Ex Parte Shah et al

Patent Trial and Appeal Board

Jun 19, 2018

13300077 (P.T.A.B. Jun. 19, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/300,077 11/18/2011 Pankaj Vinubhai Shah
21898 7590 06/21/2018
ROHM AND HAAS COMPANY
c/o The Dow Chemical Company
P.O. Box 1967
2040 Dow Center
Midland, MI 48641
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.
71251 8549
EXAMINER
SHUKLA, KRUPA
ART UNIT PAPER NUMBER
1787
NOTIFICATION DATE DELIVERY MODE
06/21/2018 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):
FFUIMPC@dow.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte P ANKAJ VINUBHAI SHAH and KEVIN MIYAKE
Appeal2017-007932
Application 13/300,077
Technology Center 1700
Before TERRY J. OWENS, JULIA HEANEY, 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 from a final rejection of
claims 1--4, 6-11, 18, and 22. We have jurisdiction under 35 U.S.C. § 6.
We reverse.
Appeal2017-007932
Application 13/300,077
Claim 1 is illustrative of the subject matter on appeal and is
reproduced below:
1. An adhesive composition comprising
(a) a polyisocyanate component comprising
(i) a monomeric 4,4' methylene diphenyl diisocyanate
and
(ii) an isocyanate functional prepolymer that is a reaction
product of a prepolymer reactant mixture comprising
(A) a monomeric 4,4' methylene diphenyl
diisocyanate, and
(B) one or more diol having OH equivalent weight
of 225 or less, and
(C) one or more triol having OH equivalent weight
of 1400 or more, wherein said polyisocyanate component
has %NCO of 25% or lower;
(b) a polyol component comprising one or more pol yo 1,
wherein the one or more polyol in the polyol component
comprises trimethylol propane,
wherein said composition has a weight ratio of said
polyol component to said polyisocyanate component of 0.4: 1
to 1.2: 1, and
wherein said adhesive composition contains no catalyst.
2
Appeal2017-007932
Application 13/300,077
Appellants 1 request review of the following rejections from the
Examiner's Final Action (see generally Appeal Brief):
I. Claims 1, 2, 4, 6-11, 18, and 22 rejected under pre-AIA 35
U.S.C. § I03(a) as unpatentable over
(i) Gansow (WO 2009/080740 Al, published July 2, 2009, and
relying on US 2010/0297427 Al to Schlingloff, published November
25, 2010), Bhattacharjee (US 2004/0116594 Al, published June 17,
2004 ), Shen (US 2003/0176617 Al, published September 18, 2003 ),
Suen (US 2007/0270567 Al, published November 22, 2007),
Edwards (US 2007/0059511 Al, published March 15, 2007), and the
ChemSpider reference to chemical structure of trimethylol propane
( copyrighted 2015 and retrieved by the Examiner at the Royal Society
of Chemistry link at www.chemspider.com on June 24, 2016), or
(ii) Gansow, Bhattacharjee, Shen, Suen, Tielemans (US
2006/0148980 Al, published July 6, 2006), and ChemSpider.
II. Claim 3 rejected under pre-AIA 35 U.S.C. § I03(a) as
unpatentable over
(i) Gansow, Bhattacharjee, Shen, Suen, Edwards, ChemSpider,
and Madaj (US 2007/0043198 Al, published February 22, 2007), or
(ii) Gansow, Bhattacharjee, Shen, Suen, Tielemans,
ChemSpider, and Madaj.
III. Claim 3 rejected under pre-AIA 35 U.S.C. § I03(a) as
unpatentable over
(i) Gansow, Bhattacharjee, Shen, Suen, Edwards, ChemSpider,
Salamone (Polymeric Materials Encyclopedia, CRC Press (Joseph C.
Salamone ed., 1996), retrieved by the Examiner on July 19, 2013),
and Ohkubo (US 5,069,807, issued December 3, 1991), or
(ii) Gansow, Bhattacharjee, Shen, Suen, Tielemans,
ChemSpider, Salamone and Okhubo.
1 The real party in interest is identified as Rohm and Haas Company, a
Delaware corporation. App. Br. 4.
3
Appeal2017-007932
Application 13/300,077
Claim 12
OPINION
Prior Art Rejections
After review of the respective positions provided by Appellants and
the Examiner, we reverse the Examiner's prior art rejections of claims 1--4,
6-11, 18, and 22 under 35 U.S.C. § 103(a) for the reasons presented by the
Appellants and add the following for emphasis.
The claimed invention is principally directed to an adhesive
composition including a polyol comprising trimethylol propane (TMP).
App. Br. 8.
Appellants do not dispute the Examiner's findings with respect to
Gansow, Bhattacharjee, Shen, or Suen and the Examiner's determination
that the combined teachings of these references would have led one skilled
in the art to an adhesive composition comprising a polyisocyanate
component and a polyol component that differs from the claimed invention
