Momentive Performance Materials GmbH

Patent Trials and Appeals BoardAug 19, 2020

14512071 - (D) (P.T.A.B. Aug. 19, 2020)

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. 14/512,071 10/10/2014 Roland Wagner 1302-785 (MPM2012171) 1070 52774 7590 08/19/2020 MOMENTIVE PERFORMANCE MATERIALS INC. c/o Dilworth & Barrese, LLP 1000 Woodbury Road Suite 405 Woodbury, NY 11797 EXAMINER LOVE, TREVOR M ART UNIT PAPER NUMBER 1611 NOTIFICATION DATE DELIVERY MODE 08/19/2020 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): usptomail@dilworthbarrese.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ________________ Ex parte ROLAND WAGNER, SEBASTIAN MAASS, NARAYAN MUKHERJEE, KARL-HEINZ SOCKEL, and KATHARINA STREICHER 1 ________________ Appeal 2020-001396 Application 14/512,071 Technology Center 1600 ________________ Before JEFFREY N. FREDMAN, JOHN G. NEW, and MICHAEL A. VALEK, Administrative Patent Judges. NEW, Administrative Patent Judge. DECISION ON APPEAL 1 We use the term “Appellant” to refer to the “applicant” as defined in 37 C.F.R. § 1.142. Appellant identifies Momentive Performance Materials GMBH as the real party-in-interest. App. Br. 4. Appeal 2020-001396 Application 14/512,071 2 SUMMARY Appellant files this appeal under 35 U.S.C. § 134(a) from the Examiner’s Final Rejection of claim 1 as unpatentable under 35 U.S.C. §112(a) as lacking written descriptive support. Claim 1 also stands rejected as unpatentable under 35 U.S.C. § 103 as being obvious over Wagner et al. (US 2012/0289649 A1, November 15, 2012) (“Wagner”)2. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. NATURE OF THE CLAIMED INVENTION Appellant’s claimed invention is directed to organofunctional polysiloxanes comprising hydroxyl polyester groups made by reaction of epoxy functional polyorganosiloxanes and oligmeric polyesters based on polyhydroxy carboxylic acids. Abstr. 2 Appellant also argues, with respect to claims 17, 18, and 29, that independent claim 1 was amended on September 5, 2018 to incorporate the subject matter of canceled claim 16. Ap. Br. 15. Appellant asserts that claims 17 and 18, which depend from claim 16, were then amended to depend upon claim 1. Id. Furthermore, Appellant argues, claim 29, which depends from claim 1, was also added on September 5, 2018. Id. at 15–16. Appellant therefore contends that claims 17, 18, and 29 should not be subjected to the original restriction requirement, or withdrawn from consideration. Id. We are unable to address this argument as it is not within the jurisdiction of the Board. Pursuant to 37 C.F.R. § 41.31(a)(1), only claims that have been twice rejected (not withdrawn) can be appealed to the Board. We consequently do not reach Appellant’s argument. Appeal 2020-001396 Application 14/512,071 3 REPRESENTATIVE CLAIM Claim 1 is the sole claim on appeal and recites: 1. A polysiloxane compound having the general formula (I): [MaDbD*cTdQe]f (I) wherein M = R1R2R3SiO1/2; D = R4R5SiO2/2; D* = R6R7SiO2/2; T = R8SiO3/2; Q = SiO4/2; With a = l–10 b = 0–1000 c = 0–1000 d = 0–l e = 0–1 f = 1–10 wherein R1, R2, R3, R4, R5, R6 and R8 are each independently selected from the group consisting of monovalent hydrocarbon Appeal 2020-001396 Application 14/512,071 4 groups having from 1 to 8 carbon atoms, and an aryl or alkaryl hydrocarbon group of from 6 to 22 carbon atoms, or R7; R7 is selected from the group consisting of R9, R10 and R11; wherein R9 is selected from the group consisting of -Z-(A-E1)y, -Z-E2 and -Z-NH-C(O)-R12, wherein Z is a bivalent or trivalent straight-chained, cyclic or branched, saturated or unsaturated C2 to C20 hydrocarbon residue which can comprise one or more groups selected from -O-, -NH-, and can be substituted by one or more OH groups, A is a bivalent residue selected from the group consisting of and E1 is selected from the group consisting of E2 and E3 wherein E2 = -O-C(O)-R12 wherein R12 is a branched