Katsumi Tokumoto et al.

Patent Trials and Appeals Board

Sep 21, 2021

2020004932 (P.T.A.B. Sep. 21, 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.
12/995,332 11/30/2010 Katsumi Tokumoto GPK-380-59 9757
23117 7590 09/21/2021
NIXON & VANDERHYE, PC
901 NORTH GLEBE ROAD, 11TH FLOOR
ARLINGTON, VA 22203
EXAMINER
SERGENT, RABON A
ART UNIT PAPER NUMBER
1765
NOTIFICATION DATE DELIVERY MODE
09/21/2021 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):
PTOMAIL@nixonvan.com
pair_nixon@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KATSUMI TOKUMOTO, TAKAO SUZUKI,
HIROYUKI KISO, YOSHIHIRO TAKAHASHI, and
YUTAKA TAMANO
Appeal 2020-004932
Application 12/995,332
Technology Center 1700
Before TERRY J. OWENS, JAMES C. HOUSEL, and
N. WHITNEY WILSON, Administrative Patent Judges.
WILSON, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s July 10, 2019 decision to finally reject claim 17 (“Final Act.”).
We have jurisdiction under 35 U.S.C. § 6(b).
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 Tosoh
Corporation (Appeal Br. 3).
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Application 12/995,332

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CLAIMED SUBJECT MATTER
Appellant’s disclosure is directed to a catalyst composition for the
production of a polyurethane foam (Appeal Br. 5). The claimed catalyst
composition consists of – i.e. does not comprise – components (a) and (b).
Claim 17, the sole claim in the application and on appeal is reproduced
below:
17. A catalyst composition for the production of a
polyurethane foam, which consists of
(a) an amine compound (A) and
(b) an amine compound (B) wherein:
the amine compound (A) is represented by the following
formula (2e):
(2e)
wherein X is a hydroxymethyl group;
the amine compound (B) has, in its molecule, one or more
substituents selected from the group consisting of a hydroxy
group, a primary amino group and a secondary ammo group,
wherein the amine compound (B) is one or more amines
selected from the group consisting of N,N-dimethylaminoethanol,
bis(3-dimethylaminopropyl)amine, N,N-dimethyl-
N',N'-bis(2-hydroxypropyl)-l,3-propanediamine, N,N,N'-
trimethyl-N'-(2- hydroxyethyl) bis(2-aminoethyl) ether, N,N-
bis(3-dimethylaminopropyl )-N-isopropanolamine, and N,N-
dimethylaminohexanol.

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REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Farkas et al. US 3,167,555 January 26, 1965
Meier US 6,248,801 B1 June 19, 2001
Kiso et al. US 2003/0083393 A1 May 1, 2003
Kiso (“Kiso JP”) JP 2003-082502 March 19, 2003
REJECTIONS
Claim 17 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Kiso in view of Farkas and Kiso JP, and further in view of Meier.
OPINION
The Examiner finds that Kiso discloses catalyst compositions for
producing rigid polyurethane foam, where compounds meeting claimed
amine compound (B) are used as catalysts (Final Act. 3, citing Kiso
Abstract, ¶¶ 12–21). The Examiner further finds that Kiso discloses that
these catalysts may be used in combination with other catalysts, including
amine catalysts such as triethylenediamine (id., citing Kiso ¶¶26, 29, and
31). The Examiner further finds that Kiso does not disclose the specific
triethylenediamine set forth as component (A), where a hydroxymethyl
group is substituted onto the triethylenediamine scaffold, but that methyl
substituted triethylenediamines and hydroxyl functional triethylenediamines
were known to be useful as catalysts for preparing polyurethanes (id., citing
Farkas 2:20–29, 4:2; and Kiso JP, Abstract). Based on these disclosures, the
Examiner states:
“[I]n view of the structural similarity between the
triethylenediamine derivatives of the two secondary references
and their similar, if not equivalent, utilities, the position is taken
that it would have been obvious [to] employ the instantly
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claimed hydroxymethyl substituted triethylenediamine as the
additionally disclosed catalyst within the primary reference.

