Ex Parte Becker-Weimann et al

Patent Trial and Appeal Board

Jan 18, 2018

13995633 (P.T.A.B. Jan. 18, 2018)

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.
13/995,633 08/12/2013 Klaus Becker-Weimann 4266-0197PUS1 4690
127226 7590 01/22/2018
BIRCH, STEWART, KOLASCH & BIRCH, LLP
8110 Gatehouse Road
Suite 100 East
Falls Church, VA 22042-1248
EXAMINER
BUTCHER, ROBERT T
ART UNIT PAPER NUMBER
1768
NOTIFICATION DATE DELIVERY MODE
01/22/2018 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):
mailroom @ bskb. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KLAUS BECKER-WEIMANN
and MICHAEL FAHRLANDER
Appeal 2016-008415
Application 13/995,633
Technology Center 1700
Before ADRIENE LEPIANE HANLON, GEORGE C. BEST, and
SHELDON M. McGEE, Administrative Patent Judges.
BEST, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner finally rejected claims 16—30 of Application
13/995,633 under 35 U.S.C. § 103(a) as obvious and also rejected claim 22
under 35 U.S.C § 112,12 as indefinite. Final Act. (May 7, 2015).
Appellants1 seek reversal of these rejections pursuant to 35 U.S.C. § 134(a).
We have jurisdiction under 35 U.S.C. § 6.
For the reasons set forth below, we affirm.
1 Klebchemie M.G. Becker GmbH & Co. KG is identified as the real party in
interest. Br. 1.
Appeal 2016-008415
Application 13/995,633
BACKGROUND
The ’633 Application describes methods for producing improved
reactive polyurethane compositions that comprise abrasion resistance­
enhancing fillers. Spec. 1. According to the’633 Application’s
Specification, prior art surface coating materials comprising abrasion
resistance-enhancing fillers have low viscosity. Spec. 2. The low viscosity
of the uncured surface coating material limited the particle size and
concentration of the abrasion resistance-enhancing fillers. Id.
Claim 16 is representative of the ’633 Application’s claims and is
reproduced below:
16. A method for producing a reactive polyurethane
composition, comprising the steps of
in a first method step, preparing a monomer-free
thermoplastic polyurethane having isocyanate-reactive end
groups from an isocyanate-reactive polymer or from a mixture
of isocyanate-reactive polymers having a fraction of at least
90 wt% of linear molecules by reaction with a polyisocyanate
having a molecular weight of < 500 g/mol with a molar deficit
of the isocyanate groups of the polyisocyanate relative to the
isocyanate-reactive end groups of the polymer or of the mixture
of polymers, and
in a second method step, reacting said monomer-free
thermoplastic polyurethane with a low-monomer-content
isocyanate-terminal prepolymer having a residual monomer
content of not greater than 0.5 wt%, in a molar ratio of the
isocyanate-reactive end groups of the monomer-free
thermoplastic polyurethane to the isocyanate groups of the
prepolymer of 1: 1.1 to 1: 5 to give the reactive polyurethane
composition,
where the method takes place with addition of an
inorganic filler component wherein the filler component
comprises particles of at least one filler which have a Mohs
hardness of at least 6, and where the reactive polyurethane
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Application 13/995,633
composition has a viscosity of 2000 mPas to 100,000 mPas at
120°C.
Br. Claims App. 1.
REJECTIONS
On appeal, the Examiner maintains the following rejections:
1. Claim 22 is rejected under 35 U.S.C. § 112,12 as indefinite.
Answer 2.
2. Claims 16—30 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Becker-Weimann2 and
Stenzel.3 Answer 3.
DISCUSSION
Rejection 1. Claim 22 of the ’633 Application reads:
22. The method as claimed in claim 16, characterized in that
the polyisocyanate having a molecular weight < 500 g/mol is a
substance or a mixture of substances selected from the group
consisting of aromatic, aliphatic and cycloaliphatic
polyisocyanates having an isocyanate functionality between 1
and 4.
Br. 2—3 (emphasis added).
