Ex parte Brahm et al.

Board of Patent Appeals and Interferences

Dec 7, 2001

08706551 (B.P.A.I. Dec. 7, 2001)

Application for patent filed on September 6, 1996. This application claims benefit under 351
USC §119 of DE Application 19534162.7, filed September 15, 1995. The real party in interest is
Bayer AG.
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today was not written for publication and is not
binding precedent of the Board.
Paper No. 25
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte MARTIN BRAHM, GERHARD RUTTMANN
AND LUTZ SCHMALSTIEG
___________
Appeal No. 2000-1147
Application No. 08/706,5511
____________
ON BRIEF
____________
Before: McKELVEY, Senior Administrative Patent Judge, and SCHAFER and TIERNEY,
Administrative Patent Judges.
TIERNEY, Administrative Patent Judge.
Decision on Appeal
This is an appeal under 35 U.S.C. §134 from the examiner’s refusal to allow
claims 10-20. We reverse the examiner’s rejection of record.
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I. Findings of Fact
The Invention
The invention relates to a method for making a substantially solvent-free coating composition.
The coating composition comprises a polyisocyanate component which contains heteroallophanate
groups and an isocyanate-reactive component. (Appellants’ specification, p. 1, lines 7-10). An object
of the invention is the formation of blister-free coatings having good hardness. (Appellants’
specification, p. 2, lines 13-16).
Appellants’ method claims 10-16 and 18-19 and appellants’ product claims 17 and 20 are said
to form two separately patentable groups of claims for purposes of review. 37 CFR
§ 1.192(c)(7). (Brief, Paper No. 23, p. 3). Claims 10 and 17 are representative of appellants’ claims
on appeal and are reproduced below:
10. A method for making a blister-free coating comprising:
(1) applying a substantially solvent-free binder composition to a substrate, the
solvent-free binder composition comprising:
a) a polyisocyanate component containing heteroallophanate groups
and having aromatically-bound isocyanate groups,
i) an NCO content of 3 to 16% by weight based on
the weight of the polyisocyanate component,
ii) an average functionality of 1.8 to 4,
iii) an allophanate group content (calculated as
C HN O , MW: 101) of 5 to 35% by weight,2 2 3
based on the weight of the polyisocyanate component,
wherein the allophanate groups are prepared from
urethane groups that are the reaction product of a
linear aliphatic diisocyanate having an isocyanate
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group content of 30 to 60% by weight, based on the
weight of the linear alliphatic diisocyanate, with a
hydroxyl component having a hydrocarbon chain of
2 to 23 carbon atoms and an average functionality of
less than 1.5 at an NCO/OH equivalent ratio of
1.0:1.0 to 0.5:1.0,
iv) a hydrocarbon chain content of 10 to 65% by
weight, based on the weight of the polyisocyanate
component, wherein the hydrocarbon chains are
attached to allophanate groups via oxygen and have
an average of 2 to 23 carbon atoms and
v) a distillable diisocyanate content of less than 0.5%
by weight, based on the weight of the polyisocyanate
component, and
b) an isocyanate-reactive component; and
(2) curing the composition.
17. The blister-free coating made by the method of Claim 10.
The References
The prior art references of record relied upon by the examiner in rejecting the appealed claims
are:
Windemuth et al., (Windemuth) 3,769,318 Oct. 30, 1973
Hicks et al. (Hicks) 5,466,771 Nov. 14, 1995
Windemuth is available as prior art under 35 U.S.C. § 102(b) and Hicks is available as prior
art under 35 U.S.C. § 102(a).
The Windemuth Reference
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Windemuth describes a process for preparing allophanate polyisocyanates containing at least
one bound -NCO group. (Windemuth, col. 1, lines 15-19). The allophanate polyisocyanates of
Windemuth are free of secondary products having isocyanurate structures and are useful in the
production of polyurethane plastics. (Windemuth, col. 1, lines 19-23). The products obtained by
Windemuth’s process are said to be suitable for the production of impregnations or coatings on
substrates, protective paints or adhesives. (Windemuth, col. 8, lines 4-7).
The Hicks Reference
Hicks describes coating compositions that are said to have a long pot life and contain a
polyisocyanate component and an aldimine component. (Hicks, col. 2, lines 13-33). The
polyisocyanate component contains from 5 to 100% by weight of a monoallophanate. (Hicks, col. 2,
lines 17-20).
II. Opinion
The examiner has rejected claims 10-20 under 35 U.S.C. § 103 over Windemuth in view of
Hicks. Appellants’ dispute this rejection.
