Ex Parte Yan et al

Patent Trial and Appeal BoardAug 28, 2017

13381564 (P.T.A.B. Aug. 28, 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. 13/381,564 02/08/2012 Yuan-Yong Yan P07101US5A (BJ015.0WOnUS) 8604 48985 7590 08/30/2017 RRinOFSTONF AMFRTPAS TNC EXAMINER 10 East Firestone Blvd. AKRON, OH 44317 EASHOO, MARK ART UNIT PAPER NUMBER 1767 NOTIFICATION DATE DELIVERY MODE 08/30/2017 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): iplawpat@bfusa.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte YUANG-YONG YAN, ZENGQUAN QIN, and XIAO-DONG PAN Appeal 2017-002274 Application 13/381,564 Technology Center 1700 Before BEVERLY A. FRANKLIN, JEFFREY B. ROBERTSON, and JANE E. INGLESE, Administrative Patent Judges. ROBERTSON, Administrative Patent Judge. DECISION ON APPEAL Appeal 2017-002274 Application 13/381,564 STATEMENT OF THE CASE Appellants1 appeal under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 2—6, 8, 9, 12, 15—17, 22, and 25—29.2 (App. Br. 8.) We have jurisdiction pursuant to 35 U.S.C. § 6(b). We REVERSE. THE INVENTION The Specification describes a method of providing polymers by free radical polymerization of a plurality of monomers, where one of the monomers includes an aryl group having more than one directly bonded hydroxyl group. (Spec. |4.) Claim 22, reproduced below, is representative of the subject matter on appeal (paragraphing added for clarity). 22. A method for providing an ethylenically unsaturated polymer that comprises multiple hydroxyaryl functional groups, said method comprising radically initiating polymerization of a plurality of monomers that comprises at least one polyene, at least one C8-C20 vinyl aromatic compound and at least one compound defined by general formula (I), CH2=CHR1 (I) where R1 is an aryl group having from 2 to 5 -OR substituents with R being a protecting group which is non reactive during said polymerization but which can be removed by a process that does not destroy or react with ethylenic unsaturation in said ethylenically unsaturated polymer, said polymer comprising from 1 to 12 B mer resulting from incorporation of said at least one compound defined by 1 According to the Appellants, the Real Party in Interest is Bridgestone Corporation. (Appeal Brief filed April 1, 2016, hereinafter “App. Br.,” 3.) 2 Claims 1,7, 10, 11, 13, 14, 18—21, 23, and 24 have been canceled. (See App. Br. 7.) 2 Appeal 2017-002274 Application 13/381,564 general formula (I), at least three of said B mer constituting a contiguous block, said at least one C8-C20 vinyl aromatic compound providing 20 to 50% of the constituent mer units of said polymer. (App. Br. 20, Claims Appendix.) THE REJECTIONS The Examiner rejected claims 2—6, 9, 12, 22, and 25—29 under 35 U.S.C. § 103(a) as obvious over Asahi3 and Long4 as evidenced by Appellants’ Specification. The Examiner also rejected claims 8 and 15—17 under 35 U.S.C. § 103(a) as obvious over Asahi and Long as evidenced by the Specification, and further in view of Kanagawa.5 (Examiner’s Answer mailed October 7, 2016, hereinafter “Ans.” 2—5.) Claims 2—6, 9, 12, 22, and 25—29 ISSUE The Examiner found, inter alia, that Asahi discloses a method for preparing an elastomer through radically initiated polymerization from monomers including a conjugated diene, an aromatic vinyl compound and a vinyl phenol of formula (I). (Ans. 2.) The Examiner found that Asahi discloses that the vinyl phenol of formula (I) has 1—4 hydroxyl groups. (Id.) 3 JP-B-49 041116 to Asahi Chemical, published on July 11, 1974. Citations to English Translation of record. 4 EP 0 455 191 A2, published November 6, 1991. 5 United States Patent 3,993,714, issued in November 23, 1976. 