Ex Parte Baumgart et al

Board of Patent Appeals and Interferences

May 21, 2010

10362304 (B.P.A.I. May. 21, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte HUBERT BAUMGART, UWE MEISENBURG,
and ULRIKE ROCKRATH
____________________

Appeal 2009-0113421
Application 10/362,304
Technology Center 1700
____________________

Decided: May 21, 2010
____________________

1 The subject matter in this appeal appears to be related to the subject matter
in Appeal No. 2008-004567 (U.S. Patent Application No. 10/470,863),
which was decided August 31, 2009.
Before MICHAEL P. COLAIANNI, EDWARD C. KIMLIN, and
BRADLEY R. GARRIS, Administrative Patent Judges.

COLAIANNI, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134 from the
Examiner's final rejection of claims 1 through 3, 5, 7 through 14 and 16.
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Claim 15, the other claim pending in this application, stands withdrawn from
consideration by the Examiner. We have jurisdiction pursuant to 35 U.S.C.
§ 6.
We AFFIRM.
STATEMENT OF THE CASE
The subject matter on appeal is directed to a one-component system
curable with both heat and actinic radiation. Claim 1 is illustrative:
1. A one-compound system curable with both heat and actinic
radiation, comprising:
(A) 10 to 80% by weight, based on solids, of at least one crosslinking
agent whose molecule comprises on average:
at least one blocked isocyanate group,
at least one functional group comprising at least one bond which may
be activated with actinic radiation, and
one or more groups selected from the group consisting of
isocyanurate, biuret, iminooxadiazinedione, carbodiimide, uretdione and
mixtures thereof, and
(B) 20 to 90% by weight, based on solids, of at least one binder
whose molecule comprises on average at least one isocyanate-reactive
functional group;
wherein the at least one functional group comprising at least one bond
which may be activated with actinic radiation comprises a carbon-carbon
double bond, carbon-phosphorus double bond, carbon-silicon double bond,
or a combination thereof.

As evidence of unpatentability of the claimed subject matter, the
Examiner relies upon the following references:
Kyle '116 EP 594116 A2 Nov. 2, 1992
Kyle '970 US 5,234,970 Aug. 10, 1993
Bruchmann '0412 DE 19860041 A1 Jun. 29, 2000

2 Appellants do not dispute the Examiner's finding that US 6,617,413 B1
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The Examiner maintains the following rejections:
1) Claims 1-3, 5, 7-14, and 16 under 35 U.S.C. § 103(a) as
unpatentable over Bruchmann '041;
2) Claims 1-3, 5, 7-14, and 16 under 35 U.S.C. § 103(a) as
unpatentable over Bruchmann '041 and Kyle '1163; and
3) Claims 1-3, 5, 7-10, 12-14, and 16 under 35 U.S.C. § 103(a) as
unpatentable over Bruchmann '041 and Kyle '970.4

REJECTIONS (1)-(3)
We address each rejection with respect to claim 1 only, as argued by
Appellants. See 37 C.F.R. § 41.37(c)(1) (vii).

ISSUE
Did the Examiner err in determining that it would have been obvious
to modify Bruchmann '041’s compound a2 to arrive at the invention recited

(issued to Bruchmann on Sep. 9, 2003) (hereinafter "Bruchmann '413") is
the corresponding English translation of Bruchmann '041. (Compare Ans. 3
with Br. 4-16). Thus, since the Examiner's citation of Bruchmann '041 is to
the translation thereof (i.e., Bruchmann '413), we rely on and cite to
Bruchmann ‘413.
3 Appellants do not dispute or question the Examiner's finding that Kyle '116
and Kyle '970 are equivalent to one another. (Compare Ans. 8 with Br. 4-
16).
4 We note that the Examiner's inclusion of claim 6 in the statement of
rejections (1) through (3) at pages 3, 8, and 9 of the Answer and Appellants'
inclusion of claim 6 in their statement of the Examiner's rejections (2) and
(3) at page 4 of the Brief are harmless errors since it is apparent from the
record (see After Final Amendment dated Oct. 3, 2007, entered via R.C.E.
dated Oct. 24, 2007) that this claim has been canceled.
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in claim 1 within the meaning of 35 U.S.C. § 103(a)? We decide this issue
in the negative.
FINDINGS OF FACT (FF)
We adopt the Examiner’s findings in the Answer and Final Office
Action as our own, except for those findings that we expressly overturn or
set aside in the Analysis that follows. We add the following factual
findings:
1. The Specification discloses that crosslinking agent (A) may be formed
by reacting a polyisocyanate with a blocking agent and a "compound
containing per molecule at least one, especially one, isocyanate-
reactive functional group and at least one, especially one, bond which
may be activated with actinic radiation." (Spec. 10-11; see also Spec.
5-9). In this regard, the polyisocyanate may be a "hexamethylene
diisocyanate . . . contain[ing] isocyanurate, biuret , allophanate,
iminooxadiazinedione, urethane, urea, carbodiimide and/or uretdione
groups." (Spec. 9-10). The blocking agent may be a phenol. (Spec.
5). The "compound containing per molecule at least one, especially
one, isocyanate-reactive functional group and at least one, especially
one, bond which may be activated with actinic radiation" may include,
inter alia, a "hydroxyalkyl . . . of methacrylic acid." (Spec. 10-11).
The Specification also discloses that "suitable bonds which may be
activated with actinic radiation [include] . . . carbon-carbon double
bonds . . . [h]ighly suitable carbon-carbon double bonds are present,
for example, in (meth)acrylate." (Spec. 7).
2. Appellants do not specifically dispute the Examiner's finding that
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Bruchmann et al teaches that the compounds I are
employed preferably in the form of mixtures I comprising a1)
from 1 to 100% by weight of compounds I and a2) from 0 to
99% by weight of another compound which in addition to one
or more isocyanate groups includes a group selected from the
series consisting of biuret, carbodiimide, uretdione and
isocyanurate groups (See column 4, lines 44-52). In other
words, biuret, carbodiimide, uretdione and isocyanurate groups
are functionally equivalent to each other.

