Huntsman International LLC

Patent Trials and Appeals Board

Jul 9, 2020

15067233 - (D) (P.T.A.B. Jul. 9, 2020)

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.
15/067,233 03/11/2016 Christopher J. Moriarty EU 50950-D1 5203
62068 7590 07/09/2020
HUNTSMAN INTERNATIONAL LLC
LEGAL DEPARTMENT
10003 WOODLOCH FOREST DRIVE
THE WOODLANDS, TX 77380
EXAMINER
HEINCER, LIAM J
ART UNIT PAPER NUMBER
1767
NOTIFICATION DATE DELIVERY MODE
07/09/2020 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):
Diana_E_Ortega@Huntsman.com
Kaylen_Gonzalez@huntsman.com
USPatents@Huntsman.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte CHRISTOPHER J. MORIARTY,
SACHCHIDA N. SINGH, and PAUL D. COLEMAN
____________

Appeal 2019-004841
Application 15/067,233
Technology Center 1700
____________

Before GEORGE C. BEST, MICHELLE N. ANKENBRAND, and
MERRELL C. CASHION, JR., Administrative Patent Judges.

CASHION, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1–9 and 18–20. We have jurisdiction under 35 U.S.C. § 6.
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as Huntsman
International LLC. Br. 3.
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The invention is generally directed to lignocellulosic composites.
Spec. 1. Claim 1 is illustrative of the subject matter on appeal and is
reproduced below (formatting added):
1. An oriented strand board wood composite
comprising two surface layers and a core layer disposed
between the two surface layers, wherein
(A) the core layer is formed from an adhesive treated
lignocellulosic mixture comprising: a plurality of
lignocellulosic substrates coated with an adhesive system
consisting of:
(i) a polyfunctional isocyanate,
(ii) a transition metal organometallic catalyst,
(iii) a hydrophilic organic polyahl having
oxyethylene segments that make up greater than 50% of
the weight of the polyahl, and
(iv) a non-isocyanate reactive additive;
wherein Component (i) does not contain an
isocyanate-group terminated prepolymer compound, and
(B) one or both of the surface layers are treated with
either an isocyanate-based adhesive or a phenol formaldehyde
based adhesive.
Appellant (see generally Br.) requests review of the Examiner’s
rejection of claims 1–9 and 18–20 under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over Gallagher (US 4,100,328, issued July 11, 1978), Herold
(US 4,551,517, issued November 5, 1985), and Moriarty (US 2004/0146654
A1, published July 29, 2004). Br. 8; Final Act. 2.
Appellant argues independent claim 1 and relies on these same
arguments to address the rejection of all dependent claims. See
generally Br. Accordingly, we select the independent claim 1 as
representative of the subject matter claimed and decide the appeal as to the
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ground of rejection before us for review based on the arguments Appellant
makes in support of patentability of claim 1.
OPINION
After review of the respective positions that Appellant provides in the
Appeal Brief and the Examiner provides in the Final Action and the Answer,
we AFFIRM the Examiner’s prior art rejections of claims 1–9 and 18–20 for
the reasons the Examiner presents. We add the following for emphasis.
Claim 1
The Examiner finds that the combined teachings of Gallagher and
Moriarty suggest an oriented strand board wood composite comprising two
surface layers and a core layer disposed between the two surface layers that
differs from the claimed invention in that the combined teachings do not
teach forming the core layer with a polyurethane adhesive system that uses a
transition metal organometallic catalyst. Final Act. 2–3. Appellant does not
dispute the Examiner’s specific findings based on these references. See
generally Br. The Examiner finds that Herold teaches it was known to make
wood products using a polyurethane binder comprising transition metal
ligands, including iron acetyl acetonate (a group VIIIb metal), which meets
the claimed transition metal catalyst, as curing agents for the binder. Final
Act 2; Herold col. 7, l. 56–col. 8, l. 2, col. 8, ll. 46–50. The Examiner
determines that it would have been obvious to a person having ordinary skill
in the art to have used Herold’s catalyst in Gallagher and Moriarty’s
combined composition in view of Herold’s teachings. Final Act. 2–3.
Appellant argues that Gallagher does not teach the use of catalysts in
the binder composition and, in fact, teaches away from their use. Br. 10–11.
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Appellant argues that Gallagher addresses the prior art use of catalysts in
mold release agents or coated on the mold surfaces to prevent the severe
sticking of polyisocyanate adhesives to metal. Br. 11; Gallagher col. 1, ll.
45–52. Appellant also contends that Gallagher would not have used
organometallic catalysts because they were not known by those skilled in the
art as additives for the adhesive system used to form a core layer in an
oriented strand board wood composite. Br. 10–11. Thus, Appellant asserts
that, absent impermissible hindsight and in view of Gallagher’s teaching
away, one skilled in the art would not have arrived at the claimed invention
from the combined teachings of the prior art.
Appellant’s arguments do not identify error in the Examiner’s
determination of obviousness. Appellant’s arguments attack Gallagher
individually and, therefore, do not address adequately the rejection the
Examiner presents. In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir.
1986); In re Keller, 642 F.2d 413, 425–426 (CCPA 1981) (“The test [for
