Ex Parte Howland

Patent Trial and Appeal Board

May 8, 2017

13263757 (P.T.A.B. May. 8, 2017)

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.
13/263,757 10/10/2011 Duncan Howland HAM 830062 7492
62068 7590 05/10/2017
HUNTSMAN INTERNATIONAL LLC
LEGAL DEPARTMENT
10003 WOODLOCH FOREST DRIVE
THE WOODLANDS, TX 77380
EXAMINER
BROOKS, KREGGT
ART UNIT PAPER NUMBER
1764
NOTIFICATION DATE DELIVERY MODE
05/10/2017 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):
Martha_Victory @ Huntsman, com
USPatents@Huntsman.com
Diana_E_Ortega@ Huntsman.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DUNCAN HOWLAND
Appeal 2016-004388
Application 13/263,7571
Technology Center 1700
Before JEFFREY T. SMITH, AVELYN M. ROSS, and
DEBRA L. DENNETT, Administrative Patent Judges.
DENNETT, Administrative Patent Judge.
DECISION ON APPEAL2
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from a rejection of claims
1, 4—8, and 17—20. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellant identifies Huntsman International LLC as the real party in
interest. Appeal Br. 3.
2 In our Opinion, we refer to the Specification filed October 10, 2011
(“Spec.”); the Final Action delivered electronically on August 3, 2015
(“Final Act.”); the Appeal Brief filed October 5, 2015 (“Appeal Br.”); and
the Examiner’s Answer delivered electronically on January 12, 2016
(“Ans.”). Appellant did not file a Reply Brief.
Appeal 2016-004388
Application 13/263,757
The claims are directed to a two component seamless modelling paste
and a method of making same. Claim 1, reproduced below, is illustrative of
the claimed subject matter:
1. A method of producing a tool or mould comprising:
(A) application of a two component seamless modelling
paste comprising resin system (a) and hardener system (b) onto
a substrate to form a continuous film of curable material
(B) curing the seamless modelling paste at a temperature
between 20°—60°C to effect full reaction and
(C) machining of the cured seamless modelling paste to
form the tool or mould characterized in that the resin system (a)
consists of an epoxy resin (al) having an average epoxy
functionality > 3 selected from a polyfimctional glycidylamine
and optionally an epoxy resin (a2) having an average
functionality <2, a (meth)acrylate monomer (a3) or mixtures
thereof and
the hardener system (b) consists of an amine compound (bl)
having an average amine functionality > 4 selected from a
polyalkylenepolyamine and optionally: an amine compound
(b2) having a functionality of < 2 selected from an
alkylenemono- or diamine, a polyalkylenemono- or diamine, a
N-hydroxyalkyl derivative of polyalkylene, a
polyoxyalkylenemono- or diamine, aN,N’-dialklylenemono- or
diamine, a cycloaliphatic mono- or diamine having an amino or
aminoalkyl group attached to the ring, an aromatic mono- or
diamine, an amine-terminated adduct of an epoxy resin with an
aliphatic, cycloaliphatic or aralaliphatic mono- or diamine, N-
aminoalkyl-piperazine, a mono- or diaminoamide and a mixture
thereof;
and wherein the resin system (a) and/or hardener system (b)
optionally contains a thixotropic enhancing agent; a diluent; a
filler; fibres; a pigment; a dye; a fire retardant; an antifoam
agent; a wetting agent; a polymeric toughening agent; a
viscosity modifier; or glass hollow microspheres and wherein
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Appeal 2016-004388
Application 13/263,757
the cured seamless modelling paste has a Tg between 58°C to
96°C.
Appeal Br. 18—19 (Claims App’x).
REFERENCES
The Examiner relies on the following prior art in rejecting the claims
on appeal:
Tada et al. (“Tada”) US 4,959,438 Sept. 25, 1990
Cleaver et al. WO 03/051649 A2 June 26, 2003
(“Cleaver II”)3
REJECTIONS
Claims 1, 4—8, and 17—20 stand rejected under 35 U.S.C. § 103 over
Cleaver II in view of Tada.
OPINION
Appellant argues the claims as a group. We select claim 1 as
representative of the group; the remaining claims will stand or fall with
claim 1. 37 C.F.R § 41.37(c)(l)(iv).
The Examiner finds Cleaver II teaches most of the elements of
claim 1, but Cleaver II does not teach the resin system (a) comprises an
epoxy resin (al) having an average epoxy functionality > 3 selected from a
polyfimctional glycidylamine. Final Act. 4. The Examiner finds Tada
teaches epoxy resin compositions used for manufacture of composites,
including triglycidyl m- and p-aminophenols having a functionality of 3. Id.
3 The Examiner and Appellant refer to the reference as “Cleaver IT” For
consistency and clarity, we adopt this terminology.
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Application 13/263,757
The Examiner concludes it would have been obvious to one of
ordinary skill in the art at the time of the invention to modify the method
taught by Cleaver II with the triglycidyl aminophenols taught by Tada to
improve solvent resistance. Id.
Appellant argues that, without the use of hindsight, one skilled in the
art would have no reason or motivation to combine the teachings of Cleaver
II and Tada. Appeal Br. 13. According to Appellant, Cleaver II neither
teaches nor suggests its modelling paste is or would be exposed to solvents
thereby requiring components to improve its solvent resistance, and, instead,
is concerned with producing modelling pastes having low density and non­
slump properties, which upon curing, form seamless models. Id. Appellant
argues Tada’s teachings are directed to prepregs use in the manufacture of
composite materials for aircraft or automotive components which is
completely different from Cleaver’s seamless models. Id.
Appellant’s argument that the end uses of the products in Cleaver II
and Tada are “completely different” is unpersuasive. “One of ordinary skill
in the art need not see the identical problem addressed in a prior art
