Ex Parte Ziser et al

Patent Trial and Appeal BoardJul 13, 2016

11301704 (P.T.A.B. Jul. 13, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 111301,704 12/12/2005 34947 7590 07115/2016 LANXESS CORPORATION 111 RIDC PARK WEST DRIVE PITTSBURGH, PA 15275-1112 FIRST NAMED INVENTOR Torsten Ziser 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. CH-8388/H62653US 2241 EXAMINER MCCULLEY, MEGAN CASSANDRA ART UNIT PAPER NUMBER 1767 NOTIFICATION DATE DELIVERY MODE 07/15/2016 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): ipmail@lanxess.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte TORSTEN ZISER, THOMAS FRUH, LUDGER HEILIGER, and WERNER OBRECHT Appeal2015-000422 Application 11/301,704 Technology Center 1700 Before MICHAEL P. COLAIANNI, GEORGE C. BEST, and DEBRA DENNETT, Administrative Patent Judges. COLAIANNI, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. Â§ 134 the rejection of claims 1-13, 19, 20, 22-30, 34--37, and 39--41. We have jurisdiction over the appeal pursuant to 35 U.S.C. Â§ 6(b). We AFFIRM. Appellants' invention is directed to thermosetting plastics compositions containing crosslinked microgels and processes for the production thereof (Spec. 1 :6-8). Claim 1 is illustrative: 1. Thermosetting plastics composition, containing at least one thermosetting plastics material (A) and at least one Appeal2015-000422 Application 11/301,704 crosslinked micro gel (B), of which the average primary particle diameter is from 5 to 5 00 nm, wherein the thermosetting plastics material (A) is selected from the group consisting of diallyl phthalate resins, epoxide resins, aminoplastics, urea-formaldehyde resins, melamine- formaldehyde resins, phenolics such as melamine- phenol-formaldehyde resins, phenol-formaldehyde resins, cresol-formaldehyde resins, resorcinol-formaldehyde resins, xylenol-formaldehyde resins, furfuryl alcohol-formaldehyde resins, unsaturated polyester resins, polyurethane resins, reaction injection-moulded polyurethane resins, furan resins, vinyl ester resins, polyester melamine resins, and mixtures of diallyl phthalate resins with diallyl isophthalate resins; and further wherein the microgel (B) comprises an epoxy functional group and being free of carboxyl group and the salts of said carboxyl group. Appellants appeal the following rejections: 1. Claims 1, 2, 4--8, 10-13, 19, 20, 22-30, 34--37, and 39--41 are rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Fukuchi (US 5,229,434 issued July 20, 1993) in view ofDeGraaf (US 5,942,563 issued August 24, 1999) and Gajria (US 4,539 ,348 issued September 3, 1985). 2. Claims 3 and 9 are rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Fukuchi in view of DeGraaf, Gajria and Fryd (US 5,077, 17 5 issued December 31, 1991 ). Regarding rejection (1 ), Appellants argue the claims as a group (App. Br. 10). We select claim 1 as representative of the group. 37 C.F.R. 2 Appeal2015-000422 Application 11/301,704 Â§ 41.37(c)(iv) (2013). Claims 2, 4--8, 10-13, 19, 20, 22-30, 34--37, and 39- 41 will stand or fall with our analysis of claim 1. Regarding rejection (2), Appellants merely argue that Fryd does not cure the alleged deficiencies of Fukuchi, DeGraaf and Gajria argued with regard to rejection (1) (App. Br. 13-14). Accordingly, claims 3 and 9 will stand or fall with our analysis of the rejection of claim 1. FINDINGS OF FACT & ANALYSIS The Examiner finds that Fukuchi teaches all the limitations of claim 1, except for an epoxy functional group on the microgel and the thermosetting plastics recited in claim 1 (Non-Final Act. 2-3). The Examiner finds that DeGraaf teaches a similar micro gel as Fukuchi and teaches reacting the carboxyl groups on the microgel with a multifunctional epoxy resin thereby imparting epoxy functionality (Non-Final Act. 3). The Examiner concludes that it would have been obvious to react Fukuchi's microgel with the multifunctional epoxy to obtain an epoxy functional microgel as in DeGraaf because DeGraaf teaches that epoxy functionalized micro gels do not have an excessive viscosity increase due to esterification when dispersed in water unlike carboxyl functional microgels. Id. The Examiner further finds that Gajria teaches a composition comprising crosslinked polymeric microgels and a thermosetting plastic composition including some of the resins recited in the list of claim 1 (Non- Final Act. 3). The Examiner concludes that it would have been obvious to substitute the specific thermosetting plastic material of Gajria for the polymer of Fukuchi in order to provide coatings that are stable dispersions in water and have improved adhesion to metal surfaces as taught by Gajria. Id. 3 Appeal2015-000422 Application 11/301,704 Appellants argue that Fukuchi teaches away from using an epoxy functionality on the microgel particles (App. Br. 11 ). Appellants contend that DeGraaf' s method uses a three-step method and is so different from Fukuchi' s one-step method that one of ordinary skill in the art would not have combined DeGraaf's method with Fukuchi's method in a predictable manner (App. Br. 11 ). Appellants contend that nothing will result from replacing Fukuchi's divinylbenzene with the high multifunctional epoxide resin of DeGraaf since DeGraaf' s resin is missing a necessary double bond to crosslink the styrene. Id. Appellants argue that the function of Fukuchi' s microgels are totally different than those of Gajria (App. Br. 12). Appellants contend that Fukuchi teaches microgels intended for the manufacture of printed circuit boards, machine plates for printing, and semi-conductor elements, whereas Gajria is directed to forming stable aqueous dispersions of heat-durable film-forming resins (App. Br. 12-13). Appellants contend that Fukuchi and Gajria have totally different technical effects and are not analogous art (App. Br. 13). We have fully considered Appellants' arguments and the Examiner's rejection, we find that the preponderance of the evidence favors the Examiner's obviousness conclusion. We adopt the Examiner's response to Appellants' arguments on pages 2 to 4 of the Examiner's Answer as our own. We add the following primarily for emphasis. Contrary to Appellants' arguments, Fukuchi' s discovery of a process for quantitatively attaching a functional group other than an epoxy group without isolating fine microgel particles from an aqueous dispersion does not constitute a teaching away from using epoxy functionalities (col. 2, 11. 50-57). The nature of Fukuchi's teachings at column 2, lines 50-57 is not 4 Appeal2015-000422 Application 11/301,704 that epoxy functionalities cannot be used. Rather, Fukuchi's teaching highlights that Fukuchi's contribution is the addition of unsaturated double bond functionalities and hydroxyl or carboxyl group functionalities to microgel particles, a transformation that had been difficult to achieve (Fukuchi, col. 1, 11. 58---63; col. 2, 11. 35--46). Indeed, Fukuchi teaches using an epoxy functionality on compound (B), the compound that has the desired reactive functional group, that reacts with the tertiary ammonium salts and bonds compound (B) to the microgel particle thereby imparting the microgel with the desired chemical functionality (col. 2, 11. 35--47). Fukuchi further contains a broader disclosure at column 2, lines 14--17 which does not limit the functional groups that may be attached to the microgels. Specifically, column 2, lines 14--17 discloses that the object of Fukuchi's invention is to provide "a novel process for the production of reactive microgels which makes it possible to attach various functional groups quantitatively." We do not find that Fukuchi's disclosure teaches away in that it does not indicate that "the line of development flowing from the reference's disclosure is unlikely to be productive the result sought by applicant." In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). Fukuchi's disclosure reads more as a preference for particular chemical functionalities other than epoxy. Appellants' arguments regarding DeGraaf' s process having three steps versus Fukuchi' s one step process and the substitution of Fukuchi' s divinylbenzene are not persuasive. The Examiner relies on DeGraaf to teach that it was known to form microgels with epoxy functionalities (Non-Final Act. 3). The Examiner is not proposing to bodily incorporate DeGraaf's process into Fukuchi's process. Rather, the Examiner's rejection is based 5 Appeal2015-000422 Application 11/301,704 upon reacting Fukuchi's microgels (i.e., compound A) with DeGraaf's multifunctional epoxy resin that imparts the functionality to the microgels (Non-Final Act. 3). The divinylbenzene is used by Fukuchi in making the polymer for the reactive microgels (i.e., compound A) that is then reacted with the functionality imparting compound (i.e., compound B) (Fukuchi col. 6, 11. 45---68). The Examiner is not proposing to substitute DeGraaf s multifunctional epoxy resin for Fukuchi' s divinylbenzene. Appellants' arguments have not shown reversible error with the Examiner's stated rejection. We are unpersuaded by Appellants' contention that Gajria and Fukuchi are non-analogous art so that one of ordinary skill would not have combined their teachings. The Examiner finds that Gajria and Fukuchi are each directed to forming substrate coatings using reactive microgels and are thus in the same field of endeavor (Non-Final Act. 12). Appellants do not dispute this or otherwise show error with the Examiner's findings. On this record, we affirm the Examiner'sÂ§ 103 rejections. DECISION The Examiner's decision is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l). ORDER AFFIRMED 6