Ex Parte Olang et al

Patent Trial and Appeal Board

Aug 4, 2017

12688951 (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.
12/688,951 01/18/2010 Fatemeh N. Olang 27544/04761 4766
13538 7590 08/08/2017
Calfee, Halter & Griswold LLP
The Calfee Building
1405 East Sixth Street
Cleveland, OH 44114-1607
EXAMINER
KRYLOVA, IRINA
ART UNIT PAPER NUMBER
1764
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 FATEMEH N. OLANG, ROBERT J. O’LEARY,
MICHELLE KORWIN-EDSON, and ROBERT E. QUINN
Appeal 2016-008635
Application 12/688,9511
Technology Center 1700
Before ROMULO H. DELMENDO, KAREN M. HASTINGS, and
JAMES C. HOUSEL, Administrative Patent Judges.
PER CURIAM.
DECISION ON APPEAL
The Appellants appeal under 35 U.S.C. § 134(a) from the Primary
Examiner’s final decision to reject claims 1—12, 14, and 21—28.2 We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 The Applicants (hereinafter “Appellants”) state that the real party in
interest is “OCV Intellectual Capital, LLC.” Appeal Brief filed on April 23,
2015, hereinafter “Appeal Br.,” 3.
2 Appeal Br. 13—24; Reply Brief filed on December 10, 2015, hereinafter
“Reply Br.,” 2—5; Examiner’s Answer (notice emailed on August 19, 2015),
hereinafter “Ans.,” 2—19; Final Office Action (notice emailed on November
21, 2014) hereinafter “Final Act.,” 2—20.
Appeal 2016-008635
Application 12/688,951
A. BACKGROUND
The subject matter on appeal relates to spray foam compositions used
to fill cavities, cracks, and crevices to enhance the sealing and insulating
properties of buildings. Specification, hereinafter “Spec.,” 12. The spray
foam compositions include a plasticizer, which according to the Appellants,
permits the inclusion of other materials that may add functionality and/or
cost savings to the compositions, reduces the viscosity of the second part of
the compositions so the first and second parts may be mixed to form a
homogeneous mixture, allows the compositions to be delivered with
standard spray equipment, and permits toxic components within a
polyfimctional aziridine to be diluted and/or reacted, which reduces health
risks for those coming into contact with the compositions. Id. 20, 26, 45,
46, 63.
Representative claim 1 is reproduced from page 26 of the Appeal
Brief (Claims Appendix), as follows (emphases added):
1. A two-part foamable composition for forming a foam, the
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; and
a second component including:
a cross-linking agent consisting of a polyfunctional
aziridine wherein the polyfunctional aziridine is [2,2-
bis[3-(aziridin-1 -yl)propanoyloxymethyl] -3 -
hydroxypropyl] 3-(aziridin-l-yl)propanoate,
a plasticizer, and
a base,
wherein said plasticizer has no acidic protons to react with
said polyfunctional aziridine crosslinking agent;
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wherein the first component and the second component are
separated until formation of the foam;
wherein the acid and the base react to form a blowing
agent;
and wherein an amount of ethyleneimine present in the
second component is less than 0.03 jug/g of the second
component.
B. REJECTIONS ON APPEAL
On appeal, the Examiner maintains several rejections, which are as
follows (Ans. 2—19; Final Act. 2—20):
I. provisionally, claims 1—12, 14, and 21—28 as being
unpatentable under nonstatutory obviousness-type double
patenting over claims 6, 18, 20, and 41—43 of copending
Application 11/893,474 in view of Benzoflex 2088
Plasticizer;3
II. claims 1—12, 14, and 21—28 as being unpatentable under
35 U.S.C. § 103(a) over Gosiewski et al.4 (Gosiewski) in
view of Travis,5 Anderson et al.6 (Anderson), Rogmann
et al.7 (Rogmann), and Xama-7,8 and as evidenced by
3 Eastman Product Data Sheet for “Benzoflex™ 2088 Plasticizer,”
http://www.eastman.com (first publication date unknown). The Appellants
do not contest the prior art status of this publication. See, e.g., Appeal Br.
