Ex Parte O

Patent Trial and Appeal Board

Aug 4, 2017

13113785 (P.T.A.B. Aug. 4, 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.
13/113,785 05/23/2011 Robert J. O'Leary 27544.04762 1270
13538 7590 08/08/2017
Calfee, Halter & Griswold LLP
The Calfee Building
1405 East Sixth Street
Cleveland, OH 44114-1607
EXAMINER
COONEY, JOHN M
ART UNIT PAPER NUMBER
1765
NOTIFICATION DATE DELIVERY MODE
08/08/2017 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):
ipdocket @ c alfee .com
bmgipdept@owenscorning.com
wfrick @ c alfee. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERT J. O’LEARY
Appeal 2017-003603
Application 13/113,7851 2 3
Technology Center 1700
Before ROMULO H. DELMENDO, KAREN M. HASTINGS, and
JAMES C. HOUSEL, Administrative Patent Judges.
PER CURIAM.
DECISION ON APPEAL
The Appellant appeals under 35 U.S.C. § 134(a) from the Primary
Examiner’s final decision to reject claims 1—9, 11, 12, and 31—33.2,3 We
1 The Applicant (hereinafter “Appellant”) states that the real party in interest
is “OCV Intellectual Capital, LLC.” Appeal Brief filed on September 11,
2015, hereinafter “Appeal Br.,” 3.
2 Appeal Br. 12—21; Reply Brief filed on December 18, 2016, hereinafter
“Reply Br.,” 2—6; Examiner’s Answer (notice emailed on October 18, 2016),
hereinafter “Ans.,” 2—11; Final Office Action (notice emailed on March 19,
2015) hereinafter “Final Act.,” 2—14.
3 The Appellant states there are no related appeals, interferences, or trials at
page 4 of the Appeal Brief. However, Appeal 2016-008635 (Application
No. 12/688,951) appears to be related to the appeal in this application. See
37 C.F.R. § 41.37(c)(ii). In particular, this application claims priority to a
common provisional application (Provisional Application 61/145,740) as the
application involved in Appeal 2016-008635. The Appeal Brief for Appeal
Appeal 2017-003603
Application 13/113,785
have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
A. BACKGROUND
The subject matter on appeal relates to spray foam compositions that,
according to the Appellant, do not contain harmful chemicals found in
polyurethane spray foams. Specification, hereinafter “Spec.,” 125. The
compositions include a base in the form of a dry powder having a small
mean particle size that, according to the Appellant, provides a higher rate of
rise for the foam resulting from the composition. Id. 19, 54.
Representative claim 1 is reproduced from page 22 of the Appeal
Brief (Claims Appendix), as follows (emphases added):
1. A two-part foamable, spray composition comprising:
a first component including at least one functionalized
resin selected from a functionalized water-dispersible resin and
a functionalized water-soluble resin, and an acid of a blowing
agent package; and
a second component including
a crosslinking agent consisting of a polyfunctional
aziridine, and
a base of the blowing agent package; and
wherein the acid and base of the blowing agent package
upon combination, react to generate a gas wherein the base is a
dry powder having a mean particle size of from about 0.5 to
about 40 microns', and
wherein the foam cures within two minutes after
combination of the first component and the second component.
2016-008635 was filed on April 23, 2015, which occurred before the Appeal
Brief for this appeal was filed.
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B. REJECTIONS ON APPEAL
On appeal, the Examiner maintains several rejections, which are as
follows (Ans. 2—11; Final Act. 2—14):
I. claims 1—5, 9, 11, 12, and 31—33 as being unpatentable
under 35 U.S.C. § 103(a) over Gosiewski et al.4
(Gosiewski) in view of Filip et al.5 (Filip) and Xama-7;6
II. claims 6—8 as being unpatentable under 35 U.S.C.
§ 103(a) over Gosiewski in view of Filip, Xama-7, and
Helbling;7
III. claims 1—9, 11, 12, and 31—33 as being unpatentable
under nonstatutory obviousness-type double patenting
over claims 1—23 of US 8,875,472 in view of Filip; and
IV. provisionally, claims 1—9, 11, 12, and 31—33 as being
unpatentable under nonstatutory obviousness-type double
patenting over claims 1, 3—6, 27, 31—33, 39, 41, and 43 of
Application 11/893,474 in view of Filip.
