Ex Parte Arzt et al

Patent Trials and Appeals Board

Jun 26, 2019

13504390 - (D) (P.T.A.B. Jun. 26, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/504,390 07/13/2012
123223 7590 06/28/2019
Drinker Biddle & Reath LLP (WM)
222 Delaware A venue, Ste. 1410
Wilmington, DE 19801-1621
FIRST NAMED INVENTOR
Anton Arzt
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
211811-0006-US (287660) 9867
EXAMINER
WEDDLE, ALEXANDER MARION
ART UNIT PAPER NUMBER
1712
NOTIFICATION DATE DELIVERY MODE
06/28/2019 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):
DBRIPDocket@dbr.com
IPDocketWM@dbr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANTON ARZT, MARKUS SCHAFHEUTLE,
GERLINDE PETRITSCH, JULIUS BURKL, ROBERT HARRER, and
ULRIKE KUTTLER
Appeal 2018-008246
Application 13/504,390
Technology Center 1700
Before MARK NAGUMO, MONTE T. SQUIRE, and
SHELDON M. McGEE, Administrative Patent Judges.
SQUIRE, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 19, 23-27, 29-33, 35, and 37-39, which are all of
the claims pending in this application. We have jurisdiction under 35 U.S.C.
§ 6(b ).
1 In this Decision, we refer to the Specification filed April 26, 2012
("Spec."); Final Office Action dated July 6, 2017 ("Final Act."); Appeal
Brief filed January 5, 2018 ("Appeal Br."); Examiner's Answer dated June
7, 2018 ("Ans."); and Reply Brief filed August 7, 2018 ("Reply Br.").
2 Allnex Austria GmbH is identified as the real party in interest. Appeal
Br. 2.
Appeal 2018-008246
Application 13/504,390
We REVERSE.
The Claimed Subject Matter
Appellants' disclosure relates to an aqueously dispersible
polyurethane, a process of preparation thereof, and a method of use of the
dispersion. Spec. 1; Abstract. Sole independent claim 35 is illustrative of
the claimed subject matter on appeal and is reproduced below from the
Claims Appendix to the Appeal Brief (key disputed claim language
italicized and bolded):
35. An aqueous dispersion comprising an aqueously
dispersible polyurethane having a specific amount of substance
of hydroxyl groups, -OH, of from 1 mol/kg to 4 mol/kg, and a
specific amount of tertiary and/or quaternary aliphatic carbon
atoms of from 0.01 mol/kg to 0.5 mol/kg, wherein the tertiary
and quaternary carbon atoms are derived from tri- and tetravalent
alcohols selected from the group consisting of trimethylolethane,
trimethylolpropane, trimethylolbutane[,] 3 ditrimethylolethane,
ditrimethylolpropane, ditrimethylolbutane, and pentaerythritol,
and a specific amount of urea groups >N-CO-N< of from 0.8
mol/kg to 1. 7 [] mol/kg, wherein in each case the specific amount
of substance is based on the mass of the polyurethane, said
branched aqueously dispersible polyurethane further having a
specific amount of substance of acid and for acid anion groups
of from 0.1 mol/kg to 1.8 mol/kg or a specific amount of
substance of basic and for cationic groups of from 0.1 mol/kg to
1.8 mol/kg, and/or a mass fraction of oligo-oxyethylene groups
of from 1 % to 25 %, wherein oligooxyethylene groups obey the
3 Appellants and the Examiner are encouraged to carefully review this claim
for typographical errors. Specifically, the claim appears to omit several
commas between certain alcohol species. See Spec. 2:20 (indicating that
"trimethylol butane" and "di-trimethylol ethane" are separate alcohol
species). The claim also contains an apparent artifact of a previous claim
amendment.