The Examiner rejected claim 22 as indefinite, stating “[a]
polyisocyanate having a functionality of 1 is not a polyisocyanate.” Final
Act. 2; see also Answer 2.
2 US 2008/0009592 Al, published January 10, 2008.
3 US 2009/0075058 Al, published March 19, 2009.
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Application 13/995,633
Appellants concede that the Examiner’s position regarding a
polyisocyanate having a functionality of 1 correct.4 Br. 7. Appellants,
however, further contend that “claim 22 recites an isocyanate functionality
between 1 and 4. As such, one of ordinary skill in the art would understand
that the values of 1 and 4 are excluded as possible values.” Id.
The Examiner disagrees with this argument, stating that it “is not
found persuasive since [the] broadest reasonable interpretation of claim 22
definitely includes values of 1 and 4.” Answer 6.
Neither the Examiner nor Appellants point to any portion of the ’633
Application’s Specification to support their proffered arguments.
During prosecution, an application’s claims are given their broadest
reasonable scope consistent with the specification. In re Am. Acad, of Sci.
Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). The words used in a claim
must be read in light of the specification, as it would have been interpreted
by one of ordinary skill in the art at the time of the invention. Id. “[A
claim] construction is unreasonable [when] it comports with neither the plain
meaning of the term nor the specification.” In re Imes, 778 F.3d 1250, 1254
(Fed. Cir. 2015).
4 Appellants do not argue that— and, thus, we need not consider whether—
a person having ordinary skill in the art at the time of the invention would
have found the meaning of the phrase in question to be sufficiently clear that
the rejection for indefmiteness would be inappropriate. See In re Packard,
751 F.3d 1307, 1310 (Fed. Cir. 2014) (explaining that a rejection for
indefmiteness is appropriate if, after the broadest reasonable interpretation
has been applied to the claims, the metes and bounds of the claimed
invention are not clear).
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Application 13/995,633
Thus, the question before us is whether the Examiner’s interpretation
of the claim language “having an isocyanate functionality of between 1 and
4” is reasonable.
We begin by considering the ordinary meaning of the preposition
“between” to a person of ordinary skill in the art at the time of the invention.
In particular, we must consider whether such a person would consider a
prepositional phrase stating that some numerical value extends “between X
and Y” includes the end points X and Y.
A review of various dictionaries demonstrates ambiguity as to
whether or not the end points are included in the range described as
extending “between X and Y.” See, e.g., Shorter Oxford English Dictionary
227 (6th ed. 2007) (defining between as “In the interval separating (two
points of time, events, etc.); intermediate to (two quantities etc.); partaking
of the nature of (two qualities etc.).” (emphasis added)); between Meaning in
the Cambridge English Dictionary, Cambridge Dictionary (January 4, 2018),
http://bit.ly/2CVfizn (“If something is between two amounts, it is greater
than the first amount but smaller than the second”) but see Between —
Definition for English-Language Learners from Merriam-Webster’s
Learner’s Dictionary, LeamersDictionary.com (January 4, 2018),
http://bit.ly/2E5ICT0 (defining between as “used to indicate the beginning
and ending points of a group of numbers, range of measurement, etc.”).
Based upon these definitions, a person having ordinary skill in the art
at the time of the invention would have understood that the phrase “between
1 and 4” excludes the end points if the isocyanate functionality can have any
value along a continuous range, but includes the endpoints if the isocyanate
functionality value is limited to whole numbers, i.e., it may only be 1,2, 3,
or 4.
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Application 13/995,633
To determine which definition of the preposition “between” applies in
this case, we turn to the ’663 Application’s Specification. The Specification
demonstrates that the isocyanate functionality can have any value along a
continuous range. E.g., Spec. 5 (“The polyisocyanate is preferably a
substance or a mixture of substances . . . having an isocyanate functionality
of between 1 and 4, preferably between 1.8 and 2.2, more preferably with
the isocyanate functionality 2.”).
