Ex Parte Ziser et al

Patent Trial and Appeal Board

Jul 13, 2016

11301704 (P.T.A.B. Jul. 13, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111301,704 12/12/2005
34947 7590 07115/2016
LANXESS CORPORATION
111 RIDC PARK WEST DRIVE
PITTSBURGH, PA 15275-1112
FIRST NAMED INVENTOR
Torsten Ziser
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.
CH-8388/H62653US 2241
EXAMINER
MCCULLEY, MEGAN CASSANDRA
ART UNIT PAPER NUMBER
1767
NOTIFICATION DATE DELIVERY MODE
07/15/2016 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):
ipmail@lanxess.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TORSTEN ZISER, THOMAS FRUH,
LUDGER HEILIGER, and WERNER OBRECHT
Appeal2015-000422
Application 11/301,704
Technology Center 1700
Before MICHAEL P. COLAIANNI, GEORGE C. BEST, and
DEBRA DENNETT, Administrative Patent Judges.
COLAIANNI, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134 the rejection of claims 1-13,
19, 20, 22-30, 34--37, and 39--41. We have jurisdiction over the appeal
pursuant to 35 U.S.C. § 6(b).
We AFFIRM.
Appellants' invention is directed to thermosetting plastics
compositions containing crosslinked microgels and processes for the
production thereof (Spec. 1 :6-8).
Claim 1 is illustrative:
1. Thermosetting plastics composition, containing at least
one thermosetting plastics material (A) and at least one
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Application 11/301,704
crosslinked micro gel (B), of which the average primary particle
diameter is from 5 to 5 00 nm,
wherein the thermosetting plastics material (A) is
selected from the group consisting of diallyl phthalate resins,
epoxide resins, aminoplastics, urea-formaldehyde resins,
melamine- formaldehyde resins, phenolics such as melamine-
phenol-formaldehyde resins, phenol-formaldehyde resins,
cresol-formaldehyde resins, resorcinol-formaldehyde resins,
xylenol-formaldehyde resins, furfuryl alcohol-formaldehyde
resins, unsaturated polyester resins, polyurethane resins,
reaction injection-moulded polyurethane resins, furan resins,
vinyl ester resins, polyester melamine resins, and mixtures of
diallyl phthalate resins with diallyl isophthalate resins; and
further wherein the microgel (B) comprises an epoxy
functional group and being free of carboxyl group and the salts
of said carboxyl group.
Appellants appeal the following rejections:
1. Claims 1, 2, 4--8, 10-13, 19, 20, 22-30, 34--37, and 39--41 are
rejected under 35 U.S.C. § 103(a) as unpatentable over Fukuchi
(US 5,229,434 issued July 20, 1993) in view ofDeGraaf (US
5,942,563 issued August 24, 1999) and Gajria (US 4,539 ,348
issued September 3, 1985).
2. Claims 3 and 9 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Fukuchi in view of DeGraaf, Gajria and Fryd
(US 5,077, 17 5 issued December 31, 1991 ).
Regarding rejection (1 ), Appellants argue the claims as a group (App.
Br. 10). We select claim 1 as representative of the group. 37 C.F.R.
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Application 11/301,704
§ 41.37(c)(iv) (2013). Claims 2, 4--8, 10-13, 19, 20, 22-30, 34--37, and 39-
41 will stand or fall with our analysis of claim 1.
Regarding rejection (2), Appellants merely argue that Fryd does not
cure the alleged deficiencies of Fukuchi, DeGraaf and Gajria argued with
regard to rejection (1) (App. Br. 13-14). Accordingly, claims 3 and 9 will
stand or fall with our analysis of the rejection of claim 1.
FINDINGS OF FACT & ANALYSIS
The Examiner finds that Fukuchi teaches all the limitations of claim 1,
except for an epoxy functional group on the microgel and the thermosetting
plastics recited in claim 1 (Non-Final Act. 2-3). The Examiner finds that
DeGraaf teaches a similar micro gel as Fukuchi and teaches reacting the
carboxyl groups on the microgel with a multifunctional epoxy resin thereby
imparting epoxy functionality (Non-Final Act. 3). The Examiner concludes
that it would have been obvious to react Fukuchi's microgel with the
multifunctional epoxy to obtain an epoxy functional microgel as in DeGraaf
because DeGraaf teaches that epoxy functionalized micro gels do not have an
excessive viscosity increase due to esterification when dispersed in water
unlike carboxyl functional microgels. Id.
The Examiner further finds that Gajria teaches a composition
comprising crosslinked polymeric microgels and a thermosetting plastic
composition including some of the resins recited in the list of claim 1 (Non-
Final Act. 3). The Examiner concludes that it would have been obvious to
substitute the specific thermosetting plastic material of Gajria for the
polymer of Fukuchi in order to provide coatings that are stable dispersions in
water and have improved adhesion to metal surfaces as taught by Gajria. Id.
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Appellants argue that Fukuchi teaches away from using an epoxy
functionality on the microgel particles (App. Br. 11 ). Appellants contend