C. DISCUSSION
Rejection I
Claims 1—5, 9, 11, 12, and 31—33 are rejected as being unpatentable
under 35 U.S.C. § 103(a) over Gosiewski in view of Filip and Xama-7.
Claims 1, 2, 4, 5, 9, 11, and 12 are argued as a first group, claim 3 is argued
4 US 5,945,461 A, issued Aug. 31, 1999.
5 US 4,119,583, issued Oct. 10, 1978.
6 Xama®7, version 2, ichemco, 2004.
7 US 4,857,566, issued Aug. 15, 1989.
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as a second group, and claims 31—33 are argued as a third group. Appeal Br.
14—20. We select claims 1, 3, and 31 as representative of the respective
groups for the issues discussed below.
Claim 1
The Appellant asserts one of ordinary skill in the art would not have
modified Gosiewski to use polyfimctional aziridine as a crosslinking agent
(i.e., curing agent) instead of the catalyst of Gosiewski. Appeal Br. 14—16;
Reply Br. 2—5. The Appellant further argues a lack of reasonable
expectation of success because the applied references do not disclose the use
of polyfunctional aziridine in a foam. Appeal Br. 18—19.
These arguments are unpersuasive because, as is apparent from our
discussion below, the test for obviousness is not that the claimed invention
be expressly suggested in any one or all of the references but what the
combined teachings of the references would have suggested to one of
ordinary skill in the art. In re Keller, 642 F.2d 413, 425 (CCPA 1981).
Here, the Examiner finds Gosiewski discloses a two-part composition
having a first part including a polymer-monomer composition (e.g.,
polymers of styrene, ethylene-propylene copolymers, or polyacrylates in
acrylic acid and/or methacrylic acid monomers) and an acid as the first part
of a blowing agent, and a second part including a carbonate such as sodium
bicarbonate or calcium carbonate (i.e., a base) as a second part of the
blowing agent. Ans. 2—3. The Examiner finds Gosiewski also discloses the
use of a crosslinking agent as an additional component. Id. at 3. The
disclosure of Gosiewski supports these findings. Gosiewski 3:5—67, 5:60—
65, 6:4—11, 9:61—64.
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The Examiner acknowledges several differences between Gosiewski
and the subject matter of claim 1. First, the Examiner finds that Gosiewski
does not explicitly disclose using the curing agent in the second part of the
composition but concludes it would have been obvious to separate the
crosslinking agent from the polymer to prevent premature crosslinking by
placing the cross linking agent in the second part. Ans. 5. The Appellants
do not dispute this reasoning. Appeal Br. 14—21.
Second, the Examiner finds Gosiewski does not disclose the specific
crosslinking agent recited in claim 1. Ans. 5. The Examiner further finds
Xama-7 discloses a polyfimctional aziridine that cures carboxyl-containing
acrylic emulsions and provides various advantages, such as a faster cure
time, improved strength and adhesion, flexibility, and solvent resistance. Id.
The disclosure of Xama-7 supports these findings. See Xama-7, 1—2. The
Examiner concludes it would have been obvious to a person having ordinary
skill in the art to modify Gosiewski to use the polyfunctional aziridine
disclosed by Xama-7 to provide crosslinking. Ans. 5.
A preponderance of the evidence supports the Examiner’s conclusion.
As the Examiner finds, Gosiewski discloses a foam that can include a cross
linking agent as an additional component, although it does not disclose using
polyfimctional aziridine as the cross linking agent. Gosiewski 9:61—64.
Xama-7, however, discloses polyfimctional aziridine is a crosslinking agent
for carboxyl-containing acrylic emulsions8 and provides reasons (e.g., a
faster cure time, improved strength and adhesion, flexibility, and solvent
resistance)9 to use the polyfimctional aziridine as a cross linking agent.
