Ex Parte Athey et al

Patent Trial and Appeal Board

May 1, 2017

13125481 (P.T.A.B. May. 1, 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.
13/125,481 04/21/2011 Phillip S. Athey 66010-US-PCT 5225
109 7590 05/03/2017
The Dow Chemical Company
P.O. BOX 1967
2040 Dow Center
Midland, MI 48641
EXAMINER
RIOJA, MELISSA A
ART UNIT PAPER NUMBER
1768
NOTIFICATION DATE DELIVERY MODE
05/03/2017 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):
FFUIMPC@dow.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PHILLIP S. ATHEY, NATHAN WILMOT, RICHARD KEATON,
DAVID A. BABB, CECILE BOYER, and TIMOTHY MORLEY
Appeal 2016-002931
Application 13/125,4811
Technology Center 1700
Before CHUNG K. PAK, DONNA M. PRAISS, and
JEFFREY R. SNAY, Administrative Patent Judges.
PRAISS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants seek our review under 35 U.S.C. § 134 of the final
rejection of claims 1, 8, 9, and 11—14. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.
1 The real party in interest is identified as Dow Global Technologies LLC, a
wholly owned subsidiary of The Dow Chemical Company. App. Br. 2.
Appeal 2016-002931
Application 13/125,481
STATEMENT OF THE CASE
The subject matter in this appeal relates to an isocyanate trimerisation
catalyst system for trimerising isocyanates, and, specifically, rigid
polyisocyanurate/polyurethane foams therefrom that have flame retardant
traits and reduced smoke generation attributable to the presence of
isocyanurate rings. Spec. 1—2. Representative claim 1 is reproduced below:
1. A trimerisation catalyst system comprising:
a phosphatrane cation; and
an isocyanate-trimer inducing anion;
wherein said trimerisation catalyst system has a trimerisation
activation temperature in the range of equal to or less than 73 °C;
and
wherein said phosphatrane cation has the following structure
wherein Ei is selected from the group consisting of N, O, S, P,
As, and Se; wherein E2 is selected from the group consisting of
N, O, S, P, As, and Se; wherein E3 is selected from the group
consisting of N, O, S, P, As, and Se; wherein Ri is selected from
the group consisting of H, Ci-Cig, P, Si, and any combination
thereof; wherein R2 is selected from the group consisting of H,
Ci-Cis, P, Si, and any combination thereof; wherein R3 is
selected from the group consisting of H, Ci-Cig, P, Si, and any
combination thereof; wherein D is selected from the group
consisting of N, P, C, As, and Si; and wherein X is selected from
the group consisting of H, Ci-Cig, P, Si, N and any combination
thereof.
2
Appeal 2016-002931
Application 13/125,481
App. Br. i (Claims App’x). Claim 14 depends from claim 1 and further
recites “wherein said trimerisation catalyst system is 2,8,9-trimethyl-2,5,8,9-
tetraaza-l-phosphabicyclo[3,3,3]undecane monoacetate.” Id. atv.
Claims 1, 8, 9, and 11—14 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Verkade2 and claims 1, 8, 9, and 11—13 also stand rejected
under 35 U.S.C. § 102(b) as anticipated by Bublewitz.3 Ans. 2—5; Final Act.
2-6.
DISCUSSION
At the outset, we note that Appellants argue the claims as a group for
each rejection. App. Br. 4—11. Because Appellants do not separately argue
the claims, we confine our discussion to claim 1 and whether that claim is
anticipated by Verkade and/or Bublewitz.
Anticipation by Verkade
The Examiner finds, and Appellants do not dispute, that Verkade
discloses the compound 2,8,9-trimethyl-2,5,8,9-tetraaza-l-
phosphabicyclo[3,3,3]undecane as well as its protonated form, however,
Appellants contend that the Examiner erred in finding that Verkade teaches
the leaving group (Z) is an acetoxy group/acetate ion. Final Act. 2—3; App.
Br. 6. Appellants argue that “[bjecause [Verkade] specifies that ‘Z’ is either
an acetoxy group (-OAc), an isocyanoacetate group of a nitroalkene group, it
necessarily follows that the protonated form of 2,8,9-trimethyl-2,5,8,9-
tetraaza-l-phosphabicyclo[3,3]undecane cannot be 2,8,9-trimethyl-2,5,8,9-
2 Verkade et al., US 5,672,717, issued Sept. 30, 1997 (“Verkade”).
3 Bublewitz et al., US 2007/0173557 Al, published July 26, 2007
(“Bublewitz”).
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Appeal 2016-002931
Application 13/125,481
tetraaza-l-phosphabicyclo[3,3]undecane acetate, but would rather be of a
cyanoacetate form.” App. Br. 7. According to Appellants, the protonated
form would be of a cyanoacetate form, rather than an acetate form, thus, the
Examiner has not established that the protonated form is 2,8,9-trimethyl-
2,5,8,9-tetraaza-l-phosphabicyclo[3,3,3]undecane acetate. App. Br. 7—8.
