Covestro LLC

Patent Trials and Appeals Board

Apr 2, 2020

15588763 - (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.
15/588,763 05/08/2017 William M. Humphrey PO9128N 3060
157 7590 04/02/2020
Covestro LLC
1 Covestro Circle
PITTSBURGH, PA 15205
EXAMINER
HUHN, RICHARD A
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):
US-IPR@covestro.com
laura.finnell@covestro.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte WILLIAM M. HUMPHREY,
PAUL DRAGO, and TERRY L. ANDERSON
____________

Appeal 2019-004118
Application 15/588,763
Technology Center 1700
____________
Before MICHAEL P. COLAIANNI, GEORGE C. BEST, and
DEBRA L. DENNETT, Administrative Patent Judges.
BEST, Administrative Patent Judge.
I. DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–15 of Application 15/588,763. Final
Act. (August 6, 2018). We have jurisdiction under 35 U.S.C. § 6.
For the reasons set forth below, we reverse.

1 We use the word “Appellant” to refer to “Applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies Covestro LLC as the real party in
interest. Appeal Br. 1.
Appeal 2019-004118
Application 15/588,763
2
II. BACKGROUND
Thermoplastic elastomers are frequently used in the construction of
automotive interior trim components because of their softness. Spec. 2:5–6.
The ’763 Application describes methods for making thermoplastic
urethane/urea compositions and compositions which are blends of (a)
thermoplastic polyurethane/urea and (b) at least one copolymer and/or alloy.
Id. at 1:16–18. The ’763 Application describes that these compositions and
blends are suitable for forming a shell said to have improved feel,
weathering and air bag deployment properties. Id. at 1:18–21. Claim 1 is
representative of the ’763 Application’s claims and is reproduced below
from the Claims Appendix of the Appeal Brief.
1. A method for making an aliphatic thermoplastic
urethane/ urea elastomer, the method comprising reacting
together the following components of a composition:
(i) a polyol component comprising at least one
polyether polyol having a molecular weight of
from 1000 to 10,000 Da and an unsaturation level
less than or equal to 0.04 meq/g;
(ii) an aliphatic or cycloaliphatic diamine having a
molecular weight of up to 4000, in an amount of
up to about 5 % of the composition;
(iii) an isocyanate component comprising at least one
aliphatic organic diisocyanate;
(iv) a chain extender which is not within the scope of
(ii), in an amount of 4% to 15% of the
composition;
(v) optionally, a UV stabilizing agent;
(vi) optionally, an antioxidant;
(vii) optionally, a pigment;
(viii) a catalyst which promotes urethane formation; and
Appeal 2019-004118
Application 15/588,763
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(ix) optionally, a mold release agent,
wherein each component is reacted together by continuous
processing or by a one-shot batch process.
Appeal Br. Claims App. 9 (emphasis added).
III. REJECTIONS
On appeal, the Examiner maintains the following rejections:
1. Claims 1–7 are rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of Humphrey,2 Harasin,3 and the PolyClear
136 Presentation,4 as evidenced by the PolyClear 136 Data Sheet.5
Answer 3.
2. Claims 8 and 10–15 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Humphrey, Harasin, the
PolyClear 136 Presentation, as evidenced by the PolyClear 136
Data Sheet, and Masubuchi.6 Answer 7.
3. Claim 9 is rejected under 35 U.S.C. § 103(a) as unpatentable over
the combination of Humphrey, Harasin, the PolyClear 136

2 US 5,824,738, issued October 20, 1998.
3 US 2006/0155092 A1, published July 13, 2006.
4 R. Scott, New Aliphatic Diamine Chain Extender for Light Stable
Polyureas and Polyurethanes – POLYCLEAR 136, UTECH Europe
Conference, The Hanson Group, LLC (2006) (hereinafter “PolyClear
Presentation”).
5 PolyClear 136 Data Sheet, The Hanson Group, LLC (“PolyClear 136 Data
Sheet”).
6 US 2003/0216507 A1, published November 20, 2003.
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Application 15/588,763
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Presentation, as evidenced by the PolyClear 136 Data Sheet,
Masubuchi, as evidenced by Mavridis.7 Answer 13.
IV. DISCUSSION
There are two independent claims on appeal: claims 1 and 8. Appeal
Br. 1–2. We address these claims individually below. Dependent claims 2–7
and 9–15 will stand or fall with their parent independent claims.
A. Rejection of claims 1–7 as unpatentable over the combination of
Humphrey, Harasin, and the PolyClear 136 Presentation, as
evidenced by the PolyClear 136 Data Sheet.
In rejecting claim 1, the Examiner found that Humphrey describes a
method of reacting together two particular components of a composition.
Final Act. 3 (citing Humphrey 4:9–10; 4:12–21). Because this finding is
erroneous, we reverse the rejection of claims 1–6.
As Appellant argues, Humphrey does not describe reacting together:
(1) “up to 5% of an aliphatic or cycloaliphatic diamine” and (2) “4-15% of a
second chain extender that is not an aliphatic or cycloaliphatic diamine.”
Appeal Br. 5–6; see claim 1 elements (ii) and (iv). Appellant argues that
Humphrey’s “recitation of possible alternatives [for chain extenders] is not
the disclosure of using more than one chain extender.” Appeal Br. 6.
Appellant notes that Humphrey’s preferred embodiment is a single chain
extender and that all of Humphrey’s examples “disclose compositions using
only one chain extender, 1,4-butanediol.” Id.

