Mark Edward. Harriman et al.

Patent Trials and Appeals Board

Apr 2, 2020

14982057 - (D) (P.T.A.B. Apr. 2, 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.
14/982,057 12/29/2015 Mark Edward Harriman 14012S-US-NP 5299
8015 7590 04/02/2020
CYTEC INDUSTRIES INC.
1937 WEST MAIN STREET
STAMFORD, CT 06902
EXAMINER
REDDY, KARUNA P
ART UNIT PAPER NUMBER
1764
NOTIFICATION DATE DELIVERY MODE
04/02/2020 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):
Cheryle.Telesco@solvay.com
StamfordPatent@solvay.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MARK EDWARD HARRIMAN, PAUL MARK CROSS, and
RAM B. GUPTA

Appeal 2019-002709
Application 14/982,057
Technology Center 1700
____________

Before JEFFREY T. SMITH, BRIAN D. RANGE, and
MICHAEL G. McMANUS, Administrative Patent Judges.

SMITH, Administrative Patent Judge.

DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–8 and 10–14, claims 15–22 are
withdrawn from consideration and claim 9 is objected to as being dependent
upon a rejected base claim. 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 Cytec
Industries Inc. Appeal Br. 2.
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Application 14/982,057

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STATEMENT OF THE CASE
Claim 1 illustrates the subject matter on appeal and is reproduced
below:
1. A curable composition comprising more than 80% by mass of a
benzoxazine blend, said benzoxazine blend comprising:
(A) a non-halogenated, benzoxazine compound in liquid form at
temperature range of 20°C-30°C and selected from the following Structure 1
; and
(B) a multifunctional benzoxazine component comprising one or more
benzoxazine compounds with functionality of 2 or greater.

Appeal Br. 10, Claims Appendix.

The following rejections are presented for our review: 2
I. Claims 1, 3, 4, and 11–14 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Ji (US 2010/0140542 A1; June 10, 2010) in view of Ishida
(US 6,160,079; Dec. 12, 2000).

