Ex Parte Burleigh et al

Patent Trial and Appeal Board

Jul 10, 2017

11498508 (P.T.A.B. Jul. 10, 2017)

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.
11/498,508 08/03/2006 Malcolm B. Burleigh 60597US005 9479
32692 7590 07/12/2017
3M INNOVATIVE PROPERTIES COMPANY
PO BOX 33427
ST. PAUL, MN 55133-3427
EXAMINER
SERGENT, RABON A
ART UNIT PAPER NUMBER
1765
NOTIFICATION DATE DELIVERY MODE
07/12/2017 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):
LegalUSDocketing@mmm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MALCOLM B. BURLEIGH,
JAMES G. CARLSON, and ARAN J. BECKHAM
Appeal 2016-008156
Application 11/498,508
Technology Center 1700
Before MICHAEL P. COLAIANNI, JAMES C. HOUSEL, and
JANE E. INGLESE, Administrative Patent Judges.
INGLESE, Administrative Patent Judge.
DECISION ON APPEAL
Appellants1 appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1, 4—10, 14—17, and 21—39. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.
STATEMENT OF THE CASE
Appellants’ claim compositions comprising a first fluorochemical
urethane polymer or oligomer comprising the reaction product of
1 Appellants identify the real party in interest as 3M Innovative Properties
Company. Appeal Brief filed December 2, 2015 (“App. Br.”), 3.
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Application 11/498,508
components comprising one or more polyisocyanates and one or more
fluoroalcohols, and a second urea polymer or oligomer distinct from the first
urethane polymer or oligomer that comprises the reaction product of
components comprising one or more diisocyanates and water; and methods
of treating a substrate to impart repellency properties to the substrate
comprising applying such compositions to the substrate. App. Br. 4.
Claim 1 illustrates the subject matter on appeal and is reproduced
below:
1. A composition comprising:
(a) a first fluorochemical urethane polymer or oligomer comprising
the reaction product of components comprising (1) one or more
polyisocyanates, (2) one or more fluoroalcohols, and optionally (3) one or
more other isocyanate-reactive materials;
wherein the ratio of isocyanate groups to isocyanate-reactive groups is
about 1/1 or less;
wherein the one or more polyisocyanates comprise at least one
polyisocyanate having the formula Z-[NCO]n, wherein n is 3 or more, and Z
is an aliphatic group, cycloaliphatic group, or combination thereof,
optionally containing heteroatoms;
wherein the one or more fluoroalcohols have the formula:
Cn- F2n+1 (CH2)m’OH
where n' is 3 to 14 and m' is 1 to 12; or
Cn- F2n'+lS02N(R3)( CH2)m’OH
where R3 is H or methyl, n' is 3 to 14, and m' is 1 to 12;
and
(b) a second urea polymer or oligomer, which is distinct from the first
urethane polymer or oligomer, wherein the second urea polymer or oligomer
comprises the reaction product of components comprising (1) one or more
diisocyanates, (2) water, and optionally (3) one or more other isocyanate-
reactive materials;
wherein the one or more diisocyanates have the formula Z-[NCO]n,
wherein n is 2, and Z is an aliphatic group, cycloaliphatic group, or
combination thereof, optionally containing heteroatoms;
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wherein about 60 to about 95 mole percent of the isocyanate groups of
the diisocyanate of the second polymer or oligomer are reacted with the
water;
wherein the weight ratio of said first polymer or oligomer to said
second polymer or oligomer is from about 12/88 to 75/25; and
wherein the composition is in the form of an emulsion comprising an
ionic surfactant.
App. Br. (Claims Appendix).
Appellants request review of the following rejections set forth in the
Final Office Action entered June 29, 2015 (“Final Act.”), which the
Examiner maintains in the Answer entered June 27, 2016, 2016 (“Ans.”):
I. Claims 36—39 under 35U.S.C. § 112, first paragraph for failing
to comply with the written description requirement;
II. Claim 1, 4—10, 14—17, 21—23, 25—29, and 31—35 under
35 U.S.C. § 103(a) as unpatentable over Audenaert et al. (US 2004/0077237
Al, published April 22, 2004) (“Audenaert 237”);
III. Claims 1, 4—10, 14—17, 21—24, 26—28, and 30-35 under
35 U.S.C. § 103(a) as unpatentable over Audenaert et al. (US 2004/0077238
Al, published April 22, 2004) (“Audenaert 238”) in view of Qiu et al. (US
2003/0026997 Al, published February 6, 2003);
IV. Claims 36—39 under 35 U.S.C. § 103(a) as unpatentable over
Audenaert 237 in view of Smith (US 5,672,651, issued September 30,
1997); and
V. Claims 36—39 under 35 U.S.C. § 103(a) as unpatentable over
Audenaert 238 in view of Qiu and Smith.
