Ex Parte SCHMIDT et al

Patent Trials and Appeals Board

Mar 4, 2019

13973425 - (D) (P.T.A.B. Mar. 4, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/973,425 08/22/2013 FRIEDRICH GEORG SCHMIDT
22850 7590 03/06/2019
OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P.
1940 DUKE STREET
ALEXANDRIA, VA 22314
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.
420437US99CONT 9981
EXAMINER
THOMPSON, CAMIE S
ART UNIT PAPER NUMBER
1786
NOTIFICATION DATE DELIVERY MODE
03/06/2019 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):
patentdocket@oblon.com
OBLONPAT@OBLON.COM
iahmadi@oblon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte FRIEDRICH GEORG SCHMIDT, EMMANOUIL SPYROU,
WERNER GRENDA, SEBASTIAN DE NARDO,
and SIBYLLE PLANITZ-PENNO
Appeal2017-005413
Application 13/973,425
Technology Center 1700
Before DONNA M. PRAISS, MICHAEL G. McMANUS, and
MERRELL C. CASHION, JR., Administrative Patent Judges.
CASHION, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 17-28 and 31-34. 1 We have jurisdiction under 35 U.S.C. § 6(a).
We AFFIRM.
1 An oral hearing was scheduled for February 5, 2019. However, the hearing
was waived on January 23, 2019.
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Application 13/973,425
Claim 17 is illustrative of Appellants' invention and is reproduced
below:
17. A prepreg, comprising:
(A) at least one fibrous support,
and, as a matrix material,
(B) at least one reactive powdery polyurethane
composition comprising (1) at least one di- or polyisocyanate
and (2) at least one hydroxyl group containing polymer,
wherein the di- or polyisocyanate is internally blocked
and/or blocked with a blocking agent,
wherein the hydroxyl group containing polymer is
selected from the group consisting of a polyacrylate, a
polyester, a polyether, a polycarbonate, a polyurethane and
mixtures thereof and has (a) one or more functional groups
reactive towards an isocyanate group, (b) an OH number of
20-500 mg KOH/g and (c) an average molecular weight of 250-
6,000 g/mol, and
wherein the reactive powdery polyurethane composition
has a glass transition temperature (Tg) of at least 40°C and a
curing temperature above 160°C.
Appellants2 (see generally Appeal Brief) request review of the
Examiner's decision to finally reject claims 17-28 and 31-34 under 35
U.S.C. § I03(a) as unpatentable over Thyssen (US 6,008,150, issued
December 28, 1999) and Spyrou (US 2005/0239992 Al, published October
27, 2005).
2 Evonik Degussa GmbH is identified as the real party in interest. App. Br.
1.
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Application 13/973,425
Appellants present arguments only for independent claim 17 and
dependent claim 31. See generally Appeal Brief. We select claim 17 as
representative of the claims on appeal. Dependent claims 18-28 and 32-34
stand or fall with independent Claim 1 7. We address dependent claim 3 1
separately.
OPINION
The Prior Art Rejection
After review of the respective positions provided by Appellants and
the Examiner, we AFFIRM the Examiner's rejection of claims 17-28 and
31-34 for the reasons presented by the Examiner in the Final Office Action
and the Answer. We add the following for emphasis.
Claim 17
We refer to the Examiner's Final Office Action for a complete
statement of the rejection of claim 17. Final Act. 2--4. Briefly, the
Examiner finds that Thyssen discloses a prepreg comprising a reactive
powdery polyurethane composition having a curing temperature at about
160 °C but does not teach a reactive powdery polyurethane composition
comprising the claimed at least one hydroxyl group containing polymer
having (a) one or more functional groups reactive towards an isocyanate
group (b) an OH number of20-500 mg/KOH/g and (c) an average molecular
weight of 250-6,000 g/mol. Final Act. 2-3; Thyssen col. 3, 11. 50-63. The
Examiner relies on Spyrou for this feature. Final Act. 3--4; Spyrou ,r 83.
The Examiner determines that it would have been obvious to use Spyrou's
material in place of Thyssen' s reactive material to enhance levelling and
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flexibility of the coating, which benefits are disclosed by Spyrou. Final Act.