In view of the foregoing, we do not agree with the Examiner that the
broadest reasonable interpretation of the phrase “having an isocyanate
functionality between 1 and 4” that is consistent with the Specification
includes the endpoints 1 and 4. We, therefore, reverse the Examiner’s
rejection of claim 22 as indefinite.
Rejection 2. The Examiner rejected claims 16—305 of the ’633
Application as unpatentable over the combination of Becker-Weimann and
Stenzel. Final Act. 3—5.
Appellants present separate arguments for reversal of this rejection
with respect to six groups of claims: (a) claims 16, 18—24, 28, and 29;
(b) claim 17; (c) claim 25; (d) claim 26; (e) claim 27; and (f) claim 30. See
Br. 7—15. We address each group of claims in turn.
Claims 16,18—24, 28, and 29. Appellants argue for reversal of the
rejection with respect to this group of claims based upon the limitations
5 Although the Examiner's summary statement of the rejection in the Final
Action states that claims 16—29 are rejected on this basis, Final Act. 3, the
detailed statement of the rejection sets forth a reasoned basis for the
rejection of claim 30, id. at 5. We, therefore, assume that the omission of
claim 30 from the summary statement of the rejection was an inadvertent
error. See also Answer 3.
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Application 13/995,633
present in claim 16. Br. 7—12. We, therefore, select claim 16 as
representative of this group of claims and the remaining claims in this group
will stand or fall with claim 16. 37 C.F.R. § 41.37(c)(l)(iv).
Appellants argue that the rejection of claim 16 as unpatentable over
the combination of Becker-Weimann and Stenzel should be reversed
because (1) the Examiner has failed to establish a prima facie case of
obviousness, Br. 7—8, (2) the Examiner has not identified a reason why a
person having ordinary skill in the art at the time of the invention would
have combined Becker-Weimann and Stenzel to arrive at the claimed
invention, Br. 11—12, and/or (3) the invention achieves unexpected results
that are sufficient to rebut the prima facie case of obviousness, Br. 7—12.
We address these arguments seriatim.
First, Appellants argue that the rejection of claim 16 should be
reversed because the Examiner erred by finding that the combination of
Becker-Weimann and Stenzel describes or suggests a reactive polyurethane
composition having a viscosity of 2000 mPa-s to 100,000 mPa-s at 120°C.
Br. 8.
In rejecting claim 16, the Examiner found that Becker-Weimann
describes a process for making a reactive polyurethane composition that
comprises each of the steps recited in claim 16. Answer 3. The Examiner
further found that Becker-Weimann discloses that auxiliaries, including
fillers and additives, may be included in the reactive polyurethane
composition. Id. (citing Becker-Weimann 131). The Examiner also found
that Becker-Weimann describes the viscosity of the composition’s disclosure
described in its examples as being 20,800 mPa- s and 48,000 mPa- s at
120°C. Id. (citing Becker-Weimann Table I (| 47)). The Examiner found
that the difference between Becker-Weimann’s method and the process
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Application 13/995,633
recited in claim 16 is that Becker-Weimann does not describe the use of a
filler or an additive having a Mohs hardness of at least 6. Id.
Appellants argue that the Examiner’s reliance upon Becker-
Weimann’s description is misplaced because “the viscosities of Becker-
Weimann et al. ’592 are not equivalent to the viscosity range recited in
claim 16 since the claimed viscosity of2000 mPa-s to 100,000 mPa-s at
120°C relates to the reactive polyurethane composition after the addition of
fillerBr. 8. In support of this argument, Appellants state that “a reactive
polyurethane composition comparable to the composition of Example 3 of
the present specification^ has a viscosity of 4,200 mPa-s at 140°C before
addition of 30% corundum and a viscosity of 9,400 mPa- s at 140°C after
addition.” Id.
We are not persuaded by Appellants’ arguments.6 7 As Appellants
point out, the viscosities of Becker-Weimann’s Examples 1 and 2 are those
6 We note that Appellants do not identity any support in the record for the
specific viscosity data cited in this argument. Nor have we been able to
locate any. Thus, these data are attorney argument, and we give them no
weight. It is well settled that arguments of counsel cannot take the place of
factually supported objective evidence. See, e.g., In re Huang, 100 F.3d
135, 139-40 (Fed. Cir. 1996); In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir.
