Ex Parte WantlingDownload PDFPatent Trial and Appeal BoardMay 23, 201713692376 (P.T.A.B. May. 23, 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. 13/692,376 12/03/2012 Steven Joseph Wantling 08-20-FF01.US-CON 6566 759033249 Hexion Inc. 12650 Directors Drive, Suite 100 Stafford, TX 77477 05/25/2017 EXAMINER SHUKLA, KRUPA ART UNIT PAPER NUMBER 1787 NOTIFICATION DATE DELIVERY MODE 05/25/2017 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): tammy.hodges @ hexion.com lisa.jones @ hexion.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte STEVEN JOSEPH WANTLING1 Appeal 2016-000731 Application 13/692,376 Technology Center 1700 Before MARK NAGUMO, GEORGE C. BEST, and JULIA HEANEY, Administrative Patent Judges. NAGUMO, Administrative Patent Judge. DECISION ON APPEAL Steven Joseph Wantling (“Hexion”) timely appeals under 35 U.S.C. § 134(a) from the Final Rejection2 of claims 1—5 and 12— 18.3 We have jurisdiction. 35 U.S.C. § 6. We affirm. 1 The applicant under 37 C.F.R. § 1.46 is Hexion Inc. (“Hexion,” formerly known as Momentive Specialty Chemicals, Inc.), the real party in interest. (Appeal Brief, filed 22 April 2015 (“Br.”), 3.) 2 Office Action mailed 2 October 2014 (“Final Rejection”; cited as “FR”). 3 Remaining copending claims 6—11 have been withdrawn from consideration by the Examiner (FR 1, § 5a, at 1), and are not before us. Appeal 2016-000731 Application 13/692,376 OPINION A. Introduction4 The subject matter on appeal relates to a moisture resistance additive and composite panels, e.g., gypsum board or oriented strand board (“OSB”), prepared with such an additive. The ’376 Specification explains that it is desirable to increase the moisture resistance of such panels (Spec. 2 [0007], [0008]) as measured by, e.g., density, inter-board strength (“IB”), moisture absorption (“MA”), and thickness swelling (“TS”) {id. at 9 [0043], and 10, Tables 1 and 2). The moisture resistance additive of the invention is said to provide these benefits by including a triglyceride (i.e., a glycerol tri-ester of fatty acids {id. at 3 [0013])) having a saponification value5 of at least 150 and an iodine number6 of at least 35 {id.); and a non-ionic emulsifier that is a 4 Application 13/692,376, Triglyceride compositions useful for preparing composite panels and applications thereof filed 3 December 2012 as a continuation of 12/687,491, filed 14 January 2010, now U.S. Patent No. 8,343,634 (1 January 2013), which is a continuation-in-part of 12/360,655, filed 27 January 2009, now U.S. Patent No. 8,076,006 (13 December 2011). We refer to the “’376 Specification,” which we cite as “Spec.” 5 The Specification explains that the “saponification value is the milligrams of potassium hydroxide (KOH) required to saponify 1 g of sample and corresponds to the sum of an acid value and an ester value.” (Spec. 4 [0018].) 6 The Specification explains that the term “iodine number” is a measure of the degree of unsaturation of a sample (Spec. 3 [0014]—[0015]), and defines it as the equivalent grams of iodine absorbed by 100 g of sample {id. at 4 [0017]). 2 Appeal 2016-000731 Application 13/692,376 fatty acid ester of a polyalcohol, such as sorbitan, sucrose, or glycerine7 {id. at 5 [0025]). Claim 1 is representative and reads: A composite panel prepared using a moisture resistance additive useful for preparing composite panels, the composite panel comprising: gypsum, cellulose, or combinations thereof; and the moisture resistance additive, wherein the moisture resistance additive is provided as an emulsion comprising: a triglyceride having a saponification value of at least 150 and an iodine value of at least 35; at least one non-ionic emulsifier comprising a fatty acid ester of a polyalcohol; and water, wherein the moisture resistance additive is free of hydrocarbon wax. (Claims App., Br. 48; some indentation, paragraphing, and emphasis added.) Claim 5 depends from claim 1 and reads: The composite panel of claim 1 wherein the moisture resistance additive further comprises a compound or compounds selected from the group consisting of an amine, an inorganic base, and mixtures thereof, and at least partially saponify the triglyceride,-[sic] wherein 7 The Specification does not make clear the difference, if any, between a triglyceride (fatty acid tri-ester of glycerine (glycerol) and a non-ionic emulsifier that is a fatty acid ester of a polyalcohol. In any event, as discussed infra, we are not persuaded of harmful error regarding the treatment of nonionic emulsifiers in the appealed rejections. 3 Appeal 2016-000731 Application 13/692,376 the amine, when present, comprises from 0.5 to 3 weight percent of the emulsion, and wherein the inorganic base, when present, comprises from 0.5 to 6 weight percent of the emulsion, and mixtures thereof. (Claims App., Br. 48-49; some indentation and paragraphing added.) Independent claim 12 is similar to claim 1 but is drawn to the moisture resistance additive. Claim 17 depends from claim 12 and is similar to claim 5. (The recitation in claims 5 and 17 of a process step, rather than the product resulting from a process step, is anomalous. The Examiner, not unreasonably, has treated this recitation as a product-by-process limitation. It is also not clear why the phrase, “and mixtures thereof’ is repeated in claims 5 and 12. We trust these issues will be addressed appropriately in the event of any further examination.) The Examiner maintains the following grounds of rejection:8,9 A. Claims 1—4 and 12—16 stand rejected under 35 U.S.C. § 103(a) in view of the combined teachings of Sleeter10 and Roos.