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DISCUSSION
Upon consideration of the evidence relied upon in this appeal and
each of Appellants’ contentions, we affirm the Examiner’s rejection of
claims 36—39 under 35 U.S.C. § 112, first paragraph for failing to comply
with the written description requirement, and rejections of claims 1, 4—10,
14—17, and 21—39 under 35 U.S.C. § 103(a), for the reasons set forth in the
Final Action, the Answer, and below.
Rejection I
The Examiner finds that Appellants’ Specification does not provide
written description support for treating a substrate with a composition as
recited in claims 1 and 15 to impart repellency properties to the substrate
that are retained after two or more steam cleanings, as recited in claims 36—
39, which depend from claims 1 and 15. Final Act. 2. The Examiner finds
that the compositions of Examples 2—\ and 6 of Appellants’ Specification,
which Appellants rely on for written description, are not of the same scope
as the compositions recited in claims 1 and 15, and therefore do not provide
written description support for the full scope of the compositions
encompassed by the claims possessing the recited repellency properties after
two or more steam cleanings. Id.
Appellants argue that Examples 2 to 4 in their Specification
demonstrate that using the fluoroalcohol N-methyl perfluorobutanesulfonyl
ethanol (MeFBSE), which Appellants assert is representative of
fluoroalcohols of the second formula recited in claims 1 and 15, results in a
composition with the claimed repellency properties. App. Br. 24—25.
Appellants argue that Example 6 demonstrates that using the fluoroalcohol
Fluowet® EA600, which Appellants assert is representative of
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fluoroalcohols of the first formula recited in claims 1 and 15, results in a
composition with the claimed repellency properties. Appellant argue that
these examples therefore provide “support for the subject matter of claims
36-39.” App. Br. 25.
However, in Examples 2-4 and 6, repellency properties were
determined after 2 steam cleanings only, and Appellants do not direct us to
any disclosure in their Specification demonstrating that the inventors were in
possession at the time of filing of a process that imparts repellency
properties to a substrate that are retained after two or more steam cleanings
as recited in claims 36—39. App. Br. 24—25. Vas-Cath Inc. v. Mahurkar,
935 F.2d 1555, 1563—1564 (Fed. Cir. 1991) (To fulfill the written
description requirement “the applicant must. . . convey with reasonable
clarity to those skilled in the art that, as of the filing date sought, he or she
was in possession of the invention. The invention is, for purposes of the
‘written description’ inquiry, whatever is now claimed”) Appellants’
arguments are thus unpersuasive of reversible error.
We accordingly sustain the Examiner’s rejection of claims 36—39
under 35 U.S.C. § 112, first paragraph for failing to comply with the written
description requirement.
Rejection II
Appellants argue claims 1, 4—10, 14—17, 21—23, 25—29, and 31—35 as
a group. App. Br. 17—20. Therefore, for the purposes of this appeal, we
select claim 1 as representative, and decide the appeal as to Rejection II
based on claim 1 alone. 37 C.F.R. § 41.37(c)(l)(iv) (2015).
Audenaert 237 discloses a fluorochemical composition comprising an
emulsion of a fluorinated polyether compound and an extender, which is
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stabilized with an ionic surfactant. Audenaert Til || 6, 157, 160.
Audenaert Til discloses that the weight ratio of the total amount of the
extender to the total amount of the fluorinated polyether compound in the
composition is between 5:95 and 95:5, preferably between 20:80 and 50:50.
Audenaert 237 1158. Audenaert 237 discloses that the composition renders
a fibrous substrate oil and/or water repellent, and discloses that the
repellency properties are substantially maintained after several washing or
dry cleaning cycles. Audenaert 237 6, 166.
Audenaert 237 discloses that the fluorinated polyether compound may
be obtained by reacting a functionalized perfluorinated polyether, a
polyisocyanate, and one or more coreactants. Audenaert 237 126.
Audenaert 237 discloses that suitable coreactants include compounds of
formula C4F9—SO2NR—CH2CH2OH in which R is hydrogen or a lower alkyl
of 1 to 4 carbons such as methyl, ethyl, and propyl (corresponding to a
fluoroalcohol as recited in claim 1). Audenaert 237 Tflf 66—70, 76. The
Examiner finds that the fluorinated polyether compound disclosed in
Audenaert 237 thus corresponds to the first fluorochemical urethane polymer
recited in claim 1. Final Act. 3.
Audenaert 237 discloses that the extender comprises a non-fluorinated
organic compound comprising one or more blocked isocyanate groups,
which is referred to as a “blocked isocyanate.” Audenaert 237 Tflf 141—143.