Appellants also argue that Verkade “fails to disclose anything about such
compositions being used as trimerisation catalyst systems.” Id. at 8.
The Examiner responds that Verkade expressly or inherently teaches
all elements of the claims because products of identical chemical
composition cannot have mutually exclusive properties. Ans. 5—6. The
Examiner maintains that the compound of claim 14, 2,8,9-trimethyl-2,5,8,9-
tetraaza-l-phosphabicyclo[3,3,3]undecane acetate, which has an activation
temperature in the range of equal to or less than 73 °C., is anticipated by the
salt of Verkade’s compound 12(Y). Id. at 6. The Examiner finds that
Verkade discloses that Y may correspond to the leaving group Z wherein Z
is expressly set forth as an acetoxygroup/acetate ion in a preferred
embodiment.” Ans. 8 (citing Verkade 9:43—50, 9:59-65, 12:12—13, Scheme
A). The Examiner finds that Z is an acetoxy group in a preferred
embodiment {id., citing Verkade Scheme A, 9:59-62), and the strong, non­
ionic base (8) is the compound 2,8,9-trimethyl-2,5,8,9-tetraaza-l-
phosphabicyclo [3,3,3] undecane {id., citing Verkade 11:36-48).
The Examiner further finds that the compound 12(Y), complexed with
Y anions corresponding to Z, would be expected to comprise 2,8,9-
trimethyl-2,5,8,9-tetraaza-l-phosphabicyclo[3,3,3]undecane acetate and not
isocyanoacetate anions as alleged by Appellants because “the
isocyanoacetate anions present are indicated to react/condense with
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Application 13/125,481
nitroalkene (11), which [is] formed by the deprotonation and loss [of] the
leaving group (Z) of nitroalkane compound (9).” Id. at 9. The Examiner
finds that “condensation of the isocyanoacetate anions (1 [3]) with
nitroalkene (11) form the other product of the reaction, pyrrol ester
compound 1” shown in Scheme A below:
K* fSOs
\...... / '
CKCHsDO#*
&
§
8
n
i'r-
Id. at 9—10 (citing Verkade 11:63—12:8).
In the Reply Brief, Appellants assert that “the Examiner fails to
provide the required support and showing that [Verkade] discloses catalyst
system used as a trimerisation catalyst system.” Reply Br. 5—6. Regarding
the Examiner’s discussion of Scheme A in Verkade, Appellants contend that
the Examiner “attempts to expand the disclosure of [Verkade] to define ‘Z’
as acetoxy group/acetate ion.” Id. at 6. According to Appellants:
Because [Verkade] specifies that “Z” is either an acetoxy
group, an isocyanoacetate group of a nitroalkene group, it
necessarily follows that the protonated form of 2,8,9-trimethyl-
2.5.8.9- tetraaza-l-phosphabicyclo[3,3] undecane cannot be
2.8.9- trimethyl-2,5,8,9-tetraaza-1 -phosphabicyclo [3,3]
undecane acetate, but would rather be of a cyanoacetate form.
Accordingly, Applicants maintain that the Examiner’s
understanding of the reaction product is incorrect, and have
requested the Examiner to provide a declaration setting forth in
detail how the Schemes A and B disclose the claimed subject
matter of the present Application.
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Application 13/125,481
Id. at 7. Appellants further argue that “composition 12(Y) is an element and
part of the reaction Scheme A of [Verkade]” to produce pyrrol derivatives
including pyrrol, dipyrromethane and porphyrin compounds or,
alternatively, “reacting a nitroalkane or a nitroalkene with an
isocyanoacetate in the presence of a prophosphatrane ‘super base’ to prepare
the pyrrol compounds[,]” and not a trimerisation catalyst system. Id. at 8.
Thus, the dispositive issue arising from these contentions is:
Did Appellants show reversible error in the Examiner’s conclusion
that Verkade discloses the leaving group in its salt 12(Y) is an
acetoxygroup/acetate ion and would be expected to form 2,8,9-trimethyl-
2,5,8,9-tetraaza-l-phosphabicyclo[3,3,3]undecane acetate?
We do not find Appellants’ arguments persuasive.
As pointed out by the Examiner, Appellants are correct that Verkade
does not explicitly teach that its salt 12(Y) is a trimerization catalyst system
comprising an isocyanate trimer-inducing anion with an activation
temperature in the range of equal to or less than 73 °C. Final Act. 4.
However, if the prior art teaches the identical chemical structure, the
properties the claims recite are necessarily present. In re Spada, 911 F.2d
705, 709 (Fed. Cir. 1990). Here, Appellants do not adequately rebut the
Examiner’s finding that acetate ions and the acetate salt of Verkade’s
composition 12(Y) are formed in Verkade’s process, namely, 2,8,9-
trimethyl-2,5,8,9-tetraaza-1 -phosphabicyclo[3,3,3Jundecane acetate, which
would necessarily possess the property of having a trimerisation activation
temperature in the range of equal to or less than 73 °C. as recited in claim 1.