hydrocarbon residue with up to 100 carbon atoms, which can comprise one or more groups selected from -O-, -C(O)-, and is substituted by one or more OH groups, Appeal 2020-001396 Application 14/512,071 5 E3 = wherein E2 is defined above, and x = 1–4, y =1 or 2 R10 is selected from the group consisting of -Z-(A-E4)y, -Z-E5 and -Z-NH-C(O)-R13 wherein Z and A are defined above, E4 is selected from the group consisting of E5 and E6 wherein E5 = -O-C(O)-R13, wherein R13 is a straight-chained, cyclic or branched, saturated or unsaturated hydrocarbon residue with up to 9 carbon atoms, which can comprise one or more groups selected from -O-, -NH-, -NR14-, -C(O)-, and is substituted by one or more OH groups, wherein R14 is a straight-chained, cyclic or branched, saturated or unsaturated hydrocarbon residue with up to 6 carbon atoms, E6 = wherein E5 is defined above, and xʹ = 1–4, yʹ = 1 or 2 Appeal 2020-001396 Application 14/512,071 6 R11 is selected from the group consisting of -Z-(A-E7)y, -Z-E8 and -Z-NH-C(O)-R12 wherein Z and A are defined above, E7 is selected from the group consisting of E3 and E9 wherein E8 = -O-C(O)-R15 wherein R15 is a straight-chained, cyclic or branched, saturated or unsaturated hydrocarbon residue with 10 to 50 carbon atoms, which can comprise one or more groups selected from -O-, -NH-, - NR16-, -C(O)-, )-, and is optionally substituted by one or more OH groups, wherein R16 is a straight-chained, cyclic or branched, saturated or unsaturated hydrocarbon residue with up to 6 carbon atoms, E9 = wherein E8 is defined above, and xʹʹ = 1–4, yʹʹ = 1 or 2, with the proviso that the polysiloxane compound comprises R9; wherein R12 is Appeal 2020-001396 Application 14/512,071 7 wherein R19 = R17 or H, R17 is C1 to C22-alkyl, fluoro-substituted C1 to C22-alkyl or aryl, w = 1–3, R18 = H or provided that the total number of carbon atoms in R12 is 5 to 70 and at least one ester bond is present in R12. App. Br. 18–21 (emphasis added). ISSUES AND ANALYSES We decline to adopt the Examiner’s findings, reasoning, and conclusion that the claims on appeal lack written descriptive support or are prima facie obvious over the cited prior art. We address the arguments raised by Appellant below. A. Rejection of claim 1 under 35 U.S.C. § 112(a) Issue Appellant argues that the Examiner erred in finding that Appellant’s Specification does not support claim 1’s recitation of “at least one ester bond is present in R12.” App. Br. 10. Analysis The Examiner notes that claim 1 has been amended to recite “at least one ester bond is present in R12.” Final Act. 4. The Examiner finds that Appeal 2020-001396 Application 14/512,071 8 Appellant relies upon paragraph [0034] of the Specification as supporting this new limitation. Id. However, the Examiner finds that there is insufficient guidance in the Specification such that a person of ordinary skill in the art would know if the residue being referred to is R12 or the broader residue structure. App. Br. 4– 5. Furthermore, the Examiner finds, the only place within R12 (unless further substituted) that at least one ester bond could be present would be at the C=O in the second structure of R12. Id. at 5. The Examiner notes that R18 is defined as H only, and the structure on the same line as R18 in claim 1 is a second alternative for R12. Id. The Examiner finds that, if the structure were an alternative of R18, then R18 would be defined as including R18, which, the Examiner reasons, is not possible. Id. The Examiner finds that there are no esters within R12 without the inclusion of at least the O-C(O) group of E2 and, therefore the Specification would require inclusion of E2 for the ester to be present, and that that constitutes new matter. Id. Appellant argues that, in addition to the ester bond already contained in E1 or E2 (i.e., -O-C(O)-R12 ester), claim 1 requires the presence of at least another ester bond in R12. App. Br. 