Ex Parte Popp

Patent Trials and Appeals BoardApr 18, 2019

13203006 - (D) (P.T.A.B. Apr. 18, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/203,006 09/09/2011 32692 7590 04/22/2019 3M INNOVATIVE PROPERTIES COMPANY PO BOX 33427 ST. PAUL, MN 55133-3427 FIRST NAMED INVENTOR Matthias Popp 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. 65164US011 3929 EXAMINER NGUYEN,HAS ART UNIT PAPER NUMBER 1766 NOTIFICATION DATE DELIVERY MODE 04/22/2019 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): LegalUSDocketing@mmm.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MATTHIAS POPP Appeal2018-007043 Application 13/203,006 Technology Center 1700 Before JEFFREY T. SMITH, DONNA M. PRAISS, and MERRELL C. CASHION, JR., Administrative Patent Judges. CASHION, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE This is an appeal under 35 U.S.C. Â§ 134(a) from a final rejection of claims 1, 3, 6, 8, 10, 12-15, 18, and 20-22. We have jurisdiction under 35 U.S.C. Â§ 6(b ). We AFFIRM. Appeal2018-007043 Application 13/203,006 The invention is generally directed to a precursor composition for a curable adhesive comprising a combination of two curing agents. Spec. 2-3. Claim 1 is illustrative of the subject matter on appeal and is reproduced below: 1. A precursor composition for a curable adhesive, said precursor composition comprising two parts, part (A) and part (B), which are separated from each other, wherein part (B) comprises the following components: (i) one or more epoxy resins, wherein part (A) comprises the following components: (ii) a combination of at least two curing agents, the first curing agent comprising a cycloaliphatic amine, wherein the cycloaliphatic amine is a primary amine containing one or more cycloaliphatic residues selected from cyclohexyl, cycloheptyl, and cyclopentyl residues and combinations thereof, and the second curing agent being different from the first curing agent comprising a linear aliphatic amine which is a polyether amine, and wherein the precursor composition further comprising either in part (A) or in part (B) or in both (A) and (B); (iii) a first core-shell polymer toughening agent, (iv) a second core-shell polymer toughening agent, and (v) a filler material selected from particles having a particle size from about 0.5 to about 500 Âµm, the first core-shell polymer having a core comprising a silicone polymer or copolymer and the second core shell polymer having a core comprising a diene polymer or copolymer. App. Br. 11 (Claims Appendix) (indentation and paragraphing added). 2 Appeal2018-007043 Application 13/203,006 Appellant 1 requests review of the following rejections from the Examiner's Final Office Action: I. Claims 1, 3, 6, 8, 10, 12-15, 18, and 22 rejected under pre-AIA 35 U.S.C. Â§ I03(a) as unpatentable over Malone (US 2009/0308534 Al, published December 17, 2009), Goeb (WO 2008/089410 Al, published July 24, 2008), Grace ("SHIELDEX Non-Toxic Anti-Corrosive Pigments," copyright 2012 at http://www. grace. corn/ engineeredmaterials/productsandapplications/ coating s/ anti-corrosivepigments/C3 03 AC3 ACS. aspx ), and Hubschmid (US 2008/0200589 Al, published August 21, 2008). II. Claims 20 and 21 rejected under 35 U.S.C. Â§ I03(a) as unpatentable over Malone, Goeb, Grace, Hubschmid, and Gordon (US 6,645,341 Bl, issued November 11, 2003). OPINION Rejection I (Claim 1) Appellant presents arguments for claim 1 only and relies on these arguments to address the rejections of claims 3, 6, 8, 10, 12-15, 18, and 22. App. Br. 5. Accordingly, we select claim 1 as representative of the subject matter claimed and decide the appeal as to Rejection I based on the arguments made by Appellant in support of the patentability of claim 1. After review of the respective positions Appellant provides in the Appeal and Reply Briefs2 and the Examiner provides in the Final Action and 1 The real party in interest is identified as the 3M Company (formerly known as Minnesota Mining and Manufacturing Company) of St. Paul, Minnesota and its affiliate 3M Innovative Properties Company of St. Paul, Minnesota. App. Br. 2. 