Ex Parte Ambrose et al

Patent Trial and Appeal Board

Feb 20, 2015

12938438 (P.T.A.B. Feb. 20, 2015)

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.
12/938,438 11/03/2010 Ronald R. Ambrose 075380D1 3443
24959 7590 02/20/2015
PPG Industries, Inc.
IP Law Group
One PPG Place
39th Floor
Pittsburgh, PA 15272
EXAMINER
LEONARD, MICHAEL L
ART UNIT PAPER NUMBER
1763
MAIL DATE DELIVERY MODE
02/20/2015 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte PPG INDUSTRIES OHIO, INC.
____________________

Appeal 2013-004685
Application 12/938,438
Technology Center 1700
____________________

Before FRED E. McKELVEY, BEVERLY A. FRANKLIN and
KAREN M. HASTINGS, Administrative Patent Judges.

McKELVEY, Administrative Patent Judge.

DECISION ON APPEAL

Statement of the Case
PPG Industries Ohio, Inc. (“PPG”), the real party in interest (Brief (“Br.”), 1
page 1), seeks review under 35 U.S.C. § 134(a) of a final rejection dated 2
10 October 2012. 3
We have jurisdiction under 35 U.S.C. § 134(a). 4
The application on appeal was filed in the USPTO on 3 November 2010. 5
The application is a divisional of application 12/056,306, filed 27 March 6
2008 (now abandoned). 7
The application has been published as U.S. Patent Application Publication 8
2011/0070374 A1 (24 March 2011). 9

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The Examiner relies on the following evidence. 1

Wickert

U.S. Patent 5,066,705

10 Nov. 1991

Tye

U.S. Patent 6,063,890

16 May 2000

Dai et al. “Dai”

U.S. Patent Application Publication
2005/0049358 A11

3 March. 2005

Hesselmans et al.
“Hesselmans”

U.S. Patent Application Publication
2006/0106189 A12

18 May 2006

Appellant does not contest the prior art status of the Examiner’s evidence. 2
We have considered the following document cited in the Specification 3
(page 9, ¶ 30) to aid in our understanding of the technology involved: 4

Wagner et al.

α,ω-diisocyanatocarbodiimdes,
-Polycarbodiimides, and Their
Derivatives, 20 ANGEW. CHEM. INT. ED.
ENGL 819–830

1981

1 A continuation of the published application matured into U.S. Patent 7,772,307
(20 August 2010).

2 Now U.S. Patent 7,439,316 (21 October 2008).

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Related Appeals 1
Ex parte Ambrose, Appeal No. 2011-009842 (PTAB Oct. 31, 2012) (Judges 2
Kratz, Gaudette, and Best) held that polycarbodiimides having the structure set out 3
in claim 1 here on appeal are unpatentable under 35 U.S.C. § 103(a) over the prior 4
art. 5
Ex parte Ambrose, Appeal No. 2015-002686 (PTAB Feb. 20, 2015) (Judges 6
McKelvey, Franklin, and Hastings) holds that a compressible substrate coated with 7
a thermosetting water-based composition comprising a polycarbodiimide set out in 8
claim 1 is unpatentable under 35 U.S.C. § 103(a) over the prior art. 9
Claims on Appeal 10
Claims 1 and 3–8 are on appeal. Br., page 1. 11
Claim 1, which we reproduce from the Claim Appendix of the Appeal Brief 12
(page 7 (some paragraphing added)), reads: 13
Claim 1 14
A thermosetting water-based composition comprising a 15
polycarbodiimide modified for hydrophilicity and a carboxyl-16
group containing resin wherein the polycarbodiimide has a 17
structure selected from (a) or (b) including mixtures thereof: 18

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Application 12/938,438

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where e is an integer of from 2 to 20; 1
f and g are each at least 1 and f+g is an integer up to 20; 2
E is a radical selected from 3

where 4
R2 and R3 are hydrocarbon radicals; 5
R4 is hydrogen or a hydrocarbon radical; 6
Y is a radical of the structure: 7

where 8
R is C1 to C4 alkyl; 9
a is 5 to 50 and 10
b is 0 to 35, 11
and when b is present the mole ratio of a to b is at least 1:1; 12
R1 is hydrogen or a hydrocarbon radical and 13
D is a divalent linking group or a chemical bond and 14