* 11 8 Examiner’s Answer mailed 25 August 2015 (“Ans.”). 9 Because this application was filed before the 16 March 2013 effective date of the America Invents Act, we refer to the pre-AIA version of the statute. 10 Ronald T. Sleeter, Material for enhancing water tolerance of composite boards, U.S. Patent No. 6,001,286 (1999). 11 Kenneth D. Roos, Triglyceride/wax replacement for conventional slack and emulsified waxes used in forest products based composites, U.S. Patent Application Publication 2005/0269728 A1 (2005). 4 Appeal 2016-000731 Application 13/692,376 Al. Claims 5, 17, and 18 stand rejected under 35 U.S.C. § 103(a) in view of the combined teachings of Sleeter, Roos, and Dieckmann.12 A2. Claims 5, 17, and 18 stand rejected under 35 U.S.C. § 103(a) in view of the combined teachings of Sleeter, Roos, and Wantling.13 A3—4 Claims 5, 17, and 18 stand rejected under 35 U.S.C. § 103(a) in view of further combinations of these references.14 B. Claims 1—4 and 12—16 stand rejected under 35 U.S.C. § 103(a) in view of the combined teachings of Sleeter, Merlin,15 and Roos. Bl—4 Claims 5, 17, and 18 are rejected under 35 U.S.C. § (a) further in view of various combinations of the base references with Dieckmann and Wantling.16 12 Dale J. Dieckmann and Wayne H. Nyberg, Partially saponified triglycerides, their methods of manufacture and use as polymer additives, U.S. Patent No. 6,201,053 B1 (2001). 13 Steven Wantling and Bonnie S. Zepka, Emulsions for lignocellulosic products, methods of their manufacture, improved lignocellulosic products and methods for their manufacture, U.S. Patent Application Publication 2006/0243323 Al (2006) issued as U.S. Patent No. 7,563,826 B2 (21 July 2009). 14 See FR 10—14 for a full statement of these rejections. 15 Merlin Martin Brubaker and Leo Phillip Hubbuch, Artificial leather, U.S. Patent No. 2,121,684 (1938). We follow the Examiner and Hexion in referring to this reference as “Merlin.” 16 See FR 16—26 for a full statement of these rejections. 5 Appeal 2016-000731 Application 13/692,376 B. Discussion The Board’s findings of fact throughout this Opinion are supported by a preponderance of the evidence of record. Generally, Hexion argues that the Examiner failed to establish a prima facie case of obviousness based on the applied references. Hexion does not present substantive arguments for patentability based on secondary considerations such as unexpected results in the 53-page principal Brief or in the Reply.17 More particularly, Hexion urges the Examiner erred in rejecting the independent claims because Sleeter is silent as to the triglyceride having a saponification value of at least 150, and because Sleeter does not teach or suggest a nonionic emulsifier that is a fatty acid ester of a polyol. (Br. 10- 11.) These arguments are not persuasive of harmful error. As the Examiner finds (FR 3,^7), Sleeter discloses a number of the same triglycerides named in the supporting ’376 Specification. The same materials would have been expected to have the same or substantially the same properties. To the extent the saponification value is a measure of purity, e.g., a measure of the number of ester groups relative to the amount of non-saponifiable groups present in the sample, Hexion has not directed our attention to any disclosure that the routineer in this art would have used less pure samples in preference to pure samples. Indeed, in this regard, the Examiner finds that Merlin teaches triglycerides having saponification 17 Reply Brief filed 23 October 2015 (“Reply”). 6 Appeal 2016-000731 Application 13/692,376 values in excess of 150, and the Examiner concludes, reasonably, that it would have been obvious to use such known materials as embodiments of triglycerides suggested by Sleeter. (Id. at 15, ]Hf 37—38.) As for the use of non-ionic emulsifiers, Hexion does not dispute the Examiner’s finding (id.) that Sleeter discloses that the material for enhancing water tolerance can be applied as a water emulsion (Sleeter, col. 3,11. 17— 19). Hexion’s argument that Roos would have suggested the use of a non ionic emulsifier only for combinations of triglycerides and waxes (Br. 12, last para.) is not persuasive. It is generally obvious to use known materials for their known purposes in similar compositions, particularly when those compositions are intended for similar uses. Here, Roos seeks “enhancing the mechanical strength and dimensional stability of composite boards and structures.” (Roos, Abstract.) Sleeter is concerned with “protecting the dimensional stability of fibers (especially fiber composite panels such as oriented strand board”). (Sleeter, col. 1,11. 