Ex Parte HENDERSON et al

Patent Trial and Appeal BoardFeb 6, 2019

14173193 (P.T.A.B. Feb. 6, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/173, 193 02/05/2014 157 7590 02/08/2019 Covestro LLC 1 Covestro Circle PITTSBURGH, PA 15205 FIRST NAMED INVENTOR DERICK HENDERSON 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. BMS132019US /MDll-28 4510 EXAMINER USELDING, JOHN E ART UNIT PAPER NUMBER 1763 NOTIFICATION DATE DELIVERY MODE 02/08/2019 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): US-IPR@covestro.com laura.finnell@covestro.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte DERICK HENDERSON and JAY JOHNSTON Appeal 2018-003 518 Application 14/1 73, 193 Technology Center 1700 Before KAREN M. HASTINGS, N. WHITNEY WILSON, and LILAN REN, Administrative Patent Judges. REN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants 1 appeal under 35 U.S.C. Â§ 134(a) from a rejection2 of claims 1-21. We have jurisdiction under 35 U.S.C. Â§ 6(b). We affirm. 1 The real party in interest is identified as "Covestro LLC of Pittsburgh, Pennsylvania." Appeal Brief of August 7, 2017 ("Br."), 1. 2 Final Office Action of March 6, 2016 ("Final Act."). In this opinion, we also refer to the Examiner's Answer of November 24, 2017 ("Ans."). No Reply Brief was filed. Appeal 2018-003 518 Application 14/1 73, 193 CLAIMED SUBJECT MATTER The claims are directed to a one-component, moisture-curing composition. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A one-component composition comprising: 1) a ketimine which is the reaction product of: a) a dimer diamine; and b) a ketone; and 2) a blocked isocyanate. Claims Appendix, Br. 1 7. REFERENCES 3 The prior art references at issue on appeal are: Higginbottom Barron Nicholas us 4,501,864 us 4,507,443 us 5,786,437 Feb.26, 1985 Mar. 26, 1985 July 28, 1998 Dual-purpose derivatives, European Coatings Journal, May 2009 ("European Journal") New bio-based polymers: Ambitions and progress at CRODA, Biobased Performance Materials Symposium, Has Ridderikhoff, June 15, 2011 ("Ridderikhoff') REJECTIONS Claims 1, 4, and 6-8 are rejected under 35 U.S.C. Â§ 103 as being unpatentable over Nicholas in view of European Journal. Final Act. 2. 3 The Examiner cites additional references for the rejections but they are not at issue on appeal. 2 Appeal 2018-003 518 Application 14/1 73, 193 Claims 1 and 4--8 are rejected under 35 U.S.C. Â§ 103 as being unpatentable over Barron in view of European Journal. Final Act. 3. Claims 2 and 9--13 are rejected under 35 U.S.C. Â§ 103 as being unpatentable over Barron, European Journal, and Higginbottom. Final Act. 4, 5. Claims 1-8 are rejected under 35 U.S.C. Â§ 103 as being unpatentable over Barron, European Journal, Ridderikhoff, and additional references. Final Act. 6. Claims 9--13 are rejected under 35 U.S.C. Â§ 103 as being unpatentable over Barron, European Journal, Ridderikhoff, and additional references. Final Act. 8. Claims 14--21 are rejected under 35 U.S.C. Â§ 103 as being unpatentable over Barron, European Journal, Ridderikhoff, and additional references. Final Act. 10. OPINION Rejection of Claim 1 (Nicholas and European Journal) 4 Appellants argue that the Examiner reversibly erred in rejecting claim 1 over Nicholas and European Journal because the European Journal teaches the use of a dimer diamine with a polyamide but does not teach the recited blocked isocyanate. Br. 5. Appellants argue that neither reference teaches or suggests that the recited composition "would behave in a similar manner" as would the prior art composition. Id. 4 Appellants do not present separate arguments claims 4 and 6-8 for the obviousness rejection over Nicholas and European Journal and they stand or fall with claim 1 for this rejection. Br. 4--5; see also 37 C.F.R. Â§ 4I.37(c)(1)(iv)(2013). 3 Appeal 2018-003 518 Application 14/1 73, 193 From the outset, the claim recites a composition without reciting any characteristics. Appellants' argument, directed to whether the prior art composition "would behave in a similar manner" (id.), is not persuasive at least because it argues a feature not recited in the claim. In re Self, 671 F .2d 1344, 1348 (CCPA 1982) (holding that "appellant's arguments fail from the outset because ... they are not based on limitations appearing in the claims"). As the Examiner points out, the argument does not address - and does not dispute - the Examiner's finding that a skilled artisan would substitute the dimer diamine taught in the European Journal with the diamine in Nicholas to arrive at the recited composition. Ans. 3--4; see also Final Act. 2-3. We further note that,"[ w ]here ... the claimed and prior art products are identical or substantially identical ... the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product. ... [The] fairness [ of the burden-shifting] is evidenced by the PTO' s inability to manufacture products or to obtain and compare prior art products." In re Best, 562 F.2d 1252, 1255 (CCPA 1977). In this case, the Examiner shows that a combination of prior art elements renders the claim obvious, and Appellants have not shown otherwise. See KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,417 (2007). Based on the foregoing, we are unpersuaded that the Examiner reversibly erred here. 4 Appeal 2018-003 518 Application 14/1 73, 193 Rejection of Claim 1 (Barron and European Journal) 5 Appellants argue that the Examiner reversibly erred in rejecting claim 1 over Barron and European Journal again because neither reference teaches or suggests that the recited composition "would behave in a similar manner" as would the prior art composition. Br. 6. As analyzed in detail with regard to the rejection of claim 1 over Nicholas and European Journal supra, this argument is unpersuasive of reversible error in the Examiner's findings. We are also not persuaded by Appellants' argument that a skilled artisan would not consult European Journal because no deficiencies are taught or suggested by Barron. Id. at 7. Appellants do not address - and certainly do not dispute - the Examiner's rationale that a skilled artisan would have combined the prior art teachings for various improvements in properties. See Ans. 5---6; see also Final Act 3--4 ( citing European Journal at 2-9 for "improved physical and chemical resistance, moisture resistance, adhesion, physical and thermal properties" as a rationale to combine the references). We are unpersuaded that the Examiner reversibly erred in rejecting claim 1 over Barron and European Journal. Rejection of Claims 2 and 9-13 (Barron, European Journal, and Higginbottom) For the rejection of claims 2 and 9-13, Appellants' sole argument is that "Higginbottom fails to add the missing teaching or suggestion to cure the weaknesses of those combined references to lead one of ordinary skill in the art to the instantly claimed invention as Higginbottom .... " Br. 7, 9. 5 Appellants do not present separate arguments claims 4--8 for the obviousness rejection over Barron and European Journal and they stand or fall with claim 1 for this rejection. Br. 5-7; see also 37 C.F.R. Â§ 4I.37(c)(1)(iv)(2013). 5 Appeal 2018-003 518 Application 14/1 73, 193 We accordingly sustain the Examiner's rejection of claims 2 and 9--13 based on the analysis for the rejection of claim 1 over Barron and European Journal supra. Rejection of Claim 1 (Barron, European Journal, Ridderikhoff, and additional references) 6 Appellants argue that the Examiner reversibly erred in rejecting claim 1 over the cited references because "Ridderikhoff is a sales offering made to look like a technical publication, ... none of which suggests blocked isocyanates as instantly recited." Br. 11. Appellants do not explain why Ridderikhoff fails to qualify as prior art, nor do Appellants cite any case law or regulation explaining why a presentation at the "Biobased Performance Materials Symposium" may not be considered as prior art. Id. We are unpersuaded that the Examiner reversibly erred here. Rejection of Claims 9--13 (Barron, European Journal, Ridderikhoff, and additional references) Appellants repeat the argument that the Examiner reversibly erred in rejecting claims 9--13 over the cited references because "Ridderikhoff is a sales offering made to look like a technical publication, ... none of which suggests blocked isocyanates as instantly recited." Br. 13. For the reasons provided with regard to the rejection of claim 1 over Barron, European Journal, Ridderikhoff, and additional references supra, we are unpersuaded that the Examiner reversibly erred here. 6 Appellants do not present separate arguments claims 2-8 for the obviousness rejection over Barron, European Journal, Ridderikhoff, and additional references and they stand or fall with claim 1 for this rejection. Br. 9--11; see also 37 C.F.R. Â§ 4I.37(c)(1)(iv)(2013). 6 Appeal 2018-003 518 Application 14/1 73, 193 Rejection of Claims 14-21 (Barron, European Journal, Ridderikhoff, and additional references) Appellants repeat the argument that the Examiner reversibly erred in rejecting claims 14--21 over the cited references because "Ridderikhoff is a sales offering made to look like a technical publication, ... none of which suggests blocked isocyanates as instantly recited." Br. 15. For the reasons provided with regard to the rejection of claim 1 over Barron, European Journal, Ridderikhoff, and additional references supra, we are unpersuaded that the Examiner reversibly erred here. 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. Â§ 1.136(a). See 37 C.F.R. Â§ 1.136(a)(l )(iv). AFFIRMED 7