Ex Parte SimonsDownload PDFPatent Trial and Appeal BoardDec 28, 201612765290 (P.T.A.B. Dec. 28, 2016) Copy Citation 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. 12/765,290 04/22/2010 James B. Simons 104388.000211/M6970 9124 38857 7590 12/30/2016 Raker & Hostetler T T P EXAMINER CIRA CENTRE, 12TH FLOOR COONEY, JOHN M 2929 ARCH STREET PHILADELPHIA, PA 19104-2891 ART UNIT PAPER NUMBER 1765 NOTIFICATION DATE DELIVERY MODE 12/30/2016 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): eofficemonitor@bakerlaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JAMES B. SIMONS Appeal 2015-006570 Application 12/765,290 Technology Center 1700 Before KAREN M. HASTINGS, MICHAEL P. COLAIANNI, and DEBRA L. DENNETT, Administrative Patent Judges. COLAIANNI, Administrative Patent Judge. DECISION ON APPEAL Appeal 2015-006570 Application 12/765,290 Appellant appeals under 35 U.S.C. § 134 the final rejection of claims 21-23, 35, and 37-45. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b). We AFFIRM. Appellant’s invention is directed to two component laminating adhesives based on polyurethanes in which one of the components contains a curative bearing primary hydroxyl groups and the other component contains an isocyanate-functionalized compound (Spec. 1:7-10). Claim 21 is illustrative: 21. A laminating adhesive, comprising Component A and Component B, wherein Component A comprises at least one isocyanate-functionalized compound and Compound B comprises a curative containing a molecule having at least two primary hydroxyl groups and at least secondary hydroxyl groups, the Component A and Component B being reactive when mixed to form a cured adhesive. Appellant appeals the following rejections: 1. Claims 21-23, 35, and 37-45 are rejected under 35 U.S.C. § 103(a) as unpatentable over Glasbrenner1. 2. Claims 21 and 41-43 are rejected under 35 U.S.C. § 103(a) as unpatentable over Nodelman2. FINDINGS OF FACT & ANALYSIS REJECTION (1) 1 US 6,127,031 Bl, issued Sept. 9, 2003. 2 US 4,859,791, issued Aug. 22, 1989. 2 Appeal 2015-006570 Application 12/765,290 With regard to rejection (1), Appellant’s arguments focus on claims 21, 22, 23, and 41-45 only (App.Br. 4-9). Any claim not separately argued will stand or fall with claim 21. Claim 21 Appellant argues that the Examiner engaged in impermissible hindsight in rearranging Glasbrenner’s disclosure to arrive at the claimed invention (App. Br. 4). Appellant contends that there is no reason to dissect and recombine the components of Glasbrenner to arrive at the subject matter of claim 21 that includes a curative containing a molecule having at least about two primary hydroxyl groups and at least about two secondary hydroxyl groups (App. Br. 4). Appellant argues that Glasbrenner merely sets forth a list of reactants that that can be used in forming the A and B components of that invention and provides no direction or guidance to form the presently claimed invention (App. Br. 5). Appellant cited to In re Baird, 16 F.3d 380, 382 (Fed. Cir. 1994) and In re Jones, 958 F.2d 347, 350 (Fed. Cir. 1992) for the proposition that mere overlap of starting materials is insufficient to establish obviousness (App. Br. 5). Appellant contends that Glasbrenner does not teach or suggest a curative that reacts with component A to form a cured adhesive when mixed (App. Br. 6). Appellant argues that Glasbrenner’s one-step reaction of the various compounds would not have provided a curative that reacts with Component A as evinced by Appellant’s comparative Example 1 that uses a one-step process with inventive Example 2 that uses a two-step process to form the curative (App. Br. 6). Appellant argues that Glasbrenner provides no predictability or reasonable expectation of success (App. Br. 6). Appellant contends that Glasbrenner does not teach 3 Appeal 2015-006570 Application 12/765,290 curative Component B and the only way to arrive at it is by fortuitously selecting certain starting components from the many disclosed within Glasbrenner (App. Br. 7). Appellant’s arguments regarding Baird and Jones are unpersuasive. In Baird and Jones the issue centered on whether the prior disclosure of a generic formula that required the selection of certain substituents in order to arrive at the claimed specific compound would