Ex Parte Huang et al

Patent Trial and Appeal Board

Dec 31, 2012

11292026 (P.T.A.B. Dec. 31, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/292,026 12/01/2005 Misty Huang US 188714 (1302-75) 1868
52774 7590 12/31/2012
MOMENTIVE PERFORMANCE MATERIALS INC.
c/o Dilworth & Barrese, LLP
1000 Woodbury Road
Suite 405
Woodbury, NY 11797
EXAMINER
LEONARD, MICHAEL L
ART UNIT PAPER NUMBER
1763
MAIL DATE DELIVERY MODE
12/31/2012 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________
Ex parte MISTY HUANG and DAVID A. WILLIAMS
____________

Appeal 2011-002660
Application 11/292,026
Technology Center 1700
____________

Before CHUNG K. PAK, CHARLES F. WARREN, and
CATHERINE Q. TIMM, Administrative Patent Judges.

PAK, Administrative Patent Judge

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134 from the Examiner's final
rejection of claims 1 through 4, 7 through 11, and 13 through 29, all of the
claims pending in the above-identified application.1 We have jurisdiction
over the appealed subject matter pursuant to 35 U.S.C. § 6.
STATEMENT OF THE CASE

1 See Appeal Brief (“App. Br.”) filed August 4, 2010, 3; Examiner’s Answer
(“Ans.”) filed September 29, 2010, 2; and Reply Brief (“Reply Br.”) filed
November 19, 2010, 2.
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Application 11/292,026

2
The subject matter on appeal is directed to “a two-part room
temperature curable, storage-stable composition which on combination of
the two parts undergoes rapid curing to provide a [substantially uniform]
polyurethane-polysiloxane resin mixture.” (See Spec. 1, paras. 0001 and
0003.) “The two parts constituting the curable composition, respectively,
the ‘first part’ and the ‘second part’, while separated from each other exhibit
storage stability of an indefinite duration but once combined, undergo rapid
cure to provide the resin mixture herein” (See Spec. 2, para. 0006.)
According to paragraph 0004 of the Specification:
The expression “substantially uniform polyurethane-
polysiloxane resin mixture” as used herein refers to a resinous
composition containing moisture-cured, i.e., hydrolyzed and
subsequently crosslinked, silylated polyurethane (SPU) resin in
intimate admixture with crosslinked silanol-terminated
diorganopolysiloxane (SDPS) resin, the composition in bulk
exhibiting substantially uniform mechanical properties
throughout.

Details of the appealed subject matter are recited in representative claims 1,
7, 22, and 292, which are reproduced below:

1. A two-part curable composition which is stable during storage as
two parts and on their combination cures to provide a uniform polyurethane-
polysiloxane resin mixture, the composition comprising:

2 Appellants have separately argued claims 1, 7, and 29 and separately
argued claims 22 through 24 as a group. (See App. Br. 9-19.) Therefore, for
purposes of this appeal, we select claims 1, 7, 22, and 29 and decide the
propriety of the Examiner’s § 103(a) rejection based on these claims alone
consistent with 37 C.F.R. § 41.37(c)(1)(vii).

