DSM IP ASSETS B.V.

Patent Trials and Appeals Board

Feb 9, 2021

2020001490 (P.T.A.B. Feb. 9, 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.
14/391,089 10/07/2014 Ronald Tennebroek BHD-4662-2920 5018
23117 7590 02/09/2021
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
02/09/2021 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 RONALD TENNEBROEK,
ROEL JOHANNES MARINUS SWAANS, and PAUL DE KOK
Appeal 2020-001490
Application 14/391,089
Technology Center 1700
Before LINDA M. GAUDETTE, MICHAEL P. COLAIANNI, and
SHELDON M. MCGEE, Administrative Patent Judges.
GAUDETTE, Administrative Patent Judge.

DECISION ON APPEAL1
The Appellant2 appeals under 35 U.S.C. § 134(a), from the
Examiner’s decision finally rejecting claims 1–9 and 12–14.3
We AFFIRM.

1 Documents of record in this appeal include the following: Specification
filed Oct. 7, 2014 (“Spec.”); Final Office Action dated Feb. 7, 2019 (“Final
Act.”); Appeal Brief filed July 8, 2019 (“Appeal Br.”); Examiner’s Answer
dated Oct. 17, 2019 (“Ans.”); and Reply Brief filed Dec. 17, 2019 (“Reply
Br.”).
2 The term “Appellant” refers to “applicant” as defined in 37 C.F.R.
§ 1.42. The Appellant identifies the real party in interest as the owner of the
subject application, namely DSM IP Assets B.V. Appeal Br. 2.
3 We have jurisdiction under 35 U.S.C. § 6(b).

Appeal 2020-001490
Application 14/391,089

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CLAIMED SUBJECT MATTER
The invention relates to Schiff base crosslinkable aqueous
polyurethane dispersions and methods of making them. Such dispersions are
used, for example, as decorative and protective coatings. Spec. 1:5–7.
According to the Specification, “[t]o prepare stable aqueous urethane-acrylic
dispersions, both the acrylic part and the polyurethane (PU) part must be
dispersed in water. This can be achieved in part by surfactants and in part by
incorporating suitable groups . . . in the polyurethane polymer.” Id. at 1:8–
11. Such groups include carboxylic, sulfonic, sulfate or phosphate groups
that are typically incorporated into the PU by reacting compounds
containing reactive hydrogen and at least one suitable acid group
with polyisocyanate to form the polyurethane component of the
urethane-acrylic dispersion. Id. at 1:12–16. Because large amounts of acidic
materials in the resultant dispersion are undesirable, “a substantial part (if
not all) of the acid present must be neutralised in the final product.” Id. at
1:16–18.
According to the Specification, at the time of the invention, volatile
amines were commonly used neutralising agents. Spec. 1:29–31. A
drawback of volatile amines is that they readily evaporate volatile organic
compounds during film formation, causing unacceptable environmental
pollution or poor indoor air quality. Id. at 1:33–2:1. According to the
Specification, the inventor has discovered that these and other disadvantages
of the prior art methods and compositions can be reduced or avoided by
adding an alkali metal neutralising agent at an early stage in the process. See
id. at 3:26–28.
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The full text of the appealed claims is provided on pages 39–45 of the
Appeal Brief. Independent claims 1, 7, and 9 are summarized below.
Independent claim 1 recites “[a] process for preparing a Schiff base
crosslinkable aqueous dispersion of a polyurethane A.” Appeal Br. 39. The
dispersion optionally comprises a vinyl polymer B. Id. at 40. Claim
1 specifies that at least one of the polyurethane A and the vinyl polymer B
“comprises a carbonyl group which is Schiff base crosslinkable under
ambient conditions.” Id. Claim 1 recites steps of (a) reacting a component
mixture that is free of volatile amines and N-alkyl pyrrolidinones to form an
acidic isocyanate terminated prepolymer that comprises anionic or
potentially anionic functional groups, (b) neutralizing the isocyanate
terminated prepolymer by adding an aqueous solution of alkali metal
hydroxide neutralizing agent, (c) reacting the neutralized prepolymer in an
aqueous medium with an active hydrogen compound to extend the chain of
the prepolymer to form an aqueous dispersion of polyurethane A, and (d)
adding a polyhydrazide compound to the aqueous dispersion of polyurethane
A to form the Schiff base crosslinkable aqueous dispersion.
Independent claim 7 recites “[a] process for preparing an aqueous
coating composition comprising a polyhydrazide compound.” Appeal Br. 42.
The process comprises mixing a Schiff base crosslinkable aqueous
dispersion of (i) a polyurethane A, and (ii) a vinyl polymer B. Id. Similar to
claim 1, claim 7 specifies that at least one of the polyurethane A and the
vinyl polymer B “comprises a carbonyl group which is Schiff base
crosslinkable under ambient conditions.” Id. at 44. Claim 7 recites that the
Schiff base crosslinkable aqueous dispersion is obtained by steps similar to
claim 1’s steps (a)–(c). Id. at 42–43.
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Independent claim 9 recites “[a]n aqueous coating composition.”
Appeal Br. 44. “[T]he composition is free of volatile amines and N-alkyl
pyrrolidinones,” and comprises (i) a polyurethane A, (ii) a vinyl polymer B,
and (iii) a polyhydrazide compound. Id. at 44–45. Claim 9 specifies that at
least one of polyurethane A and vinyl polymer B “contains carbonyl groups
which are Schiff base crosslinkable under ambient conditions.” Id. at 45.
Claim 9 also recites product-by-process limitations, namely that
polyurethane A is obtained by the reaction of (a) an isocyanate terminated
prepolymer formed from at least four components including “an aqueous
solution of alkali metal hydroxide neutralizing agent,” and (b) an active
chain extending compound. Id. at 44–45.

