Ex Parte Koers et alDownload PDFPatent Trial and Appeal BoardMay 30, 201714421381 (P.T.A.B. May. 30, 2017) Copy Citation 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; 2 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.”). 3 Appeal 2017-005959 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 4 Appeal 2017-005959 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). 5 Appeal 2017-005959 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. 6 Appeal 2017-005959 Application 14/421,381 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 7 Copy with citationCopy as parenthetical citation