Ex Parte Valette et al

Patent Trial and Appeal Board

Jul 15, 2016

12599846 (P.T.A.B. Jul. 15, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/599,846 11112/2009
132483 7590
POLSINELLI PC
c/o Blue Cube IP LLC
100 South Fourth Street
Suite 1000
St. Louis, MO 63102
07119/2016
FIRST NAMED INVENTOR
Ludovic Valette
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
074785.503032 3683
EXAMINER
SELLERS, ROBERT E
ART UNIT PAPER NUMBER
1765
NOTIFICATION DATE DELIVERY MODE
07/19/2016 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):
uspt@polsinelli.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LUDOVIC V ALETTE, ULRICH HEROLD, and
BERND HOEVEL1
Appeal2015-001418
Application 12/599,846
Technology Center 1700
Before KAREN M. HASTINGS, CHRISTOPHER C. KENNEDY, and
MONTE T. SQUIRE, Administrative Patent Judges.
KENNEDY, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Examiner's
decision to reject claims 1, 5, 6, 8, 9, 11, 18, 22, and 23. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
BACKGROUND
The subject matter on appeal relates to curable epoxy resin
compositions for use in electrical laminate applications. E.g., Spec. 1: 5-7;
1 According to the Appellants, the Real Party in Interest is Dow Global
Technologies LLC. Br. 2.
Appeal2015-001418
Application 12/599,846
Claim 1. Claim 1 is reproduced below from page 7 (Appendix A) of the
Appeal Brief:
1. A curable epoxy resin composition comprising:
(a) at least one oxazolidone-modified epoxy resin which is the
reaction product of an epoxy resin and an isocyanate;
(b) at least one maleimide;
( c) at least one cyanate ester wherein from 5 percent to 60
percent of the cyanate ester groups are polymerized to form
triazine rings; and optionally
( d) at least one non-oxazolidone containing epoxy resin,
wherein at least one component of the composition comprises
halogen or phosphorous to provide flame retardancy to the cured
composition.
ANALYSIS
Claims 1, 5, 6, 8, 9, 11, 18, 22, and 23 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Miyake et al. (JP 09-324108, published Dec.
16, 1997) in view of Koenig et al. (US 5,112,932, issued May 12, 1992) and
Craig (US 4,839,442, issued June 13, 1989). The Appellants argue the
claims as a group, focusing on limitations appearing in claim 1. We select
claim 1 as representative of the rejected claims, and the remaining claims on
appeal will stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(l)(iv).
After review of the cited evidence in the appeal record and the
opposing positions of the Appellants and the Examiner, we determine that
the Appellants have not identified reversible error in the Examiner's
rejection. Accordingly, we affirm the rejection for reasons set forth below
and in the Examiner's Answer. See generally Ans. 2-7.
The Examiner finds that Miyake teaches a curable epoxy resin
comprising each element of claim 1 except the oxazolidone-modified epoxy
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Appeal2015-001418
Application 12/599,846
resin (element (a)) and the cyanate ester "wherein from 5 percent to 60
percent of the cyanate ester groups are polymerized to form triazine rings"
(element (c)). Ans. 2--4. Concerning the oxazolidone-modified epoxy resin,
the Examiner finds that Miyake teaches such a resin but does not actually
provide an exemplary composition including the resin. Id. at 3. The
Examiner finds that Koenig would have motivated a person of ordinary skill
in the art to include such a resin in Miyake' s composition because it teaches
"a cured epoxy-terminated polyoxazolidone [formed] by reacting a
polyiodide with a polyisocyanate ... [that] exhibit[s] higher glass transition
temperatures than conventional cured epoxy resins as well as high chemical
resistance." Id.
Concerning the cyanate ester, the Examiner finds that Miyake teaches
such an ester but does not specifically disclose the limitation "wherein from
5 percent to 60 percent of the cyanate ester groups are polymerized to form
triazine rings." Id. at 4. The Examiner finds that Craig "espouses the
cyclotrimerization of from about 5 to about 50 percent of the cyanate
functional groups ... of a dicyanate ester" and concludes that "[i]t would
have been obvious to conduct the partial ring closure of the cyanate groups
of the cyanate ester of [Miyake] to the extent of the from about 5 to about 50
percent reported in Craig ... in order to attain an amorphous oligomeric
physical state more conductive for use in prepregging operations." Id.
The Appellants argue that Miyake "fails to mention anything about"
(1) the oxazolidone-modified epoxy resin, (2) the cyanate ester, or (3) "at
least one component of the composition comprising halogen." Br. 5. The
Appellants, however, fail to provide any explanation for their argument, and
they fail to address the Examiner's specific findings concerning each of
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Appeal2015-001418
Application 12/599,846
those claim limitations, which appear to be supported by the references. See
Ans. 2-7; Miyake i-f 4 (phosphorous containing component), i-f 9 (epoxy
resin); Koenig at 4:60-65 (epoxy resin), 9:33--49, 10:30--40; Craig at 3:34--
39 (cyanate ester). Their argument does not persuade us of reversible error.
See 37 C.F.R. § 41.37(c)(l)(iv) ("A statement which merely points out what
a claim recites will not be considered an argument for separate patentability
of the claim."); see also In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011)
(holding that "the Board reasonably interpreted Rule 41.37 to require more
substantive arguments in an appeal brief than a mere recitation of the claim
elements and a naked assertion that the corresponding elements were not
found in the prior art").
The Appellants also argue that all three prior art references "teach
away from the instant invention." Br. 5. They argue that Koenig and
Miyake teach away because Koenig teaches that "halogenated epoxy resins
can be used while [Miyake] is explicit about halogen-free compositions."
Id. That argument appears to concern motivation to combine Koenig and
Miyake, not whether those references teach away from the claimed
invention. In any event, it is not persuasive because, as the Examiner
explains, Ans. 6, there is no teaching in Koenig that its epoxy resins must be
halogenated, and the Appellants do not make any argument to the contrary.
Claim 1 does not require the use of halogens.
The Appellants argue that Craig teaches away because it "is directed
to non-crystallized resins prepared from dicyanate esters and dicyanate ester
prepolymers useful in composites while the composition of Claim 1 is a
curable epoxy resin composition useful in electrical laminates." Br. 6. That
argument is not persuasive because it does not identify any teaching in Craig
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Appeal2015-001418
Application 12/599,846
that criticizes, discredits, or otherwise discourages the claimed solution. See
In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). The mere fact that Craig
may ultimately be directed to a different final product than the claimed
invention does not show error in the Examiner's rationale. Cf Belden Inc. v.
Berk-TekLLC, 805 F.3d 1064, 1076 (Fed. Cir. 2015) ("A reference must be
considered for everything it teaches by way of technology and is not limited
to the particular invention it is describing and attempting to protect."
(internal quotation marks and alterations omitted)).
In view of the arguments presented by the Appellants, we discern no
reversible error in the Examiner's rejection.
CONCLUSION
We AFFIRM the Examiner's rejection of claims 1, 5, 6, 8, 9, 11, 18,
22, and 23.
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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