2 We have considered the arguments in the Reply Brief filed June 27, 2018, in our deliberation to the extent that they are consistent with the Appeal Brief. We note, however, that Appellant presents a new argument for the 3 Appeal2018-007043 Application 13/203,006 the Answer, we affirm the Examiner's prior art rejection of claims 1, 3, 6, 8, 10, 12-15, 18, and 22 for essentially the reasons the Examiner presents. We add the following for emphasis. Claim 1 is directed to a precursor composition for a curable adhesive comprising at least two curing agents, the first curing agent comprising a cycloaliphatic amine, wherein the cycloaliphatic amine is a primary amine containing one or more cycloaliphatic residues selected from cyclohexyl, cycloheptyl, and cyclopentyl residues and combinations thereof, and the second curing agent comprising a linear aliphatic amine which is a polyether amme. We refer to the Examiner's Final Office Action for a complete statement of the rejection of independent claim 1. Final Act. 3-7. Briefly, the Examiner finds that the combined teachings of Malone, Goeb, and Grace teach a precursor composition for a curable adhesive that differs from the claimed invention in that Malone does not disclose the claimed first and second curing agents. Final Act. 4---6. The Examiner finds Hubschmid discloses an epoxy resin composition comprising an epoxy resin, an impact modifier such as a core-shell polymer and a hardener mixture comprising a first time addressing the reference to Goeb. Reply Br. 2-3 (as paginated starting from the cover sheet as page 1 ). Arguments not presented in the Appeal Brief will not be considered when filed in a Reply Brief, absent a showing of good cause explaining why the argument could not have been presented in the Appeal Brief. See Ex parte Borden, 93 USPQ2d 1473, 1474 (BP AI 2010) (informative) ("The reply brief is not an opportunity to make arguments that could have been made during prosecution, but were not. Nor is the reply brief an opportunity to make arguments that could have been made in the principal brief on appeal to rebut the Examiner's rejections, but were not."); see also 37 C.F.R. Â§ 41.41(b)(2). Appellant has not shown good cause why these arguments should now be considered. 4 Appeal2018-007043 Application 13/203,006 Jeffamine D-230 (linear polyether amine), isophoronediamine or dimethylmethylene-bis-cyclohexylamine ( cycloaliphatic amines), and core- shell impact modifiers. Final Act. 6; Hubschmid Abst., Tables 2, 11 (Examples Hand I), ,r,r 9, 28-30, 73, 94, 117, 138. The Examiner finds that Hubschmid is in the same field of epoxy adhesive compositions as cited in Malone. Final Act. 7. Both references are also directed to structural adhesives. Hubschmid ,r,r 1, 9, 12; Malone ,r 2. The Examiner determines that it would have been obvious to one having ordinary skill in the art to use Hubschmid's hardener mixture of Jeffamine and cycloaliphatic amine compounds in place of Malone's hardener mixture because the hardener mixture comprising J effamine and the core-shell impact modifiers result in an improved impact resistance for epoxy resins used as structural adhesives. Final Act. 7. Appellant argues that a comparison of Hubschmid' s compositions made with a Jeffamine hardener alone (Examples A and B) with Hubschmid's compositions made with a mixture of hardeners (Examples H and I-polyoxyalkyleneamine with various cycloaliphatic amines) shows that Examples H and I compositions are inferior in terms of fracture toughness when compared to Examples A and B compositions. App. Br. 6; Hubschmid Tables 8 and 11. According to Appellant, the difference in fracture toughness directly contradicts the Examiner's assertion that combining the cycloaliphatic amines with Jeffamine would not "materially affect the basic/novel characteristics" of the hardener composition. App. Br. 6 ( citing Final Act. 13). We are unpersuaded of reversible error. It is well settled that a reference may be relied upon for all that it discloses and not merely the 5 Appeal2018-007043 Application 13/203,006 preferred embodiments as suggested by Appellant. See Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) ("[A]ll disclosures of the prior art, including unpreferred embodiments, must be considered." (quoting In re Lamberti, 545 F.2d 747, 750 (CCPA 1976))); In re Fracalossi, 681 F .2d 792, 794 n.1 (CCP A 1982) ( explaining that a prior art reference's disclosure