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a) a moisture-free first part comprising moisture-curable silylated
polyurethane resin and crosslinker for the crosslinking of silanol-terminated
diorganopolysiloxane;
b) a second part comprising silanol-terminated diorganopolysiloxane;
c) a condensation catalyst in the first and/or second part; and
optionally
d) at least one additional component selected from the group
consisting of alkyl- terminated diorganopolysiloxane, filler, UV stabilizer,
antioxidant, adhesion promoter, cure accelerator, thixotropic agent, moisture
scavenger, pigment, dye, surfactant, solvent and biocide, the additional
component being present in the first part and/or second part, whichever
part(s) the component is compatible therewith, wherein the moisture-curable
silylated resin is obtained from the reaction of an isocyanate-terminated
polyurethane prepolymer and a silane of the general formula:
X-R1-Si(R2)x(OR3)3-x,
or from the reaction of a hydroxyl-terminated polyurethane resin
prepolymer and a silane of the general formula:
OCN-R8-Si(R9)y(OR 10)3-y,
where X is-SH or-NHR4; R1 is a divalent hydrocarbon group of up to 12
carbon atoms, optionally containing one or more heteroatoms; R2 is a
moonovalent hydrocarbon group of up to 8 carbon
atoms; each R3 is the same or different alkyl group of up to 6 carbon atoms;
R4 is hydrogen, a monovalent hydrocarbon group of up to 8 carbon atoms,
or-R5-si(R6)y(OR7)3-y; R5 is a divalent hydrocarbon group of up to 12 carbon
atoms, optionally containing one or more heteroatoms; R6 is a moonovalent
hydrocarbon group of up to 8 carbon atoms; R7 is an alkyl group up to 6
carbon atoms; R5 is an alkylene group of up to 12 carbon atoms, optionally
containing one or more heteroatoms; R9 is an alkyl or aryl group of up to 8
carbon atoms; each R10 is the same or different alkyl group of up to 6
carbon atoms; x is 0 or 1; and y is 0 or 1.
7. The two-part curable composition of Claim lwhere in x is 0.
22. The two-part composition of Claim 1 wherein filler, where
present, is in the first and/or second part; U.V. stabilizer, where present, is in
the first and/or second part; antioxidant, where present, is in the first and/or
second part; adhesion promoter, where present, is in the first part; cure
accelerator, where present, is in the first part; thixotropic agent, where
present, is in the first and/or second part; moisture scavenger, where present,
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is in the first part; pigment, where present, is in the first and/or second part;
dye, where present, is in the first and/or second part; surfactant, where
present, is in the first and/or second part; solvent, where present in the first
and/or second part; and, biocide, where present, is in the second part.
29. A two-part curable composition which is stable during storage as
two parts and on their combination cures to provide a uniform polyurethane-
polysiloxane resin mixture, the composition comprising:
a) a moisture-free first part comprising moisture-curable silylated
polyurethane resin and crosslinker for the crosslinking of silanol-terminated
diorganopolysiloxane;
b) a second part comprising silanol-terminated diorganopolysiloxane;
c) a condensation catalyst in the first and/or second part; and
optionally
d) at least one additional component selected from the group
consisting of alkyl- terminated diorganopolysiloxane, filler, UV stabilizer,
antioxidant, adhesion promoter, cure accelerator, thixotropie agent, moisture
scavenger, pigment, dye, surfaetant, solvent and biocide, the additional
component being present in the first part and/or second part, whichever
part(s) the component is compatible therewith, wherein the moisture-curable
silylated resin is obtained from the reaction of an isocyanate-terminated
polyurethane prepolymer and a silane of the general formula:
X-R1-Si(R2)x(OR3)3-x,
where X is -NHR4; R1 is a divalent hydrocarbon group of up to 12 carbon
atoms, optionally containing one or more heteroatoms; R2 is a moonovalent
hydrocarbon group of up to 8 carbon atoms; each R3 is the same or different
alkyl group of up to 6 carbon atoms; R4 is hydrogen, a monovalent
hydrocarbon group of up to 8 carbon atoms, or-R5-Si(R6)y(OR7)3-y; R5 is a
divalent hydrocarbon group of up to 12 carbon atoms, optionally containing
one or more heteroatoms; R6 is a moonovalent hydrocarbon group of up to 8
carbon atoms; R7 is an alkyl group up to 6 carbon atoms; x is 0 or 1.
[(Emphasis added.)]

Appellants seek review of the Examiner’s rejection of claims 1
through 4, 7 through 11, and 13 through 29 under 35 U.S.C. § 103(a) as
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unpatentable over the combined disclosures of Thom3, Williams4, Rizk5, and
Brode.6 (See App. Br. 9 and Reply Br. 3.)