4—8.) Both accomplish this goal by applying emulsions based at least in part on triglycerides. Hexion has not directed our attention to any teachings in the record that indicate that the routineer would have thought Roos’s teachings of adding surfactants or emulsifying agents such as sorbitan esters, glycerol ste[a]rates, etc. (Roos 3 [0035]), would have been interpreted as being limited to triglyceride-wax emulsions. Nor has Hexion come forward with evidence that the routineer would have thought that adding fatty acid esters of polyols, such as sorbitan esters, as emulsifying agents, would likely inhibit the ability to provide useful emulsions of glycerol esters of fatty acids. Hexion presents separate arguments for the patentability of claim 5, which depends from independent claim 1, and for claims 17 and 18, which 7 Appeal 2016-000731 Application 13/692,376 depend from independent claim 12. These claims require either the presence of 0.5 to 3 weight % amine, or of 0.5 to 6 weight present of an inorganic base; and partial saponification of the triglyceride.18 Hexion urges that Dieckmann (Appeal Br. 15—19), and Wantling {id. at 20-22), either separately or together {id. at 23—25) do not cure the various cited deficiencies of Sleeter and of Roos. We do not find these arguments persuasive of harmful error. First, to the extent the claim language is to be taken literally, the composite panel of claim 1, and the moisture resistance additive of claim 12, will contain the inorganic base only to the extent the saponification is incomplete.19 Second, Hexion does not dispute the Examiner’s findings (FR, para, bridging 5—6) that Dieckmann discloses partial saponification of triglycerides using about 0.1 to 2 parts by weight catalyst (Dieckmann, col. 3,11. 17—20), where the catalyst may comprise diethanolamine or triethanolamine {id. at 11. 50— 54). The partial saponification is said to reduce or eliminate the need for compatibilizing additive to obtain homogeneous compositions useful as waterproofing agents, etc. {Id., Abstract; col. 5,11. 3—8.) Because these are claims to a product, the way in which the product is made is not important except to the extent that the method of making imposes distinct properties on the product that would not be met by the way a prior art product was made. E.g., In re Thorpe, 111 F.2d 695, 697, (Fed. Cir. 1985) (“[i]f the product in a 18 Full saponification of the triglyceride would remove the dependent claim from the scope of the corresponding independent claim. 19 We assume, without deciding, that the amine behaves as a true catalyst, i.e., it is not used up in the reaction, and that it is not inactivated by chemical transformation during work-up of the reaction. 8 Appeal 2016-000731 Application 13/692,376 product-by-process claim is the same as or obvious in view of a product of the prior art, the claim is unpatentable even though the prior product was made by a different process” (citations omitted)). It is well known to ordinary chemists that the product of saponification of a fatty acid ester is an alcohol and the salt of the fatty acid, i.e., a soap, the amphoteric character of which is well-recognized as tending to stabilize emulsions. (Dieckmann, col. 3,11. 5—16.) Thus, the Examiner’s findings are not unreasonable, and Hexion has not come forward with argument supported by credible evidence of record that, for example, the routineer would not have had a reasonable expectation of successfully modifying the compositions obvious in view of Sleeter and Roos by the partial saponification taught by Dieckmann. Similarly, Hexion urges that Wantling does not cure the deficiencies of Sleeter and Roos, and “does not teach or suggest the use of ammonium hydroxide or a metal hydroxide in a composition free of a hydrocarbon wax.” (Br. 21, 2d full para.) Accordingly, in Hexion’s view, Wantling provides no motivation to saponify a triglyceride composition that is free of a hydrocarbon wax, as taught by Sleeter. {Id. at 3d full para.) We have already rejected Hexion’s arguments that Sleeter and Roos are deficient for the purposes considered by the Examiner. The Examiner’s findings regarding Wantling are complementary to those regarding Dieckmann—but they are focused on the presence of a metal hydroxide and the partial saponification of the triglyceride, i.e., the fatty acid tri-ester taught by Sleeter. For essentially the same reasons, namely, the similarity of the starting materials and of the fatty acids and alcohols produced by saponification of the tri-esters and of the esters disclosed by Wantling, we find the Examiner established a reasonable basis for an expectation of 9 Appeal 2016-000731 Application 13/692,376 successfully modifying compositions obvious in view of Sleeter and Roos. Hexion’s arguments have not shown harmful error in the Examiner’s findings of fact, or the legal conclusion of obviousness based on those factual findings. Having rejected Hexion’s arguments that the rejections further in view of Dieckmann or Wantling individually are faulty, we are not persuaded by Hexion’s essentially cumulative arguments against Rejections A3^4 and B3^4. (Br. 23-27 and Br. 42-47.) Again, Hexion presents no arguments for patentability based on so- called secondary considerations such as unexpected results. We conclude that Hexion has not demonstrated harmful error in the appealed rejections. C. Order It is ORDERED that the rejection of claims 1—5 and 12—18 is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED 10 Copy with citationCopy as parenthetical citation