in that the noted combination of teachings does not disclose that one or more
polyols in the polyol component comprises trimethylol propane (TMP).
Final Act. 4--10; App. Br. 11; Ans. 16. To remedy this deficiency, the
Examiner relies alternatively on the teachings of Edwards and Tielemans.
The Examiner first finds Edwards discloses TMP as a monomeric branching
agent that improves melt strength and melt viscosity. Final Act. 1 O;
Edwards ,r 42. The Examiner alternatively finds Tielemans discloses
incorporation of TMP provides a favorable increase of the hardness and
resistance through polymer branching. Final Act. 10; Tielemans ,r 162. The
Examiner determines it would have been obvious to one skilled in the art to
2 We limit our discussion to independent claim 1.
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Appeal2017-007932
Application 13/300,077
use TMP in the polyol component of the adhesive composition from the
combined teachings of Gansow, Bhattacharjee, Shen, and Suen in view of
the respective benefits disclosed by Edwards and Tielemans. App. Br. 10.
Edwards based rejection
Appellants argue that the composition from the combined teachings of
Gansow, Bhattacharjee, Shen, and Suen is a polyurethane while Edwards'
composition is a thermoplastic resin and, thus, the compositions relate to
different chemical systems. App. Br. 11-12. Appellants contend that it
would not have been obvious to use TMP in a polyurethane composition
based on the teachings of Edwards. Id. at 12.
We agree. The Examiner acknowledges that Edwards does not teach
polyurethanes but contends that Edwards is a teaching reference that
discloses the concept that TMP is a known branching agent for thermoplastic
polymers that improves melt strength and melt viscosity. Ans. 17.
However, the Examiner does not adequately explain why one skilled in the
art would have used TMP in a polyurethane composition or why one skilled
in the art would have expected TMP to provide the benefits identified by
Edwards for thermoplastic materials in a composition such as the
polyurethane composition from the combined teachings of Gansow,
Bhattacharjee, Shen, and Suen.
While the Examiner asserts that a fair reading of Edwards' s
thermoplastics is that the reference encompasses thermoplastics comprising
polyurethane because the reference does not limit the type of thermoplastics
that can be used (id.), the Examiner directs us to no portion of Edwards that
supports this assertion or provides an adequate rationale in support of it.
5
Appeal2017-007932
Application 13/300,077
Tielemans based rejection
Appellants argue that the Examiner's reliance on Tielemans to meet
the use of TMP is misplaced because Tielemans discloses the use of TMP in
a polyurethane prepolymer component and does not disclose the use of a
TMP component in a polyol as claimed. App. Br. 13-15. According to
Appellants, Tielemans teaches polyurethane PU7 is a reaction product of
TMP, other polyols, and a monomeric polyisocyanate (methylene
bis( cyclohexyl isocyanate)) that forms one of the components of a two
component composition labeled Blend 10 where the second component is an
acrylic composition. App. Br. 15; Tielemans ,r,r 157-158. Thus, Appellants
assert that Tielemans' two-component coating composition does not contain
TMP but contains a prepolymer that contains a reaction product of TMP
with monomeric polyisocyanates. App. Br. 15.
We agree with Appellants that the Examiner has not made a prima
facie case of obviousness for the reasons presented in the Appeal Brief.
Moreover, Tielemans discloses the use of TMP to prepare polyester polyols
used in the disclosed polyurethane prepolymer through a polycondensation
reaction with polycarboxylic acids. Tielemans ,r 50. Therefore, as correctly
argued by Appellants (App. Br. 15), the polyols of Tielemans's polyurethane
prepolymer do not contain TMP.
Accordingly, we will not sustain the Examiner's prior art rejections of
claims 1--4, 6-11, 18, and 22 under 35 U.S.C. § 103(a) for the reasons
presented by Appellants and given above.
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Appeal2017-007932
Application 13/300,077
In view of our reversal of the prior art rejections, we do not reach the
Declaration under 37 C.F.R. § 1.132 by co-inventor Kevin Miyake dated
May 23, 2016.
DECISION
The Examiner's prior art rejections of claims 1--4, 6-11, 18, and 22
under 35 U.S.C. § 103(a) are reversed.
REVERSED
7