obviousness] is what the combined teachings of the references would have
suggested to those of ordinary skill in the art.”).
We note that Gallagher seeks to eliminate a catalyst that is in mold
release agents or coated on the mold surfaces to increase production of
particle boards. Br. 11; Gallagher col. 5, ll. 18–36. That is, Gallagher seeks
to eliminate a catalyst that is not part of the polyisocyanate/polyurethane
binder composition (herein after referred to as an “external catalyst”) from
the process of making a wood product. Gallagher does so by using the
disclosed binder composition in an amount that is less than the amount of
conventional adhesive when making a product. Gallagher col. 5, ll. 29–36.
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Therefore, Gallagher’s disclosure teaches it is the amount of the binder that
dictates the need for applying an external catalyst to a mold.
Although Appellant contends that Gallagher teaches away from using
catalysts in the binders (Br. 11), Appellant does not direct us to any portion
of Gallagher that supports this contention. In fact, the noted portion of
Gallagher associates the amount of adhesive as dictating whether an external
catalyst is necessary to prevent undesirable adhesion to a mold and does not
teach away from using a catalyst as part of the binder composition itself.
Nor would this disclosure have discouraged a skilled artisan from using
catalysts in the binder composition itself.
As the Examiner notes, Herold teaches that it is conventional to add
an optional catalyst, such as an organometallic catalyst, to a polyurethane
binder to make wood products. Ans. 6; see Herold col. 7, ll. 55–57, 65–68.
The Examiner determines that it would have been obvious to one of ordinary
skill in the art to incorporate Herold’s catalyst into Gallagher’s composition
to speed up the curing of the binder. Ans. 6. This is consistent with
Gallagher’s objective of increasing wood product production. Gallagher col.
5, ll. 18–36. Thus, the Examiner has provided a reasonable basis why one
skilled in the art would have arrived at the claimed invention from the
combined teachings of the cited art. In re O’Farrell, 853 F.2d 894, 904
(Fed. Cir. 1988) (“For obviousness under § 103, all that is required is a
reasonable expectation of success.”). Appellant fails to explain adequately
why one skilled in the art, using no more than ordinary creativity, would not
have been capable of modifying Gallagher’s binder composition so as to
incorporate an organometallic catalyst as Herold teaches. See KSR Int’l Co.
v. Teleflex Inc., 550 U.S. 398, 421 (2007) (“A person of ordinary skill is also
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a person of ordinary creativity, not an automaton.”); see also In re Sovish,
769 F.2d 738, 743 (Fed. Cir. 1985) (presuming skill on the part of one of
ordinary skill in the art).
To overcome the Examiner’s case of obviousness, Appellant argues
that Tables 1 and 2 in the Specification present data demonstrating that an
oriented strand board comprising the inventive adhesive system and
produced at lower press temperatures without an increase in residence time
in the press has at least comparable, if not improved, physical and
mechanical properties when compared to a state of the art oriented strand
board. Br. 12–13 (citing Spec. 18:23–24 (Tables 1 and 2)).
When evidence of secondary considerations is submitted, we begin
anew and evaluate the rebuttal evidence along with the evidence upon which
the conclusion of obviousness was based. In re Rinehart, 531 F.2d 1048,
1052 (CCPA 1976). The burden of establishing unexpected results rests on
the Appellant. Appellant may meet this burden by establishing that the
difference between the claimed invention and the closest prior art was an
unexpected difference. See In re Klosak, 455 F.2d 1077, 1080 (CCPA
1972). Appellant must establish the unexpected results with factual
evidence; attorney statements are insufficient to establish unexpected results.
See In re Geisler, 116 F.3d 1465, 1470–71 (Fed. Cir. 1997). Further, a
showing of unexpected results with evidentiary support must be reasonably
commensurate in scope with the degree of protection sought by the claims
on appeal. In re Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983); In re
Clemens, 622 F.2d 1029, 1035 (CCPA 1980).
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We have considered Appellant’s evidence of unexpected results and
agree with the Examiner’s analysis that the evidence is insufficient to show
nonobviousness. Ans. 7–8.
As the Examiner notes (Ans. 7–8), it is not clear that Appellant has
compared the claimed invention against the closest prior art (Gallagher).
We also agree with the Examiner that Appellant does not explain why the
single inventive adhesive of Tables 1 and 2 is representative of the broad
scope of adhesives claimed. Ans. 8.
Thus, on this record, Appellant has not explained adequately why one
of ordinary skill in the art would have found the evidence relied upon
unexpected or why that evidence is reasonably commensurate in the scope
with the claims.
Accordingly, we affirm the Examiner’s prior art rejection of claims 1–
9 and 18–20 under 35 U.S.C. § 103(a) for the reasons the Examiner presents
and the reasons we give above.
CONCLUSION
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–9,
18–20
103(a) Gallagher, Herold,
Moriarty
1–9,
18–20

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)(1)(iv).
AFFIRMED