Hexion Inc.

Patent Trials and Appeals Board

Oct 27, 2021

2020006793 (P.T.A.B. Oct. 27, 2021)

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.
15/617,781 06/08/2017 Gunda KUHLMANN 15-15-EP01.US 2764
33249 7590 10/27/2021
Hexion Inc.
12650 Directors Drive, Suite 100
Stafford, TX 77477
EXAMINER
BROOKS, KREGG T
ART UNIT PAPER NUMBER
1764
NOTIFICATION DATE DELIVERY MODE
10/27/2021 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):
lisa.jones@hexion.com
tammy.hodges@hexion.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GUNDA KUHLMANN, CHRISTOPH SCHEUER,
PANAGIOTIS SALTAPIDAS, and THOMAS DREβEN
Appeal 2020-006793
Application 15/617,781
Technology Center 1700
Before CATHERINE Q. TIMM, DONNA M. PRAISS, and
JENNIFER R. GUPTA, Administrative Patent Judges.
GUPTA, Administrative Patent Judge.
DECISION ON APPEAL1
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 1–13. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

1 In this Decision, we refer to the Specification filed June 8, 2017 (“Spec.”);
the Final Office Action dated December 26, 2019 (“Final Act.”); the Appeal
Brief filed June 22, 2020 (“Appeal Br.”); the Examiner’s Answer dated July
31, 2020 (“Ans.”); and the Reply Brief filed September 29, 2020.
2 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant
identifies the real party in interest as Hexion Inc. Appeal Br. 3.
Appeal 2020-006793
Application 15/617,781

2
CLAIMED SUBJECT MATTER
The claims are directed to a composition including a polymer based
on epoxide compounds. Spec. 1, lines 1–2. Independent claim 1, reproduced
below, is illustrative of the claimed subject matter:
1. A composition comprising components a), b) and
c), wherein component a) comprises:
1) from 75 to 99.5% by weight of a polymer based on
epoxide compounds,
2) from 0.5 to 25% by weight of at least one polyhydric
alcohol and
3) optionally additives,
wherein component b) comprises:
1) from 80 to 99% by weight of a curing agent which is
suitable for curing the polymer based on epoxide compounds,
2) from 1 to 20% by weight of a polycaprolactone-
polysiloxane block copolymer,
3) optionally an accelerator, and
4) optionally additives, and
wherein component c) comprises: optionally an accelerator.
REJECTION
Claims 1–13 stand rejected under 35 U.S.C. § 103 as unpatentable
over Dangayach3 in view of Karunakaran,4 as evidenced by Yamaguchi.5
Final Act. 2–6.

3 Dangayach et al., US 5,284,938, issued Feb. 8, 1994.
4 Karunakaran et al., US 8,927,677 B2, issued Jan. 6, 2015.
5 Yamaguchi et al., US 2008/0254288 A1, published Oct. 16, 2008.
Appeal 2020-006793
Application 15/617,781

3
DISCUSSION
After reviewing the evidence in light of the Appellant’s and the
Examiner’s opposing positions, we determine that Appellant has not
identified reversible error in the Examiner’s rejection. Thus, we sustain the
Examiner’s rejection for the reasons well expressed in the Final Office
Action and the Answer. We add the following primarily for emphasis.
The Examiner finds that Dangayach teaches claim 1’s composition
except for component (a)(2), “from 0.5 to 25% by weight of at least one
polyhydric alcohol.” Final Act. 3. The Examiner finds that Karunakaran, like
Dangayach, teaches epoxy resin compositions that may be useful for
encapsulation, such as electronic encapsulations. Ans. 8; Karunkaran, code
(57), 7:30–40. Specifically, the Examiner finds that Karunakaran teaches the
use of polypropylene oxide polyols, such as polypropylene glycol, a
polyhydric alcohol, as a toughening agent in epoxy compositions to enhance
fracture toughness without sacrificing the glass transition temperature (Tg)
of the final thermoset product. Final Act. 3 (citing Karunakaran, code (57),
7:30–40). Based on Karunakaran’s teaching, the Examiner finds that it
would have been obvious to incorporate a polypropylene glycol in
Dangayach’s polysiloxane-modified epoxy-based encapsulation
composition. Final Act. 3.
We find no merit in Appellant’s argument that the same or
substantially the same claims in EP 3255103 B1 were found novel and non-
obvious over Dangayach and thereby granted by the European Patent Office
(EPO). Appeal Br. 9; Reply Br. 2. We are not bound by an earlier decision
of the EPO. In re Gyurik, 596 F.2d 1012, 1016 (CCPA 1979) (“Each case is
determined on its own merits; allowed claims in other applications or patents
Appeal 2020-006793
Application 15/617,781

4
are not considered in reviewing specific rejections of specific claims.”); In
re Giolito, 530 F.2d 397, 400 (CCPA 1976) (“We reject appellants’
argument that the instant claims are allowable because similar claims have
been allowed in a patent. It is immaterial whether similar claims have been
allowed to others.”).
Appellant argues that because the Dangayach composition already
includes a toughening agent, one of ordinary skill in the art would not have
had a reason to modify Dangayach’s composition to include Karunakaran’s
poly(propylene oxide) polyol, which may have unknown synergistic effects
on Dangayach’s composition. Appeal Br. 12. Likewise, Appellant argues
that one of ordinary skill in the art would not have had a reason to modify
Karunakaran’s composition to include Dangayach’s polylactone-
polysiloxane copolymer composition because it may have unknown
synergistic effects on the composition. Id.
Appellant’s arguments do not identify reversible error in the
Examiner’s rejection. Because both Dangayach’s polycaprolactone-
polysiloxane block copolymer composition and Karunakaran’s
poly(propylene oxide) polyol were known to provide improved toughness,
using them together for that same purpose would have been obvious to one
of ordinary skill in the art. “It is prima facie obvious to combine two
compositions each of which is taught by the prior art to be useful for the
same purpose, in order to form a third composition which is to be used for
the very same purpose.” In re Kerkhoven, 626 F.2d 846, 850 (CCPA 1980).
“The combination of familiar elements according to known methods is likely
to be obvious when it does no more than yield predictable results.” KSR Int’l
Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007).
Appeal 2020-006793
Application 15/617,781

5
The data provided in Tables I and II in Appellant’s Specification does
not weigh against the Examiner’s prima facie case of obviousness because,
as Appellant admits, the results are not “unexpected.” Reply Br. 5. “[W]hen
unexpected results are used as evidence of nonobviousness, the results must
be shown to be unexpected compared with the closest prior art.” In re Baxter
Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991).
In view of the foregoing, we sustain the Examiner’s rejection of
claims 1–13 under 35 U.S.C. § 103 over Dangayach and Karunakaran.
CONCLUSION
The Examiner’s decision to reject claims 1–13 is affirmed.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–13 103 Dangayach,
Karunkaran
1–13

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED