Ex Parte Studer et al

Patent Trial and Appeal Board

Mar 16, 2017

12812795 (P.T.A.B. Mar. 16, 2017)

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.
12/812,795 04/01/2011 Katia Studer 32471/23845 1179
4743 7590 03/20/2017
MARSHALL, GERSTEIN & BORUN LLP
233 SOUTH WACKER DRIVE
6300 WILLIS TOWER
CHICAGO, IL 60606-6357
EXAMINER
WHITELEY, JESSICA
ART UNIT PAPER NUMBER
1763
NOTIFICATION DATE DELIVERY MODE
03/20/2017 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):
mgbdocket@marshallip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KATIA STUDER, KURT DIETLIKER, and
TUNJA JUNG1
Appeal 2015-005693
Application 12/812,795
Technology Center 1700
Before CATHERINE Q. TIMM, CHRISTOPHER C. KENNEDY, and
MONTE T. SQUIRE, Administrative Patent Judges.
TIMM, Administrative Patent Judge.
DECISION ON APPEAL2
STATEMENT OF CASE
Pursuant to 35 U.S.C. § 134(a), Appellants appeal from the
Examiner’s decision to reject claims 1, 2, 6—8, and 14—17 under 35 U.S.C.
§ 102(b) as anticipated by Benkhoff,3 and claim 6 further under 35 U.S.C.
1 Appellants identify the real party in interest as BASF SE. Br. 3.
2 In our opinion below, we reference the Specification filed July 14, 2010
(Spec.), Final Office Action mailed Apr. 25, 2014 (Final), the Appeal Brief
filed Dec. 12, 2014 (Br.), and the Examiner’s Answer mailed Feb. 27, 2015
(Ans.).
3 Benkhoff et al., WO 2006/008251 A2, published Jan. 26, 2006.
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Application 12/812,795
§ 103(a) as obvious over Benkhoff in view of Klinkenberg.4 We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM and add a NEW GROUND OF REJECTION.
The claims are directed to a composition that includes a photolatent
base (component (al), (a2), or (a3)), a radically polymerizable compound
(b), and component (c). See, e.g., claim 1. Component (c) is either
dibenzoylperoxide or methyl ethyl ketone peroxide. Id. The Specification
describes dibenzoylperoxide and methyl ethyl ketone peroxide as peroxide-
based free radical initiators capable of being reduced by the photolatent
base. Spec. 30:12-31:11.
According to the Specification, the composition is a radically curing
composition, which uses the peroxide initiator to activate crosslinking.
Spec. 1:3^4. It was known in the art to use a peroxide initiator that
generates free radicals to initiate curing of an unsaturated oligomer in a
redox reaction. Spec. 1:5—21. Dual cure systems that combine such
anaerobic curing by redox reaction with light curing were also known in the
art. Spec. 1:22—28. But finding the right balance between cure speed and
formulation stability at low temperature has been a major concern for such
anaerobic redox-curing formulations. Spec. 1:31—32. According to
Appellants, they have found that a radically polymerizable formulation
including the photolatent base in combination with a free radical initiator, in
particular a peroxide initiator, is stable, while the cure can be initiated by
light exposure under oxygen-free (anaerobic) conditions. Spec. 2:1—5.
There is no dispute that Benkhoff’s composition includes a
photolatent base meeting the requirements of (al), (a2) or (a3), a radically
4 Klinkenberg et al., US 6,867,244 B2, issued Mar. 15, 2005.
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polymerizable compound meeting the requirements of (b), and a peroxide.
Compare Final 2—3 with Br. 15—22. The main issue is whether Benkhoff
describes using the specific peroxides of component (c) recited in claim 1.
Br. 15—22. We reproduce the portion of claim 1 most pertinent to the issue
on appeal with the component (c) limitation highlighted:
1. A composition comprising
(al) a photolatent amidine base; or (a2) a photolatent amine
base; or (a3) a mixture of (al) and (a2); and
(b) a radically polymerizable compound; and
(c) dibenzoylperoxide or methyl ethyl ketone peroxide.
Br. 26 (emphasis added).
Although we agree with the Examiner that the composition of claim 1
is anticipated by Benkhoff, we further determine that the composition is also
rendered obvious. Thus, we sustain the rejection, but add an alternative
rejection under 35 U.S.C. § 103(a).