According to the examiner, Windemuth discloses the production of allophanate containing
polyisocyanates having aromatically bound isocyanate groups. The examiner notes that Windemuth
teaches the production of allophanate containing polyisocyanates having aromatically bound isocyanate
groups wherein a polyisocyanate, such as an aliphatic isocyanate, is reacted with a hydroxyl function
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compound to yield a urethane compound, which may then be reacted with an aromatic diisocyanate to
yield the allophanate. (Examiner’s Answer, Paper No. 24, p. 4).
The examiner acknowledges that Windemuth fails to disclose “extensive” details regarding the
use of the allophanates in coating compositions. The examiner relies upon Hicks to remedy this alleged
deficiency. Generally, the examiner cites Hicks for its teaching that allophanates can be combined with
aldimines to form a binder for a coating composition. (Paper No. 24, p. 5).
Appellants’ argue that the examiner has failed to establish a prima facie case of obviousness
for the claimed invention. Appellants’ contend that the Windemuth reference teaches the formation of
an allophanate by reacting: (i) an n-substituted carbamic ester; (ii) an aromatically bound
polyisocyanate; and (iii) a compound having an alkylating effect. (Paper No. 23, p. 4). According to
appellants’, Windemuth teaches that the n-substituted carbamic ester can be made from “any hydroxyl
compound with equal success.” (Paper No. 23, p. 4, citing Windemuth, col. 3, lines 22-28).
Furthermore, appellants’ direct our attention to Windemuth’s teaching that the reaction of the hydroxyl
group-containing compounds with the isocyanates may be carried out at an NCO:OH ratio of less than,
equal to, or greater than 1. (Paper No. 23, p. 4, citing Windemuth, col. 4, lines 24-29).
In establishing a prima facie case of obviousness, the prior art reference (or references when
combined) must teach or suggest all the claim limitations. See In re Wilson, 424 F.2d 1382, 1385,
165 USPQ 494, 496 (CCPA 1970) (“All words in a claim must be considered in judging the
patentability of that claim against the prior art.”). Furthermore, any motivation to modify the prior art
references must flow from some teaching in the art that suggests the desirability or incentive to make the
modification needed to arrive at the claimed invention. In re Napier, 55 F.3d 610, 613, 34 USPQ2d
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1782, 1784 (Fed Cir. 1995); In re Gorman, 933 F.2d 982, 986-87, 18 USPQ2d 1885, 1888, (Fed.
Cir. 1991) (“When it is necessary to select elements of various teachings in order to form the claimed
invention, we ascertain whether there is any suggestion or motivation in the prior art to make the
selection made by the applicant. [Citations omitted] ... The extent to which such suggestion must be
explicit in, or may be fairly inferred from, the references, is decided on the facts of each case in the light
of the prior art and its relationship to the applicants’ invention.”).
The examiner states that the Windemuth reference renders appellants’ allophanate component
“prima facie” obvious. (Paper No. 24, p. 5). Yet, appellants’ claims require, among other things, the
following proportions and properties:
(i) an NCO content of from 3 to 16% by weight;
(ii) an average functionality of 1.8 to 4;
(iii) an allophanate group content of from 5 to 35% by weight, and an average functionality
of less than 1.5 at an NCO/OH equivalent ratio of 1.0:1.0 to 0.5:1.0;
(iv) a hydrocarbon chain content of 10 to 65% by weight;
(v) a distillable diisocyanate content of less than 0.5% by weight.
(See, for example, appellants’ claim 10). The examiner has failed to sufficiently identify where these
proportions and properties are taught or suggested by the cited prior art references. Nor are we able
to surmise the exact nature of the teaching or suggestion that is allegedly provided by the prior art that
would reasonably lead one skilled in the art to appellants’ claim invention.
The decision of the examiner to reject claims 10-20 under 35 U.S.C. § 103 over Windemuth in
view of Hicks is reversed.
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No time period for taking any subsequent action in connection with this appeal may be
extended under 37 CFR § 1.136(a).
REVERSED
FRED E. McKELVEY )
Senior Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
RICHARD E. SCHAFER ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
MICHAEL P. TIERNEY )
Administrative Patent Judge )
MT:yt
cc: BAYER CORPORATION
Patent Department
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100 Bayer Road
Pittsburgh, PA 15205-9741