Ex Parte Elgimiabi

Patent Trial and Appeal Board

Aug 30, 2016

12702446 (P.T.A.B. Aug. 30, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
121702,446 02/09/2010
32692 7590 09/01/2016
3M INNOVATIVE PROPERTIES COMPANY
PO BOX 33427
ST. PAUL, MN 55133-3427
FIRST NAMED INVENTOR
Sohaib ELGIMIABI
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.
65060US005 2109
EXAMINER
SELLERS, ROBERT E
ART UNIT PAPER NUMBER
1765
NOTIFICATION DATE DELIVERY MODE
09/01/2016 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):
LegalUSDocketing@mmm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SOHAIB ELGIMIABI1
Appeal2015-003530
Application 12/702,446
Technology Center 1700
Before CHUNG K. PAK, JEFFREY T. SMITH, and
WESLEY B. DERRICK, Administrative Patent Judges.
DERRICK, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134(a) from the
Examiner's maintained final rejection of claims 1 and 6-8.2 We have
jurisdiction pursuant to 35 U.S.C. § 6(b ).
We AFFIRM.
1 According to Appellant, the Real Party in Interest is 3M Company and its
affiliate 3M Innovative Properties Company. Appeal Brief filed April 16,
2014 ("Appeal Br."), 2.
2 Pending claims 9, 11-13, 17, and 20 stand withdrawn from consideration.
Final Office Action entered August 15, 2013, ("Final Act."), 2.
Appeal2015-003530
Application 12/702,446
CLAIMED SUBJECT MATTER
Appellant's claimed invention is generally directed to an epoxy
curative. Spec. Abstract.
Claim 1, the sole independent claim on appeal, is illustrative:
1. An epoxy curative comprising at least one cycloaliphatic
polyamine curative and at least one second curative which is an
adduct of an excess of an unbranched polyetherdiamine with an
epoxy resin, wherein the unbranched polyetherdiamine is a
compound according to Formula I:
where y is 1, 2, 3 or 4, and where each x is independently
selected from 2, 3, or 4.
Appeal Br. 8 (Claims Appendix).
REJECTIONS
The Examiner maintains the following final rejections3:
Claims 1, 6, and 8 under 35 U.S.C. § 103(a) as obvious over Klein et
al. (US 5,567,748, issued October 22, 1996) ("Klein").
Claim 7 under 35 U.S.C. § 103(a) as obvious over Klein and Goeb et
al. (WO 2008/089410 Al, published July 24, 2008) ("Goeb").
DISCUSSION
Having carefully reviewed the Examiner's rejections in light of
arguments advanced by Appellant in the Appeal Brief, we are not persuaded
that the Examiner erred reversibly in concluding that claims 1 and 6-8 are
unpatentable for obviousness. We add the following for emphasis.
3 Examiner's Answer entered May 6, 2014 ("Ans.").
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Rejection of Claims l, 6, and 8 as Obvious Over Klein
Appellant argues claims 1, 6, and 8 as a group on the basis of claim 1,
to which we limit our discussion. Appeal Br. 5---6.
The Examiner finds that Klein discloses combining a conventional
epoxy resin curing agent, such as a cycloaliphatic amine, with a second,
inventive epoxy resin curing agent prepared by reacting triethylene glycol
diamine (JEFFAMINE EDR 148) with a hydrophilic polyepoxide, to yield a
curing agent mixture that can be used to cure an epoxy resin. Ans. 2; Klein
col. 10, 11. 46-59; col. 20, 11. 20-49, 65---67; col. 22, 11. 56---67. The Examiner
finds that the structure of JEFFAMINE EDR 148 falls within Formula I
recited in claim 1. Ans. 2. The Examiner determines that although Klein
does not exemplify-include as an example-an epoxy curing agent mixture
that includes both a conventional cycloaliphatic amine curing agent and
Klein's inventive curing agent, one of ordinary skill in the art at the time of
the invention would have found it obvious to utilize both curing agents in
combination because Klein discloses that doing so "increases the hardness of
the coating" produced by curing an epoxy resin with such a curing agent
mixture. Ans. 3; Klein col. 20, 11. 20-23.
Appellant argues that while Klein's compositions are used to form
external, superficial coatings, their compositions are used to form liquid
shims that fill gaps, and are thus internal and structural. Appeal Br. 5.
Appellant contends that one of ordinary skill in the art seeking adhesively
and cohesively strong liquid gap filling materials would therefore not have
been motivated to look to Klein' hard surface coatings. Appeal Br. 6.
The Examiner correctly finds, however, that Klein discloses
combining a conventional curing agent with Klein's inventive curing agent.
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Ans. 2; Klein col. 20, 11. 20-23. The Examiner also correctly finds that
Klein identifies cycloaliphatic diamines as suitable conventional curing
agents, corresponding to the "cycloaliphatic polyamine curative" recited in
claim 1. Ans. 2; Klein col. 20, 11. 30-49. The Examiner further correctly
finds that Klein exemplifies an inventive curing agent formed by reacting
JEFF AMINE EDR 148 (triethylene glycol diamine), which falls within
formula I recited in claim 1, with a hydrophilic polyepoxide, to form a
polyepoxide having terminal amine groups, corresponding to the adduct
recited in claim 1. Ans. 2; Klein col. 10, 11. 46-59; col. 20, 11. 65----67; col.
22, 11. 56----67.
Appellant's arguments contrasting internal and external use of
curative compositions are without persuasive merit as "[i]n determining
whether the subject matter of a patent claim is obvious, neither the particular
motivation nor the avowed purpose of the patentee controls." KSR Int'! Co.
v. Teleflex Inc., 550 U.S. 398, 419 (2007); In re Selj~ 671F.2d1344, 1348
(CCPA 1982) ("[A]ppellant's arguments fail from the outset because ...
they are not based on limitations appearing in the claims.").
Thus, we discern no error in the Examiner's determination Klein
