Ex Parte Burton

Patent Trial and Appeal Board

Jun 30, 2016

13688830 (P.T.A.B. Jun. 30, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/688,830 11129/2012
26290 7590 07/05/2016
PATTERSON & SHERIDAN, LLP,
24 Greenway Plaza, Suite 1600
Houston, TX 77046
FIRST NAMED INVENTOR
BRUCE L. BURTON
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.
D#81,693-Cl 6952
EXAMINER
FANG, SHANE
ART UNIT PAPER NUMBER
1766
NOTIFICATION DATE DELIVERY MODE
07/05/2016 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):
PSDocketing@pattersonsheridan.com
pair_eofficeaction@pattersonsheridan.com
jcardenas@pattersonsheridan.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BRUCE L. BUR TON
Appeal2015-003336
Application 13/688,830
Technology Center 1700
Before CHUNG K. PAK, JEFFREY T. SMITH, and
WESLEY B. DERRICK, Administrative Patent Judges.
PAK, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner's
decision2 finally rejecting claims 1 through 7, 9 through 16, 18, 21, and 22.
We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
The subject matter on appeal is directed to a method of making an
epoxy resin that comprises, inter alia, forming an accelerator composition
by adding glycerin to at least one amine to achieve a desired amine hydrogen
equivalent weight (AHEW) for the accelerator composition. (Spec. i-fi-113,
1 Appellant identifies the Real Party in Interest as Huntsman Chemical
Corporation (Appeal Brief filed August 21, 2014 ("App. Br.") at 3.)
2 Final Office Action entered December 23, 2013 ("Final Act.").
Appeal2015-003336
Application 13/688,830
18, 19, 22.) The method further comprises selecting an epoxy hardener
having an AHEW that is substantially similar to the AHEW of the
accelerator composition. (Spec. i-f 20.) In other words, the AHEW of the
accelerator composition matches or nearly matches the AHEW of the epoxy
hardener so that the accelerator composition can be exchanged on a weight
for weight basis with the epoxy hardener. (Id.) The method additionally
comprises contacting the epoxy hardener and a polyepoxy in the presence of
the accelerator composition to form an epoxy resin. (Spec. i-fi-123-25.)
According to the Specification, the AHEW of a molecule is the value
obtained by dividing the molecule's molecular weight by the number of
hydrogen atoms attached to amino nitrogen atoms in the molecule. (Spec. i-f
18.) The Specification further explains that the AHEW of a blend of two or
more components is determined by the AHEW and weight fraction of each
component in the blend. (Id.) The Specification evinces the AHEW of
accelerator compositions that varies with the amounts of glycerine and N-
aminoethylpiperazine (an exemplary amine) used and the type of the amine
used in the accelerator compositions. (Spec. i-fi-119 and 35-37.)
Details of the appealed subject matter are recited in representative
claim 1, reproduced below from the Claims Appendix to the Appeal Brief.
1. A method for making an epoxy resin comprising:
a. forming an accelerator composition having an
amine hydrogen equivalent weight ("AHEW") by adding an
amount of glycerin to at least one amine to adjust an AHEW
of the at least one amine to achieve the AHEW of the
accelerator composition;
b. selecting an epoxy hardener having an AHEW
substantially similar to the AHEW of the accelerator
composition; and
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Appeal2015-003336
Application 13/688,830
c. contacting the epoxy hardener and a polyepoxy in
the presence of the accelerator composition to form an epoxy
resm.
(App. Br. 8, Claims Appendix.)
Appellant seeks review of the final rejection maintained by the
Examiner in the Answer mailed on October 28, 2014 ("Ans.") of claims 1-7,
9-16, 18, 21, and 22 under 35 U.S.C. § 103(a) as unpatentable over the
disclosure of U.S. Patent 4,521,572 issued in the name ofCuscurida et al. on
June 4, 1985 (hereinafter referred to as "Cuscurida") in view of Huntsman
("Jeffamine® D-203 Polyoxypropylenediamine" Technical Bulletin, 1988)
(hereinafter referred to as "Huntsman").
DISCUSSION
Upon consideration of the evidence on this appeal record in light of
the respective positions advanced by the Examiner and Appellant, we concur
with Appellant that the Examiner has not carried the burden of establishing a
prima facie case of obviousness regarding the subject matter recited in
claims 1-7, 9-16, 18, 21, and 22 within the meaning of 35 U.S.C. § 103(a).
Accordingly, we reverse the Examiner's§ 103(a) rejection of these claims
for the reasons set forth in the Appeal Brief. We add the discussion below
primarily for emphasis and completeness. 3
The Examiner has the burden of establishing a prima facie case of
obviousness with respect to the subject matter recited in the claims on
3 For the purposes of this appeal, we select claim 1, the broadest claim on
