Momentive Performance Materials Inc.

Patent Trials and Appeals Board

May 11, 2021

2020004359 (P.T.A.B. May. 11, 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.
15/098,727 04/14/2016 Anne Dussaud 1302-751 CON (5072157) 3377
52774 7590 05/11/2021
MOMENTIVE PERFORMANCE MATERIALS INC.
c/o Dilworth & Barrese, LLP
1000 Woodbury Road
Suite 405
Woodbury, NY 11797
EXAMINER
BROWE, DAVID
ART UNIT PAPER NUMBER
1617
NOTIFICATION DATE DELIVERY MODE
05/11/2021 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):
usptomail@dilworthbarrese.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANNE DUSSAUD, BHAVNA RANA, and SUSAN SPERRING
Appeal 2020-004359
Application 15/098,727
Technology Center 1600
Before DONALD E. ADAMS, RACHEL H. TOWNSEND, and
DEVON ZASTROW NEWMAN, Administrative Patent Judges.
TOWNSEND, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims directed to a silicone-containing
composition as being obvious. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
STATEMENT OF THE CASE
The claims are directed to a silicone-containing composition.

1 We use the term “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as
MOMENTIVE PERFORMANCE MATERIALS INC. (Appeal Br. 3.)
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Claims 21, 24, 26–31, 34, and 36–41 are on appeal. Claim 21,
reproduced below, is representative of the claimed subject matter:
21. A composition which comprises:
a) a MT resin having a molecular weight higher than
10,000 g/mol and containing one or more M units of the formula
R13SiO1/3, and T units of the formula R3SiO3/2 wherein the ratio
of M to T units ranges from l:1 to 1:7, and the softening point of
the MT resin ranges from 50°C to 1l0°C wherein each R1 and R3
is independently a hydroxyl radical or monovalent hydrocarbon
radical; and,
b) silicone gum containing one or more M’ units of the
formula R43SiO1/2 and one or more D’ units of the formula
R52SiO2/2, wherein each R4 and R5 is independently a
hydroxyl radical or a monovalent hydrocarbon radical,
wherein the weight percent ratio of the MT resin (a) to the one or
more D’ units in the composition ranges from 0.8 to 4.7, the
mixture of MT resin (a) and silicone gum (b) is non-crosslinked
and has a softening point greater than 50°C and an elastic
modulus at ambient temperature of less than 106Pa and the
silicone gum (b) has a viscosity of from 2,000,000 to
200,000,000 centipoise at 25°C.
(Appeal Br. 15.) The Examiner required an election of species of claim
limitation b), the silicone gum. (See Final Action 3.) Appellant elected
dimethiconol. (Id.) We limit discussion and consideration to the elected
species, and take no position respecting the patentability of the broader
generic claims, including the remaining, non-elected species. See Ex parte
Ohsaka, 2 USPQ2d 1460, 1461 (BPAI 1987).

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REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Brun et al. US 2009/0214458 A1 Aug. 27, 2009
Suenaga et al. US 2011/0040062 A1 Feb. 17, 2011

REJECTION
The following ground of rejection by the Examiner is before us on
review:
Claims 21, 24, 26–31, 34, and 36–41 are rejected under pre-AIA 35
U.S.C. § 103(a) as being unpatentable over Brun and Suenaga.
DISCUSSION
Appellant does not separately argue the claims, thus they stand or fall
together. In re Kaslow, 707 F.2d 1366, 1376 (Fed. Cir. 1983); 37 C.F.R.
§ 41.37(c)(1)(iv). We address claim 21 as limited to Appellant’s elected
silicone gum species, i.e., dimethiconol.
The Examiner finds that Brun discloses a hair care composition that
includes a silicone resin, having M and T units as claimed, that can be film
forming and a silicone gum that can be a “polydimethylsiloxane modified
with hydroxyl groups (e.g. dimethiconol),” where the mixture can be non-
crosslinked and the MT resin and dimethiconol are present in a weight ratio
of about 1.9. (Final Action 5 (citing Brun “(abstract; paragraphs 0012, 0034,
0036, 0059, 0061, 0064, 0067, 0070, 0071, 0089-0091; example 1)”).)
Regarding the MT resin, the Examiner finds that Brun teaches it has at least
50% T units and a molecular weight of up to 50,000 g/mol. (Id.)
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The Examiner further finds that Suenaga teaches that “[a] common
problem encountered in the art with compositions containing a silicone resin
is an excessive hardness of the resulting film coating that imparts an
uncomfortable ‘taut’ feeling.” (Final Action 5.) The Examiner finds that
Suenaga discloses a composition comprising a film-forming silicone MT
resin that has each of the M to T ratio range, the molecular weight ratio, and
the softening point recited in claim 21. (Id.) The Examiner notes that
Suenaga teaches that a composition including such a film-forming MT resin
“is stable, exhibits easy and even spreadability, provides a refreshing feeling
with no stickiness, and exhibits excellent water-repellency.” (Id. (citing
Suenaga “(abstract; paragraphs 0005-0012, 0016)”).)
The Examiner concludes that it would have been obvious to one
having ordinary skill in the art to have used the MT resin of Suenaga as the
silicone MT resin in the composition of Brun “with the reasonable
expectation that the resulting composition will be stable and will
successfully exhibit easy and even spreadability, a refreshing feeling with no
stickiness, and excellent water-repellency.” (Id. at 5–6.)
We agree with the Examiner’s factual findings regarding the
references and conclude that a prima face case of obviousness has been
established. We agree with the Examiner that it would have been obvious to
substitute the silicone MT resin of Suenaga for the MT resin used in Brun.
It is obvious to those skilled in the art to substitute one known equivalent for
another. See In re Omeprazole Patent Litigation, 483 F.3d 1364, 1374 (Fed.
Cir. 2007). Moreover, as the Examiner explained, Suenaga provides a
reason that one of ordinary skill in the art would have been motivated to
substitute the MT resin described therein for the MT resin described for use
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in the compositions of Brun, and Appellant does not dispute the Examiner’s
finding in this regard.
Appellant finds the Examiner’s rejection to be in error because (1)
Brun discloses non-volatile linear polydimethylsiloxanes (“PDMS”) that are
dimethylpolysiloxane or dimethicone, not dimethiconol (Appeal Br. 11) and
(2) Brun “requires the presence of a copolymer comprising at least one
silicone resin and at least one fluid silicone” and the calculation of the MT to
D’ ratio of Brun cannot exclude the contribution of D in the DQ of the
copolymer (Appeal Br. 12–13). We do not find Appellant’s arguments
persuasive for the reasons set forth by the Examiner in the Answer, to which
Appellant does not respond. We provide a brief discussion below.
Regarding argument (1) above, Appellant does not dispute that Brun
discloses a composition containing a silicone MT resin along with a silicone
gum. (Appeal Br. 12; Brun ¶¶ 67, 89.) According to Appellant, however,
Brun does not disclose the use of dimethiconols as urged by the Examiner.
(Id. at 11–12 (citing Brun ¶¶ 88–106).) We disagree. As the Examiner
notes (Ans. 4), Brun teaches that the non-volatile PDMS that may be part of
the Brun compositions, and “may improve the coating homogeneity” (Brun
¶ 88), include “silicones modified with at least one of . . . hydroxyl . . .
groups” (Brun ¶ 90). Also, Brun depicts, as an example, a silicone of
formula (I), which we reproduce below

