Ex Parte Burdeniuc et alDownload PDFPatent Trial and Appeal BoardJan 5, 201813178558 (P.T.A.B. Jan. 5, 2018) Copy Citation 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. 13/178,558 07/08/2011 Juan Jesus Burdeniuc 2010P14004 US02 8650 109357 7590 01/09/2018 Evonik Corporation Intellectual Property Management 299 Jefferson Road Parsippany, NJ 07054-0677 EXAMINER COONEY, JOHN M ART UNIT PAPER NUMBER 1765 NOTIFICATION DATE DELIVERY MODE 01/09/2018 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): ipm-na@ evonik. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JUAN JESUS BURDENIUC, JAMES DOUGLAS TOBIAS, RENEE JO KELLER, and YOU-MOON JEON Appeal 2017-002733 Application 13/178,558 Technology Center 1700 Before ROMULO H. DELMENDO, JEFFREY B. ROBERTSON, and MICHAEL G. McMANUS, Administrative Patent Judges. DELMENDO, Administrative Patent Judge. DECISION ON APPEAL The Applicants (hereinafter “Appellants”)1 appeal under 35 U.S.C. § 134(a) from the Primary Examiner’s final decision to reject claims 1—8, 12, and 15—29.2 We have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part. 1 The Appellants and “AIR PRODUCTS AND CHEMICALS, INC.” are listed as the real parties in interest (Appeal Brief filed April 18, 2016, hereinafter “Appeal Br.,” 1—2). 2 Appeal Br. 4—13; Reply Brief filed December 9, 2016, hereinafter “Reply Br.,” 2—5; Final Office Action entered September 29, 2015, hereinafter “Final Act.,” 2—6; Examiner’s Answer entered October 19, 2016, hereinafter “Ans.,” 2-8. Appeal 2017-002733 Application 13/178,558 I. BACKGROUND The subject matter on appeal relates to guanidine derivative- containing additive compositions used for producing flexible polyurethane foams (Specification filed July 8, 2011, hereinafter “Spec.,” 1 8). Representative claim 1 is reproduced from the Claims Appendix to the Appeal Brief (Appeal Br. 14), with key limitations emphasized, as follows: 1. A foam precursor comprising a combination of: at least one polyol, at least one blowing agent, at least one gelling catalyst, at least one blowing catalyst and a solution comprising cyanoguanidine wherein cyanoguanidine is present in the solution in an amount less than 2.0pphp of the precursor. II. REJECTION ON APPEAL Claims 1—8, 12, and 15—29 stand rejected under 35 U.S.C. § 103(a) (pre-AIA) as unpatentable over Uelzmann et al.3 (hereinafter “Uelzmann”) in view of Andrews et al.4 (hereinafter “Andrews”) (Ans. 2—8; Final Act. 2-6). III. DISCUSSION In our opinion below, we address claims on an individual basis only to the extent that arguments in support of separate patentability have been included in the Appeal Brief pursuant to 37 C.F.R. § 41.37(c)(l)(iv). Otherwise, all claims stand or fall together with claim 1, which we select as representative pursuant to this rule. Furthermore, absent a showing of good cause or a new point raised in the Answer, we decline to consider any new 3 US 3,734,868, issued May 22, 1973. 4 US 2008/0293841 Al, published November 27, 2008. 2 Appeal 2017-002733 Application 13/178,558 or modified argument in the Reply Brief not previously raised in the Appeal Brief. See 37 C.F.R. § 41.41(b)(2). A. Claim 1 The Examiner finds that Uelzmann describes a polyurethane precursor formulation including every component limitation recited in claim 1 (Ans. 2—3; Final Act. 2). Regarding the amount for cyanoguanidine in the solution relative to the amount of precursor, the Examiner finds that Uelzmann’s disclosure would have suggested cyanoguanidine amounts that fall within the range recited in claim 1 (Ans. 4; Final Act. 4). The Appellants’ principal contention is that neither reference describes “a solution comprising cyanoguanidine,” as recited in claim 1, and that the Examiner’s refusal to give patentable weight to these words constitutes reversible error (Appeal Br. 5). According to the Appellants, Uelzmann discloses using guanidine compounds that are insoluble in a polyol and that “[t]o conclude, without reasoning or support that the insoluble components of Uelzmann would result in a solvated component in a polyol containing precursor composition is erroneous” (id.) (emphasis added). The Appellants also argue that the Examiner erred in concluding that the cyanoguanidine amounts specified in claim 1 would have been obvious to a person having ordinary skill in the art (id. at 7). According to the Appellants, “the Examiner cannot simply optimize based on the properties and conditions of Uelzmann and expect the same compositional range as claimed when the conditions and properties are different” (id.). The Appellants’ arguments fail to identify any reversible error in the Examiner’s rejection as to claim 1. In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011). 3 Appeal 2017-002733 Application 13/178,558 Uelzmann describes a composition for improving the load carrying capacity of flexible polyurethane foams (Uelzmann, col. 1,11. 13—18). Specifically, Uelzmann teaches using, in conjunction with tertiary amine catalysts, certain primary and secondary amine compounds that are insoluble at temperatures up to about 100° F in the polyol component of polyetherpolyol- or polyesterpolyol-polyisocyanate formulations containing water, metal catalyst, and surfactant to produce low density, flexible polyurethanes having, e.g., improved load bearing characteristics at a given density {id., col. 2,11. 23—34). Uelzmann teaches that cyanoguanidines are particularly preferred as the primary amine {id., col. 3,11. 