reference to be motivated to apply its teachings.” Cross Med. Prods., Inc. v.
Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1323 (Fed. Cir. 2005)
(citing In re Oetiker, 977 F.2d 1443, 1448 (Fed. Cir. 1992). There is no
need for Cleaver II to require improved solvent resistance in order for the
Examiner to find improved solvent resistance as motivation for the
combination. The Specification acknowledges that a recognized problem in
the art of seamless modelling pastes was chemical attack of the
compositions’ surfaces. Spec. 17. Chemical resistance is determined by
immersing samples in styrene, a solvent, for 14 days and measuring styrene
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Application 13/263,757
absorption. Id. Thus, one of ordinary skill in the art at the time of the
invention would have been motivated to improve the solvent resistance of
Cleaver II’s compositions. The Examiner’s explanation of the reasons one
of ordinary skill in the art would have had to combine the prior art teachings
is sufficient when an allowance is made for “the inferences and creative
steps that a person of ordinary skill in the art would employ.” KSR Int’l Co.
v. Teleflex Inc., 550 U.S. 398, 418 (2007). The law does not require that the
references be combined for the reasons contemplated by Appellant, as long
as some motivation or suggestion to combine the references is provided by
the prior art taken as a whole. In re Beattie, 974 F.2d 1309, 1312 (Fed. Cir.
1992).
Appellant further argues that Tada discloses the total amount of latent
hardener added to the epoxy resin composition can also impact solvent
resistance. Appeal Br. 13. While accurate, this argument is not persuasive
of reversible error. For purposes of § 103, a reference is prior art for all that
it discloses. Symbol Techs., Inc. v. Opticon, Inc., 935 F.2d 1569, 1578 (Fed.
Cir. 1991). Tada discloses N, N, O-triglycidyl aminophenols are “preferably
used to provide improved solvent resistance.” Tada, col. 3,11. 9—16. Tada’s
additional disclosure that the total amount of latent hardener added to the
composition also affects solvent resistance does not take away from its
unambiguous teaching that triglycidyl aminophenols provide improved
solvent resistance. The Examiner’s motivation to combine survives intact,
and provides “articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988
(Fed. Cir. 2006).
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Application 13/263,757
Finally, Appellant contends that unexpected results overcome any
presumption of obviousness. Appeal Br. 14. Acknowledging that such
results must be shown to be unexpected compared with the closest prior art
if to be evidence of nonobviousness, Appellant declares that Comparative
Examples 1 and 2 are seamless modeling pastes “according to Cleaver II.”
Id. at 14—15; see also Spec. 12 description of Table 2. However, neither
Appellant’s briefing nor the Specification provide more than this bare
assertion, and lack any explanation of how Comparative Examples 1 and 2
relate to Cleaver II. Moreover, Appellant provides no evidence that
Comparative Examples 1 and 2 represent the entirety of Cleaver II’s
disclosure. We will not take up the role of counsel in the first instance and
determine which embodiments of Cleaver II are represented by the
comparative examples. See Gross v. Town of Cicero, III., 619 F.3d 697, 702
(7th Cir. 2010) (“Judges are not like pigs, hunting for truffles buried in the
record.”). Furthermore, superiority alone is not sufficient to show that the
result is unexpected. Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1371 (Fed.
Cir. 2007) (“[A]ny superior property must be unexpected to be considered as
evidence of non-obviousness.” (emphasis in original)). Appellant lacks any
evidence of actual unexpectedness of the change in styrene absorption.
Arguments of counsel cannot take the place of factually supported objective
evidence. See, e.g., In re Huang, 100 F.3d 135, 139-40 (Fed. Cir. 1996); In
re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984). Thus, Appellant falls
well short of showing that the alleged unexpected results are unexpected
compared to the closest prior art, Cleaver II.
In addition, unexpected results must be “commensurate in scope with
the degree of protection sought by the claimed subject matter” on appeal. In
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re Harris, 409 F.3d 1339, 1344 (Fed. Cir. 2005); see also In re Grasselli,
713 F.2d 731, 743 (Fed. Cir. 1983) (“[Objective evidence o[f] non­
obviousness must be commensurate in scope with the claims which the
evidence is offered to support.”). The Specification’s Inventive
Formulations 4 and 5, to which Appellant directs us, each disclose a single
amount of a single epoxy resin and a single aliphatic polyether amine. Spec.
14, Table 3. In contrast, claim 1 encompasses any amount of any epoxy
resin having an average epoxy functionality > 3 selected from a
polyfimctional glycidylamine and any amount of an amine compound having
an average amine functionality > 4 selected from a polyalkylenepolyamine.
Appeal Br. 18 (Claims App’x). The Examiner correctly concludes that
Inventive Formulation 4 and 5 are inadequate evidence to support the
breadth of compositions falling within the scope of claim 1.
For the foregoing reasons, we are unpersuaded of error in the
Examiner’s 35 U.S.C. § 103(a) rejection of claim 1 over the combination of
Cleaver II and Tada. We, therefore, sustain that rejection. For the reasons
set forth regarding claim 1, we also sustain the rejection of claims 4—8 and
17-20.
DECISION
The Examiner’s rejection of claims 1, 4—8, and 17—20 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)(iv).
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AFFIRMED
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