2 The complete statement of the rejection on appeal appears in the Final
Office Action. (Final Act. 2–6).
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II. Claims 2, 5–8, and 10 rejected under 35 U.S.C. § 103(a) as
unpatentable over Ji, Ishida, and Ward (US 2013/0267659 A1; Oct. 10,
2013).
OPINION
After review of the respective positions provided by Appellant and the
Examiner, we AFFIRM the Examiner’s rejections under 35 U.S.C. § 103(a).
The Examiner has reproduced the rejections on appeal and the Examiner’s
answer. (Ans. 3–18.)
We limit our discussion to the independent claim 1 as argued by
Appellant. 37 C.F.R. § 41.37(c)(1)(iv). Claims 2–8 and 10–14 stand or fall
with independent claim 1. Appellant did not present arguments addressing
separately rejected dependent claims 2, 5–8 and 10.
Having fully considered the Appellant’s arguments, we find that these
arguments fail to identify reversible error in the Examiner’s rejection as
maintained against claim 1. In re Jung, 637 F.3d 1356, 1365 (Fed. Cir.
2011).
We initially note independent claim 1 is directed to a curable
composition comprising more than 80% by mass of a benzoxazine blend, the
benzoxazine blend comprising (A) a non-halogenated, benzoxazine and (B)
a multifunctional benzoxazine component. Appellant’s arguments for
patentability are only directed to the non-halogenated, benzoxazine
compound of Structure 1. (See Briefs generally.)
Because we discern no reversible error in the Examiner’s factual
findings, analysis, and conclusion, we adopt them as our own. We add the
following for emphasis only.
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The Appellant’s principal argument is that Ji discloses a composition
in liquid form at 50°C or lower but does not disclose that all the
monofunctional benzoxazines represented by the general formula are in
liquid form at 50°C or lower. (Appeal Br. 4; Ji ¶¶ 10, 13.) Appellant argues
that Ji is silent as to whether all of the benzoxazine compounds shown are in
liquid form at room temperature. (Appeal Br. 4; Ji ¶¶ 10, 13.) Appellant
acknowledges the Examiner cited Ishida disclosing a preference for amines,
which include 3,5-xylidine, and phenolic compounds, which may include
monohydric phenols such as cresol, for forming benzoxazines. (Appeal
Br. 4.) Appellant additionally argues Ishida does not state that monohydric
phenols such as cresol are preferred and does not have a teaching specific to
the synthesis of monofunctional benzoxazines that are liquid at room
temperature. (Appeal Br. 6.)
Appellant’s arguments regarding Ishida are not persuasive for the
reasons set forth by the Examiner in the answer. (Ans. 11–12.)
The Appellant argues that the fact that a claimed species or subgenus
is encompassed by a prior art genus is not sufficient, by itself, to establish a
prima facie case of obviousness. Citing In re Baird, 16 F.3d 380, 382–83
(Fed. Cir. 1994). (Appeal Br. 4).
Appellant’s reliance on Baird is without persuasive merit. In Baird,
the claim at issue recited a bisphenol A polyester containing an aliphatic
dicarboxylic acid selected from the group consisting of succinic acid,
glutaric acid, and adipic acid. Id. at 381. The prior art reference, Knapp,
disclosed a generic diphenolic formula containing a large number of
variables encompassing more than 100 million different diphenols, only one
of which was a bisphenol A. Id. at 382. None of the preferred diphenols
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included bisphenol A and actually indicated a “preference leading away”
from the claimed compounds. Id. at 383.
In contrast, Ji expressly states “it would be a distinct advantage for
benzoxazine compounds to be in liquid form at a temperature of 50°C, or
less (such as room temperature).” (Ji ¶ 9.) Thus, Ji discloses it is desirable
for the benzoxazines compounds to be liquid at room temperature. The fact
that Ji describes other compounds does not negate Ji’s explicit teaching for
benzoxazines compounds to be in liquid form at room temperature.
Moreover, unlike the situation in Baird, we are not directed to any disclosure
in Ji indicating a “leading away” or teaching away that benzoxazines
compounds liquid at room temperature would be unsuitable for Ji’s purpose.
In re Urbanski, 809 F.3d 1237, 1244 (Fed. Cir. 2016) (“Nothing in the prior
art teaches that the proposed modification would have resulted in an
‘inoperable’ process or a dietary fiber product with undesirable properties.”).
The Appellant alleges that monofunctional benzoxazine compounds
have an unpredictable nature because compounds with similar structures do
not necessarily have the properties of the claimed invention. (Appeal Br. 5–
6.)
Appellant specifically states:
The data in the present specification, particularly FIG. 1,
shows that monofunctional benzoxazine compounds having
similar structures to that of the claimed Structure 1 were
unstable at the same temperature, including structures with
meta-substitutent - compounds #4-#9 (Spec.: pp. 4-6). Thus,
the fact that there is a meta-subsitutent [sic] is not sufficient to
produce a stable compound at room temperature and at high
temperatures (180°C-250 °C). Such thermal stability makes the
claimed composition particularly suitable for processing at such
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high temperatures, e.g., prepreg manufacturing and resin
infusion of fibrous preform.
The evidence of record including the data in the present
specification (Spec.: pp. 4-5, 21-23, Example 2; FIGS. 1 & 2)
establishes the unpredictability nature of monofunctional
benzoxazines and that the physical and thermal characteristics
of the synthesized monofunctional benzoxazines vary
depending on the type and locations of the substituents.
(Appeal Br. 5–6.)
Appellant’s allegation of unpredictability is unsupported by
persuasive objective evidence. The evidence instead supports that a person
of skill in the art would be able to follow the references’ teachings to reach
claim 1. (Ans. 12–14 (citing Ji).) Appellant has failed to adequately explain
the characteristics that are possessed by Structures 2–10 of the Specification.
The Specification merely states:
The non-halogenated, monofunctional benzoxazine
compound of Structure 1 is in liquid form at temperature
between 20°C-30°C, particularly, 20°C-25°C and has a
viscosity of 5 Pa•s at about 30 °C. It remains in its liquid state
for a long period of time, at least 4 years. Moreover, it is
thermally stable at temperatures within the range of 180°C-250
°C.
(Spec. 6.)

Appellant has not directed us to other portions of the present record
that establishes the properties of Structures 2–10. Thus, Appellant has not
demonstrated the data presented in the Specification exhibits that
monofunctional benzoxazine compounds have an unpredictable nature. Cf.
In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); In re Klosak, 455 F.2d
1077, 1080 (CCPA 1972) (“the burden of showing unexpected results rests
on he who asserts them”).
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For the foregoing reasons and those presented by the Examiner we
sustain the appealed rejections.

CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 3, 4, 11–14 Ji, Ishida 1, 3, 4,
11–14

2, 5–8, 10 Ji, Ishida, Ward 2, 5–8, 10
Overall
Outcome
1–8, 10–
14

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