1—2). Although Uelzmann does not describe adding the cyanoguanidines in solution form, we discern no reversible error in the Examiner’s determination that “upon their inclusion in the precursors of [claim 1], the identity of the solution as an independent component is no longer retained and can be met and/or provided for by any component(s) in the precursor mixture” (Ans. 5). Contrary to what appears to be the Appellants’ belief (Appeal Br. 5), claim 1 does not require the cyanoguanidine to be solvated in a polyol. Rather, we interpret claim 1 to require only that the claimed precursor—in finally mixed form—includes components that could make up “a solution comprising cyanoguanidine” as a starting material to be combined with the remaining components. Here, the Appellants do not refute the Examiner’s reasonable finding that Uelzmann’s cyanoguanidine “would be expected to dissolve within materials such as water and bis-N, N- dimethylaminopropyl amine to some degree” (Ans. 6). Cf. In re Thorpe, 111 F.2d 695, 697 (Fed. Cir. 1985) (“If the product in a product-by-process claim is the same as or obvious from a product of the prior art, the claim is 4 Appeal 2017-002733 Application 13/178,558 unpatentable even though the prior product was made by a different process.”). Significantly, the Appellants do not direct us to any objective evidence establishing that formulating the precursor by using a cyanoguanidine in solution form imparts a material, patentable difference over Uelzmann in which cyanoguanidine is added, but not in solution form, but otherwise the components making up the precursor are indistinguishable from those recited in claim 1. Therefore, we find no basis to overturn the Examiner’s rejection on the basis that Uelzmann does not describe the “solution comprising cyanoguanidine” limitation. We also find no persuasive merit in the Appellants’ argument based on the amounts recited for the cyanoguanidine in the specified solution. As the Examiner finds (Ans. 4), Uelzmann discloses amounts sufficient to satisfy the disputed claim limitations. Specifically, Uelzmann teaches “cyanoguanidine (Example 1-D), provided outstanding results at only 2 parts by weight or about 1A parts by weight per 100 parts by weight of polyol and polyisocyanate” (Uelzmann, col. 8,11. 47—51; emphasis added)—a range that would necessarily fall within or overlap with the Appellants’ specified range, which is based on 100 parts by weight of the precursor. In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003) (“Aprima facie case of obviousness typically exists when the ranges of a claimed composition overlap the ranges disclosed in the prior art.”). For these reasons, we uphold the Examiners’ rejection as to claim 1. 5 Appeal 2017-002733 Application 13/178,558 B. Claims 17,18, and 27 For claims 17, 18, and 27, the Appellants argue that “the Examiner . . . erred in dismissing the limitation ‘wherein [when] the foam precursor is contacted with an isocyanate, a dimensionally stable flexible foam is produced without mechanical crushing’” (Appeal Br. 6—7). We disagree. Consistent with the Examiner’s position (Ans. 3, 7), Uelzmann’s composition would reasonably appear to possess the claimed capability or characteristic when contacted with an isocyanate in view of its structural similarity to the claimed precursor. Indeed, as discussed above, Uelzmann teaches that the described formulations produce flexible polyurethanes having improved load bearing characteristics at a given density. Therefore, the resulting product would reasonably be expected to be dimensionally stable without mechanical crushing. The Appellants do not direct us to objective evidence in support of a contrary finding. Accordingly, we sustain the rejection as to claims 17, 18, and 27. C. Claim 19 The Appellants argue that Uelzmann does not disclose bis-N,N- dimethylaminopropyl amine as specified in claim 19 (Appeal Br. 8). As the Examiner finds (Ans. 7), that compound is disclosed in Andrews (116). The mere fact that Uelzmann discloses this compound as one of many suitable compounds does not necessarily compel a conclusion of nonobviousness. Merck & Co. v. Biocraft Labs. Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (“That the [reference] discloses a multitude of effective combinations does not render any particular formulation less obvious.”). Therefore, we uphold the rejection of claim 19. 6 Appeal 2017-002733 Application 13/178,558 D. Claims 20 and 29 Claim 20 recites that the “solution comprises cyanoguanidine and dimethyl sulfoxide [DMSO]” (Appeal Br. 15). Claim 29 recites “a 30% solution of dimethyl sulfoxide” (id. at 17). The Appellants argue that “[njeither Uelzmann nor the Office Action provide any basis for concluding that dimethyl sulfoxide is present in Uelzmann’s [cyanojguanidine compound (id. at 9). The Appellants also argue that the Examiner failed to provide any basis for finding that DMSO would be present in amounts sufficient to form a guanidine solution (id. ). The Examiner responds that Uelzmann provides for the presence of dimethyl sulfoxide (DMSO) in the preparation of guanidines and that DMSO would be present in residual amounts in Uelzmann’s composition (Ans. 4—6). We agree with the Appellants. Uelzmann teaches that “benzoguanamine can be prepared from benzonitrile and dicyandiamide in the presence of sodium and liquid ammonia or potassium hydroxide and dimethyl sulfoxide” (Uelzmann, col. 3,11. 39-42) (emphasis added). Even assuming that DMSO is present in residual amounts in the cyanoguanidine, such amounts have not been shown to be sufficient to form a solution for the cyanoguanidine amounts disclosed in Uelzmann (id., col. 8,11. 47—56). Therefore, we do not sustain the rejection of claims 20 and 29. IV. SUMMARY The Examiner’s final decision to reject claims 1—8, 12, 15—19, and 21—28 is affirmed. The Examiner’s final decision to reject claims 20 and 29 is reversed. 7 Appeal 2017-002733 Application 13/178,558 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-IN-PART 8 Copy with citationCopy as parenthetical citation