11. Appellant points to paragraph [0034] of the Specification In particular, paragraph [0034] as supporting this limitation. Paragraph [0034] discloses: In another preferred embodiment, R12 is wherein R19 = R17 or H, Appeal 2020-001396 Application 14/512,071 9 w = 1–3, [and] R18 = H or provided that the total number of carbon aton1s in the dendrimer like residue R12 is 5 to 70 and at least one ester bond is present in the residue structure. Appellant contends that a person of ordinary skill in the art would comprehend that paragraph of [0034] focuses on the definition of R12 which is referred to as “a dendrimer like residue” and later as “the residue structure.” App. Br. 12. According to Appellant, R18 is defined in the claim as being either a hydrogen or R12. Id. Appellant asserts that, when one R18 residue in the R12 structure is substituted hydrogen, the other R18 must constitute the alternative R12 residue, so as to provide an ester bond linking R18 to R12, as required by claim 1 and disclosed by paragraph [0034]. Id. We agree with Appellant’s reasoning. The test for the adequacy of the written descriptive support in the Specification is “whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.” Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. March 2010). Claim 1 requires that E2 = -O-C(O)-R12. Consequently, R12 is linked by an ester group, i.e., E2, to the rest of the claimed composition. We agree with the Examiner that this ester bond cannot be considered as a part of R12. Rather, R12 is defined in the claim, and also disclosed in paragraph [0034] of the Specification, as being: Appeal 2020-001396 Application 14/512,071 10 which does not include the ester bond of E2. Furthermore, claim 1 recites that R19 is either H or “C1 to C22-alkyl, fluoro-substituted C1 to C22-alkyl or aryl, w = 1–3.” R19 thus provides no ester bonding in R12. R18 is defined in both claim 11 and the Specification as being either H or: Now, if R19 is substituted with either of its alternatives, and if both R18 sites are substituted with H, then there is no ester bond in the resulting R12 structure (which includes R19 and both R18s). However, if even one of the R18 sites is substituted with the non-H alternative R18 structure, than the resulting structure, pictured below with R12 positioned horizontally and R18 positioned vertically at right, becomes: Appeal 2020-001396 Application 14/512,071 11 which necessarily contains an ester bond (in rectangle). Or, to put it more simply, and as the language of both claim 1 and paragraph [0034] of Appellant’s Specification require, as long as both R18 sites are not substituted with H, then at least one ester bond is necessarily part of R12, as required by claim 1. One of ordinary skill in the art would find this to be a reasonable interpretation of the text in the Specification and the corresponding language in claim 1. We therefore conclude that a person of ordinary skill in the art would have understood, at the time of invention, that Appellant was in possession of the claimed invention, and we reverse the Examiner’s rejection upon this ground. B. Rejection of claim 1 under 35 U.S.C. § 103 Issue Appellant argues that the Examiner erred in finding that Wagner teaches or suggests the R12 structure of claim 1. App. Br. 14. Analysis The Examiner finds, inter alia, that Wagner teaches that E is -O-C(O)-R2, and that R2 can be a branched-chained, saturated or unsaturated hydrocarbon resin with up to 50 carbon atoms and is substituted by one or more OH groups. Final Act. 6–7. The Examiner finds that structure R2 of Wagner includes Appellant’s claimed R12 (e.g., when R12 is defined as w = 2, R18 is H, and R19 is H, and in which the overarching residue has an ester bond in “E”). Id. Appeal 2020-001396 Application 14/512,071 12 The Examiner acknowledges that Wagner, while teaching almost all of the variables and structure of