13-24.
4 US 5,945,461 A, issued Aug. 31, 1999.
5 US 3,874,914, issued Apr. 1, 1975.
6 US 7,385,020 B2, issued June 10, 2008.
7 US 2007/0004846 Al, published Jan. 4, 2007.
8 Xama®7, version 2, ichemco, 2004.
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Ethyleneimine;9 and
III. claims 1—12, 14, and 21—28 as being unpatentable under
35 U.S.C. § 103(a) over Travis in view of Gosiewski,
Rogmann, and Xama-7, and as evidenced by
Ethyleneimine.
C. DISCUSSION
Rejection I
Claims 1—12, 14, and 21—28 are provisionally rejected on the ground
of nonstatutory obviousness-type double patenting as being unpatentable
over claims 6, 18, 20, and 41—43 of copending Application 11/893,474 in
view of Benzoflex 2088 Plasticizer.
Appellants do not set forth arguments regarding the double patenting
rejection or otherwise acknowledge the double patenting rejection in the
Appeal Brief. Therefore, we summarily affirm the Examiner’s provisional
non-statutory obviousness-type double patenting rejection.
Rejection II
Claims 1—12, 14, and 21—28 are rejected as being unpatentable under
35 U.S.C. § 103(a) over Gosiewski in view of Travis, Anderson, Rogmann,
and Xama-7, and as evidenced by Ethyleneimine. The Appellants do not
9 Environmental Protection Agency entry for “Ethyleneimine (Aziridine),”
http://www.epa.gov/ttn/atw/hlthef/ehtyl-mi.html (first publication date
unknown). The Appellants do not contest the prior art status of this
publication. See, e.g., Appeal Br. 13—24.
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Application 12/688,951
argue the claims separately, so we select claim 1 as representative of the
issues discussed below.
The Appellants contend the applied references do not disclose or
suggest the use of polyfimctional aziridine in a foam composition, as recited
in claim 1. Appeal Br. 14—17. The Appellants further argue there would
have been a lack of a reasonable expectation of success because the applied
references do not disclose or suggest the use of polyfimctional aziridine in a
foam composition. Id. at 19—20.
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, and polyacrylates in
acrylic acid and/or methacrylic acid monomers), and an acid (part of a
foaming agent), and a second part including calcium carbonate (part of a
foaming agent), polymerization catalysts, and a plasticizer, with a
crosslinking agent as an additional component that may be added. Id. at 4—
6. The disclosure of Gosiewski supports these findings. Gosiewski 3:5—67,
5:60-65, 6:4—11, 9:61—64.
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 cross
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linking agent from the polymer to prevent premature crosslinking by placing
the crosslinking agent in the second part. Id. at 5. The Appellants do not
dispute this reasoning. Appeal Br. 14—22.
Second, the Examiner finds Gosiewski does not disclose the specific
crosslinking agent recited in claim 1. Id. at 6. The Examiner finds Travis
discloses an adhesive composition in which polyfunctional aziridine is used
to improve adhesion to a substrate. Id. at 6—7. The disclosure of Travis
supports these findings. See Travis 2:45—56, 4:67—5:3. In addition, the
Examiner finds Xama-7 discloses [2,2-bis[3-(aziridin-l-
yl)propanoyloxymethyl]-3-hydroxypropyl] 3-(aziridin-1 -yl)propanoate and
that this type of aziridine cures acrylic emulsions and provides various
advantages, such as a faster cure time, improved strength and adhesion,
flexibility, and solvent resistance. Id. at 7. 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 by using the specific polyfunctional aziridine disclosed
by Xama-7 as a crosslinking agent to ensure fast curing and because it is a
commercially useful crosslinking agent for the types of resins disclosed by
Gosiewski. Id. at 7—8.10
10 Third, to address the particular plasticizer recited in claim 1, the Examiner
finds Anderson and Rogmann disclose coating compositions in which
benzoate esters are used as plasticizers, as well as polyfunctional aziridine as
a crosslinking agent. Ans. 8. The Examiner concludes it would have been
obvious to a person having ordinary skill in the art to modify Gosiewski, as
modified by Travis and Xama-7, to use benzoate ester as a plasticizer, as
disclosed by Anderson and Rogmann, because it would have involved the
substitution of one equivalent for another. Id. at 9. The Appellants do not
dispute this reasoning. Appeal Br. 14—22.