8 Xama-7, 1 (column 1: Description)
9 Xama-7, 1 (column 1: Application), 2 (Market Uses Table).
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Therefore, the combination of Gosiewski and Xama-7 would have suggested
using the polyfunctional aziridine of Xama-7 as the crosslinking agent
disclosed by Gosiewski.
The Appellant further asserts Gosiewski discloses a particular curing
agent that is responsible for the properties desired in its foam, and this
curing agent is a catalyst, which one of ordinary skill in the art would have
recognized to be different in bonding, structure, and expected mode of
reactivity from polyfunctional aziridine. Appeal Br. 15—16. Moreover, the
Appellant contends that even if it were obvious to modify Gosiewski to use
polyfunctional aziridine as a crosslinking agent, the Appellant’s “a
crosslinking agent consisting of a polyfimctional aziridine” language in
claim 1 excludes Gosiewski’s catalyst, which the Appellant argues is a
mandatory ingredient. Id.
These arguments do not identify a reversible error in the Examiner’s
rejection. The catalyst of Gosiewski functions as a polymerization catalyst
that triggers polymerization of its monomers so the composition will
polymerize when it foams, not a crosslinking agent. Gosiewski 2:43—48;
5:19-23. Indeed, the disclosure of Gosiewski demonstrates this difference
by disclosing a crosslinking agent may be used in addition to the other
components of its foam composition, such as the polymerization catalyst.
Id. at 9:61—64; see also Appeal Br. 15 (“one of ordinary skill in the art
would recognize that a polyfimctional aziridine is not a free-radical
producing catalyst and vice versa”). The Examiner finds the crosslinking
agent of Gosiewski, not the catalyst of Gosiewski, functions as a
crosslinking agent. Ans. 3. Moreover, the disclosure of Xama-7
demonstrates that polyfimctional aziridine is known in the art as a
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crosslinking agent that provides various advantages, as discussed above.
Therefore, the disclosure of Xama-7 supports the Examiner’s reason to
modify Gosiewski in view of Xama-7 to use polyfunctional aziridine as a
crosslinking agent.
In addition, the Appellant argues the applied references do not
disclose or suggest a composition that is suitable for a spray foam
application. Appeal Br. 18. Specifically, the Appellant contends one of
ordinary skill in the art would not have used a composition that takes 2—3
hours for complete curing, as in the case of Example 1 of Gosiewski, for a
foam-in-place application, particularly one that would desirably cure within
two minutes. Id.
These arguments are unpersuasive. First, claim 1 does not recite any
temporal requirement in which curing must be accomplished. Second, the
Appellant does not direct us to persuasive evidence that Gosiewski, either
alone or as modified by Xama-7, would not be expected to foam within two
minutes. Third, the Appellant’s argument focuses upon the disclosure of
Gosiewski alone without consideration of the combination of the applied
references and what it would have suggested to one of ordinary skill in the
art. Indeed, Xama-7 discloses that its polyfimctional aziridine provides
“[fjaster cure time.” Xama-7, 2 (Market Uses Table). Filip also discloses
that the gelling time of a resin should not exceed 4—8 minutes, and this time
depends upon several factors, including the quantity of crosslinking agent
(i.e., curing agent) used. Filip 8:21—24. Therefore, one of ordinary skill in
the art would have understood the quantity of crosslinking agent to be a
result-effective variable that affects curing time and, thus, it would have
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been obvious to discover the workable or optimal range for crosslinking
agent quantity via routine experimentation.
Fourth, although Gosiewski does not explicitly disclose that its foam
composition can be sprayed, the combination of references provides a foam
composition that is identical or substantially identical to the claimed foam
composition and, therefore, would appear to necessarily be sprayable as
well. See In re Best, 562 F.2d 1252, 1255 (CCPA 1977). The Appellant
does not direct us to any evidence or persuasive technical reasoning that the
combination of the appli ed references would not have provided a spray able
foam composition.
The Appellant also contends there would have been a lack of reason to
use polyfimctional aziridine, as recited in claim 1, because it was known that
ethyleneimine was a toxic impurity of aziridine. Appeal Br. 19—20.