OPINION
Anticipation and Obviousness over Benkhoff
Like Appellants, Benkhoff uses a photolatent catalyst in a curable
composition. Benkhoff 2:6—8. The composition may be a combination of
photolatent base, which Benkhoff names component (a2), and base-
catalyzed curable compound (c). Benkhoff 4:17—18; 11:1—3. As we stated
above, there is no dispute that Benkhoff’s photolatent base meets the
requirements of claim 1. Br. 15—22. Nor is there any dispute that Benkhoff
teaches including a radically polymerizable compound. Id. For instance,
Benkhoff teaches that the base-catalyzed curable component (Benkhoff’s
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component (c)) may be radically polymerizable as well as base-catalyzed.
Benkhoff 29:11—15. Additionally, the composition can contain further
radically polymerizable components. Benkhoff 31:10—11.
Benkhoff further teaches that the photopolymerizable mixture may
comprise various additives (h). Benkhoff 32:18—19. The question is
whether Benkhoff teaches or suggests including methyl ethyl ketone
peroxide as an additive.
The Examiner and Appellants focus on the teachings of a paragraph
within Benkhoff bridging pages 35 and 36, which describes adding
particular additives to assist curing, particularly the curing of pigmented
compositions. This portion of Benkhoff reads:
The curing operation especially of pigmented
compositions (pigmented e.g. with titanium dioxide) can be
assisted, by the addition as additional additive (h) of a
component that forms free radicals under thermal conditions,
e.g. an azo compound, such as 2,2'-azobis(4-methoxy-2,4-
dimethylvaleronitrile), a triazene, a diazosulfide, pentazadiene
or a peroxy compound, for example hydroperoxide or
peroxycarbonate, e.g. tert-butyl hydroperoxide, as described
e.g. in EP 245 639.
Benkhoff 35:32—32:3 (emphasis added). The Examiner finds that paragraph
14 of EP 245 639 (Meixner) describes the useful hydroperoxides as
including methyl ethyl ketone hydroperoxide. Final 3. Appellants contend
that Benkhoff is referring to tert-butyl hydroperoxide, which Appellants
argue is taught by the EP reference as a preferred hydroperoxide. Br. 18—19.
Thus, according to Appellants, Benkhoff does not describe including methyl
ethyl ketone hydroperoxide.
After considering the evidence as a whole, we determine that a
preponderance of the evidence supports the Examiner’s finding of
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anticipation, and at the very least would have suggested to one of ordinary
skill in the art that methyl ethyl ketone peroxide would have been useful for
assisting the thermal curing of Benkhoff s composition such that its
selection would have been obvious.
There is no dispute that the EP reference, as evidenced by the English
language equivalent,5 teaches the following:
Preferred hydroperoxides are, for example, tert.-butyl
hydroperoxide, cumene hydroperoxide, methyl ethyl ketone
hydroperoxide, diisopropylbenzene monohydroperoxide and
hydrogen peroxide.
Meixner col. 3,11. 18—21.
Benkhoff is mainly concerned with a composition that cures through
irradiation with electromagnetic radiation. Benkhoff 1:2—4. But Benkhoff
also teaches adding a thermal curing component for curing, for instance,
pigmented compositions. Benkhoff 35:32—36:3. Meixner explains that
“[t]he production of UV-hardened opaquely pigmented coatings has from
the beginning presented serious problems which it has so far not been
possible to solve, because the opaque pigment does not allow the UV
radiation to penetrate into lower layers.” Meixner col. 1,11. 13—17.
Meixner’s improvement is the use of hydroperoxides as initiators in an
opaquely pigmented composition that is to be UV-hardened. Meixner col. 1,
11. 35—61. Together Benkhoff and Meixner suggest that a range of
hydroperoxides were known to function as initiators in UV-curing
compositions and that they were particularly useful in pigmented
compositions where the UV radiation will not penetrate to lower layers.
5Compare Final 6; Ans. 6 with Br. 18—19, citing Meixner et al., US
4,753,817, issued June 28, 1988.
