Ex Parte AERTS et al

Patent Trial and Appeal Board

Jul 27, 2018

14076640 (P.T.A.B. Jul. 27, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/076,640 11/11/2013
8015 7590 07/31/2018
CYTEC INDUSTRIES INC.
1937 WEST MAIN STREET
STAMFORD, CT 06902
FIRST NAMED INVENTOR
Vincent J. J. G. AERTS
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
12014S-US-NP 5850
EXAMINER
BROOKS,KREGGT
ART UNIT PAPER NUMBER
1764
NOTIFICATION DATE DELIVERY MODE
07/31/2018 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):
StamfordPatent@solvay.com
Cheryle.Telesco@solvay.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte VINCENT J.J.G. AERTS, MARK BONNEAU, JUDITH ELDER,
EMILIANO FRULLONI, and JAMES MARTIN GRIFFIN
Appeal2017-008502
Application 14/076,640
Technology Center 1700
Before TERRY J. OWENS, MONTE T. SQUIRE, and BRIAND. RANGE,
Administrative Patent Judges.
SQUIRE, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner's
decision to reject claims 1, 3, 4, 6, 8, 9, 11-17, 23, and 24, which constitute
all the claims pending in this application. 3 We have jurisdiction under
35 U.S.C. § 6(b).
1 In this Decision, we refer to the Specification filed November 11, 2013
("Spec."); Final Office Action dated April 26, 2016 ("Final Act."); Appeal
Brief filed September 26, 2016, as corrected October 31, 2016 ("Appeal
Br."); and Examiner's Answer dated December 14, 2016 ("Ans.").
2 Appellant is the Applicant, Cytec Industries Inc., which is also identified as
the real party in interest. Appeal Br. 2.
3 Claims 18 and 20 are withdrawn and no longer pending in this application.
Appeal Br. 3.
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Application 14/076,640
We AFFIRM.
The Claimed Invention
Appellant's disclosure relates to composite materials comprising
thermoplastic interlaminar toughening particles and, in particular, to a resin
system comprising a thermosetting epoxy resin precursor component and a
thermoplastic particle component comprising polyamide particles. Spec. 1,
7, 36 (Abstract).
Claim 1 is illustrative of the claimed subject matter on appeal and is
reproduced below from the first page of the Corrected Claims Appendix to
the Appeal Brief filed October 31, 2016 (key disputed claim language
italicized and bolded):
1. A resin system comprising:
(i) a thermosetting resin precursor component
comprising at least one tri-functional epoxy resin precursor, at
least one tetra-functional epoxy resin precursor, and less than
10% by weight, based on total weight of the resin system, of
epoxy resin precursors with a functionality of less than three;
(ii) a thermoplastic particle component comprising
polyamide particles having an effective melting temperature
TPA; and
(iii) one or more curing agent(s),
wherein
the tri-functional epoxy resin precursor is selected from
triglycidyl ethers of p-aminophenol and triglycidyl ethers of m-
aminophenol,
said resin precursor component, said polyamide particles
and said curing agent( s) are selected such that gelation of the
epoxy matrix during the cure cycle of the resin system occurs at
a gelation temperature T GEL which is at or below T PA, and
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the resin system is curable using a curing temperature Tc
in the range of from 170°C to I90°C, and all thermoplastic
particles in the resin system have an effective melting
temperature TPA that is not higher than the curing
temperature Tc.
The References
The Examiner relies on the following prior art references as evidence
in rejecting the claims on appeal:
Bongiovanni et al., US 2010/0222461 Al Sept. 2, 2010
(hereinafter "Bongiovanni")
Boyle et al., US 2011/0259514 Al Oct. 27, 2011
(hereinafter "Boyle")
George Wypych, Handbook of Polymers, 235-241, 381-383 (2012)
(hereinafter "Wypych").
The Rejections
On appeal, the Examiner maintains the following rejections:
1. Claims 1, 3, 4, 6, 8, 11-15, 17, 23, and 24 are rejected under
pre-AIA 35 U.S.C. § I03(a) as being unpatentable over Boyle ("Rejection
1 "). Ans. 2; Final Act. 2.