4; see Spyrou ,r 12.
Appellants' principal dispute is that neither reference suggests using
materials with curing temperatures above 160 °C. App. Br. 4--5.
Specifically, Appellants argue that both references teach away from curing
temperatures above 160 °C. App. Br. 4--5, 7; Thyssen col. 3, 11. 50-63;
Spyrou ,r 57.
We are unpersuaded of Examiner error by these arguments. We agree
with the Examiner's determination that, when reading each reference as a
whole, they disclose embodiments comprising the use of reactive materials
that have a curing temperature greater than 160 °C. Ans. 6-8. For example,
Spyrou specifically discloses use of coating materials having curing
temperatures above 160 °C. Ans. 8; Spyrou ,r 105 (specifically reciting
curing temperatures of 170, 180, 190, 200, and 210° C). Thyssen, as
recognized by Appellants, discloses a preference for materials that cure at
less than 160 °C. App. Br. 4--5; Thyssen col. 3, 11. 66-67. Appellants also
recognize that Thyssen discloses the use of material that cures at 180 °C,
even if in small amounts. App. Br. 4--5; Thyssen col. 3, 11. 57-61.
Moreover, both Appellants and the Examiner recognize that Thyssen
specifically discloses using materials that cure between 120 and 220 °C.
Ans. 6; App. Br. 4--5; Thyssen col. 3, 11. 57---61. While Thyssen discloses a
preference for materials, it is well settled that a reference may be relied upon
for all that it discloses and not merely the preferred embodiments as
suggested by Appellants. See Merck & Co., Inc. v. Biocraft Labs., Inc., 874
F.2d 804, 807 (Fed. Cir. 1989) ("' ... [A]ll disclosures of the prior art,
including unpreferred embodiments, must be considered."' ( quoting In re
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Application 13/973,425
Lamberti, 545 F.2d 747, 750 (CCPA 1976))); In re Fracalossi, 681 F.2d
792, 794 n.1 (CCPA 1982) (explaining that a prior art reference's disclosure
is not limited to its examples). Appellants have not directed us to any
portion of Thyssen or Spyrou that limits the use of curing materials to those
that cure up to 160 °C. Appellants have not adequately explained how the
references' disclosures of materials that cure at 160 °C detract from their
respective broader teaching of materials that cure above 160 °C.
Claim 31
Claim 31 requires that the prepreg be storage-stable for several weeks
at 40°C and below.
We refer to the Examiner's Final Office Action for a statement of the
rejection of claim 31. Final Act. 5---6.
Appellants contend that the Examiner failed to adequately establish
that Spyrou's reactive powdery polyurethane compositions would inherently
be storage-stable as claimed. App. Br. 8.
We are unpersuaded of Examiner error. Moreover, Thyssen
recognizes the desirability of making prepregs that are storage-stable.
Thyssen col. 1, 11. 58-59; col. 8, 11. 8-9. Thyssen further discusses the need
to store the powder coating materials without loss of reactivity. Thyssen col.
4, 11. 49-66, col. 7, 1. 55. Spyrou, on the other hand, recognizes the
importance of stable powder coatings for heat resistant substrates. Spyrou
,r,r 12, 83. Thus, one skilled in the art would have had a reasonable
expectation that the use of Spyrou' s compositions in Thyssen' s prepreg
would also exhibit an appropriate level of storage stability prior to curing, as
desired by Thyssen. Appellants have not adequately explained why one
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skilled in the art would not have been capable of determining the appropriate
storage conditions for a prepreg comprising Spyrou's material. Appellants
have not directed us to any evidence of criticality of the claimed storage
conditions.
Accordingly, we affirm the Examiner's prior art rejection of claims
17-28 and 31-34 under 35 U.S.C. § 103(a) for the reasons presented by the
Examiner and given above.
ORDER
The Examiner's prior art rejection of claims 17-28 and 31-34 under
35 U.S.C. § 103(a) is affirmed.
TIME PERIOD
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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