Audenaert 237 discloses that the blocked isocyanate compound is preferably
produced by reacting between 100% and 40% of the isocyanate groups in a
polyisocyanate with a blocking agent, and reacting the remainder of the
isocyanate groups with water and/or an optional non-fluorinated organic
compound. Audenaert 237 144, 150. The Examiner finds that the
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extender disclosed in Audenaert Til thus corresponds to the second urea
polymer recited in claim 1. Final Act. 1—A.
The Examiner concludes that although Audenaert 111 discloses
suitable fluorinated polyether compounds and extenders other than those
discussed above, it would have been obvious to one of ordinary skill in the
art at the time of Appellants’ invention to use the relied-upon compounds in
“virtually any combination” because the skilled artisan would have expected
that any of the fluorinated polyether compounds and extenders disclosed in
Audenaert 237 would “produce viable repellant compositions.” Final Act. 4.
Appellants argue that Audenaert 237 would not have provided a
reason for one of ordinary skill in the art to select a fluoroalcohol as recited
in claim 1 from the numerous coreactants disclosed in the reference. App.
Br. 18. Appellants further argue, relying on Takeda Chemical Industries,
Ltd. v. Alphapharm Pty., Ltd., 492 F.3d 1350, 1358 (Fed. Cir. 2007), that the
Examiner does not identify anything in Audenaert 237 that would have
suggested to one of ordinary skill in the art that the fluoroalcohols recited in
claim 1 “would be the best candidate” for increasing repellency of a
substrate. Id.
However, one of ordinary skill in the art seeking to produce a
fluorochemical composition that renders a fibrous substrate oil and/or water
repellent as disclosed in Audenaert 237 would have found it obvious to
utilize any of the suitable coreactants disclosed in the reference for
producing the fluorinated polyether component of the composition—
including compounds of formula C4F9-SO2NR-CH2CH2OH, in which R is
hydrogen or a lower alkyl of 1 to 4 carbons such as methyl, ethyl, and propyl
(corresponding to a fluoroalcohol as recited in claim 1). Audenaert 237’s
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disclosure of a multitude of effective coreactants does not render any
particular coreactant less obvious. Merck & Co., Inc. v. Biocraft Labs., Inc.,
874 F.2d 804, 807 (Fed. Cir. 1989) (“That the ’813 patent discloses a
multitude of effective combinations does not render any particular
formulation less obvious. This is especially true because the claimed
composition is used for the identical purpose.”); In re Susi, 440 F.2d 442,
445 (CCPA 1971) (obviousness rejection affirmed where the genus of the
prior art was “huge, but it undeniably include [d] at least some of the
compounds recited in appellant’s generic claims and [was] of a class of
chemicals to be used for the same purpose as appellant’s additives”).
In addition, in the portion of Takeda cited by Appellants, our
reviewing court concluded that the district court did not err in finding that,
based on the prior art as a whole, one of ordinary skill in the art would not
have selected a particular compound (“compound b”) as a lead compound
for antidiabetic treatment, because this compound was singled out in the
prior art as causing considerable increases in body weight and brown fat
weight, and any suggestion to select this compound was therefore negated
by this disclosure. Contrary to Appellants’ arguments, Takeda thus does not
stand for the proposition that the prior art must have suggested that a
particular compound “would be the best candidate” for a desired application
to render obvious claims directed to that compound.
We further note that the factual situation in Takeda differs
significantly from that of the present case. Specifically, Appellants do not
direct us to any disclosure in Audenaert 237, or any other evidence,
indicating any disadvantage of utilizing a coreactant of formula C4F9—
SO2NR-CH2CH2OH, in which R is hydrogen or a lower alkyl of 1 to 4
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carbons such as methyl, ethyl, and propyl (as disclosed in Audenaert 237), to
produce a fluorinated polyether included in a fluorochemical composition
used to render a fibrous substrate oil and/or water repellent. App. Br. 18.
Appellants’ arguments are therefore unpersuasive of reversible error.
Appellants further argue that Audenaert 237 does not teach or suggest
that specific ratios of the fluorinated polyether (first polymer) and extender
(second polymer) are required to retain repellency properties after steam
cleaning. Id. Appellants contend that Table 5 of their Specification
demonstrates that “certain ratios are not sufficient to retain repellency
properties after steam cleaning.” Id. Appellants argue that the Examiner’s
proposed combination of “virtually any” of the fluorinated polyethers and
extenders disclosed in Audenaert 237 would therefore not produce viable
repellent combinations. App. Br. 18—19.