REFERENCES
The Examiner relies on the following prior art:
Name Reference Date
Klein US 5,571,861 Nov. 5, 1996
Satgurunathan US 2007/0141264 A1 June 21, 2007

REJECTIONS
1. Claim 4 is rejected under 35 U.S.C. § 112(b) or 35 U.S.C.
§ 112, second paragraph, as indefinite. Final Act. 2.
2. Claims 1–9 and 12–14 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Satgurunathan and Klein. Final Act. 3.
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OPINION
The Examiner rejected claim 4 as indefinite. A claim is indefinite
under 35 U.S.C. § 112 when it contains words or phrases whose meaning is
unclear. In re Packard, 751 F.3d 1307, 1309 (Fed. Cir. 2014).
Claim 4 depends from claim 1 and recites, in relevant part, “the Schiff
base cross-linkable aqueous dispersion comprises . . . 10 to 95% by weight
of the polyurethane A obtained by the step (c) which comprises reacting . . .
[at least three components] to form an acidic isocyanate terminated
prepolymer.” Appeal Br. 41 (emphasis added). The Examiner contends that,
“the reference within claim 4 to the step (c) which comprises reacting (1)–
(4) to form an acidic isocyanate terminated prepolymer fails to properly
represent the limitations of claim 1, since the reaction to form the
prepolymer within claim 1 occurs within step (a), as opposed to step (c).”
Ans. 5.
We disagree with the Examiner’s determination that claim 4 fails to
meet the definiteness requirement of 35 U.S.C. § 112. Claim 1 step (a)
recites forming an acidic isocyanate terminated prepolymer by reacting a
mixture of components (1)–(4), components (2) and (4) being optional.
Appeal Br. 39–40. Claim 1 step (b) recites adding an aqueous solution of
alkali metal hydroxide neutralizing agent to the step (a) reaction mixture to
neutralize the isocyanate terminated prepolymer. Id. at 40. Claim 1 step (c)
recites “reacting the neutralised prepolymer from step (b) in an aqueous
medium with an active hydrogen compound to extend the chain of the
prepolymer to form an aqueous dispersion of polyurethane A.” Id. (emphasis
added). In the final step recited in claim 1, step (d), a polyhydrazide
compound is added to the aqueous dispersion of polyurethane A to form the
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Schiff base crosslinkable aqueous dispersion. Id. Claim 4 recites that the
Schiff base crosslinkable aqueous dispersion comprises an additional
component, vinyl polymer B, and specifies the amounts of polyurethane A
and vinyl polymer B that are present in the Schiff base crosslinkable
aqueous dispersion. Id. at 41. Because polyurethane A is not formed until
claim 1, step (c), claim 4 properly recites “the polyurethane A obtained by
the step (c).” See id. at 41.
Accordingly, we do not sustain the rejection of claim 4 as indefinite.
The Examiner rejected claims 1–9 and 12–14 as obvious in view of
Satgurunathan and Klein. The Appellant argues the patentability of claims
1–9 and 12–14 as a group. See Appeal Br. 10–38. The Appellant’s sole
argument is that the record evidence does not support the Examiner’s finding
that the ordinary artisan would have had a reasonable expectation of success
in using an alkali metal hydroxide to neutralize Satgurunathan’s Schiff base
crosslinkable dispersion. Id. at 38; see generally id. at 10–38. The
Appellant’s argument is unpersuasive for the reasons explained by the
Examiner, which we expand upon below. See, e.g., Final Act. 3–5; Ans. 6–7.
The Examiner found that Satgurunathan discloses urethane vinyl
aqueous coating compositions comprising a polyurethane obtained by the
reaction of an ionic group containing prepolymer, and the use of alkaline
hydroxide as a neutralizing agent for the ionic groups. Final Act. 3 (citing
Satgurunathan ¶ 54). The Examiner further found that “the polyurethane
may utilize Schiff base crosslinking.” Id. (citing Satgurunathan ¶ 49). The
Examiner found that although Satgurunathan does not explicitly disclose
using the combination of Schiff base crosslinking and alkaline hydroxide
neutralization, Klein evidences that “the crosslinking reaction of hydrazides
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with carbonyl containing polyurethanes within aqueous compositions,
wherein the polyurethane, containing ionic groups, has been neutralized with
alkali metal hydroxides was known at the time of invention.” Id. (citing
Klein, Abstract, col. 3, ll. 40+, col. 10, ll. 30–36).
The Appellant argues that “[t]he naked disclosure in column 10, lines
30–36 of Klein et al of alkali metal hydroxides as suitable neutralizing agent
. . . is . . . merely a non-enabling boiler plate disclosure that would not be
recognized by an ordinarily—let alone highly—skilled person in this art as
leading reasonably to successful Schiff base reactions.” Appeal Br. 37. The
Appellant cites the Rule 132 Declarations of Ronald Tennebroek, executed
on April 18, 2017 (Decl. I) and October 2, 2018 (Decl. II), in support of this
argument. Mr. Tennebroek testified that
[a]lthough Klein mentions in the text (column 10; lines 34–42)
that neutralization is preferably carried out using aqueous
solutions of alkali metal hydroxides, or with amines, or with
ammonia. However neutralization using aqueous solutions of
alkali metal hydroxides has actually not been done because
none of the examples contain alkali metal hydroxides as a
neutralizing agent.
Decl. I ¶ 8.
This testimony is not persuasive. “A reference must be considered for
everything that it teaches, not simply the described invention or a preferred
embodiment.” In re Applied Materials, Inc., 692 F.3d 1289, 1298 (Fed. Cir.
2012). Under an obviousness analysis, a reference need not work to qualify
as prior art; “it qualifies as prior art, regardless, for whatever is disclosed
therein.” Amgen Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1357
(Fed. Cir. 2003). Moreover, all disclosures in an issued patent, whether
claimed or unclaimed, receive a presumption of enablement during
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prosecution of a later patent. In re Antor Media Corp., 689 F.3d 1282, 1288
(Fed. Cir. 2012).
The Appellant notes that Mr. Tennebroek’s second declaration
references several publications that “emphasize that Schiff base crosslinking
must occur under acidic conditions.” Appeal Br. 36. We have considered the
publications quoted by Mr. Tennebroek, i.e., the Wiley Handbook4, Journal
of Applied Polymer Science5, and Journal of Coatings Technology
Research6, as well as the numerous patent excerpts reproduced in the Appeal
Brief. See Decl. II ¶ 9; Appeal Br. 11–36. At most, the cited literature and
patents express a preference for acidic conditions for Schiff base
crosslinking of polyurethanes. But the Appellant has not identified any
disclosure that would have discouraged the ordinary artisan from combining
Schiff base crosslinking and alkaline hydroxide neutralization as expressly
taught by Klein and suggested by Satgurunathan. See Ans. 7.
“A strong case of prima facie obviousness, such as that presented
here, cannot be overcome by a far weaker showing of objective indicia of
nonobviousness.” Tokai Corp. v. Easton Enters., Inc., 632 F.3d 1358, 1371
(Fed. Cir. 2011).
In the Reply Brief, the Appellant quotes language from page 4 of the
Examiner’s Answer, alleging that it contains factual inaccuracies. See Reply