DISCUSSION
Thom teaches that curable one component compositions capable of
being stored in the absence of water and capable of being hardened or cured
to form uniform elastomers in the presence of moisture at room temperature,
which are used for, among other things, sealants and other elastomer articles.
(See Ans. 4-5 and Thom, p. 1, ll.6- 32, p. 2, ll. 4-12, and p. 5, ll. 14-17.) As
correctly found by the Examiner at page 4 of the Answer, Thom teaches that
such compositions contain, inter alia, diorganopolysiloxanes with terminal
SiOH groups (corresponding to the silanol-terminated diorganopolysiloxane
recited in claims 1 and 29), one or more polyurethane prepolymers with
terminal groups, such as at least one siloxane group, attached through urea
bridges (siloxane-modified (silylated) polyurethane prepolymers), a silicon
compound with at least three hydrolyzable groups attached to the Si atom (a
crosslinking agent) and a condensation catalyst. (See also Thom, p. 1, ll. 6-
13, p. 2, ll. 4-53, p. 4, ll. 22-53 and p. 5, ll. 11-13.)

3 GB 1,532,971 published in the name of Thom et al. (“Thom”) on
November 22, 1978.

4 US 2005/0192387 A1 published in the name of Williams et al.
(“Williams”) on September 1, 2005.

5 US 4,345,053 issued to Rizk et al (“Rizk”) on August 2, 1982.

6 US 3,632,557 issued to Brode et al. (“Brode”) on January 4, 1972.

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There is no dispute that the room temperature moisture-curable
silylated polyurethane resin taught by Thom is formed from reacting an
isocyanate-terminated polyurethane with a polysiloxane containing alpha-
aminoalkyl end groups (alpha-aminoalkyldimethyl monoethoxy silane)
and/or a hydroxyl alkyl polysiloxane. (Compare Ans. 4 with Reply Br. 5;
see also Thom, p. 2, ll. 20-36 and 50-54, p. 3, ll. 1-17 and p. 4, ll. 10-25.)
Although Thom does not mention that its silylated polyurethane is formed
from the reaction of an isocyanate-terminated polyurethane resin prepolymer
with a silane of the general formula: X-R1-Si(R2)x(OR3)3-x as required by
claims 1 and 29, Brode teaches that a room temperature moisture-curable
silicon terminated organic polymers comprising an isocyanate terminated
polyurethane prepolymer containing at least two urethane linkages per
polymer molecule, wherein the isocyanate terminal groups have been
reacted with a silicon group of the formula (RO)3-Si-R’-Z-H (Z is NH,
NCH3 or NC2H5, R’ is a divalent hydrocarbon radical, and R is a lower alkyl
radical from 1 to 6)) corresponding to the silane of the general formula: X-
R1-Si(R2)x(OR3)3-x (where x is 0) recited in claims 1, 7, and 29. (See Ans. 4
and Brode, col. 1, ll. 31-38, col. 4, l. 49 to col. 5, l.33 and col. 7, ll. 13-19
and Rizk, col. 2, ll. 11-21 and 49-54 describing the teachings of Brode.)
Brode also teaches that its room temperature moisture-curable silylated
polyurethane, like the silylated polyurethane taught by Thom, is cured into
an elastomer which can be used as a sealant. (See Brode, col. 6, ll.67-75.)
Thus, we concur with the Examiner that one of ordinary skill in the art
would have been led to employ the claimed room temperature, moisture-
curable silylated polyurethane taught by Brode as the room temperature
moisture-curable silylated polyurethane of the compositions taught by
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Thom, with a reasonable expectation of successfully employing the resulting
cured elastomers as sealants,7 See KSR Int’l Co. v. Teleflex Inc., 550 U.S.
398, 416 (2007) (“[A] combination of familiar elements according to known
methods is likely to be obvious when it does no more than yield predictable
results.”)
Appellants contend that one of ordinary skill in the art would not have
been led to partition the one component moisture-curable composition
suggested by Thom, Brode, and Rizk into two part compositions comprising
the moisture-curable silyated poly polyurethane resin and the crosslinking
agent as the first part and the silanol-terminated diorganopolysiloxane as the
second part. (See App. Br. 9-16.)
Thus, with respect to claims 1 through 4, 7 through 11, 13 through 21,
and 25 through 29, the dispositive question is: Has the Examiner shown that