However, as discussed above, Audenaert 237 discloses that the
fluorochemical composition described in the reference renders a fibrous
substrate oil and/or water repellent, and discloses that the repellency
properties are substantially maintained after several washing or dry cleaning
cycles. In addition, as also discussed above, Audenaert 237 explicitly
discloses that the weight ratio of the total amount of the extender (second
urea polymer) to the total amount of the fluorinated polyether compound
(first fluorochemical urethane polymer) in the fluorochemical composition is
between 5:95 and 95:5, preferably between 20:80 and 50:50. Thus,
Audenaert 237 indicates that the weight ratio of the fluorinated polyether
compound (first fluorochemical urethane polymer) to the extender (second
urea polymer) in the fluorochemical composition is from 5:95 to 95:5, which
encompasses the range of 12/88 to 75/25 recited in claim 1, and Audenaert
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Til discloses that the preferred ratio is between 50:50 and 80:20, which is
encompassed by the recited range, rendering the range recited in claim 1
prima facie obvious. In re Peterson, 315 F.3d 1325, 1329-30 (Fed. Cir.
2003)(“In cases involving overlapping ranges, we and our predecessor court
have consistently held that even a slight overlap in range establishes a prima
facie case of obviousness. . . . Selecting a narrow range from within a
somewhat broader range disclosed in a prior art reference is no less obvious
than identifying a range that simply overlaps a disclosed range. In fact,
when as here, the claimed ranges are completely encompassed by the prior
art, the conclusion is even more compelling than in cases of mere overlap.”)
Appellants do not establish the criticality of the range recited in claim
1 because they do not demonstrate that the data provided in Table 5 of their
Specification are commensurate in scope with the claimed subject matter.
Specifically, the data in Table 5 were generated by testing compositions
prepared from a single Part A component comprising one type of
fluoroalcohol (N-methyl perfluorobutanesulfonyl ethanol or MeFBSE) and
one type of polyfunctional isocyanate (DESMODUR® N-3300A) and a
single Part B component comprising the same fluoroalcohol used in Part A
(MeFBSE) and one diisocyanate (DESMODUR® I or IPDI). Appellants do
not explain why the effect observed for the tested fluorochemical
compositions—in which the ratio of a single Part A component to a single
Part B component was varied—would hold true for compositions comprising
the full scope of first fluorochemical urethane polymers and oligomers, and
the full scope of the second urea polymers or oligomers, encompassed by
claim 1. App. Br. 18—19. In re Harris, 409 F.3d 1339, 1344 (Fed. Cir.
2005) (“Even assuming that the results were unexpected, Harris needed to
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show results covering the scope of the claimed range. Alternatively Harris
needed to narrow the claims.”); In re Greenfield, 571 F.2d 1185, 1189
(CCPA 1978) (“Establishing that one (or a small number of) species gives
unexpected results is inadequate proof, for ‘it is the view of this court that
objective evidence of non-obviousness must be commensurate in scope with
the claims which the evidence is offered to support.’”) (quoting In re Tiffin,
448 F.2d 791, 792 (CCPA 1971)).
Therefore, Appellants do not meet their burden of establishing the
criticality of the weight ratio of the first polymer or oligomer to the second
polymer or oligomer recited in claim 1. In re Woodruff, 919 F.2d 1575,
1578 (Fed. Cir. 1990) (indicating that in cases in which the difference
between the claimed invention and the prior art is some range or other
variable within the claims, the Applicants must show that the particular
range is critical, generally by showing that the claimed range achieves
unexpected results relative to the prior art range.). Appellants’ arguments
are therefore unpersuasive of reversible error in the Examiner’s finding that
a combination of the relied-upon fluorinated polyethers and extenders
disclosed in Audenaert 237 in the ratio disclosed in the reference would
produce viable repellent compositions.
Appellants further argue that Audenaert 237 does not teach or suggest
the importance of reacting about 60 to about 95 mole percent of the
isocyanate groups in a polyisocyanate with water to produce the blocked
isocyanate extender compound described in the reference. App. Br. 19.
Appellants contend that although Audenaert 237 discloses that isocyanate
groups may be reacted with water, the reference teaches that such a reaction
is made only if the reaction of isocyanate groups with the blocking agent is
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not complete. Id. Appellants further argue that Audenaert Til suggests that,
in the event of an inefficient reaction between isocyanate groups and the
blocking agent, the unreacted isocyanate groups should be reacted with non-
fluorinated organic compounds instead of water, because the reference
teaches that “[preferably, between 99 and 40% of the isocyanate groups are
reacted with one or more blocking agents and between 1 and 60% of the
isocyanate groups is reacted with one or more non-fluorinated organic
compound.” Id. Appellants argue that the Examiner does not explain why,
in light of these disclosures, one of ordinary skill in the art “would have been
motivated to react about 60 to about 95 mole percent of the isocyanate
groups of the diisocyanate of the second polymer or oligomer with water, as
claimed.” App. Br. 19-20.