4 JACOB ZABICKY, THE CHEMISTRY OF AMIDES, 510–600 (John Wiley & Sons
Ltd., 1970).
5 Tian‐Ying Guo et al., Effects of Carboxyl Group on the Ambient Self-
Crosslinkable Polyacrylate Latices, 104 J. OF APPLIED POLYMER SCI, 3948–
3953 (2007).
6 N. Kessel et al., The diacetone acrylamide crosslinking reaction and its
influence on the film formation of an acrylic latex, J. COATINGS TECH. RES.,
285–297 (2008).
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Br. 1–2. We decline to consider these arguments because the quoted
language is substantially identical to the language on pages 3–4 of the Final
Office Action. See 37 C.F.R. § 41.41(b)(2)(2018) (“Any argument raised in
the reply brief which was not raised in the appeal brief, or is not responsive
to an argument raised in the examiner’s answer, including any designated
new ground of rejection, will not be considered by the Board for purposes of
the present appeal, unless good cause is shown.”); see also Cross Med.
Prods. Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1320–21 n.3
(Fed. Cir. 2005) (noting that arguments not raised in the opening Brief are
deemed waived).
Accordingly, we sustain the Examiner’s obviousness rejection of
claims 1–9 and 12–14 over Satgurunathan and Klein.
DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
4 112 Indefiniteness 4
1–9, 12–14 103(a) Satgurunathan,
Klein
1–9, 12–
14

Overall
Outcome:

1–9, 12–
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).
AFFIRMED