3 Appeal 2017-002274 Application 13/381,564 The Examiner found that Asahi fails to disclose a protecting group recited in the claims. (Ans. 3.) The Examiner found that Long discloses the use of protecting groups in polymerizing conjugated dienes with vinyl phenols, followed by deprotection following polymerization. (Ans. 3.) The Examiner concluded that it would have been obvious to protect the phenol groups in Asahi in order to prevent reactivity of phenols during polymerization as taught in Long. (Id.) Appellants contend, inter alia, that although Long discloses that 4- vinylphenol undergoes self-polymerization, which argues for protection of the phenol during free radical polymerization, Asahi indicates that its materials did not suffer from the same issues. (App. Br. 15; Reply Brief filed December 6, 2016, 11.) Thus, Appellants argue there is an insufficient reason to modify Asahi to incorporate protective groups as disclosed in Long. (Id.) Accordingly, the dispositive issue on appeal is: Have Appellants shown that the Examiner reversibly erred in concluding it would have been obvious to provide for protecting the hydroxyl groups present in Asahi during a radical initiating polymerization in view of the disclosure in Long? PRINCIPLES OP LAW ‘“[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.’” KSRInt’l. Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007), quoting In re Kahn, 441 P.3d 977, 988 (Led. Cir. 2006). 4 Appeal 2017-002274 Application 13/381,564 ANALYSIS We agree with Appellants that based on the evidence relied upon in this appeal, the Examiner’s rationale for protecting the hydroxyl groups in Asahi during radically initiating polymerization in view of Long is not supported by adequate rational underpinnings. Long discloses that “it has been demonstrated that pure 4-vinylphenol undergoes self-initiated polymerization” and that “in order to obtain high molecular weight linear polymers, a protected phenol must be polymerized and subsequently deblocked.” (P. 2,11. 9-12.) In contrast, Asahi discloses a vinyl phenol compound having at least one hydroxyl group used as a monomer in preparing a heat resistant and oxidation resistant elastomer. (Asahi, paragraph bridging pages 1—2, General formula (I).) Asahi discloses that through the course of polymerization “[n]o problem is arisen by copolymerizing vinylphenols.” (Asahi, p. 3, 1st full |.) Thus, the Examiner’s reason for combining the references that “Long et al. suggest that it would prevent reactivity of the phenols during polymerization which can lead to poor polymerization” (Ans. 3, 7) is not adequately supported by the evidence relied upon in this appeal as Asahi expressly discloses there is no issue with respect to polymerizing vinyl phenols as part of its general disclosure. We understand Asahi’s teaching to apply to all species of the formulas for hydroxyl containing vinyl aromatic compounds disclosed therein absent sufficient evidence to the contrary, including those having more than one hydroxyl group. Accordingly, although Long discloses a particular problem with pure 4-vinyl phenol, there is insufficient evidence relied upon in this appeal to support the position that one of ordinary skill in the art would have reasonably expected there to be 5 Appeal 2017-002274 Application 13/381,564 an issue in co-polymerizing the vinyl compounds having at least one hydroxyl group as disclosed in Asahi, so as to provide a reason for one of ordinary skill in the art to protect the hydroxyl groups during radically initiated polymerization. Accordingly, we reverse the Examiner’s rejection of the claims 2—6, 9, 12, 22, and 25-29. Claims 8 and 15—17 Claims 8 and 15—17 depend from claim 22. The Examiner’s additional reliance on Kanagawa for terminal functionalization of the polymer does not rectify the deficiency identified above. (See Ans. 5.) Accordingly, we reverse the Examiner’s rejection of claims 8 and 15—17 as well. CONCLUSION Appellants have shown that the Examiner reversibly erred in concluding it would have been obvious to provide for protecting the hydroxyl groups present in Asahi during a radical initiating polymerization in view of the disclosure in Long. DECISION We reverse the Examiner’s decision rejecting claims 2—6, 8, 9, 12, 15-17, 22, and 25-29 under 35 U.S.C. § 103(a). REVERSED 6