Ex Parte Jacobine et al

Patent Trial and Appeal BoardSep 19, 2014

11772843 (P.T.A.B. Sep. 19, 2014)

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. 11/772,843 07/03/2007 Anthony F. Jacobine LC-608 1271 31217 7590 09/19/2014 Henkel Corporation One Henkel Way Rocky Hill, CT 06067 EXAMINER SERGENT, RABON A ART UNIT PAPER NUMBER 1765 MAIL DATE DELIVERY MODE 09/19/2014 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 ANTHONY F. JACOBINE, JOHN G. WOODS, JOEL D. SCHALL, STEVEN T. NAKOS, and DAVID M. GLASER ____________ Appeal 2012-012410 Application 11/772,843 Technology Center 1700 ____________ Before BRADLEY R. GARRIS, TERRY J. OWENS, and JEFFREY T. SMITH, Administrative Patent Judges. GARRIS, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134 from the Examiner's decision rejecting claims 1–12, 14, and 17–33. We have jurisdiction under 35 U.S.C. § 6. We AFFIRM. Appellants claim an acrylated urethane (independent claims 1 and 18– 20). The acrylated urethane may comprise the reaction product of (a) a urethane comprising an isocyanate group and an acrylate group and (b) an amino alcohol compound (independent claim 1). The acrylated urethane also may comprise the reaction product of (a) an isocyanate functional Appeal 2012-012410 Application 11/772,843 2 urethane which is the reaction product of an amino alcohol, a hydrocarbon polyol, and a polyisocyanate, and (b) a hydroxy-functional material having an acrylate group (independent claim 20). A copy of representative claim 1, taken from the Claims Appendix of the Appeal Brief, appears below. 1. An acrylated urethane comprising the reaction product of: (a) at least one urethane comprising at least one isocyanate group and at least one acrylate group; and (b) at least one amino alcohol compound comprising at least two hydroxyl groups. The Examiner rejects: independent claims 1, 18, and 19 under 35 U.S.C. § 102(b) as anticipated by Huynh-Tran (US 5,328,805, issued July 12, 1994); independent claim 20 under 35 U.S.C. § 103(a) as unpatentable over Huynh-Tran in combination with an additional prior art reference; and remaining dependent claims 2–12, 14, 17, and 21–33 under § 102 over Huynh-Tran or under § 103 over Huynh-Tran in combination with various other prior art references. Appellants' arguments are directed to the § 102 rejection of independent claim 1 (Br. 6–12). These arguments are reiterated with respect to the other claims on appeal (id. at 12–19). No other arguments are directed to the rejections of these other claims (id.). As a consequence, all claims on appeal will stand or fall with representative claim 1. We sustain each of the above rejections based on the Examiner's finding that claim 1 is anticipated by Huynh-Tran and on the Examiner's Appeal 2012-012410 Application 11/772,843 3 rebuttals of Appellants' arguments against this finding. The following comments are added for emphasis. Appellants correctly characterize the Examiner's § 102 rejection as follows: Essentially, the Office Action contends that [in Huynh- Tran’s process] the amino alcohol will react with the prepolymer, then with a hydroxyacrylate, and inherently form a product that is indistinguishable from the claimed products of the present invention. (Id. at 8 (italics removed); cf. Final Action 7, Ans. 10). Appellants cite In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) for the proposition that inherency must be recognized by persons with ordinary skill (Br. 8). Appellants argue that "[t]he Office Action fails to establish that one of ordinary skill in the art would recognize that the Huynh-Tran process inherently discloses a reaction product produced by extending the prepolymer with aminoalcohol and then reaction with hydroxyacrylate" (id.). Appellants' argument is not persuasive because, in fact, the law does not require inherency to have been recognized by one of ordinary skill in the art. Schering Corp. v. Geneva Pharm., Inc. 339 F.3d 1373, 1377 (Fed. Cir. 2003) ("[I]nherent anticipation does not require that a person of ordinary skill in the art at the time would have recognized the inherent disclosure."). Any contrary indication in In re Roberts, supra, is clarified in Schering Corp. to be incorrect. The record supports the Examiner's finding that Huynh-Tran's reaction scheme includes (i.e., inherently) a reaction "wherein the amino Appeal 2012-012410 Application 11/772,843 4 alcohol (Huynh-Tran et al.’s “N”) reacts with the initially produced isocyanate terminated prepolymer (Huynh-Tran et al.’s “(I)”), which is then terminated with hydroxyalkyl(meth)acrylate (Huynh-Tran et al.’s “A”)" (Ans. 10). See, e.g., Huynh-Tran col. 7, ll. 31–37 which shows N reacting with (I) to form an intermediate which is then reacted with A. This record also supports the Examiner's finding that the "structure [resulting from such reaction] meets the acrylated urethane of [A]ppellants' claims" (Ans. 10). See, e.g., appealed claim 20 which defines Appellants' acrylated urethane as comprising the product of a reaction at least similar to the above reaction inherently disclosed by Huynh-Tran (i.e., in the claim 20 reaction, amino alcohol, polyol, and polyisocyanate are reacted to form an intermediate which is then reacted with a material having an acrylate group).1 In summary, the Examiner's finding of inherent anticipation is supported by the record, and Appellants fail to identify any error in this finding. The decision of the Examiner is affirmed. 1 Appellants state without embellishment that, "in contrast to Huynh- Tran, in present claim[] . . . 20, the order of acrylate end-capping and amino alcohol incorporation is reversed" (Br. 15). This unembellished statement is contradicted by the express language of claim 20 which recites the same order of acrylate end-capping and amino alcohol incorporation as disclosed (at least inherently) by Huynh-Tran. Appeal 2012-012410 Application 11/772,843 5 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 cam