Ex Parte Scheuer

Patent Trial and Appeal Board

Oct 31, 2017

13131217 (P.T.A.B. Oct. 31, 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.
13/131,217 08/31/2011 Christoph Scheuer 07-26-EP01.US 4052
33249 7590 11/0
Hexion Inc.
12650 Directors Drive, Suite 100
Stafford, TX 77477
EXAMINER
ZHANG, HAI Y
ART UNIT PAPER NUMBER
1717
NOTIFICATION DATE DELIVERY MODE
11/02/2017 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):
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 CHRISTOPH SCHEUER
Appeal 2017-000925
Application 13/131,21V1
Technology Center 1700
Before ADRIENE LEPIANE HANLON, CHRISTOPHER L. OGDEN, and
CHRISTOPHER C. KENNEDY, Administrative Patent Judges.
OGDEN, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a)2 from the Examiner’s
decision rejecting claims 1—12 in the above-identified application.3 We have
authority pursuant to 35 U.S.C. § 6(b).
We REVERSE.
1 Appellant identifies Hexion Inc. as the real party in interest. See Appeal
Br. 3, Dec. 15,2015.
2 Appeal Br.; Reply Br., Oct. 11, 2016.
3 Final Office Action, May 21, 2015 [hereinafter Final Action]; Examiner’s
Answer, Aug. 12, 2016 [hereinafter Answer],
Appeal 2017-000925
Application 13/131,217
BACKGROUND
Appellant’s invention “relates to a coated reinforcement, a method for
its production and use.” Specification 12, May 25, 2011 [hereinafter Spec.].
Claim 1, the sole independent claim on appeal, is representative:
1. A method for producing a coated reinforcement whose
surface has a coating of a heat-curable composition,
comprising:
applying to a reinforcement a first mixture comprising at
least one resin selected from the group consisting of epoxidized
phenol novolaks, epoxidized cresol novolaks, polyepoxides on
the basis of bisphenol A, epoxidized fluorenonebisphenols,
polyepoxides on the basis of bisphenol F, epoxy resins on the
basis of triglycidyl isocyanurates, epoxidized novolaks and
combinations thereof, and at least one accelerating component
for the curing of the resin;
subsequently subjecting the reinforcement coated with
the first mixture to a heat treatment so that the first mixture is
fixed on the surface of the reinforcement by melting;
thereafter applying a second mixture to the reinforcement
coated with the fixed first mixture, wherein the second mixture
comprises at least one resin selected from the group consisting
of polyepoxides on the basis of bisphenol A or bisphenol F, or
on advancement resins prepared therefrom, on the basis of
tetraglycidylmethylenediamine, on the basis of epoxidized
fluorenonebisphenols, epoxidized novolaks, polyepoxide esters
on the basis of phthalic acid, hexahydrophthalic acid or
terephthalic acid, epoxidized o- or p-aminophenols, epoxidized
polyaddition products of dicyclopentadiene and phenol, and
combinations thereof, and at least one anhydride curative or
amine curative, to form an assembly, wherein the amine
curative is selected from aliphatic polyamines, cycloaliphatic
polyamines, aromatic polyamines, polyamides, Mannich bases,
polyaminoimidazolines, polyetheramines, and mixtures thereof;
and
curing the assembly with heat.
Appeal Br. 20 (emphasis of key phrase added).
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Appeal 2017-000925
Application 13/131,217
The Examiner maintains the following grounds of rejection:
1. Claims 1—3 and 5—12 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Pettit4 in view of Green.5 See Final Action 2—8.
2. Claim 4 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Pettit in view of Green and Ernst.6 See Final Action 8—12.
DISCUSSION
The Examiner finds that Pettit teaches a composition containing an
accelerating component and an amine curative agent (tributylamine), which
is applied to a pre-heated reinforced surface, potentially in multiple layers,
and then baked after the coating. Final Action 2—3 (citing Pettit 5:35—48,
6:23^44, 8:64—67, 9:1—21, 11:9—39); see also Answer 11 (finding that
tributylamine can function as a curative agent). According to the Examiner,
“the substrate can be pre-heated and baked at 250 °F to 350 °F for 20 to 60
minutes after coated, which read on subsequently subjecting the
reinforcement coated with the first mixture to a heat treatment so that the
first mixture is fixed on the surface of the reinforcement by melting.” Id.
Though Pettit does not explicitly teach a specific amine curative as
recited in claim 1, the Examiner finds that Green teaches the use of a
polyamine as a curative agent in preparing reinforced composites, to shorten
the heating period. Id. at 3. Thus, the Examiner determines that a person of
4 Pettit, Jr., US 5,008,335 (issued Apr. 16, 1991).
5 Green, US 4,252,593 (issued Feb. 24, 1981).
6 Ernst et al., US 3,470,132 (issued Sept. 30, 1969). The Examiner referred
to this reference as “Otto,” which is the first inventor’s given name.
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Appeal 2017-000925
Application 13/131,217
ordinary skill in the art would have been motivated to select a polyamine as
an amine curative agent in the process disclosed by Pettit. See id.
Appellant argues that Pettit is silent as to the use of a curing agent in
its disclosed mixture. Appeal Br. 11. According to Appellant, Pettit
discloses tributylamine not as a curative agent, but as a reagent in a reaction
that forms an epoxy resin (Example E), which is then blended with other
components to form a coreactable particulate mixture for deposition on a
substrate, followed by heat curing. See id. Appellant also argues that “one
[of] skill[] in the art understands that tributylamine is a very poor epoxy
curing agent due [to] hindered butyl groups around the nitrogen and requires
heat activation above 100 °C for minimal use.” Id.
Even if tributylamine may function as a curative agent in some
contexts, the Examiner has not persuasively shown that a person of ordinary
skill in the art would have recognized that tributylamine functions as a
curative agent in Pettit’s disclosure, nor that tributylamine is present with
this function when the second mixture is applied to the substrate. Thus, the
Examiner has not articulated a persuasive rationale for why a person of
ordinary skill in the art would have substituted an aromatic polyamine as
disclosed in Green for the tributylamine as disclosed in Pettit. See Personal
Web. Technologies, LLC v. Apple, Inc., 848 F.3d 987, 993 (Fed. Cir. 2017)
(requiring, on appeal from the USPTO, an articulation of why a person or
ordinary skill in the art would have been motivated to combine the
references in the manner claimed).
For the above reasons, we reverse the Examiner’s rejection of claim 1.
Because the Examiner’s other findings and conclusions with respect to the
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Appeal 2017-000925
Application 13/131,217
dependent claims do not cure this error, we also reverse the rejection of
claims 2—12.
DECISION
The Examiner’s decision is reversed.
REVERSED
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