This argument is unpersuasive because the combination of Gosiewski,
Travis, and Xama-7 would have resulted in the use of polyfunctional
aziridine with a low amount of ethyleneimine, which the Appellant admits is
known to be toxic. Specifically, Xama-7 discloses that the ethyleneimine
content for its polyfunctional aziridine is less than 10 ppm and, therefore, a
person having ordinary skill in the art would have been motivated to reduce
its content. Xama-7, 1 (column 1: Product Specifications Table). Moreover,
the Examiner finds the claims do not recite an ethyleneimine content. Ans.
14. We agree with the Examiner’s finding.
With regard to the mean particle size recited in claim 1 for the base,
the Examiner finds Gosiewski does not disclose this recitation. Ans. 3. The
Examiner finds Filip discloses a two-component blowing agent for resin
foams that includes a base/carbonate component. Id. According to the
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Examiner, Filip discloses the carbonate component should be finely divided
to ensure acceptable dispersion with the resin and should preferably have a
particle size that meets those sizes recited in the claims. Id. The Examiner
concludes it would have been obvious to a person having ordinary skill in
the art to modify Gosiewski by using a base in the form of finely divided
particles, as disclosed by Filip, to provide acceptable and satisfactory
dispersion of the base throughout a resin. Id. at 3^4.
The Appellant contends that Filip teaches away from the claimed
foam composition because Filip discloses its invention is applicable to non­
water soluble resins and that an “essential property of the resin mix utilized
is that it is water insoluble.” Appeal Br. 16—17 (quoting Filip 5:7—9
(emphasis omitted)). In view of this, the Appellant asserts Filip teaches
away from use with the resins recited in claim 1: “a functionalized water-
dispersible resin and a functionalized water-soluble resin.” Id. at 17.
These arguments do not identity a reversible error in the Examiner’s
rejection. Claim 1 is not limited to water-soluble resins because claim 1 also
recites “water-dispersible resin” as a possible functionalized resin. Appeal
Br. 22. A substance that is water-dispersible is insoluble in water.
Otherwise the substance would dissolve in water. Moreover, as stated by the
Examiner, the disclosure of Filip was relied upon for its disclosure of a
particle size for a base component of a foam composition and the advantages
of such a particle size. Ans. 12—13. “The test for obviousness is not
whether the features of a secondary reference may be bodily incorporated
into the structure of the primary reference.” Keller, 642 F.2d at 425. Here,
Filip would have suggested using finely divided particles of the base of an
acid/base foaming agent for a foam composition to ensure satisfactory
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dispersion of the particles throughout the polymer component of the
composition and to provide rapid initiation of foaming. Filip 2:43—51, 2:66—
3:3, 4:23—27.
The Appellant does not argue claims 2, 4, 5, 9, 11, and 12 separately
from claim 1. Appeal Br. 20.
For these reasons and those discussed in the Examiner’s Answer, we
uphold the Examiner’s § 103(a) rejection of claims 1, 2, 4, 5, 9, 11, and 12.
Claim 3
Claim 3 depends from claim 2, which depends from claim 1, and
further recites “wherein the base is dry sodium bicarbonate powder having a
mean particle size of about 11 microns.” Id. at 22.
For the rejection of claim 3, the Examiner concludes it would have
been obvious to discover the optimal or workable ranges for base particle
size. Ans. 4. The Appellant contends Filip teaches away from the
recitations of claim 3 because Filip discloses a preference for particles
having a size of “no more than two or three microns in size.” Appeal Br.
17-18.
This argument does not identify a reversible error in the Examiner’s
rejection. “A reference does not teach away, however, if it merely expresses
a general preference for an alternative invention but does not ‘criticize,
discredit, or otherwise discourage’ investigation into the invention claimed.”
DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327
(Fed. Cir, 2009) (citing In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004)).
The passage of Filip referenced by the Appellant states “[pjreferably the
carbonate particles are no more than two or three microns in size.” Filip
4:25—27. Therefore, Filip discloses a preference for particles no more than
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two or three microns in size, which does not constitute a teaching away from
particles having a larger size.