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Appeal 2018-008246
Application 13/504,390
formula -0-( -CH2-CH2-0-)n-CH2-CH2-0-, wherein n is from 1
to 100, obtained by a process comprising the steps of
(1) preparing an aqueously dispersible branched polyurethane
by
(a)- preparing a hydroxy-functional polymer A having a
number average molar mass of at least 400 g/mol, and at least
two hydroxyl groups per molecule,
(b )- mixing polymer A with a polyhydric organic compound
A' having at least three hydroxyl groups per molecule, and a
molar mass of not more than 500 g/mol, selected from the group
consisting of trimethylolethane, trimethylolpropane,
trimethylolbutane[,] ditrimethylolethane, ditrimethylolpropane,
ditrimethylolbutane, and pentaerythritol, and
with either or both of
an acid Bl which is an hydroxy-functional or amino-
functional acid having at least one hydroxyl or primary or
secondary amino group and at least one acid group, and
- a polyether B2 which has oligo-oxyethylene groups obeying
the formula II
-O-(-CH2-CH2-0-)n-CH2-CH2-0-, (II)
wherein n is from 1 to 100, and at least one hydroxyl group,
or
with either or both of
- a basic compound B3 which is a hydroxy-functional or
amino-functional basic compound having at least one
hydroxyl or primary or secondary amino group and at least
one basic group which is optionally a tertiary amino group,
and
- a polyether B2 which has oligo-oxyethylene groups obeying
the formula II
-O-(-CH2-CH2-0-)n-CH2-CH2-0-, (II)
wherein n is from 1 to 100, and at least one hydroxyl group,
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Appeal 2018-008246
Application 13/504,390
( c )- reacting the mixture prepared in step (b) with at least one
polyfunctional isocyanate C having at least two isocyanate
groups per molecule, wherein the amount of isocyanate C is
chosen such that there is a ratio of isocyanate groups in
component C to hydroxyl groups present in the mixture prepared
in step (b) of from 2: 1 to 1.1: 1, until at least 90 % of the hydroxyl
groups of the mixture prepared in step (b) are consumed by
reaction with the isocyanate component C,
( d)- adding to the reaction product of step ( c) at least one of a
hydroxyamine D having at least one primary or secondary amino
group, and at least one hydroxyl group, a polyhydric alcohol E
having at least two hydroxyl groups per molecule, and a
polyfunctional amine F having at least two amino groups, each
of the amino groups being selected from primary and secondary
amino groups, in order to obtain an aqueously dispersible
branched polyurethane,
and
(2)- dispersing the aqueously dispersible branched
polyurethane obtained in step ( d) in water, and optionally adding
a chain extender G.
Appeal Br. 34-36.
The References
The Examiner relies on the following prior art references as evidence
in rejecting the claims on appeal:
Halpaap et al. ("Halpaap") US 5,510,444 Apr. 23, 1996
Steidl et al. ("Steidl") US 2005/0027092 Al Feb. 3, 2005
Blum et al. ("Blum") US 2009/0264577 Al Oct. 22, 2009
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Appeal 2018-008246
Application 13/504,390
The Rejections
On appeal, the Examiner maintains the following rejections (Ans. 3):
1. Claims 19, 23-27, 29, 31-33, 35, and 37-39 are rejected under
pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Blum in view of
Halpaap ("Rejection l ").
2. Claim 30 is rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Blum in view of Halpaap and Steidl ("Rejection 2").
OPINION
Reiection 1
The Examiner determines that the combination of Blum and Halpaap
suggests an aqueous polyurethane composition satisfying all of the
limitations of claim 35 and, thus, concludes the combination would have
rendered claim 35 obvious. Final Act. 3-4, 7; Ans. 3.
Regarding the recitation an "aqueous dispersion," the Examiner relies
on Blum for teaching or suggesting this element of the claim. Final Act. 3.
In particular, the Examiner finds that Blum teaches an "aqueously
dispersible polyurethane," which corresponds to the claimed composition.
Id. at 3 ( citing Blum, Abstract, ,i 40).
Appellants argue that the Examiner's rejection should be reversed
because neither Blum nor Halpaap teaches or suggests an "aqueous
dispersion," as recited in the claim. Appeal Br. 14-16; Reply Br. 3-8.
Rather, in contrast to the claimed invention, Appellants argue that Blum
teaches and is directed to water-soluble polyurethanes and solutions thereof,
neither of which is an "aqueous dispersion comprising an aqueously
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Application 13/504,390
dispersible polyurethane," as required by the claims. Appeal Br. 7-8, 14-
15.
In particular, Appellants contend that the water-soluble polyurethanes
and solutions containing the water-soluble polyurethanes Blum discloses are
"different from aqueously dispersible polyurethanes and the dispersions
containing them" (id. at 7) and "expressly distinguished from
water-dispersible polyurethanes and dispersions thereof' (id. at 15).
Appellants further contend that Blum actually teaches away from
aqueously dispersible polyurethanes and using aqueous dispersions of
polyurethanes. Id. at 15-16 ( citing Blum ,i,i 3-12). In particular, Appellants
contend that paragraph 10 of Blum discusses the "problem affecting disperse
systems" and reasons why dispersions of water-dispersible polyurethanes are
deficient for their purposes and in contrast to polyurethane solutions in
water. Id. at 15.
