Ex Parte Sophiea et al

Board of Patent Appeals and Interferences

Aug 27, 2010

11138541 (B.P.A.I. Aug. 27, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DANIEL P. SOPHIEA and GENG LIN
____________

Appeal 2009-011347
Application 11/138,541
Technology Center 1700
____________

Before BEVERLY A. FRANKLIN, LINDA M. GAUDETTE, and
MARK NAGUMO, Administrative Patent Judges.

FRANKLIN, Administrative Patent Judge.

DECISION ON APPEAL1

Appellants appeal under 35 U.S.C. § 134 from the Examiner's
rejection of claims 1-31. We have jurisdiction under 35 U.S.C. § 6(b).

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

Appeal 2009-011347
Application 11/138,541

STATEMENT OF THE CASE
Claims 1 and 9 are representative of the subject matter on appeal and
are set forth below:
1. A one-component composition adapted for use as a
sealer comprising:

a urethane component;

an epoxy component;

a curing agent component; and

a catalyst component.

9. The composition of claim 1 wherein said catalyst
component comprises urea adducts in powder form.

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Grieves 4,623,702 Nov. 18, 1986
Blount 2003/0134971 A1 Jul. 17, 2003
Nakayama EP 1 283 229 A1 Dec. 2, 2003

THE REJECTIONS

1. Claims 1-8 and 11-29 are rejected as being obvious under 35 U.S.C.
§ 103(b) over Grieves in view of Nakayama.

2. Claims 30-31 are rejected as being obvious under 35 U.S.C. § 103(b)
over Grieves in view of Nakayama.

3. Claims 9-10 are rejected as being obvious under 35 U.S.C. § 103(b)
over Grieves as applied to claim 1, in view of Blount.

Appeal 2009-011347
Application 11/138,541

ISSUES
Did the Examiner err in determining that the modification of Grieves
by substituting the latent curing agent of Nakayama for the curing agent of
Grieves achieves a one-component composition adapted for use as a sealer
and that such a substitution is founded in a reasonable expectation of
success? We answer these questions in the negative.

ANALYSIS
(with Findings of Fact and Principles of Law)

As an initial matter, because Appellants’ arguments are similar for
each of the above-listed rejections, our determinations made with respect to
rejection 1 apply to rejections 2 and 3.2
We essentially adopt the Examiner’s findings pertinent to the issue(s)
raised by Appellants for this rejection. We therefore incorporate the
Examiner’s position as set forth in the Answer. We add the following for
emphasis only.
We begin with claim interpretation. Claim 1 recites “a one-
component composition.” Appellants’ Specification does not provide a
definition for this term. Appellants explain in their Brief that the two
component system of Grieves readily gels at room temperature upon mixing,
and that a two-component system is not heat cured, as opposed to their
claimed one-component system. Br. 10, Reply Br. 7.

2 For example, Appellants argue that substitution of the urea catalyst in
powder form of Blount along with the latent curing agent of Nakayama
would still result in a two-component system and destroy the purpose of
Grieves. Br. 17-18. These are similar to the arguments directed to the
combination of Grieves in view of Nakayama only.
Appeal 2009-011347
Application 11/138,541

The Examiner explains that substituting the latent curing agent of
Nakayama would make the system of Grieves a one-component composition
because the ingredients can be stored together. Ans. 10. The Examiner also
explains that even if the components in Grieves were packaged as a multi-
component system, directly prior to application, all of the components would
be mixed together, resulting in a one component system. Ans. 11. In view
of the fact that Appellants’ Specification does not limit the meaning of the
term “one-component composition” in any particular way, and in the
absence of evidence in the record that the term has acquired a generally
accepted and more limited meaning, we adopt the Examiner’s interpretation.
Having established that the applied art suggests a “one component
composition” in light of the above-mentioned claim interpretation, we turn
now to Appellants’ argument that the proposed modification of Grieves
would render Grieves unsatisfactory for its intended purpose. Appellants
assert that Grieves is directed to a two-component system, having a gel time
and certain properties of the cured composition as shown in column 5 of
Grieves, and that the proposed modification would not achieve these aspects
of Grieves. Br. 12-14, Reply Br. 4-7.
On the other hand, it is the Examiner’s position that a one component
system would still achieve Grieves’ goal of providing an adhesive sealant.
The Examiner explains that while gel time is important for the application of
the adhesive, it has little if any effect on the cured adhesive. The Examiner
further explains that replacing the active curing agent with a latent curing
agent would not change how the composition cures, only how that curing is
initiated, and that therefore the skilled artisan would have a reasonable
expectation that the substitution of a latent curing agent would result in an
Appeal 2009-011347
Application 11/138,541

adhesive sealant having substantially the same mechanical characteristics.
The Examiner also explains that it is not the principle of operation, but only
the application method that would change. The Examiner states that the
principle of operation is the crosslinking reaction with the amine hardener.
The Examiner explains that the only change would be in the method that the
amine hardener is introduced into the system, namely via a separate
component, as in Grieves, or through a latent heat-activated component, as
in Nakayama. Ans. 10-12.
In view of the above, the Examiner has established a sufficient basis
to support that there is a reasonable expectation of success that the
substitution of the latent curing agent for the curing agent in Grieves would
result in a satisfactory sealing composition without destroying the intended
purpose of Grieves, as explained by the Examiner. The rationale to support
a conclusion that the claim would have been obvious is that “a person or
ordinary skill in the art would have been motivated to combine the prior art
to achieve the claimed invention and whether there would have been a
reasonable expectation of success.” DyStar Textilfarben GmbH & Co.
Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1360 (Fed. Cir. 2006).
As such, the burden shifts to Appellants to rebut the prima facie case of
obviousness. When a prima facie case of obviousness is established, the
burden shifts to the applicant to come forward with arguments and/or
evidence to rebut the prima facie case. See, e.g., In re Dillon, 919 F.2d 688,
692 (Fed. Cir. 1990).
In both the Brief and Reply Brief, Appellants dispute the Examiner’s
conclusion that the mechanical characteristics would be the same. Br. 13,
Reply Br. 6-7. However, Appellants’ position is not the kind of factual
Appeal 2009-011347
Application 11/138,541

6
evidence needed regarding rebuttal evidence. That is, arguments of counsel
cannot take the place of factually supported objective evidence. See, e.g., In
re Huang, 100 F.3d 135, 139-40 (Fed. Cir. 1996); In re De Blauwe, 736 F.2d
699, 705 (Fed. Cir. 1984). Appellants do not support their assertions with
this kind of evidence.
In view of the above, we affirm all of the rejections.

CONCLUSIONS OF LAW AND DECISION

The Examiner did not err in determining that the modification of
Grieves by substituting the latent curing agent of Nakayama for the curing
agent of Grieves achieves a one-component composition adapted for use as a
sealer and that such a substitution is founded in a reasonable expectation of
success. We therefore affirm each of the rejections.
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)(v).

AFFIRMED

kmm

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