BYK-Chemie, GmbH

Patent Trials and Appeals Board

Feb 24, 2022

2021002906 (P.T.A.B. Feb. 24, 2022)

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. 15/740,624 12/28/2017 Andreas OKKEL BYK.P01190PFA-US 8604 23575 7590 02/24/2022 CURATOLO SIDOTI CO., LPA 24500 CENTER RIDGE ROAD, SUITE 280 CLEVELAND, OH 44145 EXAMINER SERGENT, RABON A ART UNIT PAPER NUMBER 1765 NOTIFICATION DATE DELIVERY MODE 02/24/2022 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): docket@patentandtm.com pair@patentandtm.com sidoti@patentandtm.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ANDREAS OKKEL, WOLFGANG PRITSCHINS, MICHAEL BESSEL, IRINA GIEBELHAUS, MARCUS MEICHSNER, and MONIKA ROCH Appeal 2021-002906 Application 15/740,624 Technology Center 1700 Before ADRIENE LEPIANE HANLON, N. WHITNEY WILSON, and BRIAN D. RANGE, Administrative Patent Judges. RANGE, 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, 2, 4, 5, and 8-14. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as BYK-Chemie GmbH. Appeal Br. 3. Appellant also states, “BYK-Chemie BmbH is a wholly owned subsidiary of Altana AG.” Id. Appeal 2021-002906 Application 15/740,624 2 CLAIMED SUBJECT MATTER2 Appellant describes the invention as relating to reaction products containing urethane and urea groups. Spec. 1:1-6. Appellant seeks “to provide high-quality products usable with maximum universality that are suitable as wetting agents and/or dispersants and/or dispersion stabilizers and/or adhesion promoters.” Id. at 2:17-19. The materials might be used as part of a coating on metal, plastic, wood, or glass. Id. at 2:10-15. Claim 1 is the only independent claim on appeal. Claim 1 is reproduced at pages 29-31 of the Appeal Brief, and we do not reproduce the claim here because of its length and graphical chemical representations. REJECTION AND REFERENCES The Examiner rejects claims 1, 2, 4, 5, and 8-14 as obvious over Göbelt et al, WO 2012/175159 A1, Dec. 27, 2012 (“Göbelt”) in view of Tilak et al., US 2016/0083502 A1, March 24, 2016 (“Tilak”), or Yamamoto et al., US 4,933,417, June 12, 1990 (“Yamamoto”). OPINION We review the appealed rejections for error based upon the issues identified by Appellant and in light of the arguments and evidence produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential), cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (“[I]t 2 In this Decision, we refer to the Final Office Action dated August 6, 2020 (“Final Act.”), the Appeal Brief filed October 26, 2020 (“Appeal Br.”), the Examiner’s Answer dated February 9, 2021 (“Ans.”), and the Reply Brief filed March 27, 2021 (“Reply Br.”). Appeal 2021-002906 Application 15/740,624 3 has long been the Board’s practice to require an applicant to identify the alleged error in the examiner’s rejections.”). After considering the evidence presented in this appeal and each of Appellant’s arguments, we are not persuaded that Appellant identifies reversible error. Thus, we affirm the Examiner’s rejections for the reasons expressed in the Final Office Action and the Answer. We add the following primarily for emphasis. The Appellant does not separately argue any dependent claims separately. We therefore limit our discussion to claim 1. All other claims stand or fall with that claim. 37 C.F.R. § 41.37(c)(1)(iv) (2013). The Examiner finds that Göbelt teaches a “dispersant additive constituting specific urea urethanes” that meets the recitations of claim 1 except that Göbelt “fails to disclose a terminating structure corresponding to appellants’ claimed nitrogen-containing heterocyclic substituent” (e.g., benzoguanamine). Final Act. 3-4 (citing Göbelt). The Examiner finds, however, that Göbelt teaches that its HX-Z1 includes N-(3- aminopropyl)imidazole. Id. at 3. The Examiner finds that Tilak and Yamamoto teach dispersants and teach that “incorporation of such heterocyclic structures [as in claim 1] into isocyanate derived dispersants was known at the time of [the] invention.” Id. at 4 (citing Tilak and Yamamoto). The Examiner finds that Tilak and Yamamoto “disclose the use of N-(3-aminopropyl)imidazole for the same purpose as benzoguanamine, which establishes the equivalency of these compounds in the production of these dispersants.” Id. at 4. The Examiner determines that it would have been obvious to substitute the benzoguanamine of Tilak or Yamamoto with the N-(3- Appeal 2021-002906 Application 15/740,624 4 aminopropyl)imidazole of Göbelt because doing so is substitution of a known equivalent. Id. Appellant first argues that Göbelt does not disclose an amine with claim 1’s terminating structure. Appeal Br. 12. Appellant further argues that Göbelt describes “specific urea urethanes” (Appellant’s emphasis) and that this description “would discourage a modification with different structures such as the polyureas of Tilak.” Id. at 13; see also Reply Br. 4. Appellant’s argument is unpersuasive because Göbelt lists N-(3-aminopropyl)imidazole among “[e]xamples of appropriate oligoamines.” Göbelt ¶ 145. Göbelt does not indicate that only the specific oligoamines