Ex Parte Nava et alDownload PDFPatent Trial and Appeal BoardJun 30, 201613024547 (P.T.A.B. Jun. 30, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/024,547 02/10/2011 Hildeberto Nava 45309 7590 07/05/2016 Williams Mullen 222 Central Park A venue #1700 Virginia Beach, VA 23462-3035 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 5458-356 1892 EXAMINER JONES JR, ROBERT STOCKTON ART UNIT PAPER NUMBER 1762 NOTIFICATION DATE DELIVERY MODE 07/05/2016 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): ip@williamsmullen.com drobertson@williamsmullen.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte HILDEBERTO NAVA and YONGNING LIU Appeal2015-000138 Application 13/024,547 Technology Center 1700 Before BRADLEY R. GARRIS, ADRIENE LEPIANE HANLON, and PETER F. KRATZ, Administrative Patent Judges. KRATZ, Administrative Patent Judge. DECISION ON APPEAL r-T"I.. • • .. • • .. 1 .. ,..... ,_ T T r'1 I'\ l\ -1 ,..... Al r'" , "1 ims 1s a aec1s10n on an appear unaer j) u.~.L. s U4 rrom me Examiner's final rejection of claims 1-10. We have jurisdiction pursuant to 35 U.S.C. § 6. Appellants' claimed invention is directed to a process for forming vinyl-containing compounds and a gelcoat comprising compounds prepared by the process of claim 1. Claim 1 is illustrative and reproduced below: 1. A process for forming vinyl-containing compounds, the process comprising the steps of: 1 Appellants state "[t]he real party in interest is Reichhold, Inc." (App. Br. 3). Appeal2015-000138 Application 13/024,547 a) reacting in a nitrogen atmosphere at least one dicarboxylic acid and/or anhydride and a monofunctional or polyfunctional alcohol to provide a hydroxyl-containing polyester; b) reacting the hydroxyl-containing polyester with a vinyl-containing organic acid in the presence of an esterification catalyst, a polymerization inhibitor and an azeotropic agent while in the nitrogen atmosphere to provide a vinyl functional esterified intermediate group; and c) reacting the vinyl functional esterified intermediate, residual esterification catalyst and residual vinyl-containing organic acid with an epoxy while in the nitrogen atmosphere to provide the vinyl-containing compound. The Examiner relies on the following prior art references as evidence in rejecting the appealed claims: Weikard Fischer us 6, 150,458 us 6,153,788 Nov. 21, 2000 Nov. 28, 2000 Hans-Jurgen Reinhardt, White Paper. Gas applications in fine and specialty chemistry, LINDE GRP (Ger.) (Apr. 4, 2008) (hereinafter "Linde"). Fisher Scientific Material Safety Data Sheet, Thermo Fisher Scientific - Isooctane (2009) (hereinafter "Fisher 1 "). Fisher Scientific Material Safety Data Sheet, Thermo Fisher Scientific - Cyclohexane (2009) (hereinafter "Fisher 2"). The Examiner maintains the following grounds of rejection: Claims 1-10 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over W eikard in view of Fisher 1 and Linde. Claims 1-5, 9, and 10 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Fischer in view of Fisher 2 and Linde. 2 Appeal2015-000138 Application 13/024,547 After a careful review of the opposing positions articulated by Appellants and the Examiner and the evidence of obviousness adduced by the Examiner, we determine that the Appellants' arguments are insufficient to identify reversible error in any of the Examiner's obviousness rejections. In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011). Accordingly, we affirm the stated obviousness rejections for substantially the fact findings and reasons as set forth by the Examiner (Final Act. 2-10; Ans. 2-14). We offer the following for emphasis. Appellants argue the rejected claims together as a group for both of the stated obviousness rejections. Accordingly, we select claim 1 as the representative claim on which we focus in deciding this appeal. Concerning the Examiner's first stated rejection, Appellants argue that Weikard teaches: a process which must be done in an azeotropic solvent (isooctane) in liquid form while air is "passed through the solvent= containing reaction mixture.'' \X/eikard, column 3, line 32. Thus, when Weikard is viewed in combination with the Fisher Isooctane MSDS and the Linde White Paper, the resulting modified process is still conducted in isooctane and merely uses a blanket of nitrogen or merely passes nitrogen over the reaction mixture. (App. Br. 6.) Moreover, Appellants contend that "it is flawed to think that one of skill in the art would modify W eikard to eliminate oxygen when oxygen is critical to their reactions" (id.). In this regard, Appellants maintain that W eikard requires "the presence of some oxygen for the reaction to occur otherwise unwanted gelling will occur, particularly if the reaction was hypothetically done in nitrogen only" (id.). In particular, Appellants urge 3 Appeal2015-000138 Application 13/024,547 that "the vinyl moieties of the acrylic and meth( acrylic) acid would start premature crosslinking of the reaction mixture unless some oxygen is present [for the reaction of Weikard]" (id.). Thus, Appellants take the position that the Examiner's proposed modification of W eikard based on the combined teachings of the applied references lacks the requisite motivation for eliminating oxygen that would have led one of ordinary skill in the art to a process corresponding to the claimed process (App. Br. 6-7; Reply Br. 3--4). As correctly determined by the Examiner, however, Weikard discloses using an oxygen-containing gas as part of a preferred embodiment and Weikard does not disclose that oxygen is required (Ans. 11; Weikard, col. 3, 11. 30-32). Nor have Appellants established that one of ordinary skill in the art would have understood W eikard to require the use of oxygen to prevent premature crosslinking and/ or undesired gelation as determined by the Examiner (Ans. 11). Moreover, the rationale for the Examiner's proposed modification of W eikard to eliminate passing oxygen-containing gas through the reaction mixture need not be the same as that disclosed by Appellants (id. at 11-12). KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 420 (2007) ("any need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed"). As a final point, we observe that representative claim 1 does not specify that the process is conducted in only a nitrogen atmosphere, which atmosphere is devoid of the presence of any oxygen and/or air. Nor do Appellants advance unexpected results for the claimed subject matter. 4 Appeal2015-000138 Application 13/024,547 Consequently, Appellants' argument lacks persuasive merit in identifying any reversible error in the Examiner's first stated obviousness rejection. It follows that, on this appeal record, we sustain the Examiner's obviousness rejection over Weikard in view of Fisher 1 and Linde. Appellants rely on substantially similar line of argument as discussed above respecting W eikard' s teachings as made with respect to the Examiner's first stated rejection in arguing against the Examiner's second stated rejection utilizing Fischer (App. Br. 7-8).2 For reasons advanced by the Examiner and similar to the reasons discussed above respecting the first stated rejection, Appellants' arguments directed at Fischer and contesting the Examiner's second stated rejection lack persuasive merit as to indicating substantive error in the latter rejection (Ans. 12-14). Therefore, we shall sustain the Examiner's second stated obviousness rejection for the reasons advanced by the Examiner (Ans. 5-8, 12-14). CONCLUSION The Examiner's decision to reject the appealed claims 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). AFFIRMED 2 In the second stated rejection the Examiner relies on a different primary reference (Fischer taken with Fisher 2 and Linde). Fischer, like W eikard, teaches that oxygen-containing gas is passed through the reaction mixture as part of a preferred embodiment (Fischer, col. 4, 11. 1--4). Appellants present argument against Fischer and the Examiner's second stated rejection that is substantially similar, mutatis mutandis, to the argument Appellants presented against the rejection utilizing Weikard in traversing the Examiner's first stated rejection (App. Br. 7-8). 5 Copy with citationCopy as parenthetical citation