that DeGraaf' s method uses a three-step method and is so different from
Fukuchi' s one-step method that one of ordinary skill in the art would not
have combined DeGraaf's method with Fukuchi's method in a predictable
manner (App. Br. 11 ). Appellants contend that nothing will result from
replacing Fukuchi's divinylbenzene with the high multifunctional epoxide
resin of DeGraaf since DeGraaf' s resin is missing a necessary double bond
to crosslink the styrene. Id. Appellants argue that the function of Fukuchi' s
microgels are totally different than those of Gajria (App. Br. 12). Appellants
contend that Fukuchi teaches microgels intended for the manufacture of
printed circuit boards, machine plates for printing, and semi-conductor
elements, whereas Gajria is directed to forming stable aqueous dispersions
of heat-durable film-forming resins (App. Br. 12-13). Appellants contend
that Fukuchi and Gajria have totally different technical effects and are not
analogous art (App. Br. 13).
We have fully considered Appellants' arguments and the Examiner's
rejection, we find that the preponderance of the evidence favors the
Examiner's obviousness conclusion. We adopt the Examiner's response to
Appellants' arguments on pages 2 to 4 of the Examiner's Answer as our
own. We add the following primarily for emphasis.
Contrary to Appellants' arguments, Fukuchi' s discovery of a process
for quantitatively attaching a functional group other than an epoxy group
without isolating fine microgel particles from an aqueous dispersion does
not constitute a teaching away from using epoxy functionalities (col. 2,
11. 50-57). The nature of Fukuchi's teachings at column 2, lines 50-57 is not
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that epoxy functionalities cannot be used. Rather, Fukuchi's teaching
highlights that Fukuchi's contribution is the addition of unsaturated double
bond functionalities and hydroxyl or carboxyl group functionalities to
microgel particles, a transformation that had been difficult to achieve
(Fukuchi, col. 1, 11. 58---63; col. 2, 11. 35--46). Indeed, Fukuchi teaches using
an epoxy functionality on compound (B), the compound that has the desired
reactive functional group, that reacts with the tertiary ammonium salts and
bonds compound (B) to the microgel particle thereby imparting the
microgel with the desired chemical functionality (col. 2, 11. 35--47). Fukuchi
further contains a broader disclosure at column 2, lines 14--17 which does
not limit the functional groups that may be attached to the microgels.
Specifically, column 2, lines 14--17 discloses that the object of Fukuchi's
invention is to provide "a novel process for the production of reactive
microgels which makes it possible to attach various functional groups
quantitatively." We do not find that Fukuchi's disclosure teaches away in
that it does not indicate that "the line of development flowing from the
reference's disclosure is unlikely to be productive the result sought by
applicant." In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). Fukuchi's
disclosure reads more as a preference for particular chemical functionalities
other than epoxy.
Appellants' arguments regarding DeGraaf' s process having three
steps versus Fukuchi' s one step process and the substitution of Fukuchi' s
divinylbenzene are not persuasive. The Examiner relies on DeGraaf to teach
that it was known to form microgels with epoxy functionalities (Non-Final
Act. 3). The Examiner is not proposing to bodily incorporate DeGraaf's
process into Fukuchi's process. Rather, the Examiner's rejection is based
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upon reacting Fukuchi's microgels (i.e., compound A) with DeGraaf's
multifunctional epoxy resin that imparts the functionality to the microgels
(Non-Final Act. 3). The divinylbenzene is used by Fukuchi in making the
polymer for the reactive microgels (i.e., compound A) that is then reacted
with the functionality imparting compound (i.e., compound B) (Fukuchi col.
6, 11. 45---68). The Examiner is not proposing to substitute DeGraaf s
multifunctional epoxy resin for Fukuchi' s divinylbenzene. Appellants'
arguments have not shown reversible error with the Examiner's stated
rejection.
We are unpersuaded by Appellants' contention that Gajria and
Fukuchi are non-analogous art so that one of ordinary skill would not have
combined their teachings. The Examiner finds that Gajria and Fukuchi are
each directed to forming substrate coatings using reactive microgels and are
thus in the same field of endeavor (Non-Final Act. 12). Appellants do not
dispute this or otherwise show error with the Examiner's findings.
On this record, we affirm the Examiner's§ 103 rejections.
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)(l).
ORDER
AFFIRMED
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