Ex Parte Weissenbach et alDownload PDFPatent Trial and Appeal BoardNov 20, 201713903594 (P.T.A.B. Nov. 20, 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. 13/903,594 05/28/2013 Kerstin WEISSENBACH 416494US99DIV 2719 22850 7590 11/22/2017 OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P. 1940 DUKE STREET ALEXANDRIA, VA 22314 EXAMINER DOLLINGER, MICHAEL M ART UNIT PAPER NUMBER 1766 NOTIFICATION DATE DELIVERY MODE 11/22/2017 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): patentdocket @ oblon. com oblonpat @ oblon. com tfarrell@oblon.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte KERSTIN WEISSENBACH, ARISTIDIS IOANNIDIS, and BASTIAN BIELAWSKI Appeal 2017-000260 Application 13/903,594 Technology Center 1700 Before CHUNG K. PAK, GRACE KARAFFA OBERMANN, and AVELYN M. ROSS, Administrative Patent Judges. OBERMANN, Administrative Patent Judge. DECISION ON APPEAL Appellants1 seek relief from the Examiner’s final rejection of claims 17 and 26—29 under 35 U.S.C. § 103(a). Appeal Br. 2, 4. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 Appellants identify Evonik Degussa GMBH as the real party in interest. Appeal Br. 1. Appeal 2017-000260 Application 13/903,594 STATEMENT OF THE CASE The invention relates to “a composition of an organofimctional silane compound, in particular of a monounsaturated silane compound, and of an organic acid, or of a precursor compound that liberates an acid.” Spec. 1:4— 8. This composition may act as silanol condensation catalysts used for cross-linking polymer compounds. Id. at 1:1—2. According to the specification, organotin compounds or aromatic sulfonic acids are known silanol condensation catalysts. Id. at 1:22—26. The organotin compounds and sulfonic acids are disadvantageous, however, in that organotin compounds have significant toxicity, and the sulfonic acids produce a pungent odor that is present both during processing and in the final product. Id. at 1:28-32. According to Appellants, they have found that a composition comprising at least one precursor compound of an organic acid and also, if appropriate, an organofunctional silane compound, can be reacted with parent polymers, monomers, or prepolymers, to produce compounded polymer materials, without the disadvantages of toxicity and odor impairment. Id. at 3:30—38. The specification discloses a masterkit comprising a component A and, if appropriate, a component B. Id. at 32:32— 33:25. At least one silicon-containing precursor compound of an organic acid, such as myristic acid, makes up a portion of component A {id. at 10:31—32, 32:32—33:3), and an organofimctional silane compound constitutes most of component B {id. at 33:12—14). Claim 17 is representative, and is reproduced below: A masterkit, comprising: 2 Appeal 2017-000260 Application 13/903,594 (A) (al) 0.1 to 10% of myristic acid, and (a2) from 90 to 99.9% of at least one of [sic] member selected from the group consisting of titanium dioxide, quartz, magnesium hydroxide, bentonite, montmorillonite, mica, talc, aluminum oxide hydroxides, boehmite, baryte, barium sulfate, lime, aluminates, aluminum silicates, and ZnO, wherein (al) + (a2) make up 100% by weight of (A), and (B) (bl) 60 to 99.9% by weight of at least one organofimctional silane compound represented by formula III: (B)SiR4a(OR5)3.a (III), wherein a is 0, 1, 2, or 3, B is a monovalent (R7)2C=C(R7)-Eq- group in formula III, in which R7 are identical or different, and R7 is a hydrogen atom or a methyl group or a phenyl group, E is -CH2-, -(CH2)2-, -(CH2)3-, -0(0)C(CH2)3-, or -C(0)0-(CH2)3-, q is 0 or 1, or isoprenylene, hexenylene, cyclohexenylene, terpenylene, squalanylene, squalenylene, polyterpenylene, betulaprenoxyene, cis/trans-polyisoprenylene, or an R6-Dp-[C(R6)=C(R6)-C(R6)=C(R6)]tDp- group, in which R6 are identical or different, and R6 is a hydrogen atom or an alkyl group having from 1 to 3 carbon atoms, or an aryl group, or an aralkyl group, groups D are identical or different, and D is -CH2-, -(CH2)2-, -(CH2)3-, -0(0)C(CH2)3-, or -C(0)0-(CH2)3-, p is 0 or 1, and t is 1 or 2, R5 is, mutually independently, methyl, ethyl, n-propyl, or isopropyl, R4 is, mutually independently, a substituted or unsubstituted hydrocarbon group, and (b2) 0.1 to 40% by weight of (B) of at least one member selected from the group consisting of a free-radical generator, stabilizer, carrier material and an added substance, wherein (bl) + (b2) make up 100% by weight of (B). 3 Appeal 2017-000260 Application 13/903,594 OPINION The Examiner rejects claims 17 and 26—29 under 35 U.S.C. § 103(a) as obvious over Schlosser,2 Tanaka,3 and Luginsland.4 Final Action 2.5 The Examiner relies on Schlosser as disclosing the limitations of claim 17 except for myristic acid and component (a2). Id. at 2—3. For these elements, the Examiner turns to Tanaka and Luginsland, respectively, and sets forth reasons to combine Tanaka and Luginsland with Schlosser. Id. at 3^4. Appellants argue the nonobviousness of claims 17 and 26—29 as a group. Appeal Br. 4—6. We select claim 17 as representative of the group. Claims 26—29 stand or fall with claim 17. See 37 C.F.R. § 41.37(c)(l)(iv). Appellants do not argue that the Examiner erred in combining Schlosser and Tanaka to account for myristic acid. See Appeal Br. 4—6. Appellants, however, do argue that it would not have been obvious to 2 US 2003/0134969 A1 (published July 17, 2013). 