Ex Parte Adkins

Patent Trial and Appeal Board

Jun 23, 2017

13783459 (P.T.A.B. Jun. 23, 2017)

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.
13/783,459 03/04/2013 Rick L. Adkins BMS132006/MD06- 93 4406
157 7590
Covestro LLC
1 Covestro Circle
PITTSBURGH, PA 15205
06/27/2017 EXAMINER
DOLLINGER, MICHAEL M
ART UNIT PAPER NUMBER
1766
NOTIFICATION DATE DELIVERY MODE
06/27/2017 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):
veronica.thompson@covestro.com
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 RICK L. ADKINS
(Applicant: Bayer MaterialScience LLC)
Appeal 2016-005699
Application 13/783,459
Technology Center 1700
Before BRADLEY R. GARRIS, MICHAEL P. COLAIANNI, and
AVELYN M. ROSS, Administrative Patent Judges.
COLAIANNI, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) the final rejection of
claims 1—19. We have jurisdiction over the appeal pursuant to 35 U.S.C.
§ 6(b).
We AFFIRM-IN-PART, denominate our affirmance a NEW
GROUND OF REJECTION, and ENTER A NEW GROUND OF
REJECTION PURSUANT TO 37 C.F.R. § 41.50(b).
Appellant’s invention is directed to ethylenically unsaturated
macromers prepared from high functionality isocyanates which contain
reactive unsaturation, preformed stabilizers prepared from these monomers,
polymer polyols prepared from the macromers and the preformed stabilizers,
and processes for preparing these compositions (Spec. 1:7—11).
Claim 1 is illustrative:
Appeal 2016-005699
Application 13/783,459
1. A high functionality macromer which comprises the reaction
product of:
(a) a polyisocyanate having an NCO group content of about from about
10% to about 33%, and having a functionality greater than 2, wherein
said polyisocyanate is free of catalytically formed allophanate groups,
(b) at least one alcohol with reactive unsaturation, and
(c) a hydroxyl group-containing polyether having an OH number of from
9 to 60 and a functionality of from 1 to 6, optionally, in the presence of
(d) one or more urethane catalysts.
Appellant appeals the following rejections:
1. Claims 1—6 and 8—18 are rejected under 35 U.S.C. § 102(b) as
anticipated by O’Connor (Final Act. 2).
2. Claims 1—10 and 19 are rejected under 35 U.S.C. § 102(b) as
anticipated by Bishop {Id. at 3).
3. Claims 7 and 19 are rejected under 35 U.S.C. § 103(a) as unpatentable
over O’Connor {Id. at 4; Ans. 3).
Appellant indicates that claims 1—19 stand or fall together (App. Br. 1).
We select claims 1 and 7 as representative of Appellant’s arguments on
which to decide the appeal. 37 C.F.R. § 41.39(c)(iv).
FINDINGS OF FACT & ANALYSIS
REJECTIONS (1) AND (2): § 102(b)
The Examiner’s findings regarding O’Connor and Bishop are located
on pages 2 to 3 of the Answer. The Examiner finds that O’Connor teaches
forming a polyurethane oligomer (macromer) by reacting a polyisocyanate,
hydroxyethyl acrylate and a poly ether diol citing to O’Connor’s example 1
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Application 13/783,459
(Ans. 2). The Examiner finds that O’Connor teaches in column 3, lines 6—7
that polyphenylene polymethylene isocyanate, which have a functionality of
at least 3, may be used as the polyisocyanate (Ans. 2).
The Examiner finds that Bishop teaches reacting a polyisocyanate
with a methacrylate containing a hydroxyl group (Ans. 3). The Examiner
finds that Bishop teaches in column 6, lines 17—20 that polyphenylene
polymethylene isocyanate, which has a functionality greater than 3, may be
used as the polyisocyanate (Ans. 3).
Appellant argues that O’Connor and Bishop fail to disclose the
claimed invention with sufficient specificity to constitute an anticipatory
reference (App. Br. 4; 8). Appellant contends that the examples in
O’Connor and Bishop use difimctional polyisocyanates such that Bishop and
O’Connor fail to disclose the same invention within the meaning of
35U.S.C. § 102. Id.
The Examiner concedes that to arrive at the claimed invention
picking-and-choosing of a polyphenylene polymethylene isocyanate is
required from O’Connor’s and Bishop’s general disclosure (Ans. 4—5; 7).
The Examiner finds, however, that picking only one element (i.e., the
polyisocyanate) from a list in the general disclosure is sufficiently specific to
anticipate a claim. Id.
To anticipate a claim within the meaning of 35 U.S.C. § 102, the prior
art “must clearly and unequivocally disclose the claimed compound or direct
those skilled in the art to the compound without any need for picking,
choosing, and combining various disclosures not directly related to each
other by the teachings of the cited reference.” In re Arkley, 455 F.2d 586,
587 (CCPA 1972).
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Application 13/783,459
The Examiner’s anticipation rejection over O’Connor and Bishop
requires picking polyphenylene polymethylene isocyanate from the list of
isocyanates and then using that polyisocyanate as the isocyanate in
O’Connor’s and Bishop’s examples (Ans. 2—3). The Examiner also culls
other disclosures from the examples and the claims in either O’Connor or
Bishop to arrive at the claimed subject matter. The Examiner’s admitted
picking-and-choosing is improper for a 35 U.S.C. § 102(b) rejection.
Accordingly, we reverse the Examiner’s § 102(b) rejections over O’Connor
and Bishop.
NEW GROUNDS OF REJECTION
The court in Arkley noted that picking-and-choosing is completely
appropriate for an obviousness rejection under 35 U.S.C. § 103(a). Arkley,
455 F.2d at 587. Therefore, we enter two new grounds of rejection: (1)
claims 1—6 and 8—18 under 35 U.S.C. § 103(a) as unpatentable over
O’Connor, and (2) claims 1—10 and 19 under 35 U.S.C. § 103(a) as