However, Audenaert 237’s disclosure of a preferred embodiment that
involves reacting between 99 and 40% of the isocyanate groups in a
polyisocyanate with one or more blocking agents, and reacting between 1
and 60% of the isocyanate groups with one or more non-fluorinated organic
compounds, does not negate Audenaert 237’s broader disclosure of
producing a blocked isocyanate compound by reacting between 100% and
40% of the isocyanate groups with a blocking agent, and reacting the
remainder of the isocyanate groups with water and/or an optional non-
fluorinated organic compound. Audenaert 237 1150. In re Fulton, 391
F.3d 1195, 1200 (Fed. Cir. 2004) (“[C]ase law does not require that a
particular combination must be the preferred, or the most desirable,
combination described in the prior art in order to provide [the] motivation
[or reason] for the current invention.”).
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One of ordinary skill in the art seeking to produce a fluorochemical
composition that renders a fibrous substrate oil and/or water repellent as
disclosed in Audenaert 237 would have been led to produce a blocked
isocyanate extender compound for use in the composition by reacting
between 100% and 40% of the isocyanate groups in a polyisocyanate with a
blocking agent, and reacting the remainder of the isocyanate groups with
water, because Audenaert 237 explicitly discloses that this is a suitable
method for producing a blocked isocyanate extender compound useful in a
such a fluorochemical composition. Merck, 874 F.2d at 807-08 (quoting In
re Lamberti, 545 F.2d 747, 750 (CCPA 1976)(“[T]he fact that a specific
[embodiment] is taught to be preferred is not controlling, since all
disclosures of the prior art, including unpreferred embodiments, must be
considered.”); In re Boe, 355 F.2d 961, 965 (CCPA 1966) (All of the
disclosures in a prior art reference “must be evaluated for what they fairly
teach one of ordinary skill in the art.”). Appellants’ arguments do not
establish any distinction between reacting between 100% and 40% of the
isocyanate groups in a polyisocyanate with a blocking agent, and reacting
the remainder of the isocyanate groups with water as disclosed in Audenaert
237, and reacting about 60 to about 95 mole percent of the isocyanate groups
with water as recited in claim 1. App. Br. 19—20. Appellants’ arguments are
therefore unpersuasive of reversible error.
Appellants further argue that Examples in their Specification
demonstrate that use of the fluorochemicals recited in claim 1, and use of the
recited ratio of the first urethane polymer or oligomer to the second urea
polymer or oligomer, yield unexpected results. App. Br. 23—24.
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However, the burden of analyzing and explaining Specification data to
support an assertion of non-obviousness rests with Appellants. In re Klosak,
455 F.2d 1077, 1080 (CCPA 1972). In the present case, Appellants do not
explain why the relied-upon data in Table 4 for Examples 2, 3, 4, and 6, and
data in Tables 5 and 6, are sufficient to show that the full scope of the
compositions covered by claim 1 impart unexpected results relative to the
closest prior art. App. Br. 23—24. Appellants do not explain why the effect
observed for the limited compositions of Examples 2-4 comprising a single
type of fluoroalcohol (MeFBSE) and only two different isocyanates (IPDI
and Mondur® MA-2300); why data from the composition of Example 6
comprising the fluoroalcohol Fluowet® EA600 and the same isocyanate
used in Examples 2 and 4 (IPDI); and why data from the compositions of
Table 5 (discussed above), which are the same as the compositions of Table
6, would hold true for compositions comprising the full scope of first
fluorochemical urethane polymers and oligomers, and the full scope of the
second urea polymers or oligomers, encompassed by claim 1. Id. Harris,
409 F.3d at 1344; Greenfield, 571 F.2d at 1189.
Nor do Appellants explain why the effect observed for the limited
compositions of Examples 2—\ and 6 and Tables 5 and 6 would have been
unexpected in view of the relied-upon disclosures of Audenaert 237, the
closest prior art. App. Br. 23—24. In re Baxter Travenol Labs., 952 F.2d
388, 392 (Fed. Cir. 1991) (“[W]hen unexpected results are used as evidence
of nonobviousness, the results must be shown to be unexpected compared
with the closest prior art.”).
Accordingly, Appellants do not meet their burden of demonstrating
that the composition recited in claim 1 imparts unexpected results.
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Therefore, on this record, the preponderance of the evidence supports the
Examiner’s conclusion of obviousness, and we accordingly sustain the
Examiner’s rejection of claims 1, 4—10, 14—17, 21—23, 25—29, and 31—35
under 35 U.S.C. § 103(a) as unpatentable over Audenaert 237.