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We share the Examiner’s conclusion as to the second difference. As
the Examiner finds, Gosiewski discloses a foam that can include a
crosslinking agent (i.e., curing agent) as an additional component, although
it does not disclose using aziridine as the crosslinking agent. Gosiewski
9:61—64. Significantly, however, Xama-7 discloses the specific
polyfunctional aziridine recited in claim 1 as a crosslinking agent for
carboxyl-containing acrylic emulsions11 and provides reasons (e.g., a faster
cure time, improved strength and adhesion, flexibility, and solvent
resistance)12 to use the specific aziridine. Therefore, the combination of
Gosiewski, Travis, and Xama-7 would have suggested using the specific
polyfunctional aziridine of Xama-7 as the crosslinking agent disclosed by
Gosiewski at column 9, lines 61—64.
The Appellants contend there would have been a lack of reason to use
the particular polyfunctional aziridine recited in claim 1 because it was
known that ethyleneimine was a known toxic impurity of this aziridine. Id.
at 20-21. This argument is unpersuasive because the combination of
Gosiewski and Xama-7 would have resulted in the use of the specific
polyfunctional aziridine with a low content of ethyleneimine. Specifically,
Xama-7 discloses that the ethyleneimine content for the specific
polyfunctional aziridine is less than 10 ppm. Xama-7, 1 (column 1: Product
Specifications Table). Thus, Xama-7 discloses a range that overlaps with
the ethyleneimine range recited in claim 1, which establishes a prima facie
case of obviousness. In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003).
Moreover, the Examiner concludes it would have been obvious to a person
11 Xama-7, 1 (column 1: Description)
12 Xama-7, 1 (column 1: Application), 2 (Market Uses Table).
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having ordinary skill in the art to lower the amount of ethyleneimine—an
admittedly known toxic material—in the composition suggested by the
combination of the applied references. Ans. 26—27. The Appellants do not
identify a reversible error in the Examiner’s conclusion.
The Appellants further argue one of ordinary skill in the art would not
have looked to references directed to coating compositions to address the
problems of foams, citing the O’Leary Declaration executed on February 1,
2012 (Appeal Br., Evid. Appendix B) for support. Appeal Br. 19. The
Examiner, however, finds the O’Leary Declaration has not been entered into
the record. Ans. 25. That finding has not been shown to be erroneous. As
indicated by the Examiner, the O’Leary Declaration was filed in Application
No. 11/893,474 and not in the current application. See Appeal Br., Evid.
Appendix B 1.
The Appellants assert 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 and, even if it were
obvious to make such a modification, the Appellants’ “a crosslinking agent
consisting of a polyfunctional aziridine” language in claim 1 excludes the
catalyst of Gosiewski. Appeal Br. 17—18; Reply Br. 2-4. To support this
argument, the Appellants assert Gosiewski discloses a particular curing
agent that is responsible for the properties desired in its foam and this curing
agent is the catalyst, which one of ordinary skill in the art would have
recognized to be different in bonding, structure, and expected mode of
reactivity. Appeal Br. 17—18.
These arguments do not identity a reversible error in the Examiner’s
rejection. The catalyst of Gosiewski functions as a polymerization catalyst
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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, including the polymerization catalyst.