For these reasons and those discussed in the Examiner’s Answer, we
uphold the Examiner’s § 103(a) rejection of claim 3.
Claim 31
To argue the rejection of claim 31, the Appellant cites the rejections
described above for the rejection of claims 1—9, 11, and 12. Appeal Br. 20.
For the reasons discussed above, these arguments are unpersuasive.
However, the Appellant also contends the Examiner does not address all of
the recitations of claim 31, including “a polyacrylic acid present in an
amount of 1% to 30% by weight of the foam composition.” Id.
The Examiner finds Gosiewski discloses a two-part foam composition
including a polymer-in-monomer composition, such as polymers of styrene,
ethylene-propylene copolymers, polyacrylates, in acrylic acid and/or
methacrylic acid monomers, and acids (as part of a foaming agent) such as
citric or lactic acid. Ans. 2. These findings do not demonstrate that
Gosiewski discloses a two-part sprayable foam composition including a
polyacrylic acid, as recited in claim 31. The Examiner further finds
Gosiewski discloses citric acid and lactic acid, but these are not the
polyacrylic acid recited in claim 31. Id.
With regard to the amount of the components recited in claim 31, the
Examiner concludes it would have been obvious to discover the optimal or
workable ranges for the amounts of foam composition components. Id. at 4.
This is insufficient to address the lack of a disclosure by Gosiewski of a
polyacrylic acid. The Examiner’s findings with regard to Filip and Xama-7
also fail to cure this deficiency. As a result, the Examiner has not set forth a
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prima facie case of obviousness for claim 31 over Gosiewski, Filip, and
Xama-7.
Claims 32 and 33 depend from claim 31. For the above reasons, we
cannot uphold the Examiner’s § 103(a) rejection of claims 31—33.
Rejection II
Claims 6—8 are rejected as being unpatentable under 35 U.S.C.
§ 103(a) over Gosiewski, Filip, and Xama-7 and further in view of Helbling.
The Appellant does not argue claims 6—8 separately from claim 1.
Appeal Br. 14—20. Therefore, we uphold the Examiner’s § 103(a) rejection
of claims 6—8 for the reasons discussed above and for those set forth in the
Examiner’s Answer.
Rejections III and IV
Claims 1—9, 11, 12, and 31—33 are rejected on the judicially-created
ground of obviousness-type double patenting as being unpatentable over
claims 1—23 of US 8,875,472 in view of Filip.
Claims 1—9, 11, 12, and 31—33 are provisionally rejected on the
judicially-created ground of obviousness-type double patenting as being
unpatentable over claims 1, 3—6, 27, 31—33, 39, 41, and 43 of U.S.
Application No. 11/893,474 in view of Filip.
The Appellant requests these rejections be held in abeyance and
asserts the rejected claims are not obvious because one of ordinary skill in
the art, after reading Filip, would not have been motivated to provide the
claimed compositions. Appeal Br. 21.
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These arguments are unpersuasive for the same reasons set forth
above for the rejection of claim 1. Therefore, we uphold the Examiner’s
non-statutory obviousness-type double patenting rejections of claims 1—9,
11, 12, and 31—33 for these reasons and those discussed in the Examiner’s
Answer.
D. SUMMARY
On the record before us, we:
A. sustain the rejection of claims 1—5, 9, 11, and 12 under § 103(a)
over Gosiewski in view of Filip and Xama-7;
B. do not sustain the rejection of claims 31—33 under § 103(a) over
Gosiewski in view of Filip and Xama-7;
C. sustain the rejection of claims 6—8 under § 103(a) over
Gosiewski, Filip, Xama-7, and Helbling;
D. sustain the non-statutory obviousness-type double patenting
rejection of claims 1—9, 11, 12, and 31—33 over claims 1—23 of US
8,875,472 in view of Filip; and
E. sustain the provisional non-statutory obviousness-type double
patenting rejection of claims 1—9, 11, 12, and 31—33 over claims 1, 3—6, 27,
31—33, 39, 41, and 43 ofU.S. Application No. 11/893,474 in view of Filip.
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
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