Ex Parte DOHNER et al

Patent Trial and Appeal Board

Jun 22, 2018

14469174 (P.T.A.B. Jun. 22, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/469,174 08/26/2014
27049 7590 06/26/2018
OLIFF PLC
P.O. BOX 320850
ALEXANDRIA, VA 22320-4850
FIRST NAMED INVENTOR
RetoDOHNER
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.
147121.01 6415
EXAMINER
MOORE, MARGARET G
ART UNIT PAPER NUMBER
1765
NOTIFICATION DATE DELIVERY MODE
06/26/2018 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):
OfficeAction27049@oliff.com
jarmstrong@oliff.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RETO DORNER, MICHAEL SCHLUMPF, ANDREAS DIENER,
and WOLF-RUDIGER HUCK
Appeal2017-000569
Application 14/469,174
Technology Center 1700
Before TERRY J. OWENS, JENNIFERR. GUPTA, and
JANEE. INGLESE, Administrative Patent Judges.
INGLESE, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellant2 requests our review under 35 U.S.C. § 134(a) of the
Examiner's decision to finally reject claims 1-19. We have jurisdiction over
this appeal under 35 U.S.C. § 6(b ).
We AFFIRM.
1 We heard arguments from Appellant's representative on June 19, 2017.
2 Appellant is the applicant, Sika Technology AG, which, according to the
Appeal Brief, is the real party in interest. Appeal Brief filed January 12,
2016 ("App. Br."), 1.
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Application 14/469,174
STATEMENT OF THE CASE
Claim 1 illustrates the subject matter on appeal and is reproduced
below with contested language italicized:
1. A composition comprising:
i) at least one mercaptosilane MS;
ii) at least one polysilane PS having at least one
secondary or tertiary amino group;
iii) at least one aromatic secondary aminosilane AS; and
iv) at least one organotitanium compound;
wherein the polysilane PS is selected from the group consisting
of:
polysilanes of formula (IV):
polysilanes of formula (V):
~~~OH
-~ : (V)
'
polysilanes of formula (VI):
pH
;--<,
_,.N
\ __ /
\
(VI)
OH ·and
'
(IV)
polysilanes that are a reaction product between an
epoxysilane of formula (VII) and aminosilane of
formula (VIII):
(VII)
(VIII)
where:
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R5 and R9 each independently represents an alkyl group
having 1 to 4 C atoms or an acyl group having 1 to 4 C atoms;
R6 and R10 each independently represents an Hor an
alkyl group having 1 to 10 C atoms;
R7 and R8 each independently represents a linear or
branched alkylene group having 1 to 6 C atoms;
Q represents:
H,
an alkyl, cycloalkyl, or aryl radical having 1 to 20
C atoms,
a radical of formula-(CHz-CHz-NH)dH, or
a radical of formula-R7Si(OR5)c3-a)(R6)a;
a is 0, 1, or 2;
bis 0, 1, or2;
d is 1 or 2; and
n is 2, 3, or 4.
App. Br. A-1-A-2 (Claims Appendix) (emphasis added).
The Examiner sets forth the rejection of claims 1-19 under 35 U.S.C.
§ 103(a) as unpatentable over Dohner et al. (EP 1 923 361 Al, published
May 21, 2008) in the Final Office Action entered August 11, 2015 ("Final
Act."), and maintains the rejection in the Examiner's Answer entered
August 1, 2016 ("Ans."). Appellant does not contest the Examiner's
reliance on Dohner et al. (US 2010/0043945 Al, published February 25,
2010) as "the English language equivalent" ofEP 1 923 361 Al, and
citations to Dohner in this Decision therefore refer to the published U.S.
patent application.
DISCUSSION
Upon consideration of the evidence relied upon in this appeal and
each of Appellant's contentions, we affirm the Examiner's rejection of
claims 1-19 under 35 U.S.C. § 103(a) for the reasons set forth in the Final
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Action, the Answer, and below.
Appellant argues claims 1-19 as a group on the basis of claim 1, to
which we accordingly limit our discussion. App. Br. 5-9; 37 C.F.R.
§ 41.37(c)(l)(iv).
Dohner discloses an adhesive undercoat composition that exhibits
favorable adhesion promotion on glass and glass ceramic at low
temperatures. i-f 7. Dohner discloses that an essential aspect of the
composition of Dohner' s invention is the simultaneous presence of ( 1) a
secondary or tertiary amino group in a silane, and (2) a polysilane. i-f 26.
Dohner discloses that in a first embodiment of the composition of Dohner's
invention, the secondary or tertiary amino group in a silane and the
polysilane are present in the same molecule-a polysilane having at least
one secondary or tertiary amino group. i-f 26. Dohner discloses that in a
second embodiment of the composition of Dohner' s invention, the
secondary or tertiary amino group in a silane and the polysilane are present
in two different molecules-a polysilane and an aminosilane having at least
one secondary or tertiary amino group. i-f 27.