(Compare Ans. 5 with Br. 4-16). In this regard, Bruchmann '041 teaches
a dual cure coating system composed of
mixtures (mixtures I) comprising
a1) from 1 to 100% by weight of compounds I
a2) from 0 to 99% by weight of another compound which in
addition to one or more isocyanate groups includes a group selected
from the series consisting of urethane, urea, biuret, allophanate,
carbodiimide, uretonimine, uretdione and isocyanurate groups.

(Bruchmann '413, col. 4, ll. 45-52; see also Bruchmann '413 col. 1, ll. 17-
60).
3. Appellants do not specifically dispute the Examiner's finding that
"Bruchmann . . . teaches that . . . isocyanate a2.5) [comprises a group]
having C=C bond[, where this group having a C=C bond] is functionally
equivalent to . . . [the ] biuret [group in isocyanate compound] a2.3),
carbodiimide [group in isocyanate compound] a2.7), uretdione [group in
isocyanate compound] a2.2), [or] isocyanurate groups [in compound]
a2.1)." (Compare Ans. 6 with Br. 4-16). In this regard, Bruchmann '041
teaches that
Isocyanates which may be present in the mixtures I in addition
to the compounds I are aliphatic and aromatic diisocyanates and, in
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particular, polyisocyanates of higher functionality (polyisocyanates
a2) from the following groups:
a2.1) Polyisocyanates which contain isocyanurate groups . . .
a2.2) Diisocyanates which contain uretdione groups . . .
(isocyanates a2.2).
a2.3) Polyisocyanates which contain biuret groups. . .
(isocyanates a2.3).
a2.4) Polyisocyanates containing urethane and/or allophanate
groups, and having isocyanate groups attached to aliphatic or
cycloaliphatic structures, which are free from free-radically
polymerizable C-C double bonds, where the C-C double bonds are in
activated form by virtue of a carbonyl group attached directly to them
or by virtue of an oxygen atom in ether function. . . . (isocyanates
a2.4).
a2.5) Isocyanates derived from one molecule of an alcohol A
and one molecule of a polyisocyanate as used to prepare the
compounds I (isocyanates a2.5).
. . . .
a2.7) Carbodiimide- or uretonimine-modified polyisocyanates
(isocyanates a2.7).

(Bruchmann '413, col. 4, l. 53 to col. 5, l. 56). With respect to isocyanate
compound a2.5, Bruchmann '041 teaches that the polyisocyanate used to
prepare compounds I may be derived from hexamethylene diisocyanate.
(Bruchmann '413, col. 21, ll. 8-12; see also col. 3, ll. 26-31 and col. 7, ll. 4-
5). Bruchmann '041 also teaches that Alcohol A may be 2-hydroxyethyl
methacrylate. (Bruchmann '413, col. 4, ll. 20-21). Bruchmann also teaches
that its "isocyanate groups of the compounds I [may] . . . be present in
blocked form. Examples of suitable blocking agents [include] . . . phenols."
(Bruchmann '413, col. 4, ll. 35-37).

Additional findings of fact may appear in the Analysis that follows.
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ANALYSIS AND CONCLUSION
Appellants make numerous arguments directed to the modification of
compound I to have the various claimed functionalities (App. Br. 5-13).
Appellants, however, do not specifically dispute and thus have not
shown error in the Examiner’s case based upon the functional equivalency of
the uretdione, carbodiimide, biuret, and isocyanurate groups and C=C bond
isocyanate a2.5 as basis for modifying compound a2 to arrive at Appellants’
claimed invention (Ans. 5-6; FF 3). Accordingly, Appellants’ arguments fail
to show error in the Examiner’s stated case and are unpersuasive.
With respect to Appellants' argument that Bruchmann '041 teaches
against (i.e., teaches away) the use of activated carbon-carbon double bonds
in compound a2, while Bruchmann '041 states (FF 3) that isocyanate
compound a2.4 has "isocyanate groups attached to aliphatic or cycloaliphatic
structures, which are free from free-radically polymerizable C-C double
bonds," Bruchmann '041 plainly teaches that its isocyanate compound a2.5
may have a group formed from, inter alia, 2-hydroxyethyl methacrylate,
which has at least one a bond which may be activated by actinic radiation
such as a carbon-carbon double bond. Accordingly, since Bruchmann '041
does not discourage the use of activated carbon-carbon double bonds in
compound a2, Appellants' argument is unpersuasive of reversible error. See
In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994).
Thus, it follows that the Examiner did not err in determining that it
would have been obvious to modify Bruchmann '041’s compound a2 to
arrive at the invention recited in claim 1 within the meaning of 35 U.S.C. §
103(a).
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With respect to rejections (2) and (3), since Bruchmann ‘041, the
primary reference in both rejections, would have suggested the invention
recited in claim 1, then we also sustain5 rejections (2) and (3) for the reasons
given above.

ORDER
In summary, we sustain the Examiner's rejections (1) through (3).
Accordingly, the Examiner's decision is affirmed.

TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(2009).

AFFIRMED

cam
MARY E. GOLOTA
CANTOR COLBURN LLP
201 W. BIG BEAVER ROAD
SUITE 1101
TROY MI 48084

5 We note that Kyle '970 and Kyle '116 are cumulative to the teachings of
Bruchmann '041.