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Y is derived from a polyether amine having a molecular 1
weight greater than 500[3] and having a mole ratio of ethylene 2
oxide to propylene oxide of greater than 1:1. 3
The Rejections 4
In the Answer, the Examiner maintained the following rejections: 5
Rejection (1): Claims 1, 3–5, and 8 stand rejected under 6
35 U.S.C. § 103(a) over Hesselmans, Dai, and Tye. Answer, page 3. 7
Rejection (2): Claims 6 and 7 stand rejected under 35 U.S.C. 8
§ 103(a) over Hesselmans, Dai, Tye, and Wickert. Answer, page 6. 9
With respect to Rejection (1), in the Appeal Brief Appellant does not argue 10
the separate patentability of claims 3–5 and 8 and 9 apart from claim 1 and 11
presents no separate argument for Rejection (2). Accordingly, we decide the 12
appeal on the basis of claim 1. 37 C.F.R. § 41.37(c)(1)(iv) (2012). 13
Analysis 14
At first blush, the structure of the claimed polycarbodiimide seems 15
complicated. 16
However, in view of Appellant’s arguments on appeal, the polycarbodiimide 17
can be simplified as follows. If one assumes that formula (a) or formula (b) can be 18
represented as ─XXX─ and Y is represented as ─Y, the formula of the 19
polycarbodiimide in short hand is: 20
Y─XXX─Y. 21

3 We understand molecular weight to mean number average molecular weight.
Specification, page 10, ¶ 33, line 4. See Teva Pharmaceuticals USA, Inc. v.
Sandoz, Inc., 135 S.Ct. 831 (2015).

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Y is a “chain terminating agent” or “chain terminator.” 1
Appellant acknowledges that the ─XXX─ polycarbodiimides of claim 1 are 2
similar to those of Hesselmans. Br., page 4:10–11. 3
Hesselmans describes chain terminators. 4
However, the difference between the subject matter of claim 1 and 5
Hesselmans is in the chain terminating group, i.e., the ─Y group in the short land 6
formula. Br., page 4:11–12; Answer, page 4:1–2. 7
The claimed chain terminating group is “characterized as a 8
poly(oxyethylene) poly(oxypropylene) amine having [(1)] a molecular weight 9
greater than 500 and [(2)] an ethylene oxide to propylene oxide ratio greater than 10
1:1.” Br., page 4:12–14. 11
The claimed chain terminators are described by Dai. Br., page 4:14–15. 12
The Examiner held that it would have been obvious to replace the chain 13
terminator of Hesselmans with the chain terminator of Dai. 14
The Examiner found that Hesselmans describes chain terminators as a means 15
to increase hydrophilicity (attraction to water) of the polycarbodiimide. Answer, 16
page 3; Hesselmans, ¶¶ 11, 15, and claim 1. 17
Chain terminators include polyethoxy/polypropoxy monoamines. 18
Hesselmans, ¶ 11:4–5. 19
The Examiner also found that claim 1 differs from Hesselmans in that 20
Hesselmans does not describe the claimed molecular weights, i.e., “a polyether 21
amine having a molecular weight greater than 500 . . . .” Answer, page 4:1–2. 22
To address the difference, the Examiner turned to Dai. Answer, 23
page 4:3-10. 24