Dohner discloses an adhesive undercoat composition according to the
first embodiment of Dohner' s invention that comprises at least one
mercaptosilane (element (i) of claim 1) and at least one polysilane having at
least one secondary or tertiary amino group (element (ii) of claim 1 ). i-fi-1 14--
17. Dohner discloses an adhesive undercoat composition according to the
second embodiment of Dohner' s invention that comprises at least one
mercaptosilane (element (i) of claim 1 ), at least one polysilane, and at least
one aminosilane having at least one secondary or tertiary amino group.
i-fi-1 14--19. Dohner discloses numerous suitable aminosilanes having at least
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one secondary or tertiary amino group, including N-phenyl-3-amino
propyltrimethoxysilane, N-phenyl-4-amino butyltrimethoxysilane, and N-
phenylaminomethyldimethoxymethylsilane, which are aromatic secondary
aminosolanes (element (iii) of claim 1 ). i-f 67.
Dohner discloses that the adhesive undercoat composition of Dohner' s
invention "advantageously further comprises at least one organotitanium
compound" (element (iv) of claim 1 ). i-f 80.
The Examiner finds that Dohner thus discloses a first adhesive
composition containing elements (i), (ii), and (iv) of the composition of
claim 1, and a second adhesive composition containing elements (i), (iii),
and (iv) of the composition of claim I. Non-Final Act. 2; Ans. 2-3. 3 The
Examiner determines that it would have been obvious to one of ordinary
skill in the art to combine the first and second adhesive compositions
disclosed in Dohner to form a third composition that also has utility as an
adhesive (and containing elements (i), (ii), (iii), and (iv) of claim 1 ),
rendering the composition of claim 1 prima facie obvious. Non-Final Act.
2-3; Ans. 3 (citing In re Kerkhoven, 626 F.2d 846, 850 (CCPA 1980)).
Appellant argues that in Kerkhoven the claims required "no more than
the mixing together of two conventional spray-dried detergents," but in
3 The Examiner does not include a statement of the rejection of claims 1-19
under§ 103(a) as unpatenteable over Dohner in the Final Office Action from
which the present appeal is taken (entered August 11, 2015), but the
Examiner indicates in the Final Action that "[t]his rejection relies on the
rationale of record. As such the rational for this rejection will not be
repeated." Final Act. 2. The "rationale of record" is set forth in the Non-
Final Office Action entered February 4, 2015 ("Non-Final Act.") at pages 2-
3. The Examiner also includes a statement of the rejection in the Answer.
Ans. 2--4. We accordingly provide citations to both the Non-Final Office
Action and the Answer when discussing the Examiner's rejection.
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contrast, "there is nothing of record that indicates that the two different
compositions according to the two different formulations of Dohner that
would have needed to have been selected to meet the claimed limitations
were 'conventional."' App. Br. 6 (citing In re Kerkhoven, 626 F.2d 846, 850
(CCPA 1980)). Appellant contends that the mere fact that Dohner's second
formulation encompasses some compositions that could contain an aromatic
secondary aminosilane does not render such a composition prima facie
obvious, much less establish that such a composition was "conventional."
App. Br. 7-8. Appellant asserts that "there is no basis for concluding that
Dohner discloses any composition other than the five working examples that
could reasonably be deemed to be 'conventional.' Certainly, a composition
containing an aromatic aminosilane is not 'individually taught' by
Dohner." App. Br. 8-9.
However, in assessing the obviousness of the composition of claim 1,
Donher's disclosures as a whole must be considered for what they would
have fairly suggested to one of ordinary skill in the art at the time of
Appellant's invention. Contrary to Appellant's arguments, Dohner need not
exemplify an adhesive undercoat composition according to Dohner's
invention that includes an aromatic secondary aminosolane to render such a
composition prima facie obvious (or "conventional"). Rather, Dohner's
disclosures as a whole need only to have suggested such a composition to
one of ordinary skill in the art at the time of Appellant's invention to render
such a composition prima facie obvious. In re Applied Materials, Inc.,
692 F.3d 1289, 1298 (Fed. Cir. 2012) (citing EWP Corp. v. Reliance
Universal Inc., 755 F.2d 898, 907 (Fed. Cir. 1985)) ("A reference must be
considered for everything that it teaches, not simply the described invention
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or a preferred embodiment."); 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.").
As discussed above, Dohner discloses numerous aminosilanes having
at least one secondary or tertiary amino group that are suitable for use in the
adhesive undercoat composition of Dohner's invention. As also discussed
above, Dohner explicitly indicates that N-phenyl-3-aminopropyltrimethoxy-
silane, N-phenyl-4-aminobutyltri- methoxysilane, and N-phenylamino-
methyldimethoxymethylsilane-aromatic secondary aminosolanes-are
suitable for use in the composition.