is not limited to its examples). As noted by the Examiner, Hubschmid contemplates the use of a single hardener or a mixture of hardeners in the epoxy composition. Ans. 10-12; see Hubschmid ,r 29 ("In addition to the JeffamineÂ® type hardener, further hardeners may be included in the epoxy composition."). Appellant's argument is premised on a preferred embodiment for Hubschmid. Appellant does not direct us to any portion of Hubschmid or other objective evidence in support of the assertion that Hubschmid's compositions made with a mixture of hardeners are inferior to compositions made with a single hardener. In fact, we note that the fracture toughness values for Examples H and I (both using a mixture of hardeners) are of the same magnitude as the fracture toughness value for Example B (using a single hardener). Hubschmid Tables 8 and 11 (compare Example B (fracture toughness of 2600 +/- 626 J/m2) with Examples Hand I (2285 +/- 140 and 2294 +/- 117 J/m2, respectively)). Based on this, one skilled in the art would have had a reasonable expectation that Hubschmid's compositions made with a mixture of hardeners would perform as well as Hubschmid' s compositions made with a single hardener. In re O'Farrell, 853 F.2d 894, 904 (Fed. Cir. 1988) ("For obviousness underÂ§ 103, all that is required is a reasonable expectation of success."). Thus, Appellant has not adequately 6 Appeal2018-007043 Application 13/203,006 explained how Hubschmid's preferred embodiment detracts from its broader teaching of using a mixture of hardeners in the compositions. Appellant additionally argues that data in the Specification demonstrate the criticality of combining a first curing agent comprising a cycloaliphatic amine and the second curing agent comprising a linear aliphatic amine. App. Br. 7. When evidence of secondary considerations is submitted, we begin anew and evaluate the rebuttal evidence along with the evidence upon which the conclusion of obviousness was based. In re Rinehart, 531 F .2d 1048, 1052 (CCPA 1976). The burden of establishing unexpected results rests on Appellant. Appellant may meet this burden by establishing that the difference between the claimed invention and the closest prior art was an unexpected difference. See In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972). The unexpected results must be established by factual evidence, and attorney statements are insufficient to establish unexpected results. See In re Geisler, 116 F.3d 1465, 1470-71 (Fed. Cir. 1997). Further, a showing of unexpected results supported by factual evidence must be reasonably commensurate in scope with the degree of protection sought by the claims on appeal. In re Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983); In re Clemens, 622 F.2d 1029, 1035 (CCPA 1980). According to Appellant, data in Examples 13 and 14 show that a combination of first and second amine curing agents improves the mechanical strength, as expressed as floating roller peel strength of the cured adhesive compositions in particular at temperature ranges from about 0Â°C to about -55Â°C, more particularly at -55Â°C, when compared to the use of a single curing agent (see example 15). App. Br. 7; Spec. 25 (Table 11). We 7 Appeal2018-007043 Application 13/203,006 first note that both Examples 13 and 14 test the same epoxy Part B7 (see Spec. 22 (Table 5) and Spec. 25 (Table 11 )) and the same cycloaliphatic amine (Ancamine 2264) and linear aliphatic amine (Ancamine K54) curing agents in the various Part A's (Spec. 25 (Table 10)). After weighing Appellant's evidence in support of patentability, we agree with the Examiner's determination that a preponderance of the evidence weighs in favor of obviousness. First, Appellant directs us to no portion of the Specification that acknowledges the data of Examples 13 and 14 as demonstrating unexpected results. In addition, it is not clear that the showing to which Appellant directs our attention compares the claimed invention against the closest prior art (Malone). Further, as noted above, the data in Examples 13 and 14 only test a single epoxy Part B and a single mixture of curing agent Part A, the mixture itself comprising a single example of a cycloaliphatic amine (Ancamine 2264) and of linear aliphatic amine (Ancamine