R12, does not directly specify the exact orientation of R12. Final Act. 7. However, the Examiner concludes, it would have been obvious to a person of ordinary skill in the art to utilize a structure within the scope of R2 of Wagner (such as HO-(CH2)5-COOH). Id. The Examiner further concludes that a skilled artisan would have been motivated to so modify the compositions of Wagner, because Wagner teaches that R2 can be a branched-chained, saturated or unsaturated hydrocarbon resin with up to 50 carbon atoms, which is substituted by one or more OH groups. Id. We are not persuaded that the Examiner has established a prima facie case that claim 1 is obvious over the teachings and suggestions of Wagner. Wagner teaches that: E2 = -O-(CO)-R2, and that: R2=is [sic] a straight-chained, cyclic or branched, saturated or unsaturated hydrocarbon residue with up to 50 hydrocarbon atoms, which can comprise one or more groups selected from - O-, -NH-, -NR3-, -C(O)-, and is substituted by one or more OH groups, wherein R3= a straight-chained, cyclic or branched, saturated or unsaturated hydrocarbon residue with up to 6 hydrocarbon atoms. Wagner ¶¶ 18–19; see also claim 21. We agree with the Examiner that R2 of Wagner thus potentially includes certain species of R12 of claim 1. However, “[t]he fact that a claimed compound may be encompassed by a disclosed generic formula does not by itself render the compound obvious.” In re Baird, 16 F.3d 380, 382 (Fed. Cir. 1994). Here, the language of Appeal 2020-001396 Application 14/512,071 13 Wagner is very broad, and the scope of R2 of Wagner encompasses a very large genus of possible chemical structures. Wagner also teaches a single exemplary embodiment of R2: Wagner ¶ 315. We note that this embodiment comprises an ester bond, although paragraph [0019] of Wagner does not require one. Nor, with the exception of the ester group, does this embodiment otherwise resemble or correspond to R18 of Appellant’s claim 1. We further note that R2 of Wagner, as described in paragraph [0019] has an upper limit of “50 hydrocarbon atoms” [sic], whereas claim 1 recites an upper limit of R12 of 70 carbon atoms. Thus, some molecules within the genus of claim 1’s R12 (i.e., those with greater than 50 carbon atoms) fall outside the boundaries of Wagner’s R2 genus. Our reviewing court has held that: [A] sufficient description of a genus … requires the disclosure of either a representative number of species falling within the scope of the genus or structural features common to the members of the genus so that one of skill in the art can “visualize or recognize” the members of the genus. Ariad, 598 F.3d at 1350 (Fed. Cir. 2010). We cannot conclude, given the very broad language of paragraph [0019] of Wagner, and the single exemplary embodiment of Wagner’s paragraph [0315], that the teachings and suggestions of Wagner are such that a skilled artisan could “visualize or recognize” the members of the genus generally or, specifically, elect to employ claim 1’s R12 genus out of the vast array of possible compositions claimed within Wagner’s R2. The Examiner has failed to articulate any Appeal 2020-001396 Application 14/512,071 14 substantive reasoning as to why a skilled artisan would find it obvious that the claimed R12 genus would fall within the scope of the R2 genus of Wagner. And because the prior art does not obviously teach or suggest R12 as being part of the genus of Wagner’s R2, we conclude that the Examiner has failed to establish a prima facie case that claim 1 is obvious over R2 of Wagner, we reverse the Examiner’s rejection of claim 1. CONCLUSION The Examiner’s rejection of claim 1 under 35 U.S.C. § 112(a) for lack of written description is reversed. The Examiner’s rejection of claim 1 under 35 U.S.C. § 103 is reversed. REVERSED Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1 112(a) Written description. 1 1 103 Wagner 1 Overall Outcome 1