Rejection III
Appellants argue claims 1, 4—10, 14—17, 21—24, 26—28, and 30-35 as
a group. App. Br. 20-22. Therefore, for the purposes of this appeal, we
select claim 1 as representative, and decide the appeal as to Rejection III
based on claim 1 alone. 37 C.F.R. § 41.37(c)(l)(iv) (2015).
Audenaert 238 discloses a fluorochemical composition that renders a
fibrous substrate oil and/or water repellent, and discloses that the repellency
properties are substantially maintained after several washing or dry cleaning
cycles. Audenaert 238 2, 90. Audenaert 238 discloses that the
fluorochemical composition comprises a dispersion of a fluorinated
compound comprising the reaction product of a fluorinated polyether, a
polyisocyanate, and a coreactant. Audenaert 238 Tflf 6—10. Audenaert 238
discloses stabilizing the dispersion with an ionic surfactant. Audenaert 238
178. Audenaert 238 discloses that the coreactant can be water (| 40), and
discloses reacting between 5 and 60% of the isocyanate groups in the
polyisocyanate with the perfluorinated polyether compound, and reacting the
remainder of the isocyanate groups with the coreactant. Audenaert 238 174.
The Examiner finds that this fluorinated compound comprising the reaction
product of a fluorinated polyether, an isocyanate, and a water coreactant
corresponds to the first fluorochemical urethane polymer recited in claim 1.
Final Act. 4—5.
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The Examiner finds that although Audenaert 238 discloses that the
fluorochemical composition may contain further fluorochemical compounds
(1 87), Audenaert 238 does not disclose that such additional fluorochemical
compounds correspond to the second urea polymer recited in claim 1, and
the Examiner relies on Qiu for suggesting this feature. Final Act. 5—6. Qiu
discloses fluorochemical urethane compositions that impart oil and water
repellency to a substrate. Qiu 11. Qiu discloses that the fluorochemical
urethane compositions comprise emulsions of compounds or oligomers
comprising the reaction product of a fluorinated polyol, polyisocyanate, and
a monofimctional fluorine-containing compound comprising a functional
group reactive with the hydroxyl group of the polyol or with the isocyanate
group of the polyisocyanate. Qiu 151. Qiu discloses that suitable
monofimctional fluorine-containing compounds include compounds of
formula RfS02N(CH3)CH2CH20H in which Rf is a perfluoroalkyl group
having 1 to 12 carbon atoms (corresponding to a fluoroalcohol as recited in
claim 1). Qiu H 92, 98. The Examiner finds that these compounds or
oligomers comprising the reaction product of a fluorinated polyol,
polyisocyanate, and a fluoroalcohol of formula RfS02N(CH3)CH2CH20H
disclosed in Audenaert 23 8 correspond to the first fluorochemical urethane
polymer or oligomer recited in claim 1. Final Act. 5.
The Examiner concludes that, in view of Audenaert 23 8’s disclosure
that the fluorochemical composition described in the reference may contain
further fluorochemical compounds, and in view of the equivalent utilities of
Audenaert 23 8’s and Qiu’s compositions, it would have been obvious to one
of ordinary skill in the art at the time of Appellants’ invention to utilize the
relied-upon fluorochemical urethane composition disclosed in Qiu in
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combination with the fluorochemical composition disclosed in Audenaert
238 in virtually any ratio to render a substrate oil and/or water repellent.
Final Act. 5—6.
Appellants argue that the Examiner fails to “articulate why a skilled
artisan would have been motivated to combine the compositions the
Examiner asserted are taught by Qui [] and Audenaert ’238.” App. Br. 21.
However, as set forth above, the Examiner provides a reasoned
rationale for combining the relied-upon compositions of Audenaert 238 and
Qiu based on their equivalent utilities and Audenaert 23 8’s disclosure that
the fluorochemical composition described in the reference may contain
further fluorochemical compounds, which one of ordinary skill in the art
would have understood would include the fluorochemical compounds
disclosed in Qiu. KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 417
(2007)(quoting Sakraida v. Ag Pro, Inc., 425 U.S. 273, 282 (1976)(“[W]hen
a patent ‘simply arranges old elements with each performing the same
function it had been known to perform’ and yields no more than one would
expect from such an arrangement, the combination is obvious.”); In re
Kerkhoven, 626 F.2d 846, 850 (CCPA 1980)(“It is prima facie obvious to
combine two compositions each of which is taught by the prior art to be
useful for the same purpose, in order to form a third composition which is to
be used for the very same purpose.”) Appellants’ arguments are therefore
unpersuasive of reversible error.