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Dai describes chain terminators having the ─Y structure of claim 1 for 1
carbodiimide derivatives of the polyisocyanates. Dai, ¶ 17:4. 2
The chain terminators are polyether amines having ethylene oxide (EO) and 3
propylene oxide (PO) units. Dai, ¶ 20. 4
Dai teaches that the polyether amines have a weight ratio of EO to PO in the 5
range of greater than 50:50, and “more preferably between about 70:30 to about 6
90:10.” Dai, ¶ 21:1–5. 7
Dai explains: 8
If the hydrophilic ability of the residual hydrophilic groups 9
contained in the formed aqueous resin adhesive is too strong, 10
the aqueous resin adhesive will have tendency to adsorb too 11
much water in its hydrophilic groups so as to easily result in the 12
hydrolysis of the neighboring urea, urethane, biuret, and 13
allophanate and decrease its adhesive performance. Therefore, 14
in the present invention, introducing a hydrophobic group, i.e., 15
PO, in a proportion corresponding to a hydrophilic 16
groups/hydrophobic groups ratio of greater than about 50:50, 17
preferably between about 60:40 and about 95:5, and more 18
preferably between about 70:30 and about 90:10, to the 19
polyether amine for preparing a water dispersible 20
polyisocyanate composition can provide a suitable prevention 21
of the excessive consumption of the isocyanate groups during 22
mixing of the polyisocyanates with the aqueous resin, and also 23
enhance the initial adhesion by the linkage of the hydrophobic 24
group with amine, hydroxyl, and/or carboxyl groups of the 25
aqueous resin. 26

The polyether amine used in the present invention 27
can be selected from, but are not limited to, polyether 28
monoamine, polyether diamine, polyether triamine, and a 29
mixture thereof, preferably polyether monoamine and polyether 30

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diamine. The molecular weights of the polyether monoamine 1
and polyether diamine are about 500 to about 3000 g/mole, 2
preferably about 600 to about 2500 g/mole, more preferably 3
about 800 to about 1200 g/mole. 4

The examples of the polyether monoamine that can be 5
used in the present invention include, but are not limited to, 6
JEFFAMINE® M-1000 and JEFFAMINE® M-2070. The 7
examples of the polyether diamine that can be used in the 8
present invention include, but are not limited to, JEFFAMINE® 9
ED-600, JEFFAMINE® ED-900, JEFFAMINE® ED-2001, 10
and JEFFAMINE® ED-2003. The above JEFFAMINE® series 11
are the products of Huntsman. 12

Dai, ¶ 21:5 to ¶ 23. 13
Based on the utility of both the products of Hesselmans (¶ 12) and Dai (¶ 1) 14
(cross-linking agents for resins), the Examiner held that it would have been 15
obvious to use the Dai chain terminators in combination with Hesselmans’ 16
polycarbodiimide. Answer, page 4, last paragraph. 17
Appellant recognizes that the Examiner found that one skilled in the art 18
would have used the Dai chain terminators in combination with the Hesselmans 19
polycarbodiimide for two reasons: 20
(1) the “reaction rate of polyether amines with [the] 21
polyisocyantes . . . [is] faster than that of polyether alcohols, which is 22
advantageous . . . [when preparing] water-dispersible polyisocyanate 23
compositions” and 24

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(2) the Dai “polyisocyanate compositions provide increased 1
mechanical properties, such as adhesive ability, including the initial 2
and aging adhesion, and heat resistance.” 3
Br., page 4:21–25; Answer page 4, last paragraph. 4
We agree with the Examiner that the prior art (Dai) provides a reason 5
why one skilled in the art would have found it obvious to use Dai’s ─Y in 6
combination with Hesselmans’ ─XXX─. 7
Appellant’s response to the Examiner’s holding is that “these advantages are 8
not advantages associated with the problems . . . [the inventors] were dealing with 9
in the development of their invention.” Br., page 4:25–27. 10
The answer to Appellant’s response is found in In re Kemps, 97 F.3d 1427, 11
1430 (Fed. Cir. 1996) (“Although the motivation to combine here differs from that 12
of the applicant, the motivation in the prior art to combine the references does not 13
have to be identical to that of the applicant to establish obviousness.”). See also 14
KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 419 (2007) (“What matters is the 15
objective reach of the claim. If the claim extends to what is obvious, it is invalid 16
under § 103.”). 17
Appellant calls our attention to Examples 7–12 of the Specification, 18
although only Examples 7, 8, 9, 11, and 12 are discussed in the Brief. We confine 19
our analysis to the discussed examples.4 20

4 The Examiner indicates that Appellant points to comparative Example 4.
Answer, page 9:3. We find no discussion in the Brief with respect to Example 4.
Since Appellant does not rely on appeal on Example 4, we have no occasion to
consider Example 4.

