Ex Parte KuhlmannDownload PDFPatent Trial and Appeal BoardSep 29, 201612599011 (P.T.A.B. Sep. 29, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/599,011 0111112010 33249 7590 10/03/2016 Hexion Inc. 12650 Directors Drive, Suite 100 Stafford, TX 77477 FIRST NAMED INVENTOR Gunda Kuhlmann 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. 06-23-EP.US 5879 EXAMINER CAI,WENWEN ART UNIT PAPER NUMBER 1763 NOTIFICATION DATE DELIVERY MODE 10/03/2016 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): tammy.hodges@hexion.com lisa.jones@hexion.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte GUNDA KUHLMANN Appeal2015-004909 Application 12/599,011 Technology Center 1700 Before PETER F. KRATZ, BRIAND. RANGE, and DEBRA L. DENNETT, Administrative Patent Judges. RANGE, Administrative Patent Judge. DECISION ON APPEAL SUMMARY Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner's decision rejecting claims 1-7 and 14. We have jurisdiction. 35 U.S.C. § 6(b ). We AFFIRM. 1 According to the Appellant, the real party in interest is Momentive Specialty Chemicals Inc. Appeal Br. 3. Appeal2015-004909 Application 12/599,011 STATEMENT OF THE CASE Appellant describes the present invention as relating to a resin dispersion. Spec. i-f 1. The resin dispersion could be applied to, for example, textile, mineral, metallic, polymeric surfaces. Spec. i-f 1. Claim 1, reproduced below with emphasis added, is the only independent claim on appeal and is illustrative of the claimed subject matter: 1. An aqueous resin dispersion comprising: 10 wt.% to 50 wt.% solids content, wherein the solids content comprises: (I) an epoxy resin and a curative novolak resin, wherein the epoxy resin comprises from 30 to 80 weight percent based on the mass of both resin components; and (II) a codispersant based on castor oil ethoxylate, hydrogenated castor oil ethoxylate, alkylphenol ethoxylate, fatty alcohol ethoxylate, oleic acid ethoxylate, oxo process alcohol ethoxylate, fatty alcohol alkoxylate, polyvinyl alcohol, or combinations thereof, wherein the codispersant comprises 4 to 18 weight percent based on the overall mass of the aqueous resin dispersion; and water, wherein the dispersion comprises an absence of an additional curative. Appeal Br.2 25 (Claims Appendix). 2 In this decision, we refer to the Non-Final Office Action mailed December 5, 2013 ("Non-Final Act."), Final Office Action mailed April 1, 2014 ("Final Act."), the Appeal Brief filed September 30, 2014 ("Appeal Br."), the Examiner's Answer mailed January 28, 2015 ("Ans."), and the Reply Brief filed March 25, 2015 ("Reply Br."). 2 Appeal2015-004909 Application 12/599,011 REFERENCES The Examiner relied upon the prior art below in rejecting the claims on appeal: Bozzi et al. (hereinafter "Bozzi") Warren Craun et al. (hereinafter "Craun") Ogawa et al. (hereinafter "Ogawa") us 4,115,328 us 5,200,455 us 5,342,864 US 2003/0088025 Al Sept. 19, 1978 Apr. 6, 1993 Aug. 30, 1994 May 8, 2003 Crystallization of Liquid Epoxy Resins, Dow Technical Bulletin, Dec. 2007 (hereinafter "the Dow Bulletin"). REJECTIONS The Examiner has withdrawn claim rejections under 35 U.S.C. § 112. Ans. 2. The Examiner maintains the following rejections on appeal: Rejection 1. Claims 1, 2, 4, 5, and 7 under 35 U.S.C. § 103 as unpatentable over Bozzi in view of Ogawa. Final Act. 3. Rejection 2. Claim 3 under 35 U.S.C. § 103 as unpatentable over Bozzi in view of Ogawa and as evidenced by the Dow Bulletin. Id. at 4. Rejection 3. Claims 6 and 14 under 35 U.S.C. § 103 as unpatentable over Bozzi in view of Ogawa and further in view of Warren and Craun. Id. at 4. ANALYSIS We review the appealed rejections for error based upon the issues identified by Appellant and in light of the arguments and evidence produced thereon. Cf Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential) (cited with approval inin re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) ("it has long been the Board's practice to require an applicant to identify the alleged error in the examiner's rejections")). After having considered the evidence presented in this Appeal and each of Appellant's 3 Appeal2015-004909 Application 12/599,011 contentions, we are not persuaded that Appellant identifies reversible error, and we affirm the Examiner's rejections for the reasons expressed in the December 5, 2013, Non-Final Office Action, the Final Office Action, and the Answer. We add the following primarily for emphasis. Rejection 1, claims 1, 5, and 7. The Examiner rejects claims 1, 2, 4, 5, and 7 as obvious over Bozzi in view of Ogawa. The Appellant does not separately argue claims 5 or 7. We therefore focus on claim 1, and claims 5 and 7 stand or fall with that claim. 