Arkema Inc.

Patent Trials and Appeals BoardAug 3, 2020

2019006044 (P.T.A.B. Aug. 3, 2020)

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. 15/164,925 05/26/2016 Benjamin Bin CHEN IR4267NP 4123 31684 7590 08/03/2020 ARKEMA INC. 900 First Avenue Bldg 4-2 King of Prussia, PA 19406 EXAMINER COONEY, JOHN M ART UNIT PAPER NUMBER 1765 NOTIFICATION DATE DELIVERY MODE 08/03/2020 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): elizabeth.gilson@arkema.com steven.boyd@arkema.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte BENJAMIN BIN CHEN, JOSEPH S. COSTA, SRI R. SESHADRI, and LAURENT ABBAS Appeal 2019-006044 Application 15/164,925 Technology Center 1700 Before BEVERLY A. FRANKLIN, JEFFREY B. ROBERTSON, and MONTÉ T. SQUIRE, Administrative Patent Judges. FRANKLIN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1, 4, 6, 9–13, and 16–26. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as Arkema Inc. Appeal Br. 2. Appeal 2019-006044 Application 15/164,925 2 CLAIMED SUBJECT MATTER Claim 1 is illustrative of Appellant’s subject matter on appeal and is set forth below: A polyol pre-mix comprising: a) at least one blowing agent which includes HCFO-1233zd but no tetrafluorobutene; and b) a polyol component comprised of at least one polyether polyol and at least one polyester polyol; wherein each polyol of the polyol component has an apparent pH of at least 4 but no greater than 10. Appeal Br.2 10 (Claims Appendix). REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Williams et al. (“Williams”) US 2009/0099272 Al Apr. 16, 2009 Chen et al. (“Chen”) US 2013/0041048 Al Feb. 14, 2013 THE REJECTION Claims 1, 4, 6, 9–13, and 16–26 are rejected under 35 U.S.C. §103 as being unpatentable over Williams in view of Chen. OPINION Upon consideration of the evidence and each of the respective positions set forth in the record, we find that the preponderance of evidence supports the Examiner’s findings and conclusion that the subject matter of 2 We refer to the Appeal Brief mailed March 21, 2019. Appeal 2019-006044 Application 15/164,925 3 Appellant’s claims is unpatentable over the applied art. Accordingly, we sustain the Examiner’s rejection on appeal based on the fact-finding and for the reasons set forth in the Final Office Action and in the Answer, and affirm, with the following emphasis. The Examiner’s statement of the rejection is set forth on pages 3–6 of the Answer, which we adopt as our own. Beginning on page 4 of the Appeal Brief, Appellant states that the claimed subject matter of claim 1 is directed to a polyol pre-mix. Independent claim 22 is directed to a method of making the polyol pre-mix. Appellant states that the polyol pre-mix comprises at least one blowing agent which includes HFCQ-1233zd, but no tetrafluorobutene, and a polyol component comprised of at least one polyether polyol and at least one polyester, wherein each polyol of the polyol component has an apparent pH of at least 4 but no greater than 10. Appellant argues that selecting and controlling the polyols in this manner (i.e., utilizing only polyols having apparent pH values of 4 to 10) unexpectedly provides a polyol pre-mix based on HFCO-1233zd as a blowing agent which, after being stored for six months at 23°C, has improved shelf life stability. Appeal Br. 4. Appellant states that the Inventors of the present application have discovered that the storage stability of such pre-mixes may be significantly improved by selecting and controlling the apparent pH value of each polyol present in such pre-mixes. Appeal Br. 6. Beginning on page 7 of the Appeal Brief, Appellant argues that Chen does not appreciate the role that apparent pH values play in storage stability of a polyol-pre-mix. Appellant refers to the Joseph Costa Declaration in support thereof. Appeal Br. 7–8. Similarly, Appellant argues that Williams Appeal 2019-006044 Application 15/164,925 4 fails to provide any guidance regarding the identity of polyol components which will result in a shelf-stable polyol pre-mix as claimed. Appeal Br. 9. We do not find Appellant’s arguments persuasive for the reasons presented by the Examiner on pages 7–11 of the Answer. Therein, the Examiner correctly points out that one skilled in the art need not see the identical problem addressed in the prior art reference to be motivated to apply its teachings. Ans. 7. Also, as correctly pointed out by the Examiner, “the fact that appellant has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious.” Ex parte Obiaya, 227 USPQ 58, 60 (BPAI 1985), aff’d mem., 795 F.2d 1017 (Fed. Cir. 1986); cf. In re Cruciferous Sprout Litig., 301 F.3d 1343, 1349 (Fed. Cir. 2002) (“Inherency is not necessarily coterminous with the knowledge of those of ordinary skill in the art. Artisans of ordinary skill may not recognize the inherent characteristics or functioning of the prior art.”) (citations omitted). With regard to the declaration evidence, we also agree with the Examiner that it is unpersuasive for the reasons provided by the Examiner on pages 8–9 of the Answer. Appellant does not adequately present an analysis of the data sufficient to establish unexpected results. Manifestly, it is not within the province of the Board to independently review Appellant’s data and ferret out possible evidence of unexpected results. On the contrary, the burden of establishing unexpected results rests squarely upon the party asserting them. In re Klosak, 455 F.2d 1077, 1088 (CCPA 1972). Appellant’s reply in the Reply Brief does not adequately address these points made by the Examiner (discussed above). Appeal 2019-006044 Application 15/164,925 5 In view of the above, we therefore affirm the rejection. CONCLUSION We affirm the Examiner’s decision. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Bas is Affirmed Reversed 1, 4, 6, 9–13, 16–26 103 Williams, Chen 1, 4, 6, 9–13, 16–26 TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED