Ex Parte Simons

Patent Trial and Appeal Board

Dec 28, 2016

12765290 (P.T.A.B. Dec. 28, 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.
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.
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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
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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
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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
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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
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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
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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.
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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
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