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in which X can be a hydroxyl group, rather than the methyl group that is
present in dimethicone (id. ¶¶ 93–97). Thus, as the Examiner explained in
the Answer, “Brun expressly teaches that the polydimethylsiloxane polymer
can be dimethiconol.” (Ans. 4.)
Brun further teaches that the viscosity of such a non-volatile linear
PDMS may be from 5 up to 5,000,000 centipoise at 25 ºC. (Id. ¶ 91.) That
range overlaps with the viscosity range recited in Appellant’s claim 21. “A
prima facie case of obviousness typically exists when the ranges of a
claimed composition overlap the ranges disclosed in the prior art.” In re
Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003). Thus, we agree with the
Examiner that Brun teaches inclusion of a dimethiconol silicone gum having
a viscosity within the scope of the claimed viscosity range.
Regarding argument (2) above, Appellant disputes the Examiner’s
rejection because Brun does not disclose a composition in which the “weight
percent ratio of the MT resin (a) to the one or more D’ units in the
composition ranges from 0.8 top 4.7.” (Appeal Br. 12.) According to
Appellant, that is so because Brun teaches a composition that includes a
silicone gum (MDxM) and a DQ resin in combination with an MT resin and
in order to calculate the ratio of MT to D units, the D units from both the
silicone gum and the DQ resin must be counted. (Id. at 12–13 (“Brun et al.’s
compositions contain D unit in its copolymer of a silicone resin and a fluid
silicone”).) We disagree with Appellant that the D units from both the
silicone gum and DQ resin must be counted to determine if the weight
percent ratio of the MT resin to the one or more D’ units in the composition
recited by the claim is met. As the Examiner explained in the Answer (Ans.
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5.), claim 21 defines the D’ units of the composition as being derived from
the silicone gum which is defined in “b)” of the claim as follows:
b) silicone gum containing one or more M’ units of the formula
R43SiO1/2 and one or more D’ units of the formula R52SiO2/2,
wherein each R4 and R5 is independently a hydroxyl radical or a
monovalent hydrocarbon radical.
In other words, the ratio of MT to D’ units as set forth in Appellant’s claim
21 is defined to be the MT resin as defined in “a)” of the claim to the “one or
more D’ units” of the silicone gum as defined in “b)” of the claim, and not to
all D units in the entire composition as Appellant argues (see Appeal Br. 12–
13). Thus, as the Examiner explained, whether or not Brun includes a D unit
in another silicone compound in its composition is not material to
determining the MT to D’ ratio of the composition with respect to the
definition required by Appellant’s claim. (Ans. at 5–6.)
The Examiner then explains that, during prosecution, Appellant
argued that the weight percent of the silicone gum is equivalent to the weight
percent of the “one or more D’ units.” (Id. (citing Amendment filed
December 11, 2018, p 6:
“For D’ units, silicone gums (b) have linear structure and
relatively high molecular weight, the terminal M’ units in
silicone gums contribute very little to the total molecular
weight, therefore, the weight percent of the silicone gum is used
as the weight percent of the D’ units.”).)
Consequently, as the Examiner explained in the Answer, with respect to
Brun’s example 1, the MT to D’ ratio required by the claim is met. (Id. at
6.) In particular, in Brun example 1, the MT resin polymethylsilsesquioxane
is present in an amount of 2g, and DC1501, which is 15 wt% dimethiconol is
present in an amount of 7 g, or 1.05 g dimethiconol. (Id.; Brun ¶ 268.) The
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MT to D’ ratio present in example 1, as defined by Appellant’s claim 21, is
thus, 2 g/1.05 g, which is 1.9 (Ans. 6), regardless of the presence of BioPSA
(Appeal Br. 12). 1.9 falls within the claims range of 0.8 to 4.7.
Thus, for the reasons discussed above, we affirm the Examiner’s
rejection of claims 21, 24, 26–31, 34, and 36–41 as being obvious from Brun
and Suenaga.
DECISION SUMMARY
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
21, 24, 26–
31, 34, 36–
41
103(a) Brun, Suenaga 21, 24, 26–
31, 34, 36–
41

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