Id. at 5:19-37; 9:61-64; see also Appeal Br. 17 (“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, functions as a crosslinking agent. Ans.
4. Moreover, as discussed above, the disclosures of Travis and Xama-7
demonstrate that polyfimctional aziridine is known in the art as a
crosslinking agent that provides various advantages. Therefore, the
disclosures of Travis and Xama-7 support the Examiner’s reason to modify
Gosiewski in view of Travis and Xama-7 to use the specific polyfunctional
aziridine of claim 1 as a crosslinking agent.
In addition, the Appellants contend the claimed foam compositions
provide unexpected results, citing the Olang Declaration executed on April
15, 2013 (Appeal Br., Evid. Appendix A) for support. Appeal Br. 21—22.
The Olang Declaration describes tests to demonstrate the difference between
polyfimctional aziridine and benzoyl peroxide (i.e., an embodiment of the
catalyst of Gosiewski) by using each in a two-part foamable composition.
Appeal Br., Evid. Appendix A 2—\. This test does not demonstrate
unexpected results over Gosiewski, which discloses both a polymerization
catalyst and a crosslinking agent, because it compares a polymerization
catalyst (i.e., the benzoyl peroxide) to a crosslinking agent (i.e., aziridine).
These are different components of a foam composition that have different
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functions. Moreover, this test is a single test that is not commensurate in
scope with claim 1, which encompasses more than one specific two-part
foamable composition. See In re Grasselli, 713 F.2d 731, 743 (Fed. Cir.
1983); In re Clemens, 622 F.2d 1029, 1035 (CCPA 1980).
The Olang Declaration further describes tests to determine the amount
of ethyleneimine in the headspace above various plasticizer/polyfunctional
aziridine mixtures, saying the amount of ethyleneimine was lower than “the
68ppm ethyleneimine presented in headspace of Xama-7.” Appeal Br.,
Evid. Appendix A 5—6. However, the Olang Declaration only states the
ethyleneimine content for Xama-7 without providing laboratory data (e.g.,
test temperature or other conditions) to corroborate the ethyleneimine result
asserted for Xama-7, especially given the Xama-7 publication’s disclosure
of a polyfunctional aziridine having less than 10 ppm. Therefore, the Olang
Declaration is accorded little weight for a showing of unexpected results
with respect to ethyleneimine content or that the ethyleneimine of Xama-7
would not have the ethyleneimine content recited in claim 1.
The Olang Declaration further includes a determination of shelf
stability for the plasticizer/polyfunctional aziridine mixtures. However, the
declaration does not include a comparison to the closest prior art. “[W]hen
unexpected results are used as evidence of nonobviousness, the results must
be shown to be unexpected compared with the closest prior art.” In re
Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991). Based on the
foregoing, the Appellants’ evidence of unexpected results is entitled to little
weight.
In response to the Examiner’s finding in the Examiner’s Answer that
Gosiewski discloses its composition may include additional components and
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may achieve a wide range of properties, including a low modulus product or
a rigid or semi-rigid product, the Appellants argue Gosiewski teaches away
from the claimed foam composition because Gosiewski discloses a rigid
foam and the Appellants’ foam is meant to be a soft, flexible foam for use as
sealants and insulators. Reply Br. 4—5. This argument is unpersuasive
because it does not correctly interpret the Examiner’s finding or the
disclosure of Gosiewski, which is not limited to rigid foams. The Examiner
correctly finds that Gosiewski discloses a range of properties for its foam,
including stiffness that “can vary from a very low modulus rubber-like
product to a rigid or semi-rigid product with high load bearing capability.”
Gosiewski 9:48—54. Thus, Gosiewski does not teach away from the claimed
foam composition.
In view of the above, a preponderance of the evidence supports the
Examiner’s rejection.
The Appellants do not argue claims 2—12, 14, and 21—28 separately
from claim 1. Appeal Br. 16—22.