2. Claims 9 and 14 are rejected under pre-AIA 35 U.S.C. § I03(a)
as being unpatentable over Boyle as applied to claim 1, further in view of
Bongiovanni ("Rejection 2"). Ans. 6; Final Act. 6.
3. Claim 16 is rejected under pre-AIA 35 U.S.C. § I03(a) as being
unpatentable over Boyle as evidenced by Wypych ("Rejection 3"). Ans. 8;
Final Act. 8.
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OPINION
Having considered the respective positions advanced by the Examiner
and Appellant in light of this appeal record, we affirm the Examiner's
rejections based on the fact finding and reasoning set forth in the Answer
and Final Office Action, which we adopt as our own.
We highlight and address specific findings and arguments below for
emphasis.
Rejection 1
Claims 1. 3. 4. 6. 8. 11-15. 17. 23. and 24
Appellant argues claims 1, 3, 4, 6, 8, 11-15, 17, 23, and 24 as a group.
Appeal Br. 3. We select claim 1 as representative and the remaining claims
subject to this rejection stand or fall with claim 1. 37 C.F.R.
§ 4I.37(c)(l)(iv).
The Examiner determines that Boyle teaches or suggests a resin
system satisfying all of the limitations of claim 1 and thus, concludes that
the reference would have rendered the claim obvious. Ans. 2-3 ( citing
Boyle, Abstract, ,r,r 31, 34, 43, 54, 76, claim 2).
The Examiner finds (Ans. 2) that Boyle teaches a composition
comprising a thermosetting resin precursor component having at least one
tri-functional and one tetra-functional epoxy resin and the epoxy resins
being polymerized using curing agents. Boyle, Abstract, ,r 54, claim 2. The
Examiner further finds (Ans. 2) that Boyle teaches the thermosetting resin
precursor component having less than 10% by weight of epoxy resin
precursors with a functionality of less than three (Boyle ,r 31) and the
preferred tri-functional epoxy resin precursor being triglycidyl ether of m-
aminophenol (id. ,r 34).
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The Examiner also finds (Ans. 2-3) that Boyle teaches: (a) the
composition having a thermoplastic particle component comprising
polyamide particles with melting points in the range of 190°C to 240°C (id.
,r 43), which, according to the definition of "effective melting point"
provided in Appellant's Specification (Spec. 11), corresponds to the
polyamide particles having effective melting points ranging from 175°C to
235°C; and (b) the composition being curable in the range of 160°C to
190°C (id. ,r,r 54, 76), which overlaps the claimed effective melting point
range of the polyamide particles.
Appellant argues that the Examiner's rejection should be reversed
because "Boyle teaches using polyamide particles that are well above typical
epoxy curing temperatures" and "there is nothing in Boyle's disclosure to
support the Examiner's finding that 'the compositions of Boyle may be
cured at a temperature at or above the effective melting temperature of the
thermoplastic particles."' Appeal Br. 4--5. Appellant contends that the
Examiner's finding regarding Boyle's polyamide particles having effective
melting points ranging from 175°C to 235°C is "not supported by any
evidence [in the] record" and "lacks rational basis." Id. at 5.
Appellant also contends that Boyle does not teach or suggest the
limitation "all thermoplastic particles in the resin system have an effective
melting temperature T PA that is not higher than the curing temperature Tc,"
as recited in claim 1. Id. at 6-7.
We do not find Appellant's arguments persuasive of reversible error
in the Examiner's rejection. On the record before us, we find that a
preponderance of the evidence and sound technical reasoning support the
Examiner's analysis and determination that Boyle teaches or suggests all of
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the limitations of claim 1, including the thermoplastic particles having an
"effective melting temperature" that is not higher than the curing
temperature, and the Examiner's conclusion that the reference would have
rendered the claim obvious. Boyle, Abstract, ,r,r 31, 34, 43, 54, 76, claim 2.
As the Examiner finds (Ans. 2-3), Boyle teaches the composition
comprising polyamide particles having melting points (Tm) in the range of
190°C to 240°C and the composition having curing temperatures in the
range of 160°C to 190°C. Boyle ,r,r 43, 54, 76. As the Examiner further
finds (Ans. 2-3), in accordance with the Specification's definition of the
"effective melting temperature" being "typically 5 to l 5°C below the
intrinsic melting temperature Tm" (Spec. 11 ), the intrinsic melting
temperature range Boyle discloses corresponds to the polyamide particles
having an effective melting temperature ranging from 175°C to 235°C.