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Although, the language in Benkhoff “or a peroxy compound, for
example hydroperoxide or peroxycarbonate, e.g. tert-butyl hydroperoxide, as
described e.g. in EP 245 639,” could in a vacuum be read narrowly to only
refer to tert-butyl hydroperoxide, Meixner’s description of a list of various
hydroperoxides as performing the curing function desired by Benkhoff
provides evidence that Benkhoff is referring to the list of Meixner, not solely
to tert-butyl hydroperoxide. But even if we were to find that Benkhoff was
only describing tert-butyl hydroperoxide, the disclosure of Meixner provides
evidence that the use of any of the hydroperoxides listed by Meixner would
have been understood by those of ordinary skill in the art as adequate for
performing the function of curing desired by Benkhoff. Thus, there is a
basis to reject the claims as obvious as well as to reject the claims as
anticipated.
We sustain the Examiner’s rejection. We further reject the claims as
obvious over Benkhoff in view of Meixner.
Obviousness of Claim 6 over Benkhoff in view of Klinkenberg
Claim 6 is directed to a composition according to claim 1 wherein
component (a2) is the compound
The Examiner acknowledges that Benkhoff does not teach the exact
structure required by claim 6, but finds Klinkenberg teaches a photoinitiator
of the required structure at column 3, lines 6—15. Final 5. The compound
reproduced by the Examiner and taught by Klinkenberg is reproduced
below:
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Clip'
CHrO
/
V
\
Klinkenberg col. 3,11. 6—15.
Appellants contend that Benkhoff teaches away from using the
preferred photolatent base of Klinkenberg because Benkhoff excludes (3,4-
dimethoxy-benzoyl)-l -benzyl-1-dimethylamino propane. Br. 23, citing
Benkhoff 18:1—2. According to Appellants, Klinkenberg’s compound is the
compound excluded by Benkhoff. Br. 23—24. But the Examiner finds that
Klinkenberg’s compound is not the compound excluded by Benkhoff and
provides some evidence. Ans. 11. Appellants do not respond to the
Examiner’s evidence. No reply brief was filed. Thus, Appellants have not
identified a reversible error in the Examiner’s finding.
Moreover, even if we were to determine that the compound of
Klinkenberg were the compound named by Benkhoff based on chemical
naming conventions, we still determine a preponderance of the evidence
supports the Examiner’s finding that Benkhoff s teaching does not
technically discredit the use of the compound to the extent that the teaching
is a “teaching away” in the non-obvious sense. See United States v. Adams,
383 U.S. 39, 52 (1966) (“known disadvantages in old devices which would
naturally discourage the search for new inventions may be taken into
account in determining obviousness”); In re Gurley, 27 F.3d 551, 553 (Fed.
Cir. 1994) (“Although a reference that teaches away is a significant factor to
be considered in determining unobviousness, the nature of the teaching is
highly relevant, and must be weighed in substance.”). Benkhoff gives no
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particular reason for excluding (3,4-dimethoxy-benzoyl)-l-benzyl-1-
dimethylamino propane. Benkhoff merely states that it is excluded and
appears to exclude the compound in the context of differentiating
Benkhoff s invention from that of EP 898202. Benkhoff 17:19—18:2. There
is little basis to find that this disclosure would have led the ordinary artisan
to believe that (3,4-dimethoxy-benzoyl)-l-benzyl-1-dimethylamino propane
would have been thought of as unable to act as a photolatent base in the
composition of Benkhoff.
Lastly, claim 6 does not limit claim 1. Although claim 6 further limits
component (a2), component (a2) is not a necessary component of the
composition of claim 1. This is because claim 1 is open to using component
(al) or (a3) instead of component (a2). Thus, Benkhoff still anticipates and
renders obvious the composition of claim 6 based on the teaching of using
photolatent bases meeting the requirements of (al). Benkhoff 12:19—13:15.
CONCLUSION
We sustain the Examiner’s rejections. We add a new ground of
rejection of claims 1,2, 6—8, and 14—17 under 35 U.S.C. § 103(a) as obvious
over Benkhoff.
DECISION
The Examiner’s decision is affirmed.
TIME PERIOD FOR RESPONSE
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of
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Application 12/812,795
rejection pursuant to this paragraph shall not be considered final for judicial
review.”
37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the proceeding
will be remanded to the examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record. . . .
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).
AFFIRMED: 37 C.F.R, $ 41.50(b)
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