1984). The ’633 Application’s Specification, however, provides data
regarding the viscosities of what are alleged to be comparable reactive
polyurethane compositions. The viscosity of the reactive polyurethane
composition in the absence of added filler material is 5,200 mPa- s at 140°C.
Spec. 12 (Example 3). The viscosity of that same composition after addition
of corundum filler is about 7,800 mPa- s at 140°C. Id.
7 For the purpose of this opinion, we assume, without deciding, that
Appellants have correctly interpreted claim 16 as specifying the viscosity of
the reactive polyurethane composition after addition of the filler having a
Mohs hardness of at least 6.
8
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Application 13/995,633
of a reactive polyurethane composition without the addition of filler
material. See Becker-Weimann || 38, 41—48. Appellants, however, have
not identified any reason why the Examiner was wrong to have assumed that
the addition of filler would not increase the viscosities of the reactive
polyurethane compositions in Becker-Weimann’s Examples 1 and 2 such
that they would necessarily be outside the claimed range. Answer 7.
In this case, the Examiner’s assumption is reasonable. Because claim
16 does not require the addition of any particular minimum amount of filler,
claim 16 embraces the reactive polyurethane compositions of Becker-
Weimann’s Examples 1 and 2 with the addition of small amounts (e.g., less
than 1 %) of filler. Appellants have not provided any evidence or reasoning
that would support a conclusion that the change in viscosity due to the
addition of such a small amount of filler is such that the viscosity of the
filler-added reactive polyurethane composition is outside the range recited in
claim 16. Because the Examiner’s assumption is reasonable, the burden is
on Appellants to provide evidence or reasoning sufficient to rebut the
assumption. In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (“Where, as
here, the claimed and prior art products are identical or substantially
identical or are produced by identical or substantially identical processes the
PTO can require an applicant to prove that the prior art products do not
necessarily or inherently possess the characteristics of [the] claimed
product.”).
Second, Appellants argue that the rejection of claim 16 should be
reversed because the Examiner has not provided a proper reason or rationale
that would allow one of ordinary skill in the art to combine the cited
references to arrive at the claimed invention. Br. 11.
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In rejecting claim 16, the Examiner stated that a person of ordinary
skill in the art at the time of the invention would have selected Stenzel’s
filler to use in Becker-Weimann’s method since Stenzel describes fillers that
are strongly preferred because they confer increased abrasion resistance.
Answer 4 (citing Stenzel ]Hf 37—38). The Examiner further responds that the
use of known elements in a known method is likely to be obvious when it
yields predictable results. Answer 12 (citing KSR Int’l Co. v. Teleflex Inc.,
550 U.S. 398, 416 (2007)). Here, the Examiner found that
[i]n the instant case, a combination of familiar/conventional
elements is taught. In particular, Becker-Weimann teaches
[that] the viscosities range between 20,800 and 48,000 at
120°C. Stenzel discloses a polyurethane composition
comprising a filler to increase the abrasion resistance (abstract
Stenzel). On the filler has a Mohs hardness of at least 7 ([0038]
Stenzel). This yields predictable results (enhanced abrasion
resistance) [and] would certainly be prima facie obvious in
accordance with 35 U.S.C. [§] 103(a).
Id.
We agree with the Examiner. As the Examiner found, Stenzel
describes the use of fillers to increase the abrasion resistance of a
polyurethane coating. Stenzel Abstract, || 1—19. Based upon this
description, a person of ordinary skill in the art at the time of the invention
would have had reason to use Stenzel’s fillers to increase the abrasion
resistance of polyurethane coatings made from Becker-Weimann’s reactive
polyurethane composition. It has been established that “the [obviousness]
analysis need not seek out precise teachings directed to the specific subject
matter of the challenged claim, for a court can take account of the inferences
and creative steps that a person of ordinary skill in the art would employ.”