would have suggested, to one of ordinary skill in the art at the time of
invention, an epoxy curative according to claim 1.
Appellant further argues that Klein does not disclose or exemplify an
epoxy curative comprising both a cycloaliphatic polyamine curative and a
second curative that is an adduct of an unbranched polyetherdiamine with an
epoxy resin, as recited in claim 1. Appeal Br. 5. Appellant contends that
Klein's listing of cycloaliphatic polyamines in an extensive list of known
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Application 12/702,446
curing agents used for the purpose of providing a hard coating would not
have rendered the claimed curative obvious. Appeal Br. 6.
We find Appellant's arguments unpersuasive because the teaching of
prior art is not limited to particular examples, but rather extends to all that is
disclosed and is good for all that would have fairly suggested to one of
ordinary skill in the art at the time of the invention. Merck & Co. v. Biocraft
Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (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 Fracalossi,
681 F.2d 792, 794 n.1(CCPA1982) (A prior art reference's disclosure is not
limited to its examples.); 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, Klein's
disclosures as a whole suggest an epoxy curative according to claim 1, and
Appellant's arguments are therefore unpersuasive of reversible error.
Appellant further contends that the experimental examples provided in
the Specification demonstrate the unexpectedly superior characteristics of
the claimed epoxy curative. Appeal Br. 5. Specifically, Appellant argues
that the Specification demonstrates that inventive composition B4/ A2
exhibits superior "'overlap shear strength,' 'peel load' and 'compression
strength,"' and Appellant contends that Klein does not report the overlap
shear strength, peel load, or compression strength for any composition.
Appeal Br. 5.
On this record, Appellant has not meet the burden of showing that the
claimed subject matter imparts results that would have been unexpected by
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Application 12/702,446
one of ordinary skill in the art at the time of the invention relative to the
closest prior art, and that the unexpected results are reasonably
commensurate with the scope of protection sought by the claims on appeal.
In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972) ("the burden of showing
unexpected results rests on he who asserts them").
As found by the Examiner, the mechanical testing experiments
provided in the Specification assessing the overlap shear strength, peel load,
and compression strength of curative composition B4/ A2 (Spec. 5-9) do not
provide a comparison between the claimed subject matter and the closest
prior art-Klein. Ans. 5. Further, as Appellant points out, Klein does not
assess these properties for the disclosed epoxy curing agent compositions.
Appeal Br. 5. On this record, there is, accordingly, no evidence sufficient to
establish unexpected results. 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.").
Further, Appellant does not demonstrate that the narrow showing
provided in the Specification of the mechanical properties of a single
composition (B4/ A2) supports patentability over the entire scope of the
epoxy curative compositions recited in claim 1. Appeal Br. 5---6. In re
Harris, 409 F.3d 1339, 1344 (Fed. Cir. 2005) ("Even assuming that the
results were unexpected, Harris needed to show results covering the scope of
the claimed range. Alternatively Harris needed to narrow the claims."); In
re Greenfield, 571F.2d1185, 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
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Application 12/702,446
be commensurate in scope with the claims which the evidence is offered to
support.'") (quoting In re Tiffin, 448 F .2d 791, 792 (CCP A 1971) ).
Still further, Appellant fails to direct us to any statement in the
Specification attesting to the unexpected nature of the mechanical testing
results for composition B4/ A2, or to any other persuasive evidence or
averment evincing that these results would have been unexpected by one of
ordinary skill in the art at the time of the invention. Appeal Br. 5---6. See,
e.g., In re Geisler, 116 F.3d 1465, 1471 (Fed. Cir. 1997) ("Geisler made no
such assertion [that results were unexpected] in his application. Nor did
Geisler submit any such statement through other evidentiary submissions,
such as an affidavit or declaration under Rule 132 .... Instead, the only
reference to unexpected results was a statement by Geisler's counsel ... that
Geisler's results were 'surprising."').
On this record, accordingly, Appellant does not meet the burden of
demonstrating that the claimed invention imparts unexpected results
sufficient to rebut the Examiner's prima facie case of obviousness.
For these reasons, we sustain the rejection of claims 1, 6, and 8 under
35 U.S.C. § 103(a) as unpatentable over Klein.
Rejection of Claim 7 as Obvious Over Klein and Goeb
In addressing the separate rejection of claim 7, Appellant relies on the
arguments presented for claim 1. Appeal Br. 6. Because we are not
persuaded of reversible error in the Examiner's obviousness rejection of
claim 1, we are likewise not persuaded of reversible error in the Examiner's
decision rejecting claim 7, and we therefore sustain this rejection.
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DECISION
In view of the foregoing, the Examiner's rejections of claims 1 and 6-
8 under 35 U.S.C. § 103(a) are 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)(l).
AFFIRMED
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