(Final Act. 3–4). The Examiner further relies on Meier as teaching that the
claimed hydroxymethyl-substituted triethylenediamine was known to exist at
the time of the invention (Final Act. 4).
Appellant first argues that the cited art “does not teach or suggest the
combination of amine compound (A) only with amine compound (B),” as is
required by claim 17 because of the use of the transitional phrase “consisting
of” (Appeal Br. 7 (emphasis omitted); see also, In re Gray, 53 F.2d 520, 521
(CCPA 1931) (the transitional phrase “consisting of” excludes any element,
step, or ingredient not specified in the claim)). Appellant’s position is that
there is no reason why a person of skill in the art would have generated a
catalyst composition consisting only of amine compound (A) and amine
compound (B) (id.). This argument is not persuasive because Kiso explicitly
states that its catalysts (which include the claimed amine compound (B)) can
be used with another “catalyst” (singular), selected from a group which
includes substituted triethylenediamines (Kiso ¶¶ 26, 29).
Appellant further argues that Kiso JP discloses the use of hydroxyl
functional triethylenediamines – which are not the hydroxymethyl-
substituted triethylenediamines set forth in claim 17 – in combination with a
metal complex catalyst having a specified formula (Appeal Br. 9, citing Kiso
JP, Abstract). Moreover, Appellant argues, Kiso JP does not suggest that its
hydroxyl functional triethylenediamines should be used without the also-
disclosed metal complexes (Appeal Br. 9–10). Therefore, according to
Appellant, nothing in Kiso JP, in combination with Kiso, teaches or suggests
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a catalyst composition consisting of claimed components (a) and (b) (i.e. just
(a) and (b) without any other component) (Appeal Br. 9–10).
Similarly, with respect to Farkas, Appellant notes that the Examiner
agrees that it does not disclose a hydroxymethyl-substituted
triethylenediamine. Appellant also argues that Farkas suggests using
compounds which are liquids as highly activated catalysts, and notes that
hydroxymethyl-substituted triethylenediamine is a solid at room temperature
(Appeal Br. 10). Therefore, according to Appellant, a person of skill in the
art would not have been motivated to modify Farkas’s compounds to make
the claimed hydroxymethyl-substituted triethylenediamine, much less use it
in combination with the claimed (B) components (id.).
Upon review of the evidence of record, we do not agree with
Appellant that claim 17 would not have been obvious in view of the cited
art. The Examiner has the initial burden of establishing a prima facie case of
obviousness based on an inherent or explicit disclosure of the claimed
subject matter under 35 U.S.C. § 103. In re Oetiker, 977 F.2d 1443, 1445
(Fed. Cir. 1992) (“[T]he examiner bears the initial burden, on review of the
prior art or on any other ground, of presenting a prima facie case of
unpatentability.”). To establish a prima facie case of obviousness, the
Examiner must show that each and every limitation of the claim is described
or suggested by the prior art or would have been obvious based on the
knowledge of those of ordinary skill in the art. In re Fine, 837 F.2d 1071,
1074 (Fed. Cir. 1988).
In this instance, the Examiner determines that it would have been
obvious to use a known compound – hydroxymethyl triethylenediamine – in
conjunction with the catalysts disclosed in Kiso because Farkas and Kiso JP
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each teach the use of similar compounds as catalysts for making
polyurethanes. In particular, the differences in the compounds are shown
below:

Claim 17 Farkas Kiso JP

While neither Farkas nor Kiso JP offers an explicit suggestion to
modify their compounds to make the claimed hydroxymethyl
triethylenediamine, as can be seen above, the compounds are all very
similar. (As shown by Meier, hydroxymethyl triethylenediamine was a
known compound at the time of the invention.) Moreover, both Farkas and
Kiso JP teach that their disclosed compounds are useful for making
polyurethanes. Therefore, a person of skill in the art would have a
reasonable expectation that hydroxymethyl trimethylamine would have been
a useful catalyst for making polyurethanes, and thus making that
modification would have been obvious. In re O'Farrell, 853 F.2d 894, 903–
904 (Fed. Cir. 1988) (absolute predictability that the substitution will be
successful is not required. All that is required is a reasonable expectation of
success.)
Appellant also argues that it has shown that the claimed combination
provides unexpectedly good results, and that this showing also requires
reversal of the rejection. It is well settled that Appellant has the burden of
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showing unexpected results. In re Freeman, 474 F.2d 1318, 1324 (CCPA
1973); In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972). Such burden
requires Appellant to proffer factual evidence that actually shows
unexpected results relative to the closest prior art, see In re Baxter Travenol
Labs., 952 F.2d 388, 392 (Fed. Cir. 1991), and that is reasonably
commensurate in scope with the protection sought. In re Grasselli, 713 F.2d
731, 743 (Fed. Cir. 1983); In re Clemens, 622 F.2d 1029, 1035 (CCPA
1980); In re Hyson, 453 F.2d 764, 786 (CCPA 1972). The extent of the
showing relied upon by Appellant must reasonably support the entire scope
of the claims at issue. See In re Harris, 409 F.3d 1339, 1344 (Fed. Cir.
2005).
In this instance, Appellant has not met its burden to provide evidence
demonstrating that the results would have been unexpected by one of
ordinary skill in the art. Also, the showing is not commensurate in scope
with the claims. In particular, claim 17 does not place any limitation on the
relative amounts of amine compounds A and B. Accordingly, a catalyst
composition containing only a very small amount of amine compound A
would fall within the scope of the claim. However, the proffered test results
only show a single amount of amine compound A (and also only a single
amount of amine compound B). Thus, there is no evidence to demonstrate
that the allegedly surprising results would also be found at different relative
amounts of the two amine components.
Accordingly, we determine that Appellant has not met its burden of
showing reversible error, and we affirm the rejection.
CONCLUSION
The Examiner’s rejection is affirmed.
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More specifically,
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
17 103(a) Kiso, Farkas, Kiso
JP, Meier
17
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