Appellants further argue that even if a skilled artisan had been
motivated to combine compositions having repellency characteristics, the
Examiner did not articulate any reason why a skilled artisan would have
been motivated to combine the compositions the Examiner asserted are
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taught by Qiu and Audenaert 238 to make an emulsion including an ionic
surfactant, as recited in claim 1. App. Br. 21.
However, in view of Audenaert 23 8’s disclosure of a fluorochemical
composition that renders a fibrous substrate oil and/or water repellent, which
may contain further fluorochemical compounds, one of ordinary skill in the
art seeking to produce such a composition would have found it obvious to
include in Audenaert 23 8’s fluorochemical composition any of the
fluorochemical compounds disclosed in Qiu as suitable for inclusion in
fluorochemical compositions that render a substrate oil and/or water
repellent. Thus, one of ordinary skill in the art would have found it obvious
to include compounds comprising the reaction product of a fluorinated
polyol, polyisocyanate, and a fluoroalcohol of formula
RfS02N(CH3)CH2CH20H in which Rf is a perfluoroalkyl group having 1 to
12 carbon atoms as disclosed in Qiu, in Audenaert 23 8’s fluorochemical.
Merck, 874 F.2d at 807; Susi, 440 F.2d at 445.
Moreover, because Audenaert 238 and Qiu both disclose
fluorochemical compositions comprising emulsions of polymers stabilized
with ionic surfactants, one of ordinary skill in the art would have found it
obvious to formulate the fluorochemical composition suggested by the
combined disclosures of the references (discussed above) comprising the
relied-upon compounds or polymers from each reference, as an emulsion
stabilized with an ionic surfactant. Appellants’ arguments are therefore
unpersuasive of reversible error.
Appellants also argue that even if a skilled artisan had been motivated
to combine the compositions the Examiner asserts are taught by Qiu and
Audenaert 238 to make an emulsion, Qiu and Audenaert 238 do not teach or
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suggest the importance of the specific ratio of the first polymer or oligomer
and the second polymer or oligomer recited in claim 1. App. Br. 21.
Appellants contend that Table 5 of their Specification demonstrates that
“certain ratios are not sufficient to retain repellency properties after steam
cleaning.” Id. Appellants argue that the Examiner’s proposed combination
of “virtually any ratio” of the relied-upon compounds or polymers disclosed
in Audenaert 238 and Qiu would therefore not produce viable repellent
combinations. Id.
However, the combined disclosures of Audenaert 238 and Qiu
reasonably would have suggested to one of ordinary skill in the art that the
relied-upon compounds or polymers from each reference could be combined
in any ratio to form a fluorochemical composition that renders a fibrous
substrate oil and/or water repellent, because both references discloses that
the relied-upon compounds or polymers are useful in fluorochemical
compositions having this utility. As discussed above, Appellants do not
establish the criticality of the range of ratios recited in claim 1 because they
do not meet their burden of establishing that the data provided in Table 5 of
their Specification are commensurate in scope with the claimed subject
matter. Appellants’ arguments are therefore unpersuasive of reversible
error.
Appellants further argue that Audenaert 238 does not teach or suggest
the importance of reacting isocyanate groups with water in the amounts
recited in claim 1. App. Br. 21—22. Appellants contend that Audenaert 238
teaches reacting a polyisocyanate with a perfluorinated polyether compound,
and teaches that the unreacted isocyanate groups can be reacted with a co­
reactant. Id. Appellants contend that Audenaert 238 further discloses that
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“between 0 and 40% of the isocyanate groups” can be reacted with “water or
a non-fluorinated organic compound other than an isocyanate blocking
agent.” Id. Appellants argue that the Examiner does not explain why a
skilled artisan, in light of these disclosures, would have been motivated to
react a diisocyanate with water instead of any of the other co-reactants and
non-fluorinated organic compounds taught by Audenaert 238, or to react
about 60 to about 95 mole percent of the isocyanate groups with water, as
recited in claim 1. Id.