7 Rizk is relied upon to teach the silylated polyurethane alternatively recited
in claim 1, i.e., the silylated polyurethane formed from the reaction of a
hydroxyl-terminated polyurethane resin prepolymer and a silane of the
general formula: OCN-R8-Si(R9)y(OR10)3-y. (See Ans. 5 and Rizk, col 2, ll.
49-59 and col. 4, ll. 28-68.) Rizk teaches that its moisture-curable silylated
polyurethane in claim 1 is alternative to the silylated polyurethane taught by
Brode discussed and is useful as a moisture curable sealant composition.
(See Rizk, cols. 1 and 2.) Although we need not reach any decision on
obviousness of employing the silylated polyurethane alternatively recited in
claim 1, to avoid any piece meal appeal, we decide that the Examiner has not
erred in determining that one of ordinary skill in the art would have been led
to employ the claimed room temperature, moisture curable silylated
polyurethane taught by Rizk as the room temperature moisture curable
silylated polyurethane of the compositions taught by Thom, with a
reasonable expectation of successfully employing the resulting cured
elastomers as sealants,

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one of ordinary skill in the art would have been led to provide the one
component moisture-curable composition suggested by Thom, Brode, and
Rizk into two parts with the first part comprising a moisture-curable
silyated poly polyurethane resin, a crosslinking agent and a condensation
catalyst and the second part comprising a silanol-terminated
diorganopolysiloxane, as required by claims 1, 7, and 29, with a reasonable
expectation of successfully obtaining desired storage stability? On this
record, we answer this question in the affirmative.
As is apparent from the record, the two part compositions recited in
claims 1, 7, and 29 must eventually be combined to form the one component
composition suggested by Thom, Brode, and Rizk prior to curing them to
form a cured uniform elastomer suitable as a sealant. (See, e.g., Ans. 10-11.)
Although Thom teaches that the ingredients in its composition need not be
partitioned in the manner claimed for the storage purposes, there is no doubt
that the ingredients suggested by Thom, Brode, and Rizk can be partitioned
in any manner, including that claimed, for the storage purposes so long as
they are combined in the manner taught by Thom just prior to curing since
they are stable even in a combined form in the absence of moisture. This is
especially compelling in this case since we note that both the first and
second parts recited in claims 1, 7, and 29, by virtue of using the transitional
term “comprising” and not excluding any other ingredients not recited in the
claims, can contain the same ingredients as the one component composition
suggested by Thom, Brode and Rizk. That is, claims 1, 7, and 29, as recited,
embrace two batches of the same one component composition suggested by
Thom, Brode, and Rizk. Thus, we concur with the Examiner that one of
ordinary skill in the art would have been led to store the sealant composition
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suggested by Thom, Brode, and Rizk in at least two batches based on the
amount needed for sealant purposes or in any combination of the ingredients
of the composition in two-parts, including those claimed, so long as they are
combined to form a cured uniform elastomer in the presence of moisture at
room temperature.
Even if we were to interpret the term “comprising” as excluding the
other ingredients not recited in claims 1, 7, and 29, Thom teaches that its
moisture-curable compositions can be stored for prolong periods without
undergoing any unfavorable changes or any appreciable changes in their
physical properties so long as they are not exposed to moisture as correctly
found by the Examiner at pages 5, 6, 10, and 11 of the Answer. (See also
Thom, p.2, ll. 10-12 and p. 4, ll. 53-60.) In addition, Appellants have not
specifically challenged the Examiner’s official notice that “it is commonly
known within the art that the introduction of unwanted moisture can occur
by mishandling of the product during production or transportation, as well as
faulty packaging.” (Compare Ans. 10-11 with App. Br. 9-19 and Reply
Br.4-7.) Thus, we concur with the Examiner that one of ordinary skill in the
art interested in avoiding any problem associated with the exposure to
unwanted moisture would have been led to partition the ingredients of the
room temperature moisture-curable composition suggested by Thom, Brode,
and Rizk in the optimum manner, such as that claimed, for the storage
purposes to prevent premature curing. Indeed, Williams teaches that the
optimum partitioning of the ingredients of a room temperature moisture-
curable composition used as a sealant for the storage purposes would be
known to the skilled artisan. (See Williams, para. 0022.)
