unusually long pot life at room temperature, which
allows a wide processing margin and is of particular advantage when
processing in complicated applications. Ans. 7 (citing Roth, col. 1,11. 24—
28, col. 7,11. 59-62).
Appellant argues that the Examiner’s rejection should be reversed
because: (1) “Bums et al. does not teach or suggest curing its benzoxazine-
based thermosetting resin with tri-aryl sulfonium salts”; (2) “Roth et al. also
does not teach or suggest that its tri-aryl sulfonium salts could be used in
curing benzoxazines”; and (3) “[t]he combination of Bums et al. and Roth et
al. does teach or suggest a thermosetting composition that includes a
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phosphorus-free bis(dihydrobenzoxazine) of formula (I) and a sulfonium salt
compound of formulae (XIII) - (XVIII) as presently claimed.” App. Br. 14.
Appellant further argues that the Examiner’s rejection is based on
impermissible hindsight because “one skilled in the art is well aware that the
properties of cured thermosetting compositions will be very different
depending on the type of curable resin and curing agent used.” App. Br. 14—
15. Appellant also argues that one of ordinary skill would not have had any
“expectation of successfully producing a benzoxazine-base[d] thermosetting
composition having high latency and storage stability, a high reactivity upon
temperature increase, and a high glass transition temperature.” Id. at 15.
We are not persuaded by Appellant’s arguments. Based on the record
before us and the combined teachings of the prior art as a whole, the
Examiner’s obviousness conclusion and finding that the combination of
Bums and Roth suggests a thermoset composition satisfying all of claim 1 ’s
limitations are well-supported by a preponderance of the evidence and based
on sound technical reasoning. Bums, Abstract, H 11, 24, 66, 72, 73, 75, 78,
87; Roth, Abstract, col. 1,11. 5—8, col. 1,11. 24—29, col. 1,11. 30-55, col. 1,1.
55-col. 2,1. 10, col. 6,11. 21-22, col. 7,11. 59-62.
Appellant fails to direct us to sufficient evidence or provide an
adequate technical explanation explaining why the Examiner’s findings and
articulated reasoning lacks a rational underpinning or is otherwise based on
some other reversible error. As the Examiner finds (Ans. 14) and contrary to
Appellant’s argument, Bums does teach a thermosetting composition that
may comprise a benzoxazine resin used in combination with an epoxy resin
wherein the curing agent includes tri-aryl sulfonium salts. Bums, Ull, 66,
87. Moreover, as the Examiner correctly points out (Ans. 14), the claims’
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“comprising” language does not exclude epoxy resins or epoxy resin curing
agents such as tri-aryl sulfonium salts.
Appellant’s argument is also unpersuasive because the fact that Bums
and Roth do not expressly teach that tri-aryl sulfonium salts are “used in
curing benzoxazines” (App. Br. 14), without more, is insufficient to weigh in
favor of non-obviousness. Unigene Labs., Inc. v. Apotex, Inc., 655 F.3d
1352, 1361 (Fed. Cir. 2011) (explaining that the references collectively, but
not necessarily expressly, must guide a skilled artisan to the claimed
invention); see also In re BurckeX, 592 F.2d 1175, 1179 (CCPA 1979) (“[A]
reference must be considered not only for what it expressly teaches, but also
for what it fairly suggests.”). Rather, as the Examiner finds (Ans. 14, 15), it
is Bums’ and Roth’s combined teachings which would have suggested to
one of ordinary skill in the art that tri-aryl sulfonium salts can be used as
curing agents in thermosetting compositions comprising benzoxazine, as
claimed. Appellant’s argument exposes no reversible error in the
Examiner’s analysis and findings in this regard.
Appellant’s arguments regarding impermissible hindsight and one of
ordinary skill having no reasonable expectation of success (App. Br. 14, 15)
are unpersuasive for the well-stated reasons provided by the Examiner at
pages 15 and 16 of the Answer. In particular, as the Examiner finds (Ans.
16), in light of Bums’ teachings regarding tri-aryl sulfonium salts being used
as curing agents for a thermosetting composition that includes benzoxazine
and epoxy resins (Bums, Ull, 66, 87) and Roth’s teachings regarding
sulfonium salts, when mixed with polymerizable compounds such as epoxy
resins, having a distinct latency and an unusually long pot life at room
temperature (Roth, col. 1,11. 24—29, col. 7,11. 59-62), we are persuaded that
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one of ordinary skill in the art would have had a reasonable expectation of
success in combining these teachings to arrive at the claimed invention.
Appellant’s assertion that “one skilled in the art is well aware that the
properties of cured thermosetting compositions will be very different
depending on the type of curable resin and curing agent used” (App. Br. 14—
15) is conclusory and, without more, insufficient to adequately rebut or
otherwise establish reversible error in the Examiner’s factual findings in this
regard. In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984).
Appellant next argues that the thermosetting composition of claim 1 is
non-obvious because it yields unexpected results. App. Br. 15. In
particular, Appellant argues that the:
[Applicant] has surprisingly found a thermosetting composition
having the above desired properties can be produced by
combining a phosphorus-free bis(dihydrobenzoxazine) of
formula (I) and a sulfonium salt compound of formulae (XIII) -
(XVIII).