7 H. Mavridis et al., Temperature Dependence of Polyolefin Melt Rheology,
32(23) Microporous and Mesoporous Materials 1779–91 (1992) (hereinafter
“Mavridis”).
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In response, the Examiner argues unpersuasively that because
Humphrey discloses “chain extenders such as ethylene glycol and others that
‘could also be used,’” these components can be reacted together with
aliphatic primary or secondary diamine chain extenders. Answer 15 (citing
Humphrey 4:9–10; 4:12–21). The Examiner determines that it would have
been obvious to one of ordinary skill in the art at the time of the invention to
combine “the PolyClear [aliphatic secondary diamine] chain extender with
Humphrey’s composition based upon a rationale in KSR (MPEP [§] 2143,
rationale (B)).” Answer 14; see the PolyClear 136 Presentation Title.
Regarding chain extender alternatives, Humphrey discloses the
following:
Chain extending agents which may be employed in the
preparation of the urethane thermoplastic elastomer of the
present invention include aromatic secondary or aliphatic
primary or secondary diamines, all of which are well known in
the art.
Chain extenders such as ethylene glycol, diethylene
glycol, propylene glycol, pentane diol, 3-methylpentane-1,5-
diol, hexane diol, HQEE [hydroquinone bis(2-hydroxyethyl)
ether], CHDM (1,4-cyclohexanedimethanol), or HBPA
(hydrogenated bisphenol A) could also be used.
In the preferred embodiment, the chain extender is 1,4-
butanediol.
Humphrey 4:7–18 (emphasis added).
We agree with Appellant that Humphrey does not describe a method
of reacting aliphatic primary or secondary diamine chain extenders together
with chain extenders listed thereafter in a separate paragraph. Appeal Br. 6.
Moreover, the Examiner’s reliance on MPEP § 2143, rationale (B), to
render claim 1 obvious is misplaced. Reply Br. 2; Answer 14. Appellant
persuasively argues that substituting Humphrey’s chain extender for
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Application 15/588,763
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PolyClear’s aliphatic diamine, pursuant to MPEP § 2143, rationale (B),
would have resulted in a composition having only one chain extender. Reply
Br. 2.
The Examiner, therefore, has engaged in impermissible hindsight in
concluding that the applied prior art renders claim 1 obvious. In re Rouffet,
149 F.3d 1350, 1358 (Fed. Cir. 1998) (“hindsight” is inferred when the
specific understanding or principal within the knowledge of one of ordinary
skill in the art leading to the modification of the prior art in order to arrive at
appellant’s claimed invention has not been explained); In re Warner, 379
F.2d 1011, 1017 (CCPA 1967) (“A rejection based on section 103 clearly
must rest on a factual basis, and these facts must be interpreted without
hindsight reconstruction of the invention from the prior art”).
We, therefore, reverse the rejection of claims 1–7 of the ’763
Application.
B. Rejection of claims 8 and 10–15 as unpatentable over the combination
of Humphrey, Harasin, the PolyClear 136 Presentation, as evidenced
by the PolyClear 136 Data Sheet, and Masubuchi.
Appellant argues that claim 8 is patentable for the reasons claim 1 is
patentable. Appeal Br. 3, 5–6. As we discussed in connection with claim 1,
the Examiner erred by relying on: (1) Humphrey’s discussion of alternatives
for a chain extender component and (2) MPEP § 2143, rationale (B). See
§ IV.A supra.
We, therefore, reverse the rejection of claims 8 and 10–15 of the ’763
Application.
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Application 15/588,763
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C. Rejection of claim 9 as unpatentable over the combination of
Humphrey, Harasin, and the PolyClear 136 Presentation, as
evidenced by the PolyClear 136 Data Sheet, Masubuchi, as evidenced
by Mavridis.
Appellant argues that claim 9 is patentable for the reasons claim 1 is
patentable. Appeal Br. 3, 8. As we discussed in connection with claim 1, the
Examiner erred by relying on: (1) Humphrey’s discussion of alternatives for
a chain extender component and (2) MPEP § 2143, rationale (B). See § IV.A
supra.
We, therefore, reverse the rejection of claim 9 of the ’763 Application.
V. CONCLUSION
In summary:
Claims Rejected 35 U.S.C. § Basis Affirmed Reversed
1–7 103(a)
Humphrey, Harasin, the PolyClear
136 Presentation, the PolyClear 136
Data Sheet
1–7
8, 10–15 103(a)
Humphrey, Harasin, the PolyClear
136 Presentation, the PolyClear 136
Data Sheet, Masubuchi
8, 10–15
9 103(a)
Humphrey, Harasin, the PolyClear
136 Presentation, the PolyClear 136
Data Sheet, Masubuchi, Mavridis
9
Overall Outcome 1–15
REVERSED