However, Audenaert 23 8’s disclosure of a preferred embodiment of
preparing a fluorinated compound for inclusion in the fluorochemical
composition described in the reference that involves reacting between 10%
to 30% of isocyanate groups in a polyisocyanate with a perfluorinated
poly ether compound, between 90% and 30% of the isocyanate groups with
an isocyanate blocking agent, and 0 to 40% of isocyanate groups with water,
does not negate Audenaert 23 8’s broader disclosure of reacting between 5%
and 60% of the isocyanate groups with the perfluorinated polyether
compound and reacting the remainder of the isocyanate groups with a
coreactant. In addition, Audenaert 23 8’s disclosure of numerous suitable
coreactants does not negate Audenaert 23 8’s disclosure of the suitability of
water as a coreactant. Fulton, 391 F.3d at 1200. One of ordinary skill in the
art seeking to produce a fluorochemical composition that renders a fibrous
substrate oil and/or water repellent as disclosed in Audenaert 238 would
have been led to produce a fluorinated compound for use in the composition
by reacting between 5% and 60% of the isocyanate groups in a
polyisocyanate with a perfluorinated polyether compound, and reacting the
remainder of the isocyanate groups with a water coreactant, because
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Audenaert 238 explicitly discloses that this is a suitable method for
producing a fluorinated compound useful in such compositions. Merck, 874
F.2d at 807; Boe, 355 F.2d at 965. Appellants’ arguments do not establish
any distinction between reacting 5% to 60% of the isocyanate groups in a
polyisocyanate with a perfluorinated polyether compound and reacting the
remainder of the isocyanate groups with a water coreactant as disclosed in
Audenaert 238, and reacting about 60 to about 95 mole percent of isocyanate
groups with water as recited in claim 1. Appellants’ arguments are therefore
unpersuasive of reversible error.
Appellants further argue that the Examples in their Specification
demonstrate that use of the fluorochemicals recited in claim 1, and use of the
recited ratio of the first urethane polymer or oligomer to the second urea
polymer or oligomer, yield unexpected results, as discussed above in
connection with Rejection II. App. Br. 23—24. However, for the reasons
discussed above, Appellants do not meet their burden of demonstrating that
the composition recited in claim 1 imparts unexpected results.
Therefore, on this record, the preponderance of the evidence supports
the Examiner’s conclusion of obviousness, and we accordingly sustain the
Examiner’s rejection of claims 1, 4—10, 14—17, 21—24, 26—28, and 30-35
under 35 U.S.C. § 103(a) as unpatentable over Audenaert 238 and Qiu.
Rejections IV and V
Appellants argue that Smith fails to remedy the deficiencies of
Audenaert 237, and of Audenaert 238 in view of Qiu. App. Br. 22—23.
However, for the reasons discussed above, Appellants’ position as to these
grounds of rejection is without merit.
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Appellants further argue that the applied prior art does not teach or
suggest that the claimed compositions would haven an oil repellency value
of at least 2 after two steam cleanings as recited in claims 38 and 39. App.
Br. 23.
However, although Audenaert 237 and Audenaert 238 do not
explicitly mention an oil repellency value of at least 2 after two steam
cleanings as recited in claims 38 and 39, this property would have naturally
flowed from following the suggestion in Audenaert 237, and the suggestion
stemming from the combined disclosures of Audenaert 238 and Qiu, of
forming the claimed compositions, as discussed above. PAR Pharm., Inc. v.
TWIPharm., Inc., 773 F.3d 1186, 1195 (Fed. Cir. 2014) (concept of
inherency, when applied to obviousness, is present “when the limitation at
issue is the ‘natural result’ of the combination of prior art elements”);
Ex parte Obiaya, 227 USPQ 58, 60 (BPAI 1985) (“The fact that appellant
has recognized another advantage which would flow naturally from
following the suggestion of the prior art cannot be the basis for patentability
when the differences would otherwise be obvious.”); In re Spada, 911 F.2d
705, 709 (Fed. Cir. 1990) (explaining that a chemical composition and its
properties are inseparable.); In re Kubin, 561 F.3d 1351, 1357 (Fed. Cir.
2009) (“Even if no prior art of record explicitly discusses the [limitation],
[applicants’] application itself instruct[s] 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]”).
Appellants’ arguments are therefore unpersuasive of reversible error,
and we accordingly sustain the Examiner’s rejection of claims 36—39 under
35 U.S.C. § 103(a).
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Reply Brief
Appellants argue that the Examiner may have set forth a new ground
of rejection in the Answer. Reply Br. 1—2. However, we do not address this
issue because it is reviewable by a petition under 37 C.F.R. § 1.181, and is
therefore not within the jurisdiction of the Board. Ex Parte Frye, 94
USPQ.2d 1072, 1078 (BPAI 2010) (precedential).
In addition, we do not consider any new argument raised in the Reply
Brief, which could have been raised in the Appeal brief, but was not. 37
C.F.R. § 41.37(c)(l)(iv); 37 C.F.R. § 41.41(b)(2) (arguments raised for the
first time in the Reply Brief that could have been raised in the Appeal Brief
will not be considered by the Board unless good cause is shown).
DECISION
In view of the reasons set forth above and in the Final Action and the
Answer, we affirm the Examiner’s rejection of claims 36—39 under
35 U.S.C. § 112, first paragraph for failing to comply with the written
description requirement, and rejections of claims 1, 4—10, 14—17, and 21—39
under 35 U.S.C. § 103(a).
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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