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Finally, as indicated by the Examiner at page 6 of the Answer,
Williams further teaches not storing a crosslinking agent with silanol-
terminated diorganopolysiloxane, such as that taught by Thom, in a room
temperature moisture-curable composition useful as a sealant. (See also
Williams, paras. 0002 and 0014-0022.) This teaching of Williams would
have prompted one of ordinary skill in the art to separate the silanol-
terminated dioranopolysiloxane from the remaining room temperature
moisture-curable composition containing the crosslinking agent, the
condensation catalyst, and the silylated polyurethane suggested by Thom,
Brode, and Rizk.
Thus, based on the reasons set forth above and in the Answer, we find
no reversible error in the Examiner’s determination that one of ordinary skill
in the art would have been led to provide the one component moisture-
curable composition suggested by Thom, Brode, and Rizk into two parts
with the first part comprising a moisture-curable silyated polyurethane
resin, a crosslinking agent and a condensation catalyst and the second part
comprising a silanol-terminated diorganopolysiloxane, as required by
claims 1, 7, and 29, with a reasonable expectation of successfully obtaining
desired storage stability.
In reaching this determination, we have considered Appellants’
arguments in the Reply Brief that one of ordinary skill in the art would not
have been led to employ the silylated polyurethane resin recited in claims 1
and 29 in the composition taught by Thom and that Williams, Brode and
Rizk are from nonanalogous art. (See Reply Br. 4-7.) However, we need
not consider these arguments since they were not timely presented in the
Appeal Brief. See Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010)
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(Informative) (“[T]he reply brief [is not] an opportunity to make arguments
that could have been made in the principal brief on appeal to rebut the
Examiner’s rejections, but were not.”). Even if we were to consider such
untimely arguments, we are not persuaded since, as indicated supra, one of
ordinary skill in the art would have been led to employ the claimed
moisture-curable silylated polyurethane resin taught by either Brode or Rizk
as the silylated polyurethane resin of the composition taught by Thom, with
a reasonable expectation of successfully forming a room temperature
moisture-curable composition useful as a sealant. Moreover, Williams,
Brode and Rizk are all analogous art since they are all directed to the same
field of Appellants’ endeavor, namely room temperature moisture-curable
sealant forming compositions like those compositions described by
Appellants in the Specification.
Regarding claims 22 through 24, we note that contrary to Appellants’
arguments at page 18 of the Appeal Brief, they do not require solvent to be
present in the first and/or second part. The phrase “solvent, where present[,]
in the first and/or second part” in claims 22 through 24 does not make the
presence of solvent in the first part and/or second part mandatory. Even if
we were to interpret the claims as requiring the presence of solvent in the
first and /or second part, we note the Examiner’s reasoning set forth at page
8 of the Answer as shown below:
As discussed in paragraph 5, herein incorporated by
reference, Thom et al teach various auxiliary compounds.
Moreover, it is noted that Thom et al teach solvent is preferably
excluded from the final[ly] mixed composition, however, page
3[,] lines 19-21[of Thom et al.] teach[es] component (B) is
made in the presence of solvent. Therefore, since the [sic.]
claims 22-24are only limited to the two component system and
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not the final mixture of components (A), (B), and (C), the prior
art[ disclosure of component (B) in solvent at one point]
satisfies the claimed “solvent” limitation….

On this record, Appellants have not sufficiently explained why the
intermediate product, i.e., component (B) in solvent, taught by Thom does
not meet the solvent limitation recited in claims 22 through 24.
Accordingly, based on the record established on appeal, including due
consideration of the arguments and evidence advanced by the Examiner and
Appellants, we determine that the preponderance of evidence weighs most
heavily in favor of obviousness within the meaning of 35 U.S.C. § 103(a).
ORDER
Upon consideration of the record, and for the reasons given above and
in the Answer, it is:
ORDERED that the decision of the Examiner to reject claims 1
through 4, 7 through 11, and 13 through 29 under 35 U.S.C. § 103(a) as
unpatentable over the combined disclosures of Thom, Williams, Rizk, and
Brode is AFFIRMED; and,
FURTHER ORDERED that no time period for taking any subsequent
action in connection with this appeal may be extended under 37 C.F.R. §
1.136(a)(1)(iv).

AFFIRMED

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