For these reasons and those discussed in the Examiner’s Answer, we
uphold the Examiner’s § 103(a) rejection of claims 1—12, 14, and 21—28
over Gosiewski in view of Travis, Anderson, Rogmann, and Xama-7, and as
evidenced by Ethyleneimine.
Rejection III
Claims 1—12, 14, and 21—28 are rejected as being unpatentable under
35 U.S.C. § 103(a) over Travis in view of Gosiewski, Rogmann, and Xama-
7, and as evidenced by Ethyleneimine.
The Appellants assert “one of skill in the art would not have combined
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the coatings of Travis with the blowing agent of Gosiewski to transform
Travis to a foam.” Appeal Br. 23.
Appellants’ argument is persuasive. The Examiner finds Travis
discloses an adhesive composition but does not disclose that the composition
is foamable. Ans. 12—13. The Examiner finds Gosiewski discloses a two-
part composition including a blowing agent provided by an acid and a base
and finds Rogmann discloses a coating composition including an aziridine
cross linking agent and a benzoate ester plasticizer. Id. at 13—14. The
Examiner concludes it would have been obvious to modify Travis in view of
Gosiewski and Rogmann to provide an acid and base separately in the
composition of Travis so a foaming adhesive with a low apparent density is
provided, as disclosed by Gosiewski, and to include the benzoate ester of
Rogmann as a commercially available plasticizer and equivalent substitute.
Id. at 15.
This rationale is not sufficient to explain why it would have been
obvious to modify the adhesive composition of Travis into a foam
composition. The Examiner provides no findings that Travis contemplated a
foam for its adhesive composition and provides no reasoning why it would
have been obvious to transform the adhesive composition of Travis into a
foam of low apparent density. The “low apparent density” cited by the
Examiner13 is a description of a property for the foam of Gosiewski but is
not an explanation why one of ordinary skill in the art would have made
such a modification or otherwise desired such a property for the adhesive
composition of Travis. Therefore, the Examiner has not provided articulated
reasoning with some rational underpinning why one of ordinary skill in the
13 Ans. 15.
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art would have undertaken such a change in the composition of Travis.
‘“[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness.’” KSR Intern. Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)
(quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006).
In view of this deficiency, it appears the Examiner has engaged in
impermissible hindsight in the rejection over Travis, Gosiewski, Rogmann,
and Xama-7, and as evidenced by Ethyleneimine. A fact finder must be
aware “of the distortion caused by hindsight bias and must be cautious of
arguments reliant upon ex post reasoning.” Id. at 421 (citing Graham v.
John Deere Co., 383 U.S. 1,36 (1966) (warning against a “temptation to
read into the prior art the teachings of the invention in issue”)).
The Examiner finds Xama-7 discloses the particular aziridine cross
linking agent recited in claim 1 but does not rely upon Xama-7, or the
Ethyleneimine reference, to provide a basis for changing the adhesive
composition of Travis into a foam composition. Ans. 16—18.
In view of the above, we cannot uphold the Examiner’s § 103
rejection over Travis in view of Gosiewski, Rogmann, and Xama-7, and as
evidenced by Ethyleneimine.
D. SUMMARY
On the record before us, we:
A. affirm the provisional nonstatutory obviousness-type double
patenting rejection of claims 1—12, 14, and 21—28 as being unpatentable over
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claims 6, 18, 20, and 41—43 of copending Application 12/688,951 in view of
Benzoflex 2088 Plasticizer;
B. affirm the rejection of claims 1—12, 14, and 21—28 as being
unpatentable under 35 U.S.C. § 103(a) over Gosiewski in view of Travis,
Anderson, Rogmann, and Xama-7, and as evidenced by Ethyleneimine; and
C. reverse the rejection of claims 1—12, 14, and 21—28 as being
unpatentable under 35 U.S.C. § 103(a) over Travis in view of Gosiewski,
Rogmann, and Xama-7, and as evidenced by Ethyleneimine.
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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