As the Examiner also finds (Ans. 10) and Appellant does not refute,
because the polyamide particles Boyle discloses are the same materials
described in the Specification (Spec. 11) and recited in the claims, Boyle's
polyamide particles would inherently have the same property of lowering the
effective melting temperature relative to the intrinsic melting temperature as
the claimed particles. See In re Spada, 911 F.2d 705, 708-09 (Fed. Cir.
1990) ("[W]hen the PTO shows sound basis for believing that the products
of the applicant and the prior art are the same, the applicant has the burden
of showing that they are not."); In re Best, 562 F.2d 1252, 1255 (CCPA
1977) ("Where, as here, the claimed and prior art products are identical or
substantially identical, or are produced by identical or substantially identical
processes, the PTO can require an applicant to prove that the prior art
products do not necessarily or inherently possess the characteristics of his
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claimed product."); see also In re Kubin, 561 F.3d 1351, 1357 (Fed. Cir.
2009) ("Even if no prior art of record explicitly discusses the ...
[limitation], [appellant's] application itself instructs that [the limitation] is
not an additional requirement imposed by the claims on the [ claimed
invention], but rather a property necessarily present in [ the claimed
invention].").
Moreover, as the Examiner explains (Ans. 9-10), because Boyle
teaches curing temperatures ranging from 160°C to 190°C and polyamide
particles having effective melting temperatures less than 190°C ( e.g.,
ranging from 17 5°C to 189°C), it follows that the reference teaches or
suggests compositions capable of being cured at temperatures above an
effective melting point of the polyamide particles.
Appellant's arguments do not reveal reversible error in the
Examiner's analysis and factual findings in this regard.
Appellant contends that the Examiner's rejection should be reversed
because the polyamide particles used in the claimed invention "exhibit
improved moisture sensitivity" relative to higher melting point polyamide
materials and "result in composite materials with superior compressive
performance, damage tolerance and impact resistance ... relative to
polyamide-6." Appeal Br. 7-8.
We do not find Appellant's contentions persuasive of reversible error
because, as the Examiner finds (Ans. 11 ), they are based on limitations not
recited in the claims. See In re Van Geuns, 988 F.2d 1181, 1184-85 (Fed.
Cir. 1993) ("[L ]imitations are not to be read into the claims from the
specification.").
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Appellant's contentions in this regard are also conclusory and
unsupported by persuasive evidence in the record. In re De Blauwe, 736
F.2d 699, 705 (Fed. Cir. 1984) ("It is well settled that unexpected results
must be established by factual evidence. Mere argument or conclusory
statements ... does not suffice.").
Claims 13 and 14
Appellant presents additional argument for the patentability of claims
13 and 14. Appeal Br. 8-9. In particular, Appellant argues that the
Examiner's rejection of claims 13 and 14 should be reversed because Boyle
does not disclose "polyamide-11" and "polyamide-12" particles and Boyle's
melting temperature is beyond the intrinsic melting temperature of the
polyamide particles recited in claims 13 and 14. Id. at 9.
We do not find Appellant's argument persuasive of reversible error in
the Examiner's rejection based on the fact-finding and reasoning provided
by the Examiner at pages 4--5, 7, and 11 of the Answer and pages 2-5 of the
Final Office Action, which is supported by a preponderance of the evidence
in the record.
As the Examiner finds (Ans. 4--5, 11) and contrary to what Appellant
argues, Boyle does teach the polyamide comprising polyamide-11 and
polyamide-12, as claimed. Boyle ,r 44 ( disclosing that"[ s Jui table polyamide
particles" may contain "polyamide 12 (laurolactame-PA12)" and
"polyamide 11 ").
Accordingly, we affirm the Examiner's rejection of claims 1, 3, 4, 6,
8, 11-15, 17, 23, and 24 under 35 U.S.C. § 103 as obvious over Boyle.
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Rejection 2
Claim 9 depends from claim 1 and further recites:
wherein a plurality of curing agents are used, wherein the
curing agents are isophthalic dihydrazide and
4,4'-diaminodiphenyl sulphone.