K54) curing agents. Appellant has not explained adequately why these limited components are representative of the broad scope of components encompassed by the claim so as to provide an adequate basis to support a conclusion that other embodiments falling within the claim will behave in the same manner. Thus, we agree with the Examiner's determination that the showing is not reasonably commensurate in scope with the claim. Ans. 12. We have considered Appellant's arguments with respect to Grace but find them unavailing for the reasons the Examiner presents. App. Br. 6; Ans. 13. Appellant's arguments do not address the Examiner's reliance on Goeb for the teaching of amorphous silica fillers SHIELD EX ACS as 8 Appeal2018-007043 Application 13/203,006 additives for curable epoxy resins. Final Act. 5; Ans. 13. As noted by the Examiner, Grace was relied upon for its teaching that it is known that amorphous silica fillers SHIELD EX ACS have a particle size of 5 microns. Thus, the arguments do not address the rejection the Examiner presents. Appellant argues that the prior art gives no reason to combine a first core-shell polymer having a core comprising a silicon polymer or copolymer and a second core shell polymer having a core comprising a diene polymer or copolymer as Malone merely acknowledges that core shell particles having a core comprising a silicone polymer or copolymer exist. App. Br. 8. We are unpersuaded by this argument for the reasons the Examiner presents. Final Act. 4; Ans. 13-14. Appellant does not dispute that Malone teaches silicone and butadiene core shell polymers. App. Br. 8. Instead, Appellant disputes that Malone does not teach the claimed combination of "a first core-shell polymer having a core comprising a silicone polymer or copolymer and the second core shell polymer having a core comprising a diene polymer or copolymer." Id. In support of this argument, Appellant directs us to Example 8 in the Specification as evidence of unexpected results in using the claimed combination of core shell polymers. App. Br. 8; Spec. 23 (Table 6). We have considered Appellant's arguments and evidence, but we agree with the Examiner's determination that the showing is not reasonably commensurate in scope with the claim for the reasons the Examiner presents and the reasons given above with respect to the previously discussed showing. Ans. 14--15. Absent an adequate showing of criticality for choosing the specifically claimed core shell polymers, Appellant has not explained sufficiently why one skilled in the art, using no more than 9 Appeal2018-007043 Application 13/203,006 ordinary creativity, would not have been capable of combining Malone's silicone and butadiene as the desired core shell polymers, particularly given Malone's guidance that the first and second materials are typically different. Malone ,r 34; see KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,421 (2007) ("A person of ordinary skill is also a person of ordinary creativity, not an automaton."); see also In re Sovish, 769 F.2d 738, 743 (Fed. Cir. 1985) (presuming skill on the part of one of ordinary skill in the art.). Accordingly, we affirm the Examiner's prior art rejections of claims 1, 3, 6, 8, 10, 12-15, 18, and 22 under 35 U.S.C. Â§ 103(a) for the reasons presented by the Examiner and given above. Rejection II (Claims 20 and 21) The Examiner rejected claims 20 and 21 separately under 35 U.S.C. Â§ 103(a) over Malone, Goeb, Grace, Hubschmid, and Gordon. Final Act. 10-11. In addressing this separate rejection, Appellant relies principally on the arguments presented when discussing independent claim 1. App. Br. 9. Appellant did not substantially address or further distinguish the additional cited secondary reference based on the additional limitations of the respectively rejected claims. Id. Accordingly, we sustain the Examiner's prior art rejection of claims 20 and 21 under 35 U.S.C. Â§ 103(a) (Rejection II) for the reasons presented by the Examiner and given above. ORDER The Examiner's prior art rejections of claims 1, 3, 6, 8, 10, 12-15, 18, and 20-22 under 35 U.S.C. Â§ 103(a) are affirmed. 10 Appeal2018-007043 Application 13/203,006 TIME PERIOD No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.I36(a)(l)(iv). AFFIRMED 11