provided by examples may be appropriate. As such, we agree with the Examiner that Göbelt would not have dissuaded a person of skill in the art from considering the considered alternatives taught by Tilak or Yamamoto. Final Act. 4. Appellant also argues that Tilak’s compounds are different from those of Göbelt. Appeal Br. 13. Appellant emphasizes that N-(3- aminopropyl)imidazole (taught by both Tilak and Göbelt) and benzoguanamine (taught only by Tilak) are not equivalent. Id. at 15. Appellant makes similar arguments with regard to Yamamoto. Id. at 21-22. These arguments are also not persuasive of error. Tilak, Yamamoto, and Göbelt all relate to dispersants. Göbelt, Abstract; Tilak ¶ 2; Yamamoto Abstract. Tilak suggests that, in the context of its dispersant, N-(3- aminopropyl)imidazole and benzoguanamine are interchangeable as components for its dispersant. Tilak ¶ 55. Notably, Tilak identifies exactly these two compounds as “especially suitable to form addition compounds according to [its] invention for producing dispersant for pigments.” Id. Yamamoto lists N-(3-aminopropyl)imidazole and benzoguanamine side by Appeal 2021-002906 Application 15/740,624 5 side as options for its dispersant. Yamamoto 9:39-10:18. Yamamoto, thus, indicates either option is suitable. Appellant does not persuasively argue why a person of skill in the art would not have believed that benzoguanamine would similarly be suitable in the context of Göbelt. Appellant further argues that a person of skill in the art would be dissuaded from using benzoguanamine because Tilak indicates that N-(3- aminopropyl)imidazole components have better performance than benzoguanamine components. Appeal Br. 20. Worse performance, however, would not negate a person of ordinary skill’s recognition of N-(3- aminopropyl)imidazole and benzoguanamine as suitable substitutes for each other, where both were known to have some level of performance. The performance criteria Appellant emphasizes may be only one factor a person of skill in the art might use in deciding which equivalent to use; the availability of various choices having advantages and disadvantages does not negate obviousness where, as here, the choices are known. Cf. Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006) (“[A] given course of action often has simultaneous advantages and disadvantages, and this does not necessarily obviate motivation to combine.”). Appellant also argues that use of benzoguanamine provides unexpectedly superior performance. Appeal Br. 15-21, 23-27. Evidence of unexpected results must be reasonably commensurate with the scope of the claims. In re Peterson, 315 F.3d 1325, 1330-31 (Fed. Cir. 2003) (explaining that applicant may overcome a prima facie case of obviousness by showing unexpected results but the showing of unexpected results “must be commensurate in scope with the claims which the evidence is offered to support”) (internal quotes and citation omitted). “If an applicant Appeal 2021-002906 Application 15/740,624 6 demonstrates that an embodiment has an unexpected result and provides an adequate basis to support the conclusion that other embodiments falling within the claim will behave in the same manner, this will generally establish that the evidence is commensurate with scope of the claims.” In re Huai-Hung Kao, 639 F.3d 1057, 1068 (Fed. Cir. 2011). Here, Appellant presents evidence adequate to establish that, for at least some products, mixtures making use of benzoguanamine rather than N- (3-aminopropyl)imidazole provides substantially different properties and further provides evidence that the substantially different properties are superior. See June 29, 2020, Declaration of Dr. Irina Giebelhaus; see also, e.g., Appeal Br. 19; Reply Br. 5 (emphasizing that samples within claim 1 may have viscocity 14,000% higher than a comparative sample). Appellant, however, has not provided adequate evidence to establish that other embodiments within the claim would behave in the same manner. Ans. 7. Claim 1, allows, for example, a wide variety for its structure for (I), a wide variety of organic radicals R (having 1 to 150 carbon atoms), a wide variety of Y radicals (having 1 to 1000 carbon atoms), a variety of X groups, and a huge variety of possible Z2 radicals which include, for example, a huge variety of G radicals (“a branched or unbranched, saturated or unsaturated organic radical”). Although Appellant presents evidence as to many examples of Y and R radicals, Appellant does not present evidence or argument that persuasively explains why Appellant’s data supports, by establishing a reasonable trend or otherwise, unexpected results over claim 1’s wide scope. As such, considering all evidence as a whole including Appellant’s proffered evidence of unexpected results, Appellant does not Appeal 2021-002906 Application 15/740,624 7 persuade us of error in the Examiner’s rejection. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 2, 4, 5, 8-14 103 Göbelt, Tilak, Yamamoto 1, 2, 4, 5, 8-14 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