Corrected Claims Appendix (second page).
Claim 14 depends from claim 1 and further recites:
wherein the resin system comprises a combination of resin
precursor component, thermoplastic particle and curing agent( s)
selected from the group consisting of:
(i) a resin precursor component comprising tri- and
tetra-functional epoxy resin precursors,
polyamide-12 particles and 3,3'-DDS;
(ii) a resin precursor component comprising tri- and
tetra-functional epoxy resin precursors,
polyamide-11 particles and 3,3'-DDS; and
(iii) a resin precursor component comprising tri- and
tetra-functional epoxy resin precursors,
polyamide-12 particles, 4,4'-DDS and isophthalic
acid dihydrazide (IDH).
Corrected Claims Appendix (third page).
The Examiner determines that the combination of Boyle and
Bongiovanni suggests a resin system satisfying all of the limitations of
claims 9 and 14 and thus, concludes the combination would have rendered
the claims obvious. Ans. 6-7 ( citing Boyle, Abstract, ,r,r 31, 34, 43, 54, 7 6,
claim 2; Bongiovanni, Abstract, ,r,r 62, 68).
Appellant argues that the Examiner's rejection based on the
combination of Boyle and Bongiovanni should be reversed because "Boyle
does not disclose polyamide particles having an effective melting
temperature that is not higher than the curing temperature of the resin
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system" (Appeal Br. 10), which is principally the same argument Appellant
previously made in response to the Examiner's rejection of claim 1 and
discussed above. We do not find this argument persuasive for the same
reasons discussed above in affirming the Examiner's rejection of claim 1.
Appellant also contends that "the Examiner fails to provide an
adequate reason for why the combination of Boyle and Bongiovanni would
have resulted in the claimed subject matter." Appeal Br. 10. We do not find
this argument persuasive of reversible error in the Examiner's rejection
because it is conclusory. De Blauwe, 736 F.2d at 705.
Moreover, on the record before us, we find that the Examiner does
provide a reasonable basis and identifies a preponderance of the evidence in
the record to evince why one of ordinary skill would have combined the
teachings of the cited references to arrive at Appellant's claimed invention.
Ans. 7 ( explaining that it would have been obvious to one of ordinary skill in
the art to modify Boyle's composition by substituting Bongiovanni's
combination of 4,4'-DDS and IDH for 3,3'-diaminodipnylsulfone "to achieve
gelation or cure at lowered temperatures than with amine curing agents alone
while retaining tack life, out life, mechanical properties and glass transition
temperature"); Bongiovanni, Abstract, ,r,r 62, 68.
Appellant's disagreement (Appeal Br. 10-11) with the Examiner's
factual findings and reasoning for combining the references, without more,
is insufficient to establish reversible error. KSR Int 'l Co. v. Teleflex, Inc.,
550 U.S. 398, 420 (2007) (explaining that any need or problem known in the
art can provide a reason for combining the elements in the manner claimed);
cf SmithKline Beecham Corp. v. Apotex Corp., 439 F.3d 1312, 1320 (Fed.
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Cir. 2006) ("[M]ere statements of disagreement ... as to the existence of
factual disputes do not amount to a developed argument.").
Accordingly, we affirm the Examiner's rejection of claims 9 and 14
under 35 U.S.C. § 103 as obvious over the combination of Boyle and
Bongiovanni.
Rejection 3
Appellant does not present any additional substantive arguments in
response to the Examiner's rejection of claim 16 (Rejection 3, stated above).
Rather, Appellant relies on the same arguments previously presented above
in response to the Examiner's rejection of claim 1 (Rejection 1, stated
above). See Appeal Br. 12 (arguing that "claim 16 is patentable over Boyle
and Wypych Handbook for at least the same reasons set forth above for
claim 1 ").
Accordingly, based on the findings and technical reasoning provided
by the Examiner and for the same reasons discussed above for affirming the
Examiner's Rejection 1, we affirm the Examiner's Rejection 3.
DECISION/ORDER
The Examiner's rejections of claims 1, 3, 4, 6, 8, 9, 11-17, 23, and 24
are affirmed.
It is ordered that the Examiner's decision 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
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