One of ordinary skill in the art reasonably would have understood that
any of the aminosilanes having at least one secondary or tertiary amino
group disclosed in Dohner as suitable for use in the adhesive undercoat
composition of Dohner' s invention, such as the explicitly delineated
aromatic secondary aminosolanes, could be successfully used in the
composition. Dohner' s disclosure of a multitude of effective aminosilanes
having at least one secondary or tertiary amino group does not render any
particular aminosilane having at least one secondary or tertiary amino group
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 Corkill, 771 F.2d 1496, 1500 (Fed. Cir. 1985) (An
obviousness rejection was affirmed in light of a prior art teaching that
"hydrated zeolites will work" in detergent formulations, even though "the
inventors selected the zeolites of the claims from among 'thousands' of
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compounds".); In re Susi, 440 F.2d 442, 445 (CCPA 1971) (obviousness
rejection affirmed where the disclosure 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").
Dohner's exemplification of specific compositions in the working
examples that do not include aromatic secondary aminosilanes does not
negate Dohner's broader disclosure that aromatic secondary aminosilanes
are suitable for use in the composition of Donher's invention. In re
Fracalossi, 681 F.2d 792, 794 n.1(CCPA1982) (explaining that a prior art
reference's disclosure is not limited to its examples); Merck, 874 F.2d at 807
(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 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] forthe current invention.").
Moreover, claim 1 of Dohner recites an adhesive undercoat
composition comprising at least one mercaptosilane (element (i) of claim 1 ),
at least one polysilane having at least one secondary or tertiary amino group
(element (ii) of claim 1 ), and at least one aminosilane having at least one
secondary or tertiary amino group. Dohner's claim 8 depends from claim 1
and indicates that the aminosilane having at least one secondary or tertiary
amino group can be aromatic (element (iii) of claim 1 ). Claim 10 recites that
the adhesive undercoat composition of claim 1 further comprises at least one
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organotitanimn compound (element (iv) of claim 1 ). Therefore, Dohner' s
disclosures as a whole, including claims 1, 8, and 10, would have suggested
an adhesive undercoat composition comprising elements (i), (ii), (iii), and
(iv) of Appellant's claim 1 to one of ordinary skill in the art at the time of
Appellant's invention.
Appellant argues that the Examiner does not provide "any analysis or
factual determinations" that support a conclusion that a composition
containing an aromatic aminosilane compound would have been rendered
obvious by Dohner's second formulation. App. Br. 8. Appellant contends
that Dohner discloses that is most preferred aminosilane is N-(2-
aminoethyl)-3-aminopropyl-trimethoxysilane, which is significantly
different structurally from an aromatic aminosilane as required by claim 1,
and Appellant asserts that none of the compositions disclosed in the working
examples of Dohner include an aromatic aminosilane compound. App. Br.
8-9.
However, Dohner's exemplification of specific compositions that do
not include an aromatic aminosilane, and disclosure of a most preferred
aminosilane that is not aromatic, does not negate Dohner' s broader
disclosure that suitable aminosilanes having at least one secondary or
tertiary amino group for use in the composition of Donher' s invention
include aromatic secondary aminosilanes. Therefore, contrary to
Appellant's arguments, Dohner's disclosures are a whole would have
suggested an adhesive undercoat composition that includes a mercaptosilane
(element (i) of claim 1 ), a polysilane having at least one secondary or
tertiary amino group (element (ii) of claim 1 ), an aromatic secondary
aminosolane( element (iii) of claim 1 ), and an organotitanium
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compound( element (iv) of claim 1 ).
Appellant argues that "within the two different formulations taught by
Dohner, one would have had to pick and choose from various options to
obtain the right compositions that when combined together would be
encompassed by the scope of claim 1." App. Br. 6-7.
However, contrary to Appellant's argument, such picking and
choosing is "entirely proper in the making of a [section] 103 [] obviousness
rejection." In re Arkley, 455 F.2d 586, 587-88 (CCPA 1972).
We accordingly sustain the Examiner's rejection of claims 1-19 under
35 U.S.C. § 103(a).
Reply Brief
In the Reply Brief, Appellant asserts that the Examiner sets forth a
"new theory of obviousness" in the Answer based on combining the entirety
of both compositions of Dohner' s two embodiments, and much of
Appellant's Reply Brief is directed to addressing this "new theory of
obviousness." Reply Br. 2-3, 6-9. However, the Examiner did not
articulate this "theory of obviousness" for the first time in the Answer.
Rather, as discussed above, the Examiner set forth this "theory of
obviousness" in the Non-Final Office Action entered February 4, 2015.
We accordingly do not consider the arguments that Appellant presents at
pages 2-3 and 6-9 of the Reply Brief directed to the "new theory of
obviousness" because Appellant does not show good cause for raising these
arguments for the first time in the Reply Brief. 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).
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DECISION
We affirm the Examiner's rejection of claims 1-19 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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