Id. Appellant contends that the claimed thermosetting compositions exhibit
“short gel times upon heating” and “unusually high glass transition
temperatures” as compared to phosphorous-containing benzoxazine resins.
Id. at 16. Appellant also contends that the claimed thermosetting
composition demonstrates “unexpected advantages . . . over a thermosetting
composition cured by an imidazole,” including “significantly higher glass
transition temperature after cure.” Id.
We do not find these arguments persuasive. In attempting to
overcome a prima facie case of obviousness by showing unexpected results,
the burden rests with Appellant to establish: (1) that there actually is a
difference between the results obtained through the claimed invention and
those of the prior art and (2) that the difference actually obtained would not
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have been expected by one skilled in the art at the time of the invention. See
In re Freeman, 474 F.2d 1318, 1324 (CCPA 1973) (citations omitted); In re
Klosak, 455 F.2d 1077, 1080 (CCPA 1972) (“the burden of showing
unexpected results rests on he who asserts them”).
Appellant has failed to satisfy the requisite burden. Appellant does
not identify sufficient evidence to show that there actually is a difference
between the results obtained through the claimed invention and those of the
closest prior art, i.e., Bums’ thermosetting composition. In particular,
Appellant does not provide a comparison between the claimed thermosetting
compositions and Bums’ phosphorous-free, benzoxazine-based
thermosetting composition. Rather, Appellant compares the claimed
composition to “phosphorous-containing benzoxazine resins” (App. Br. 16)
and “a thermosetting composition cured by an imidazole” (id.).
Moreover, Appellant does not adequately explain or provide data
sufficient to show how Bums’ prior art thermosetting composition would
have performed or been expected to perform by one skilled in the art if
subject to the same testing used for the thermosetting compositions listed in
Tables 1 and 4 of the Specification and referenced in the Appeal Brief.
Appellant’s blanket assertions that the claimed composition
“demonstrates the unexpected advantages” and “exhibits a significantly
higher glass transition temperature after cure” (App. Br. 16) are conclusory
and, without more, insufficient to establish unexpected results. De Blauwe,
736 F.2d at 705 (“It is well settled that unexpected results must be
established by factual evidence. Mere argument or conclusory statements in
the specification does not suffice.”).
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Accordingly, we affirm the Examiner’s rejection of claims 1, 5, 7—11,
14, 17, and 18 under 35 U.S.C. § 103(a) as unpatentable over the
combination of Bums and Roth.
Rejection 2
Appellant argues claims 15 and 16 as a group. We select claim 15 as
representative and claim 16 stands or fall with claim 15. 37 C.F.R.
§ 41.37(c)(l)(iv). Claim 15 depends from claim 1 and recites a:
Process for the manufacturing of articles comprising the steps:
a) providing a fabric;
b) impregnating the fabric with a thermosetting composition
according to claim 1; and
c) curing the impregnated fabric.
App. Br. 26 (Claims App’x).
The Examiner finds that the combination of Tsuei, Bums, and Roth
suggests all of claim 15’s limitations and concludes that the combination
would have rendered claim 15 obvious. Ans. 9—13 (citing Tsuei, p. 6,11. 5—
30; Bums, H 11, 24, 66, 87; Roth, col. 1,11. 5-8, col. 1,11. 2A-28, col. 1,11.
30-55, col. 1,1. 55—col. 2,1. 10, col. 6,11. 21-22, col. 7,11. 59-62).
Appellant argues that this rejection should be reversed because “Tsuei
et al. does not cure the deficiencies of Bums et al. and Roth et al. since it
neither teaches nor suggests Appellant’s presently claimed thermosetting
composition of claim 1.” App. Br. 17.
We do not find this argument persuasive for the same reasons
previously discussed above in affirming the Examiner’s rejection of claim 1
and because a naked assertion that the prior art fails to teach or suggest a
claim’s limitation is not an argument in support of separate patentability
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sufficient to weigh in favor of non-obviousness. Cf. In re Lovin, 652 F.3d
1349, 1356-57 (Fed. Cir. 2011); see also 37 C.F.R. § 41.37(c)(l)(iv).
Moreover, based on the record before us, we find that the Examiner’s
findings that the combined teachings of Tsuei, Bums, and Roth suggest all
of claim 15’s limitations and stated reasoning for why one of ordinary skill
in the art would have combined these teachings to arrive at the claimed
invention are supported by a preponderance of the evidence and based on
sound technical reasoning. Tsuei, p. 6,11. 5—30; Bums, Ull, 24, 66, 87;
Roth, col. 1,11. 5-8, col. 1,11. 24—28, col. 1,11. 30-55, col. 1,1. 55-col. 2,1.
10, col. 6,11. 21—22, col. 7,11. 59-62. Appellant’s argument reveals no
reversible error in the Examiner’s findings and analysis in this regard.
Accordingly, we affirm the Examiner’s rejection of claims 15 and 16
under 35 U.S.C. § 103(a) as unpatentable over the combination of Tsuei,
Bums, and Roth.
DECISION/ORDER
The Examiner’s rejections of claims 1, 5, 7—11, and 14—18 are
affirmed.
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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