Dow Global Technologies LLC

Patent Trials and Appeals Board

Jul 30, 2021

2020004445 (P.T.A.B. Jul. 30, 2021)

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.
15/574,601 11/16/2017 Andreas Lutz DI77137-US-PCT 3144
156155 7590 07/30/2021
Dow DuPont
c/o DUPONT SPECIALTY PRODUCTS USA, LLC
P.O. Box 2915
974 Centre Road, Chestnut Run Plaza 721-2342
Wilmington, DE 19805
EXAMINER
NGUYEN, HA S
ART UNIT PAPER NUMBER
1766
NOTIFICATION DATE DELIVERY MODE
07/30/2021 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):
PTO-Legal.PRC@dupont.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANDREAS LUTZ, DANIEL SCHNEIDER,
BINDU KRISHNAN, and TYLER AUVIL
Appeal 2020-004445
Application 15/574,601
Technology Center 1700
Before BEVERLY A. FRANKLIN, N. WHITNEY WILSON, and
LILAN REN, Administrative Patent Judges.

FRANKLIN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1 and 3–19. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as Dow Global
Technologies LLC. Appeal Br. 3.
Appeal 2020-004445
Application 15/574,601

2
CLAIMED SUBJECT MATTER
Claim 1 is illustrative of Appellant’s subject matter on appeal
and is set forth below:
1. A toughener for an epoxy adhesive composition
comprising a reaction product of:
a) a first reaction product of an isocyanate terminated
prepolymer, comprising the reaction product of a polyether diol
and/or a polybutadiene diol-based polymer and an
isocyanate, and a capping compound having a di-functional
aromatic moiety, wherein the first reaction product is
terminated with the capping compound;
b) a diglycidyl bisphenol epoxy resin;
and
c) a catalyst quenching agent.

REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Heinemeyer US 4,612,156 Sept. 16, 1986
Muller US 4,788,224 Nov. 29, 1988
Frick EP 2436712(A1) Oct. 1, 2010

THE REJECTIONS
1. Claims 1 and 3–18 under 35 U.S.C. § 103 are rejected as
being obvious over Frick in further view of Muller.
2. Claim 19 is rejected under 35 U.S.C. § 103 as being obvious
over Frick and Muller and further in view of Heinemeyer.
Appeal 2020-004445
Application 15/574,601

3
OPINION
Appellant presents argument for the patentability of independent
claim 1 (Rejection 1) and dependent claim 19 (Rejection 2). Appeal Br.
6–8. We select claims 1 and 19 as representative of the claims on appeal.
37 C.F.R. § 41.37(c)(1)(iv).
Upon consideration of the evidence and each of the respective
positions set forth in the record, we find that the preponderance of evidence
supports the Examiner’s findings and conclusion that the subject matter of
Appellant’s claims is unpatentable over the applied art. Accordingly, we
sustain each of the Examiner’s rejections on appeal essentially for the
reasons set forth in the Final Office Action and in the Answer, and affirm,
with the following emphasis.

Rejection 1
We refer to the Examiner’s stated rejection as set forth on pages 3–7
of the Answer. In response thereto, Appellant first argues that Frick does
not teach the catalyst quenching agent and is silent regarding storage/shelf
stability. Appeal Br. 6. As stated by the Examiner on page 9 of the Answer,
this argument is unpersuasive because Mueller teaches both the catalyst
quenching agent and the storage stability. We note that the test for
obviousness is what the combined teachings of the references would have
suggested to those of ordinary skill in the art; one cannot show non-
obviousness by attacking references individually where the rejections are
based on combinations of references. In re Young, 927 F.2d 588, 591 (Fed.
Appeal 2020-004445
Application 15/574,601

4
Cir. 1991); In re Merck & Co., Inc., 800 F.2d 1091, 1097-98 (Fed. Cir.
1986); In re Keller, 642 F.2d 413, 425 (CCPA 1981).
Appellant next argues that unexpected results of advantageous storage
properties are demonstrated in Tables 8, 11, 12, and 14 of the Specification.
Appeal Br. 6. We agree with the Examiner that this rebuttal evidence is
unpersuasive for the reasons stated by the Examiner on page 10 of the
Answer. We note that the burden rests with Appellant to establish (1) that
the alleged unexpected results presented as being associated with the
claimed invention are, in fact, unexpected, (2) that the comparisons are to
the disclosure of the closest prior art, and (3) that the supplied evidentiary
showing is commensurate in scope with the claimed subject matter. See In
re Klosak, 455 F.2d 1077, 1080 (CCPA 1972).
Regarding Appellant’s argument that Muller is nonanalogous art
(Appeal Br. 6–7), we agree with the Examiner’s response made on page 11
of the Answer. We note that a reference is analogous art if it is either in the
field of the inventors’ endeavor, or is reasonably pertinent to the particular
problem with which the inventors were concerned. In re Kahn, 441 F.3d
977, 987 (Fed. Cir. 2006). “A reference is reasonably pertinent if, even
though it may be in a different field from that of the inventor’s endeavor, it
is one which, because of the matter with which it deals, logically would have
commended itself to an inventor’s attention in considering his problem.” In
re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992). In this instance, as explained
by the Examiner (Ans. 11), Muller teaches, inter alia, that its composition is
used in the field of expoxy adhesives, like the claimed invention. Moreover,
Muller is reasonably pertinent to the particular problem with which
Appeal 2020-004445
Application 15/574,601

5
Appellant was concerned because it teaches improving storage stability with
the use of catalyst poison/quenching agent (Ans. 11).
In view of the above, we affirm Rejection 1.

Rejection 2
Appellant argues that Heinemeyer is non-analogous art because it is in
the field of molded epoxy parts and not of tougheners for epoxy
adhesive compositions. Appeal Br. 7–8. We are unpersuaded by this line of
argument for the reasons provided by the Examiner on page 12 of the
Answer. In re Kahn at 987; In re Clay at 659. We thus affirm Rejection 2.
CONCLUSION
We affirm the Examiner’s decision.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 3–18 103 Frick, Muller 1, 3–18
19 103 Frick, Muller,
Heinemeyer
19
Overall
Outcome
1, 3–19

AFFIRMED