unpatentable over Bishop.
Appellant argues that Bishop and O’Connor disclose that the
polyisocyanate may be difimctional (App. Br. 4, 9). Appellant’s argument
fails to show error in the Examiner’s stated rejection that is based on
selecting Bishop’s or O’Connor’s polyisocyanates having a functionality
greater than 3 as the polyisocyanate to use in the reaction (Ans. 2—3).
Appellant argues that Bishop’s methods all result in acrylate
terminated polyurethane methacrylates which is contrary to the hydroxyl
terminated macromers of the claims (App. Br. 7—8). The Examiner correctly
finds that the claims do not require that the macromers be hydroxyl
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Appeal 2016-005699
Application 13/783,459
terminated (Ans. 6). The Examiner finds that the breadth of the claims
include acrylate terminated macromers (Id.). Appellant does not direct us to
which portion of the claim requires that the macromer have hydroxyl
terminations. Appellant contends that one of ordinary skill in the art would
know that macromers are hydroxyl terminated compounds (Reply Br. 4).
Appellant has not provided any timely submitted evidence1 that substantiates
that macromers have such a limited meaning to one of skill in the art (Id.).
Our review of the claim leads us to agree with the Examiner’s analysis on
page 6 of the Answer that the macromer produced may have acrylate
terminations. The Examiner’s understanding seems to comport with
Appellant’s description of a macromer on page 1, lines 23—24 of the
Specification that states that the macromer contains reactive unsaturation
(e.g., acrylate, methacrylate, etc.).
Appellant alleges that O’Connor does not inevitably form the high
functional macromers required by the claims because the viscosity of the
resulting macromer in O’Connor is much higher than the viscosity of the
macromers in the claims (App. Br. 4—5). Appellant’s evidence is not
persuasive because it compares the viscosities of O’Connor’s examples that
use a difunctional polyisocyanate with the viscosities in the Specification
that use higher functionality polyisocyanates. In other words, Appellant
does not compare the claimed invention with the closest prior art, which
would include using O’Connor’s three and higher functionality
polyisocyanates.
1 Appellant cites to US Patent 5,196,476 and US Patent 6,013,731 to support
their argument (Reply Br. 4). This evidence is submitted for the first time in
this appeal in the Reply Brief in violation of 37 C.F.R. 41.41(b)(1). We will
not consider the untimely evidence.
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Application 13/783,459
REJECTION (3): Claims 7 and 19 under 35 U.S.C. § 103 over O’Connor
With regard to claim 7, Appellant argues that O’Connor discloses that
the components are suitable for preparing the isocyanate-terminated
prepolymers but the ordinarily skilled artisan would know that the reaction
of an isocyanate and alcohol containing a reactive unsaturation would not
yield an isocyanate-terminated prepolymer (App. Br. 11). In other words,
Appellant argues that O’Connor would not have suggested the order of steps
required by claim 7.
The Examiner finds that although O’Connor teaches forming an
isocyanate prepolymer, that prepolymer is subsequently reacted with a
hydroxyl function acrylate to prepare a macromer of the present claims
(Ans. 7—8). Appellant argues that O’Connor forms a polyurethane oligomer
not a macromer, which Appellant alleges are different products. Appellant
has not explained what the difference is between macromer and
polyurethane oligomer. Appellant has not shown reversible error in the
Examiner’s obviousness rejection of claim 7.
With regard to claim 19, Appellant argues that O’Connor does not
suggest reacting the components simultaneously or that a hydroxyl
terminated macromer would have resulted (App. Br. 11). Contrary to
Appellant’s argument, the Examiner finds that the claim does not require a
hydroxyl terminated macromer. The Examiner finds that the order of adding
the reactants is not critical (Ans. 8). Appellant does not direct us to any
evidence that establishes criticality other than the evidence that the disclosed
invention produces a macromer with a lower viscosity than O’Connor. This
evidence is not persuasive because, as noted above, it fails to compare the
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Application 13/783,459
claimed invention to the closest prior art (i.e., O’Connor using a
polyisocyanate with a 3 or higher functionality).
On this record, we affirm the Examiner’s § 103 rejection of claims 7
and 19 over O’Connor and denominate our affirmance a new ground of
rejection because our reasoning in rejecting the independent claims 1 and 6
from which claims 7 and 19, respectively depend is now based on
obviousness.
DECISION
The Examiner’s decision is AFFIRMED-IN-PART with a new ground
of rejection pursuant to 37 C.F.R. § 41.50(b). Also, we denominate our
affirmance of the 35 U.S.C. § 103 rejection as a new ground of rejection.
This Decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.”
37 C.F.R. § 41.50(b) also provides that Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new evidence relating to the claims so rejected, or both,
and have the matter reconsidered by the examiner, in which event the
proceeding will be remanded to the examiner. . . .
(2) Request rehearing. Request that the proceeding be reheard under
§ 41.52 by the Board upon the same record. . . .
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
ORDER
AFFIRMED-IN-PART
37 C.F.R. $ 41.50(b)
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