Ex Parte Koers et al

Patent Trial and Appeal Board

May 30, 2017

14421381 (P.T.A.B. May. 30, 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.
14/421,381 02/12/2015 Frederik Willem Karel Koers 16-598-WO-US 2366
141081 7590 05/30/2017
MCDONNELL BOEHNEN HULBERT & BERGHOFF LLP/AkzoNobel
300 S. WACKER DRIVE
3 2ND FLOOR
CHICAGO, IL 60606
EXAMINER
KAUCHER, MARK S
ART UNIT PAPER NUMBER
1764
MAIL DATE DELIVERY MODE
05/30/2017 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 FREDERIK WILLEM KAREL KOERS,
and AUKE GERADUS TALMA
Appeal 2017-005959
Application 14/421,381
Technology Center 1700
Before BEVERLY A. FRANKLIN, LINDA M. GAUDETTE, and JULIA
HEANEY, Administrative Patent Judges.
FRANKLIN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants request our review under 35 U.S.C. § 134 of the
Examiner’s decision rejecting claims 1—9. We have jurisdiction over the
appeal under 35 U.S.C. § 6(b).
Appeal 2017-005959
Application 14/421,381
STATEMENT OF THE CASE
Claim 1 is illustrative of Appellants’ subject matter on appeal and is
set forth below:
1. (Previously presented) A process for curing a thermoset resin
comprising the step of contacting said resin with
(i) an imine of the structure C(R2) (R3)=N-R‘ wherein
R1 is selected from the group consisting of hydrogen, hydroxyl, linear or
branched alkyl having 1—22 carbon atoms, cycloalkyl having 3—22 carbon
atoms, aryl having 6 to 15 carbon atoms, and aralkyl having 7 to 22 carbon
atoms, said alkyl, cycloalkyl, aryl, and aralkyl groups may be optionally
substituted with one or more groups containing heteroatoms selected from
the group consisting of S, 0, P, and Si.
R2 is selected from C(R6)(R5)-C(=0)-R4, -C(R6)(R5)-C(=S)-R4, and
-C(R6)(R5)-C(=N)-R4, wherein R4, R5,and R6 are selected from the group
consisting of hydrogen, linear or branched alkyl having 1-6 carbon atoms,
cycloalkyl having 3—12 carbon atoms, aryl, aralkyl, alkoxy having 1-6
carbon atoms, and aryloxy.
R3 is selected from the group consisting of linear or branched alkyl
having 1—22 carbon atoms, cycloalkyl having 3-22 carbon atoms, aryl
having 6 to 15 carbon atoms, and aralkyl having 7 to 22 carbon atoms, and
(ii) methyl isopropyl ketone peroxide.
The Examiner relies on the following prior art references as evidence
of unpatentability:
Edamura US 4,042,646 Aug. 16, 1977
Syed et al.
(hereinafter “Syed”)
US 2002/0137972 Sep. 26, 2002;
Binder et al.
(hereinafter “Binder”)
US 4,368,311 Jan. 11, 1983;
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Appeal 2017-005959
Application 14/421,381
THE REJECTIONS
1. Claims 1—9 are rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Edamura in view of Syed.
2. Claims 1—9 are rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Binder in view of Syed.
ANALYSIS
Having considered the respective positions advanced by the
Examiner1 and Appellants2 in light of this appeal record, we reverse the
Examiner’s rejections for essentially the reasons set forth by Appellants in
the record, and add the following for emphasis.
Rejection 1
The dispositive issue is whether there is a reasonable likelihood of
success in modifying Edamura's process by substituting methyl propyl
ketone peroxide (MPKP) (specifically methyl isopropyl ketone peroxide
(MiPKP) of Syed) in place of the methyl ethyl ketone peroxide (MEKP) or
methyl isobutyl ketone peroxide (MIBKP) of Edamura.
The Examiner finds that Edamura discloses a process for curing a
thermoset resin comprising the step of contacting the resin with an imine,
and refers to the Abstract, col. 2,11. 10-65, and the examples as shown in
formula II and Table 0 in col. 3 of Edamura, and the step of contacting with
a peroxide, as described in column. 4,11. 10-25 of Edamura. The Examiner
1 See Final Office Action, mailed on Feb. 16, 2016 (“Final Act.”); and
Examiner’s Answer, mailed on Dec. 28, 2016 (“Ans.”).
2 See Appeal Brief, filed on Aug. 18, 2016 (“Appeal Br.”).
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Application 14/421,381
states that Edamura does not teach that the peroxide is a methyl isopropyl
ketone peroxide. Ans. 2—3.
The Examiner relies upon Syed for teaching similar methods of curing
unsaturated polyesters. Ans. 3. Syed, Abstract, para. [0001], and examples.
The Examiner finds that Syed teaches that MPKP is preferred over MEKP
because it has improved gel time and curing time, and can be safely handled.
Ans. 3. Sayed, Abstract, paras. [0006] and [0040], and examples.
The Examiner concludes that it would have been obvious to have
modified the process of Edamura by substituting MEKP or MIBKP of
Edamura with the MPKP of Syed to improve gel time, curing time, and
safety in handling. Ans. 3.
Appellants argue that there is not a reasonable likelihood of success in
making the proposed combination because Edamura teaches a curing process
for polyester resins comprising an imine with peroxide (MEKP) or
(MIBKP), while Syed teaches a curing process for polyester resins
including an optional metal accelerator and MPKP with no imine present.
Appeal Br. 2—3. Appellants submit that without being able to reasonably
predict the results of substituting MPKP for MEKP and MIBKP in