37 C.F.R. § 41.37(c)(l)(iv) (2013). The Examiner finds that Bozzi teaches ranges overlapping those of claim 1, teaches an aqueous dispersion comprising epoxy, and teaches a nonionic surfactant such as ethoxylated alkylphenol. Non-Final Act. 3; Bozzi 3:15-32 (providing ranges); 5:55-56 (teaching ethoxylated alkylphenol); 6:27-34 (teaching percent solids). Bozzi also teaches use of a phenoplast curing agent in a heat-curable coating composition. Non-Final Act. 3; Bozzi 6:27-34. Bozzi lists certain phenoplasts that "may be employed" (9:24--31 ), but the Examiner agrees with Appellant that Bozzi does not teach that the phenoplast resin is a novolak resin. Non-Final Act. 4. The Examiner finds that Ogawa "discloses a similar composition" and use of a novolak resin. Non-Final Act. 4; Ogawa i-fi-121, 41. The Examiner concludes that it would have been obvious to one of ordinary skill to make use of a novolak type phenol resin to cure the epoxy of Bozzi because, as taught by Ogawa, "novolak type resin have little formaldehyde and good reactivity with the epoxy resin." Non-Final Act. 4; Ogawa i141. We agree with the Examiner's findings and conclusion. Appellant argues that Bozzi lacks novolak and that Ogawa does not teach the ranges recited in claim 1. See, e.g., Appeal Br. 9-11. These 4 Appeal2015-004909 Application 12/599,011 arguments fail to identify reversible error. One cannot show nonobviousness by attacking references individually when the rejection is based on a combination of references. In re Keller, 642 F .2d 413, 425 (CCP A 1981 ). Appellant also argues that there is "no suggestion or motivation" in Bozzi or Ogawa to combine the teachings of Bozzi and Ogawa. Appeal Br. 12. Appellant appears to argue that Bozzi only teaches optional phenoplasts "if forming a heat-curable composition is desired" and that Ogawa is "non- curing." Reply Br. 4. This argument is factually incorrect. Ogawa is heat curable. Ogawa i-fi-19 ("heating in a designated shape to cure said resin composition"), 41 ("the condensation is reacted by heating"). Moreover, the Examiner provides adequate reason as to why one of skill, in light of Ogawa's teachings regarding the advantages ofnovolaks, would have utilized a novolak as the phenoplast in Bozzi (Non-Final Act. 4, Ans. 3--4), and Appellant does not persuasively rebut the Examiner's reasoning. Moreover, Bozzi lists the use of certain phenoplasts that "may" be employed; it does not indicate those example phenoplasts represent an exclusive list of phenoplasts from which list a phenoplast curing agent only may be selected. Bozzi 9:24--31. Also, contrary to Appellant's arguments (see, e.g., Appeal Br. 12), the references do not need to include an explicit suggestion to combine in order for the combination to be proper. KSR Intern. Co. v. Teleflex Inc., 590 U.S. 398, 419 (2007) ("Helpful insights ... need not become rigid and mandatory formulas; and when it is so applied, the TSM [teaching, suggestion, or motivation] test is incompatible with our precedents . . . . In many fields it may be that there is little discussion of obvious techniques .... "). We thus sustain the Examiner's rejection of claims 1, 5, and 7. 5 Appeal2015-004909 Application 12/599,011 Rejection 1, claim 2. Appellant argues that Bozzi does not suggest a novolak resin as the phenoplast and therefore does not teach relative amounts of an epoxy resin and the novolak. Appeal Br. 14. The argument fails to address the combination of Bozzi and Ogawa as explained above. We thus sustain the Examiner's rejection of claim 2. Rejection 1, claim 4. Appellant argues that Bozzi does not disclose the claim 4's recitation that "the novolak resin is a phenol-formaldehyde resin prepared using a phenol: formaldehyde ratio in the range from 1 :0.4 to 1:0.8." Appeal Br. 14. Appellant's argument is unpersuasive because it does not address the combination of Bozzi and Ogawa. Moreover, the Examiner persuasively explains how the additional recitations of claim 4 are met, and Appellant does not rebut this explanation. Non-Final Act. 4. Rejection 2, claim 3. The Examiner rejects claim 3 as obvious over Bozzi in view of Ogawa and as evidenced by the Dow Bulletin. Id. at 4. Claim 3 recites "[t]he resin dispersion of claim 1 wherein the epoxy resin melts at a temperature of less than 90Q C." Appeal Br. 25 (Claims Appendix). The Examiner finds that Bozzi teaches that the epoxy can be a condensation product of Bisphenol A and epicholorhydrin and finds that, as evidenced by the Dow Bulletin, bisphenol A diglycidyl ether epoxy resin melts at a temperature below 90Q C. Non-Final Act. 5; Bozzi 4:50-68; Dow Bulletin 1. Appellant does not persuasively dispute these findings of fact. Rather, Appellant unpersuasively argues the references individually and repeats arguments we have addressed above. Appeal Br. 13-17. We thus sustain the Examiner's rejection of claim 3. Rejection 3, claims 6 and 14. The Examiner rejects claims 6 and 14 under 35 U.S.C. § 103 as unpatentable over Bozzi in view of Ogawa and 6 Appeal2015-004909 Application 12/599,011 further in view of Warren and Craun. Id. at 4. The Appellant does not separately argue claim 14 so we focus on claim 6. Appellant again unpersuasively argues the references separately rather than addressing the Examiner's combination. Appeal Br. 18-24. Appellant does not persuasively identify any error in the Examiner's explanation for combining the teachings of Warren and Craun with the Bozzi/Ogawa combination. Final Act. 4; Warren 2:25-38; 3:13-22; Craun 5:2-5. We thus sustain the Examiner's rejection of claims 6 and 14. DECISION For the above reasons, we affirm the Examiner's rejection of claims 1-7 and 14. 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 7 Copy with citationCopy as parenthetical citation