Ex Parte Weissenbach et al

Patent Trial and Appeal Board

Nov 20, 2017

13903594 (P.T.A.B. Nov. 20, 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.
13/903,594 05/28/2013 Kerstin WEISSENBACH 416494US99DIV 2719
22850 7590 11/22/2017
OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P.
1940 DUKE STREET
ALEXANDRIA, VA 22314
EXAMINER
DOLLINGER, MICHAEL M
ART UNIT PAPER NUMBER
1766
NOTIFICATION DATE DELIVERY MODE
11/22/2017 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):
patentdocket @ oblon. com
oblonpat @ oblon. com
tfarrell@oblon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KERSTIN WEISSENBACH,
ARISTIDIS IOANNIDIS, and BASTIAN BIELAWSKI
Appeal 2017-000260
Application 13/903,594
Technology Center 1700
Before CHUNG K. PAK, GRACE KARAFFA OBERMANN, and
AVELYN M. ROSS, Administrative Patent Judges.
OBERMANN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants1 seek relief from the Examiner’s final rejection of
claims 17 and 26—29 under 35 U.S.C. § 103(a). Appeal Br. 2, 4. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellants identify Evonik Degussa GMBH as the real party in interest.
Appeal Br. 1.
Appeal 2017-000260
Application 13/903,594
STATEMENT OF THE CASE
The invention relates to “a composition of an organofimctional silane
compound, in particular of a monounsaturated silane compound, and of an
organic acid, or of a precursor compound that liberates an acid.” Spec. 1:4—
8. This composition may act as silanol condensation catalysts used for
cross-linking polymer compounds. Id. at 1:1—2. According to the
specification, organotin compounds or aromatic sulfonic acids are known
silanol condensation catalysts. Id. at 1:22—26. The organotin compounds
and sulfonic acids are disadvantageous, however, in that organotin
compounds have significant toxicity, and the sulfonic acids produce a
pungent odor that is present both during processing and in the final product.
Id. at 1:28-32.
According to Appellants, they have found that a composition
comprising at least one precursor compound of an organic acid and also, if
appropriate, an organofunctional silane compound, can be reacted with
parent polymers, monomers, or prepolymers, to produce compounded
polymer materials, without the disadvantages of toxicity and odor
impairment. Id. at 3:30—38. The specification discloses a masterkit
comprising a component A and, if appropriate, a component B. Id. at 32:32—
33:25. At least one silicon-containing precursor compound of an organic
acid, such as myristic acid, makes up a portion of component A {id. at
10:31—32, 32:32—33:3), and an organofimctional silane compound
constitutes most of component B {id. at 33:12—14).
Claim 17 is representative, and is reproduced below:
A masterkit, comprising:
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Application 13/903,594
(A) (al) 0.1 to 10% of myristic acid, and
(a2) from 90 to 99.9% of at least one of [sic]
member selected from the group consisting of titanium
dioxide, quartz, magnesium hydroxide, bentonite,
montmorillonite, mica, talc, aluminum oxide hydroxides,
boehmite, baryte, barium sulfate, lime, aluminates,
aluminum silicates, and ZnO,
wherein (al) + (a2) make up 100% by weight of (A), and
(B) (bl) 60 to 99.9% by weight of at least one
organofimctional silane compound represented by formula III:
(B)SiR4a(OR5)3.a (III),
wherein
a is 0, 1, 2, or 3,
B is
a monovalent (R7)2C=C(R7)-Eq- group in formula III, in
which R7 are identical or different, and R7 is a hydrogen atom
or a methyl group or a phenyl group, E is -CH2-, -(CH2)2-,
-(CH2)3-, -0(0)C(CH2)3-, or -C(0)0-(CH2)3-, q is 0 or 1, or
isoprenylene, hexenylene, cyclohexenylene, terpenylene,
squalanylene, squalenylene, polyterpenylene,
betulaprenoxyene, cis/trans-polyisoprenylene, or an
R6-Dp-[C(R6)=C(R6)-C(R6)=C(R6)]tDp- group, in which R6 are
identical or different, and R6 is a hydrogen atom or an alkyl
group having from 1 to 3 carbon atoms, or an aryl group, or an
aralkyl group, groups D are identical or different, and D is
-CH2-, -(CH2)2-, -(CH2)3-, -0(0)C(CH2)3-, or -C(0)0-(CH2)3-,
p is 0 or 1, and t is 1 or 2,
R5 is, mutually independently, methyl, ethyl, n-propyl, or
isopropyl,
R4 is, mutually independently, a substituted or
unsubstituted hydrocarbon group, and
(b2) 0.1 to 40% by weight of (B) of at least one member
selected from the group consisting of a free-radical generator,
stabilizer, carrier material and an added substance,
wherein (bl) + (b2) make up 100% by weight of (B).
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Appeal 2017-000260
Application 13/903,594
OPINION
The Examiner rejects claims 17 and 26—29 under 35 U.S.C. § 103(a)
as obvious over Schlosser,2 Tanaka,3 and Luginsland.4 Final Action 2.5 The
Examiner relies on Schlosser as disclosing the limitations of claim 17 except
for myristic acid and component (a2). Id. at 2—3. For these elements, the
Examiner turns to Tanaka and Luginsland, respectively, and sets forth
reasons to combine Tanaka and Luginsland with Schlosser. Id. at 3^4.
Appellants argue the nonobviousness of claims 17 and 26—29 as a
group. Appeal Br. 4—6. We select claim 17 as representative of the group.
Claims 26—29 stand or fall with claim 17. See 37 C.F.R. § 41.37(c)(l)(iv).
Appellants do not argue that the Examiner erred in combining