KSR, 550 U.S. at 418; see also In re Fritch, 972 F.2d 1260, 126A-65 (Fed.
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Cir. 1992) (a reference stands for all of the specific teachings thereof as well
as the inferences one of ordinary skill in the art would have reasonably been
expected to draw therefrom).
Third, Appellants argue that the claimed invention provides
unexpected results relative to the prior art. Br. 12 (“As described above, the
claimed invention achieves unexpected and unpredictable results over the
cited references.”).
The existence of unexpected results is a question of fact. In re Mayne,
104 F.3d 1339, 1343 (Fed. Cir. 1997). A showing of unexpected results
must be based upon evidence rather than argument or speculation. Id. at
1343^14.
We are not persuaded by this argument because Appellants have not
established the existence of unexpected results based upon actual evidence.
Rather, Appellants provide only attorney argument for the alleged existence
of unexpected results. See Br. 8—11. Such argument is insufficient to
establish the existence of unexpected results. Arguments of counsel cannot
take the place of actual objective evidence. See, e.g., Huang, 100 F.3d at
139-40; De Blauwe, 736 F.2d at 705.
For the reasons set forth above, we affirm the rejection of claim 16 as
unpatentable over the combination of Becker-Weimann and Stenzel. Thus,
we also affirm the rejection of claims 18—24, 28, and 29 on this basis.
Claim 17. Claim 17 is reproduced below:
17. The method as claimed in claim 16, characterized in that
the addition of the inorganic filler component takes place
during the second method step.
Br. Claims App. 1.
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Application 13/995,633
Appellants’ arguments for reversal of the rejection of claim 17 are
essentially identical to those we have discussed above in connection with
claim 16. We, therefore, affirm the rejection of claim 17 for essentially the
same reasons we provided in our affirmance of the rejection of claim 16.
Claim 25. Claim 25 is reproduced below:
25. The method as claimed in claim 16, characterized in that
the inorganic filler component features only one filler.
Br. Claims App. 3.
Appellants’ arguments for reversal of the rejection of claim 25 are
essentially identical to those we have discussed above in connection with
claim 16. We, therefore, affirm the rejection of claim 25 for essentially the
same reasons we provided in our affirmance of the rejection of claim 16.
Claim 26. Claim 26 is reproduced below:
26. The method as claimed in claim 16, characterized in that
the at least one filler is selected from the group consisting of a
metal oxide, silicon dioxide, metal carbide, silicon carbide,
metal nitride, silicon nitride and boron nitride.
Br. Claims App. 3.
Appellants’ arguments for reversal of the rejection of claim 26 are
essentially identical to those we have discussed above in connection with
claim 16. We, therefore, affirm the rejection of claim 26 for essentially the
same reasons we provided in our affirmance of the rejection of claim 16.
Claim 27. Claim 27 is reproduced below:
27. The method as claimed in claim 16, characterized in that
the inorganic filler component has a fraction in the range from
5 wt% to 60 wt% based on the total weight of the reactive
polyurethane composition.
Br. Claims App. 3.
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Appellants’ arguments for reversal of the rejection of claim 27 are
essentially identical to those we have discussed above in connection with
claim 16. We, therefore, affirm the rejection of claim 27 for essentially the
same reasons we provided in our affirmance of the rejection of claim 16.
Claim 30. Claim 30 is reproduced below:
30. A method as claimed in claim 16, wherein the method
takes place with an addition of the inorganic filler component
and auxiliaries.
Br. Claims App. 4.
Appellants’ arguments for reversal of the rejection of claim 30 are
essentially identical to those we have discussed above in connection with
claim 16. We, therefore, affirm the rejection of claim 30 for essentially the
same reasons we provided in our affirmance of the rejection of claim 16.
CONCLUSION
For the reasons set forth above, we reverse the rejection of claim 22 as
indefinite. We, however, affirm the rejection of claims 16—30 as
unpatentable over the combination of Becker-Weimann and Stenzel.
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
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