3 WO 2008/052875 A1 (published May 8, 2008). As an English language version of Tanaka, the Examiner cites to US 2009/0247712 A1 (published Oct. 1, 2009). Final Action 2. 4 US 6,890,981 B1 (issued May 10, 2005). 5 Although the Examiner rejected claims 17, 19, 21, 26—29, and 38 under 35 U.S.C. § 103(a) in the Final Rejection, the Examiner entered the Amendment cancelling claims 19, 21, and 38 filed on November 16, 2015 subsequent to the Final Rejection. See Advisory Action entered December 22, 2015. This Advisory Action, however, inadvertently states that the § 103(a) rejection of claims 17, 26—29, and 38 is still maintained. The Examiner’s Answer entered July 29, 2016 also repeats the § 103(a) rejection of claims 17, 19, 21, 26—29, and 38 set forth in the Final Rejection. By referring to claims 17 and 26—29, we have omitted cancelled claims 19, 21, and 38 consistent with the Amendment after the Final Rejection that was entered by the Examiner. 4 Appeal 2017-000260 Application 13/903,594 combine Schlosser and Luginsland to obtain the claimed component (a2). Id. In regard to component (a2), the Examiner finds that Schlosser discloses a composition containing an unsaturated silane on a carrier material such as carbon black and calcium silicate. Final Action 2 (citing Schlosser 114). Although the Examiner acknowledges that Schlosser does not disclose a carrier material that corresponds to component (a2) of claim 17, the Examiner further finds that Luginsland also teaches materials for the purpose of carrying an organosilane compound in a curable composition. Id. at 3. Those materials include carbon black, natural or synthetic silicates, and additionally, materials that are recited as component (a2) of claim 17— namely, zinc oxide, titanium dioxide, and aluminum silicates. Id. at 3^4 (citing Luginsland 2:53—57, 3:3—7). The Examiner then concludes that it would have been obvious to substitute zinc oxide, titanium dioxide, and aluminum silicates from Luginsland for Schlosser’s carrier. Id. at 4. The Examiner also points out that the compositions in Schlosser and Luginsland are both used for cable sheaths. Id. at 3 (citing Schlosser 11; Luginsland 4:13); Answer 5. Appellants, on the other hand, assert that Luginsland discloses compositions containing rubber, in contrast to Schlosser’s materials where there is no mention of a rubber component. Appeal Br. 6; Reply Br. 3. Appellants therefore conclude that a person of ordinary skill in the art would not have sufficiently expected that Luginsland’s carrier material would have been effective in Schlosser’s nonrubber compositions. Appeal Br. 6; Reply Br. 3. According to Appellants, “[t]he Examiner has proffered no evidence that one skilled in the art would have a sufficient expectation that the carrier 5 Appeal 2017-000260 Application 13/903,594 material described by Luginsland will be effective in the cable compound compositions described by Schlosser, which do not contain rubber.” Reply Br. 4. We, however, agree with the Examiner. The teachings from Schlosser and Luginsland that the Examiner relies on each disclose materials that perform the same function. That is, the materials are each used as a carrier for organosilanes in which the organosilanes are adsorbed on the carrier (Schlosser 114; Luginsland 2:53—55), and further, the organosilanes are part of compositions useful for cable sheaths (Schlosser 11; Luginsland 4:13). The specific materials that the Examiner identifies—carbon black, zinc oxide, titanium dioxide, and silicates (calcium silicate and aluminum silicate)—are used in either or both of Schlosser and Luginsland, and are inert materials, whether used in compositions that contain or do not contain rubber. See Schlosser 114; Luginsland 2:53—57. Lor these reasons, we find the inert carrier materials identified by the Examiner to be interchangeable, and one of ordinary skill in the art would have had a reasonable expectation that such inert carrier materials would be useful for both Luginsland’s and Schlosser’s cable compositions. Accordingly, we find no error in the Examiner’s conclusion that it would have been obvious to substitute those materials for each other. Moreover, the Examiner’s Answer states that Schlosser does, in fact, disclose polymers that are inclusive of rubber materials (i.e., acrylonitrile and other (meth)acrylate polymers). Answer 5 (citing Schlosser | 58). Appellants do not rebut this assertion in their Reply. See Reply 4. Lor this additional reason, we are not persuaded by Appellants’ argument that the Examiner’s rejection contains reversible error. 6 Appeal 2017-000260 Application 13/903,594 Accordingly, we affirm the rejections of claims 17 and 26—29. ORDER The Examiner’s decision to reject claims 17 and 26—29 as unpatentable over Schlosser, Tanaka, and Luginsland under 35 U.S.C. § 103(a) 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)(1). AFFIRMED 7 Copy with citationCopy as parenthetical citation