Schlosser and Tanaka to account for myristic acid. See Appeal Br. 4—6.
Appellants, however, do argue that it would not have been obvious to
2 US 2003/0134969 A1 (published July 17, 2013).
3 WO 2008/052875 A1 (published May 8, 2008). As an English language
version of Tanaka, the Examiner cites to US 2009/0247712 A1 (published
Oct. 1, 2009). Final Action 2.
4 US 6,890,981 B1 (issued May 10, 2005).
5 Although the Examiner rejected claims 17, 19, 21, 26—29, and 38 under
35 U.S.C. § 103(a) in the Final Rejection, the Examiner entered the
Amendment cancelling claims 19, 21, and 38 filed on November 16, 2015
subsequent to the Final Rejection. See Advisory Action entered December
22, 2015. This Advisory Action, however, inadvertently states that the
§ 103(a) rejection of claims 17, 26—29, and 38 is still maintained. The
Examiner’s Answer entered July 29, 2016 also repeats the § 103(a) rejection
of claims 17, 19, 21, 26—29, and 38 set forth in the Final Rejection. By
referring to claims 17 and 26—29, we have omitted cancelled claims 19, 21,
and 38 consistent with the Amendment after the Final Rejection that was
entered by the Examiner.
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Application 13/903,594
combine Schlosser and Luginsland to obtain the claimed component (a2).
Id.
In regard to component (a2), the Examiner finds that Schlosser
discloses a composition containing an unsaturated silane on a carrier
material such as carbon black and calcium silicate. Final Action 2 (citing
Schlosser 114). Although the Examiner acknowledges that Schlosser does
not disclose a carrier material that corresponds to component (a2) of claim
17, the Examiner further finds that Luginsland also teaches materials for the
purpose of carrying an organosilane compound in a curable composition. Id.
at 3. Those materials include carbon black, natural or synthetic silicates, and
additionally, materials that are recited as component (a2) of claim 17—
namely, zinc oxide, titanium dioxide, and aluminum silicates. Id. at 3^4
(citing Luginsland 2:53—57, 3:3—7). The Examiner then concludes that it
would have been obvious to substitute zinc oxide, titanium dioxide, and
aluminum silicates from Luginsland for Schlosser’s carrier. Id. at 4. The
Examiner also points out that the compositions in Schlosser and Luginsland
are both used for cable sheaths. Id. at 3 (citing Schlosser 11; Luginsland
4:13); Answer 5.
Appellants, on the other hand, assert that Luginsland discloses
compositions containing rubber, in contrast to Schlosser’s materials where
there is no mention of a rubber component. Appeal Br. 6; Reply Br. 3.
Appellants therefore conclude that a person of ordinary skill in the art would
not have sufficiently expected that Luginsland’s carrier material would have
been effective in Schlosser’s nonrubber compositions. Appeal Br. 6; Reply
Br. 3. According to Appellants, “[t]he Examiner has proffered no evidence
that one skilled in the art would have a sufficient expectation that the carrier
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Application 13/903,594
material described by Luginsland will be effective in the cable compound
compositions described by Schlosser, which do not contain rubber.” Reply
Br. 4.
We, however, agree with the Examiner. The teachings from Schlosser
and Luginsland that the Examiner relies on each disclose materials that
perform the same function. That is, the materials are each used as a carrier
for organosilanes in which the organosilanes are adsorbed on the carrier
(Schlosser 114; Luginsland 2:53—55), and further, the organosilanes are part
of compositions useful for cable sheaths (Schlosser 11; Luginsland 4:13).
The specific materials that the Examiner identifies—carbon black, zinc
oxide, titanium dioxide, and silicates (calcium silicate and aluminum
silicate)—are used in either or both of Schlosser and Luginsland, and are
inert materials, whether used in compositions that contain or do not contain
rubber. See Schlosser 114; Luginsland 2:53—57. Lor these reasons, we find
the inert carrier materials identified by the Examiner to be interchangeable,
and one of ordinary skill in the art would have had a reasonable expectation
that such inert carrier materials would be useful for both Luginsland’s and
Schlosser’s cable compositions. Accordingly, we find no error in the
Examiner’s conclusion that it would have been obvious to substitute those
materials for each other.
Moreover, the Examiner’s Answer states that Schlosser does, in fact,
disclose polymers that are inclusive of rubber materials (i.e., acrylonitrile
and other (meth)acrylate polymers). Answer 5 (citing Schlosser | 58).
Appellants do not rebut this assertion in their Reply. See Reply 4. Lor this
additional reason, we are not persuaded by Appellants’ argument that the
Examiner’s rejection contains reversible error.
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Application 13/903,594
Accordingly, we affirm the rejections of claims 17 and 26—29.
ORDER
The Examiner’s decision to reject claims 17 and 26—29 as
unpatentable over Schlosser, Tanaka, and Luginsland under 35 U.S.C.
§ 103(a) 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).
AFFIRMED
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