Appellants’ argument that the protonated form would necessarily be a
cyanoacetate form (App. Br. 7) is not supported by the cited appeal record.
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Application 13/125,481
Verkade states that in the preferred embodiment, “group Z is an acetoxy
group (—OAc), or a nitroalkene (compound 11) with an isocyanoacetate
(compound 10).” Verkade 9:61—63 (emphasis added). Therefore,
Appellants have not identified reversible error in the Examiner’s findings
regarding Verkade’s disclosure of an acetate form of 2,8,9-trimethyl-2,5,8,9-
tetraaza-1 -phosphabicyclo [3,3,3 Jundecane.
While Verkade relates to the preparation of pyrrol and oxazole
compounds (Verkade, Title), its teachings nevertheless anticipate the
claimed trimerisation catalyst system. “It is well settled that the recitation of
a new intended use for an old product does not make a claim to that old
product patentable.” In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997)
(citations omitted). Further, as the Examiner finds here, “if the prior art
teaches the identical chemical structure, the properties appellant discloses
and/or claims are necessarily present.” Ans. 6 (citing In re Spada, 911 F.2d
705, 709 (Fed. Cir. 1990)).
For the foregoing reasons, we affirm the Examiner’s decision to reject
claim 1 under 35 U.S.C. § 102(b) as anticipated by Verkade.
Bublewitz
The Examiner finds, and Appellants do not dispute, that Bublewitz
discloses a catalyst that is a salt formed from a protonated base and an anion
of a carboxylic acid where the protonated based may be the protonated base
of 2,8,9-trimethyl-2,5,8,9-tetraaza-l-phosphabicyclo[3,3,3]undecane, 2,8,9-
triisopropyl-2,5,8,9-tetraaza-1 -phosphabicyclo [3,3,3Jundecane, or 2,8,9-
triisobutyl-2,5,8,9-tetraaza-l-phosphabicyclo[3,3,3]undecanek, which are
each recited in Appellants’ claims 7—9. Final Act. 4—5. The Examiner
further finds that because Bublewitz teaches phosphatrane cations set forth
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Application 13/125,481
in Appellants’ Specification and several species of anion disclosed by
Appellants as suitable isocyanate trimer-inducing anions, the “catalyst taught
by [Bublewitz] would be reasonably expected to function as a trimerization
catalyst system comprising an isocyanate trimer-inducing anion with an
activation temperature in the range of equal to or less than 73°C.” Id. at 6.
Appellants contend that the Examiner erred by “fail[ing] to provide
the required reasoning as to why it is reasonable to expect that compositions
of [Bublewitz] would function as a trimerisation catalyst system with an
activation temperature in the range of equal to or less than 73 °C.” App. Br.
11 (emphasis omitted). Because Bublewitz relates to condensation-
crosslinked two component dental impression materials based on
alkoxysilyl-fimctional polyethers, Apellants contend that “a person of
ordinary [skill] in [the] art is not motivated to use any of the compositions
disclosed by [Bublewitz] as a trimerisation catalyst system.” Id.
The Examiner responds that Bublewitz “discloses an identical
chemical composition. A chemical composition and its properties are
inseparable. Therefore, if the prior art teaches the identical chemical
structure, the properties appellant discloses and/or claims are necessarily
present.” Ans. 12 (citing In re Spada, 911 F.2d at 709).
In the Reply Brief, Appellants reiterate arguments presented in its
Appeal Brief and contend that the “Examiner’s assertion fails to provide the
required KSR reasoning why [Bublewitz], which fails to even recognize
trimerization catalyst use, would provide the required activation temperature
in the range of equal to [or] less than 73° C.” Reply Br. 11.
As discussed above in connection with the anticipation rejection by
Verkade, even though Bublewitz relates to dental material based on
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Application 13/125,481
alkoxysilyl-functional polyethers containing a salt of a strong base as
catalyst (Bublewitz, Title), its teachings nevertheless anticipate the claimed
trimerisation catalyst system. “It is well settled that the recitation of a new
intended use for an old product does not make a claim to that old product
patentable.” In re Schreiber, 128 F.3d at 1477 (citations omitted). Further,
as the Examiner finds here, “if the prior art teaches the identical chemical
structure, the properties appellant discloses and/or claims are necessarily
present.” Ans. 6 (citing In re Spada, 911 F.2d 705, 709 (Fed. Cir. 1990)).
For the foregoing reasons, we affirm the Examiner’s decision to reject
claim 1 under 35 U.S.C. § 102(b) as anticipated by Bublewitz.
CONCLUSION
We affirm the Examiner’s decision to reject claims 1, 8, 9, and 11—14
as anticipated by Verkade and/or Bublewitz.
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)(v).
ORDER
AFFIRMED
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