Ex Parte Athey et alDownload PDFPatent Trial and Appeal BoardMay 1, 201713125481 (P.T.A.B. May. 1, 2017) Copy Citation 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”). 3 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 4 Appeal 2016-002931 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. 5 Appeal 2016-002931 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. 6 Appeal 2016-002931 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 7 Appeal 2016-002931 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 8 Appeal 2016-002931 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 9 Copy with citationCopy as parenthetical citation