have rendered obvious the claimed specific compound. In other words, the prior art disclosure was generic and the claim was directed to a particular species. In contrast, claim 21 is directed to a laminating adhesive comprising Component A that is “at least one isocyanate-functionalized compound” and Component B that is “a curative containing molecule having at least two primary hydroxyl groups and at least two secondary hydroxyl groups” where Components A and B react when mixed to form a cured adhesive. In other words, claimed Component A is generic to an “isocyanate-functionalized compound” and claimed Component B is generic to a “molecule having at least two primary hydroxyl groups and at least two secondary hydroxyl groups.” The Examiner finds that Glasbrenner teaches an isocyanate functionalized prepolymer and an isocyanate reactive component (corresponding to claimed Component B) made from polyols or mixtures of polyols that maybe branched and have primary hydroxyl groups with a preference for glycerol and adipic acid that form structures falling within the claimed Component B (Final Act. 2). The Examiner finds that Glasbrenner’s disclosure is not in complete overlap with the claimed materials defining the polyester polyols of the Appellant but does provide substantial overlap in the selection of materials used in making its polyester polyols for the purpose of 4 Appeal 2015-006570 Application 12/765,290 achieving acceptable reactant formation (Final Act. 3). We understand the Examiner to find that Glasbrenner teaches particular polyols and carboxylic acids that when reacted form a molecule having at least two of each primary and secondary hydroxyl groups. In other words, Glasbrenner’s disclosure of a list of effective reactants that may be used in forming Glasbrenner’s Component A (corresponding to the claimed Component B) is merely a listing of a multitude of effective combinations of reactants that may be used to form the polyol component of the reaction. Glasbrenner prefers the use of glycerol as the higher functional polymer (col. 3,11. 2-3). Accordingly, we find that Glasbrenner’s disclosure is more on point with the holding in Merck v. Biocraft Labs., 874 F.2d 804, 806-09 (Fed. Cir. 1989) where the court held that a patent’s disclosure of a multitude of effective combinations does not render any particular formulation less obvious. In Merck the court cited to In re Corkill, 111 F.2d 1496, 1500 (Fed. Cir. 1985) where the court affirmed an obviousness rejection of claims drawn to specific zeolites based upon a prior art disclosure that hydrated zeolites work in detergent compositions. Merck, 874 F.2d at 807. The court in Merck also cited to In re Susi, 440 F.2d 442, 445 (CCPA 1971) where the court held that even though the prior art disclosure was huge it undeniably included at least some of the compounds recited in Appellant’s generic claims and it is of a class of chemicals that is used for the same purpose as Appellant’s additives. Id. Appellant’s argument that a process where all the components are mixed together does not produce a Component B that is curative in that it reacts with Component A fails to account for Glasbrenner’s disclosure that part A and part B of Glasbrenner’s composition react (abstract, col. 1,11. 35- 47). Although Appellant contends that their comparative Example 1 shows 5 Appeal 2015-006570 Application 12/765,290 that when all the components are mixed together the resulting product separated due to poor reaction of secondary hydroxyl groups, such a showing is undermined by the fact that claim 21 does not require any particular degree of reaction. Furthermore, Glasbrenner teaches that a reaction product results by combining parts A and B and so some degree of reaction or curing is taking place in Glasbrenner’s laminating adhesive. Appellant concedes that “curative” means that Components A and B in the claim must react (Reply Br. 3). The extent of that reaction is not claimed and Glasbrenner’s teaching that a reaction occurs in making the laminating adhesive meets such a claim requirement. Glasbrenner’s teaching of a combination of compounds that include those disclosed by Appellant’s and falling within the broad categories of compounds that constitute Components A and B of claim 21 and