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Whether an applicant has established unexpected results is a question of fact. 1
In re Harris, 409 F.3d 1339, 1341 (Fed. Cir. 2005); In re Inland Steel Co., 265 2
F.3d 1354, 1405 (Fed. Cir. 2001). Furthermore, it is not enough to show results are 3
obtained which differ from those obtained in the prior art—any difference must be 4
shown to be an unexpected difference. In re Klosak, 455 F.2d 1077, 1080 (CCPA 5
1972). 6
Examples 7, 9, and 11 describe compositions outside the scope of claim 1, 7
whereas Examples 8 and 12 are said to describe compositions within the scope of 8
claim 1. 9
Relevant to Appellant’s argument on appeal are the polyethoxy/polypropoxy 10
amines. The details concerning these amines are set out below [bold numbers 11
within scope of claim 1; non-bold outside scope of claim 1]: 12
Amine EO/PO Ratio Molecular Weight Dispersion
Stable?
Example 7
Jeffamine M600
0.11:1 600 No
Example 8
Jeffamine M2070
3.1:1 2000 Yes
Example 9
Jeffamine 2005
0.2:1 2000 No
Example 11
CD551-PA
350 No
Example 12
CD553-PA
550 Yes

Specification, page 32 (Table 6). 13
The Examiner found that Appellant had not established unexpected results. 14
The Examiner’s finding is supported by the evidence. 15

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The Examiner found, and Appellant does not contest the finding, that: 1
It is well known in the art [that] EO-units are more hydrophilic 2
[attracted to water] in nature in comparison to PO-units and one 3
of ordinary skill would expect that a chain terminator 4
containing more EO-units (higher molecular weight) would 5
result in a more hydrophilic polycarbodiimide and a stable 6
dispersion in aqueous media. 7

Answer, page 10, first full paragraph. 8
In support of the finding, the Examiner observed: 9
Dai teaches . . . controlling the ratio of EO:PO to be between 10
70:30 and 90:10. If the hydrophilic stability (EO:PO ratio 11
greater than 90:10) of the residual hydrophilic groups contained 12
in the formed aqueous resin adhesive is to[o] strong, the 13
aqueous resin adhesive will have a tendency to absorb too much 14
water in its hydrophilic groups so as to easily result in 15
hydrolysis of the neighboring urea or urethane groups and 16
decrease its adhesive performance. Therefore, by introducing a 17
hydrophobic [not attracted to water] group, PO, in the 18
proportion disclosed above, the water dispersible 19
polyisocyanate composition can provide a suitable prevention 20
of excessive consumption of the isocyanate groups during 21
mixing of the modified polyisocyanates with the aqueous resin, 22
and also enhance the initial adhesion by linkage of the 23
hydrophobic groups with the carboxyl groups of the aqueous 24
resin. 25

Answer, paragraph bridging pages 10–11; Dai, ¶ 21. 26
One skilled in the art would have recognized that the compositions of 27
Examples 7 and 9 would not have a suitable hydrophilic portion given the ratio of 28
the EO to the PO. With respect to Examples 11 and 12, Appellant does not address 29
the fact that Dai teaches use of polyether mono amines having molecular weights 30

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of 500 or higher, which would mean the polyether has more EO units and therefore 1
likely to lead to a more stable aqueous dispersion. Dai, ¶ 22. 2
In addition to finding the results expected, the Examiner found that 3
Appellant had not compared the closest prior art. Final Rejection, page 9, third full 4
paragraph. We find no response to the Examiner’s finding in the Appeal Brief. 5
The Examiner repeated the finding in the Answer at page 9, fourth full paragraph. 6
No reply was filed. Ultimately we do not feel that it is necessary to reach any 7
“closest to the prior art” issue because we agree with the Examiner’s finding that 8
the reported data fails to establish an unexpected result—indeed, the data reports in 9
the general direction of what one skilled in the art would have expected. 10
Decision 11
Upon consideration of the appeal, and for the reasons given herein, it is 12
ORDERED that the decision of the Examiner rejecting all the claims 13
on appeal is affirmed. 14
FURTHER ORDERED that no time period for taking any subsequent 15
action in connection with this appeal may be extended under 37 C.F.R. 16
§ 1.136(a)(1)(iv). 17
AFFIRMED 18
19
bar 20