Edamura’s type of curing system (that includes an imine), a reasonable
expectation of success does not exist, and therefore the claims cannot be
obvious over the proposed combination. Appeal Br. 3.
The Examiner responds by stating that Edamura is open to metal
accelerators (col. 5, lines 10-15), and therefore even if one would have read
Syed to require metal accelerators, Edamura is open to them. Ans. 5. The
Examiner further states that the metal accelerators of Syed are optional
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Application 14/421,381
(paragraph [0021] and paragraph [0023]), and that Syed notes that the use of
MPKP is advantageous because it has fast curing rates and is safe to handle,
without mentioning this in conjunction with the optional metal accelerators.
Ans. 5—6. The Examiner states that the role of the accelerator is to accelerate
the reaction, and that there is no factual evidence in the record that the
peroxide (e.g. MPKP) is dependent on the accelerator, and in fact, Syed
specifically states that the MPKP is suitable in a laundry list of accelerators
(paragraph [0023] of Syed). Ans. 6. The Examiner concludes that the skilled
artisan would have had a reasonable expectation of success given that Syed
teaches the advantages of MPKP over MEKP and MIBKP and that Syed
teaches similar polyester curing systems as Edamura, including optional
metal accelerators taught in both Edamura and Syed.
However, as pointed out by Appellants in the Reply Brief on pages 2—
3, the Examiner does not adequately address the point raised by Appellants
that Edamura’s system involves an imine-based system, while Syed does not
involve an imine-based system. While the Examiner makes the statement
that Syed teaches similar methods of curing unsaturated polyesters (Ans. 3,
6), in fact the systems are not similar as explained by Appellants in the
record. The difference of the imine-based system of Edamura as compared
with the Syed system is not reconciled in the record as it pertains to the issue
of whether there would have been a reasonable likelihood of success in
making the modification as proposed by the Examiner. Without more, we
cannot sustain Rejection 1. While obviousness does not require absolute
predictability , at least some degree of predictability is required. Evidence
showing there was no reasonable expectation of success may support a
conclusion of nonobviousness. In re Rinehart, 531 F.2d 1048 (CCPA 1976).
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Application 14/421,381
In the instant case, the preponderance of the evidence as pointed out by
Appellants supports Appellants’ position.
Rejection 2
As to Rejection 2, in a similar manner, Appellant argues that there
would not have been a reasonable expectation of success to modify Binder’s
process by substituting methyl propyl ketone peroxide (MPKP), specifically
methyl isopropyl ketone peroxide (MiPKP) of Syed, for the methyl ethyl
ketone peroxide (MEKP) or methyl isobutyl ketone peroxide (MIBKP) for
the reasons stated on pages 4—6 of the Appeal Brief. More specifically,
Appellants argue that Binder teaches a curing process for polyester resins
comprising a copper metal accelerator and peroxide (MEKP) or (MIBKP),
and an imine, while Syed teaches a curing process for polyester resins
including a cobalt metal accelerator and MPKP, and lacks imine. Id.
In response, the Examiner states that while it is acknowledged that Binder
utilizes copper metal accelerators (Abstract), both Binder and Syed teach the
general class of metal accelerators. Ans. 6—7. The Examiner also states that
the metal accelerators of Syed are optional (paras. [0021] and [0023]). Ans.
7. The Examiner states that Syed notes that the use of MPKP is
advantageous over the art because it has fast curing rates, is safe to handle,
without mentioning this in conjunction with the optional metal accelerators.
Ans. 7. The Examiner states that the role of the accelerator is to accelerate
the reaction, and there is no factual evidence in the record that the peroxide
(e.g. MPKP) is dependent on the accelerator, and Syed teaches that copper
accelerators (reading on those of Binder) are suitable with MPKP. Syed,
para. [0023]. Ans. 7. However, the Examiner again misses the point made
by Appellants that Binder is an imide-based system while Syed is not.
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Appellants reiterate their stated positon on pages 2—3 of the Reply Brief.
We are in agreement as the differences of the imine-based system Binder as
compared with the Syed system have not been reconciled in the record as it
pertains to the issue of whether there would have been a reasonable
likelihood of success in making the modification as proposed by the
Examiner. “[T]he examiner bears the initial burden, on review of the prior
art or on any other ground, of presenting a prima facie case of
unpatentability.” In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). As
such, we cannot sustain Rejection 2.
DECISION
Each rejection is reversed.
ORDER
REVERSED
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