provides a reasonable expectation that using those compounds to make Glasbrenner’s Parts A and B would have provided a curative laminating adhesive. Appellant’s Specification evidence is insufficient to show that Glasbrenner fails to teach a laminating adhesive falling within the scope of claim 21. Regarding claims 22, 23, 44, and 45, Appellant argues that the Examiner failed to perform a Baird/Jones analysis of the claims (App. Br. 9). Appellant contends that just because Glasbrenner teaches compounds that could be selected to arrive at the claimed laminating adhesive is not sufficient to establish prima facie obviousness. Id. As discussed supra we find that the holdings in Baird and Jones are not sufficiently similar to the present facts of this case. Rather, the facts in Merck are more on point. The Examiner finds that Glasbrenner teaches a preference for using glycerol and that the carboxylic acid used may be adipic 6 Appeal 2015-006570 Application 12/765,290 acid (Final Act. 3). Glasbrenner’s naming of a multitude of effective compositions does not render any composition less obvious. Merck, 874 F.2d at 806-09. Regarding claims 41-43, Appellant argues that the Examiner has not addressed how the ranges are taught or suggested in Glasbrenner (App. Br. 9). Appellant argues that the Examiner has not established that the amount of component B is a result effective variable or the basis of the optimization. Id. The Examiner finds that Glasbrenner teaches variations in the equivalence ratio between parts A and B of the composition (Final Act. 6). The Examiner finds that the ranges of equivalence ratios in combination with ranges of molecular make-ups for the polymeric polyols and isocyanate terminated prepolymers of Glasbrenner are sufficient to establish obviousness of the ranges in claims 41-43. Id. Glasbrenner plainly discloses that the ratio of parts A and B can range from 1:1 to about 30:1 (col. 4,11. 15-23), which include ranges that overlap with claims 41 and 43. Regarding claim 42, Appellant contends that the ratio disclosed by Glasbrenner in column 4 does not address the requirement in claim 42 that states that 1 to 100% of Component B is Component B (Reply Br. 4). The Specification describes that curative Component B may be made of 100% of Component B or some mixture of Component B with other isocyanate-reactive substances may be present in Component B (Spec. 12:3-9). Accordingly, if only curative Component B is present than 100% of Component B would be present. Glasbrenner’s teaching to use Part A that corresponds to the claimed Component B as the sole isocyanate-reactive material would have included using 100% of Glasbrenner’s Part A as a part 7 Appeal 2015-006570 Application 12/765,290 of Part A. Appellant’s arguments do not persuade us of reversible error on the part of the Examiner. For the above reasons, we affirm the Examiner’s § 103(a) rejection over Glasbrenner. REJECTION (2): § 103 OVERNODELMAN Appellant argues that Nodelman fails to teach a laminating adhesive (Reply Br. 4). Appellant contends that the Examiner has not explained why Nodelman’s coating composition would have been considered a curable laminating adhesive (App. Br. 11, Reply Br. 4). The Examiner responds that Appellant’s arguments concerning a laminating articles are not persuasive because they are directed to limitations appearing in the claims (Ans. 10). Contrary to the Examiner’s claim construction, claim 21 plainly recites a “laminating adhesive.” The Examiner has not shown that Nodelman’s polyurethane coating would have been capable of functioning as a laminating adhesive. Appellant argues that there is no reasonable expectation that Nodelman’s coating composition would constitute an adhesive curative as required by claim 21 (App. Br. 13). The preamble phrase “laminating adhesive” adds meaning to the claim in that it describes the function of the composition. The Examiner has not adequately explained why Nodelman’s coating composition should be understood further include a laminating adhesive. On this record, we reverse the Examiner’s § 103(a) rejection over Nodelman. 8 Appeal 2015-006570 Application 12/765,290 DECISION 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)(1). ORDER AFFIRMED 9 Copy with citationCopy as parenthetical citation