appeal, as representative, and decide the propriety of the rejection under 35
U.S.C. § 103(a) based on this claim alone.
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Appeal2015-003336
Application 13/688,830
appeal. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992) ("[The] [patent]
examiner bears the initial burden, on review of the prior art or on any other
ground, of presenting a prima facie case ofunpatentability."); see also In re
Jung, 637 F.3d 1356, 1365---66 (Fed. Cir. 2011) (explaining that while "the
applicant must identify to the Board what the examiner did wrong, ... the
examiner retains the burden to show invalidity").
The Examiner finds that Cuscurida discloses a method for producing
an epoxy composition that involves reacting a mixture of first and second
initiators with an epoxy resin. (Cuscurida col. 3, 11. 3-7, 16-24, 29-39, 46-
47; col. 4, 11. 1-5.) Cuscurida discloses that the first initiator can be
glycerine or aminoethylpiperazine (which according to the Examiner,
corresponds to the amine recited in claim 1) and the second initiator can be
ethylenediamine (which according to the Examiner, corresponds to the
epoxy hardener recited in claim 1 ). (Cuscurida col. 3, 11. 16-24, 29-39.)
The Examiner finds that Huntsman describes JEFF AMINE D-230, a
commercially-available epoxy curing agent. (Huntsman 1.)
Based on these findings, the Examiner concludes that it would have
been obvious to one of ordinary skill in the art at the time of the invention to
utilize a combination of both glycerine and aminoethylpiperazine in
Cuscurida' s method, and to replace the ethylenediamine used in the method
with JEFF AMINE D-230 because Huntsman discloses that use of
JEFF AMINE D-230 yields articles and compositions having improved
toughness, impact resistance, and clearness. (Final Act. 3-5.) The
Examiner also determines that such proposed combination inherently forms
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Appeal2015-003336
Application 13/688,830
an accelerator composition in which a particular amount of glycerin is added
to an amine to adjust the AHEW of the amine to a desired level, and
inherently selects an epoxy hardener having an AHEW that is substantially
similar to the AHEW of the accelerator composition because Cuscurida and
Huntsman "satisfy all of the material and chemical limitations of the instant
invention." (Ans. 6; Final Act. 5.)
However, we agree with Appellant that the Examiner does not carry
the burden of establishing a prima facie case of obviousness. On this record,
the Examiner does not demonstrate that Cuscurida and/ or Huntsman teaches
or suggests the AHEWs of amines and/or epoxy hardeners, much less
disclosing or suggesting the significance of their similarities in methods for
making epoxy resins. As pointed out by Appellant, the Examiner does not
show that either Cuscurida or Huntsman recognizes that adding glycerin to
aminoethylpiperazine would affect the AHEW of the aminoethylpiperazine.
(App. Br. 5---6; Final Act. 3-5; Ans. 6.) Nor does the Examiner show that
the AHEW of JEFFAMINE D-230, even if JEFFAMINE D-230 were
properly substituted for ethylenediamine in Cuscurida' s process as proposed
by the Examiner, would inherently or necessarily be substantially similar to
the unknown AHEW of the proposed mixture of glycerine and
aminoethylpiperazine. (App. Br. 5---6; Final Act. 3-5; Ans. 6.); In re
Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (quotations and citations
omitted) ("To establish inherency, the extrinsic evidence must make clear
that the missing descriptive matter is necessarily present in the thing
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Application 13/688,830
described in the reference .... Inherency, however, may not be established
by probabilities or possibilities. The mere fact that a certain thing may result
from a given set of circumstances is not sufficient.") The Examiner simply
does not identify any disclosure in Cuscurida indicating the relative amounts
of glycerine and aminoethylpiperazine that correspond to a particular
AHEW that is substantially similar to the AHEW reflective of the amount of
JEFF AMINE D-230 used in Cuscurida's process. (Final Act. 3-5; Ans. 6.)
Accordingly, on this record, we concur with Appellant that the
Examiner's evidence and explanation are not sufficient to establish a prima
facie case of obviousness of the subject matter recited in claims 1-7, 9-16,
18, 21, and 22 within the meaning of 35 U.S.C. § 103(a). We therefore do
not sustain this rejection.
ORDER
In view of the reasons set forth in the Appeal Brief and above, the
Examiner's§ 103(a) rejections of claims 1-7, 9-16, 18, 21, and 22 are
reversed.
REVERSED
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