Appellants also contend that Halpaap does not remedy the deficiency
in Blum's disclosure because Halpaap is directed to powder coating
compositions and discloses neither a polyurethane solution nor a dispersion.
Id.at 16.
Appellants' arguments are persuasive of reversible error in the
Examiner's rejection because the Examiner has not established by a
preponderance of the evidence that the combination of Blum and Halpaap
teaches or suggests an "aqueous dispersion," as required by the claim. In re
Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992) (holding that the examiner
bears the initial burden of establishing a prima facie case of obviousness).
The Examiner has not persuasively shown how the portions of Blum
relied upon teach or suggest an "aqueous dispersion," as recited in claim 35.
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Application 13/504,390
Rather, as Appellants correctly point out (Appeal Br. 15) and in contrast to
the claimed invention, Blum appears to teach single-component, water-
soluble polyurethanes and aqueous solutions of water-soluble polyurethanes.
See Blum, Abstract ("The present invention relates to innovative single-
component polyurethane systems based on water-soluble polyurethanes or
their aqueous solutions, to a process for preparing them, and to the use."), ,i
2 (same), ,i 11 (disclosing "polyurethane solutions in water"), ,i 38 ("It has
now been found that this can be achieved by means of innovative water-
soluble polyurethane polyureas or their solutions.").
For example, although paragraph 40 of Blum discloses "water-soluble
hydroxy-functional polyurethanes" and "their aqueous solutions," there is no
teaching or suggestion that any of the disclosed compositions is or would
have been considered by one of ordinary skill to be an aqueous dispersion,
as claimed. Likewise, although paragraphs 157 and 158 of Blum mention
the term "dispersing," they do not teach or suggest an "aqueous dispersion
comprising an aqueously dispersible polyurethane" in the manner claimed.
Rather, as Appellants point out (Reply Br. 5-6), those paragraphs are
directed to the process of dispersing or dissolving the "crosslinker B)" into
the aqueous phase. They do not disclose that the composition itself
constitutes an aqueous dispersion.
The Examiner also does not identify evidence or provide reasoning
sufficient to support a finding that one of ordinary skill would have had
reason to modify Blum's water-soluble polyurethane solution for use as an
aqueous dispersion, as would be required to arrive at the claimed invention.
See KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (requiring
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Application 13/504,390
"reasoning with some rational underpinning to support the legal conclusion
of obviousness") (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).
For example, at page 3 of the Answer, the Examiner does not
adequately explain why the disclosures at paragraphs 140, 157, 158, and 160
of Blum would have led one of ordinary skill to an aqueous dispersion
comprising an aqueously dispersible polyurethane, as recited in the claim.
See Belden Inc. v. Berk-TekLLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015)
("[O]bviousness concerns whether a skilled artisan not only could have
made but would have been motivated to make the combinations or
modifications of prior art to arrive at the claimed invention.") ( emphasis in
original).
The Examiner also does not meaningfully address Appellants'
principal argument that Blum is directed to water-soluble polyurethanes and
solutions thereof (Appeal Br. 14) and actually teaches away from an aqueous
dispersion comprising an aqueously dispersible polyurethane (id. at 16).
The Examiner's assertion that "US'577 suggests both" (Ans. 3) is
conclusory and, without more, insufficient to sustain the Examiner's
rejection. Kahn, 441 F.3d at 988 (holding "rejections on obviousness
grounds cannot be sustained by mere conclusory statements").
We, therefore, cannot sustain the Examiner's rejection of claim 35 and
determination that it would have been obvious to combine the teachings of
Blum and Halpaap to arrive at the claimed subject matter. Because claims
19, 23-27, 29, 31-33, and 37-39 each depends from claim 35, we also
cannot sustain the Examiner's rejection of these claims.
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Application 13/504,390
Accordingly, we reverse the Examiner's rejection of claims 19, 23-
27, 29, 31-33, 35, and 37-39 underpre-AIA 35 U.S.C. § 103(a) as obvious
over the combination of Blum and Halpaap.
Reiection 2
The foregoing deficiencies in the Examiner's analysis and conclusion
regarding Rejection 1 and the combination of Blum and Halpaap are not
remedied by the Examiner's findings regarding the additional reference and
combination of references cited in support of the second ground of rejection
(Rejection 2, stated above).
Accordingly, for principally the same reasons discussed above in
reversing the Examiner's Rejection 1, we reverse the Examiner's
Rejection 2.
DECISION
The Examiner's rejections of claims 19, 23-27, 29-33, 35, and 37-39
are reversed.
It is ordered that the Examiner's decision is reversed.
REVERSED
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