Ex Parte Brauer et al

Board of Patent Appeals and Interferences

Apr 25, 2012

11058541 (B.P.A.I. Apr. 25, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte WOLFGANG BRAUER, HERBERT
HEIDINGSFELD, HENRICUS PEERLINGS, and LUDWIG
TRABERT
____________________

Appeal 2010-006151
Application 11/058,541
Technology Center 1700
____________________

Before CATHERINE Q. TIMM, JEFFREY T. SMITH, and
KAREN M. HASTINGS, Administrative Patent Judges.

PER CURIAM.

DECISION ON APPEAL

STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision to reject claims 1, 4, 5, and 9 under 35 U.S.C. § 103(a) as obvious
Appeal 2010-006151
Application 11/058,541

2
over Müller (US 5,905,133, issued May 18, 1999) in view of any one of
Alberino (US 4,321, 333, issued Mar. 23, 1982), Sugita (US 4,294,951,
issued Oct. 13, 1981), or Konig (US 3,644,457, issued Feb. 22, 1972). We
have jurisdiction under 35 U.S.C. § 6(b).
For the reasons presented in the Answer, we AFFIRM.
Appellants do not argue the claims separately, therefore, we select
claim 1 as representative for reviewing the issues on appeal. Claim 1 is
reproduced in the Claims Appendix at page 24 of Appellants’ Brief.
After considering the evidence as a whole in light of the issues raised
by Appellants’ arguments in the briefs, we determine that the preponderance
of the evidence supports the Examiner’s conclusion of obviousness as set
forth in the Answer at pages 3 through 7.
The Examiner’s rejection is based upon the substitution of a known
organic diisocyanate reactant, urethane-modified liquid 4,4’-
diphenylmethane diisocyanate taught by Müller, with other analogous liquid
isocyanate-based prepolymers taught by Alberino, Sugita, and Konig
(secondary references). Alberino, Sugita, and Konig provide evidence that
the isocyanate-based prepolymers were known as organic diisocyanate
reactants for forming urethanes. The evidence supports the Examiner’s
conclusion of obviousness based upon substitution of one known reactant for
another known and analogous reactant.
The Examiner finds that the prepolymers of the secondary references
are formed in accordance with step (a) of claim 1. Using the prepolymer of
any of the secondary references as the organic diisocyanate-based
prepolymer of Müller, therefore, suggests forming Appellants’ prepolymer I
in a first reactor as required by step (a) of claim 1, reacting it with a polyol
Appeal 2010-006151
Application 11/058,541

3
to form another prepolymer (Appellants’ prepolymer II) as taught by Müller
and required in step (b) of claim 1, and then reacting that second prepolymer
with a chain extender as further taught by Müller and required by step (c) of
claim 1.
Because Müller lists the organic diisocyanate as a starting material for
forming Müller's prepolymer (prepolymer II of claim 1), each of the
combinations of references suggests forming prepolymer I, a diisocyanate-
based prepolymer, in a separate reactor from prepolymer II as claimed.
Most of Appellants’ arguments do not address the specific rationale
the Examiner applies to support the rejection (Br. 4-13 and 16-22; Reply Br.
1-5). In light of this fact, these arguments are not convincing. With respect
to Appellants’ argument that they have overcome the rejection with a
showing of unexpected results, we agree with the Examiner that those results
are not probative because they do not compare the claimed invention to the
closest prior art (Ans. 9-10).
DECISION
The Examiner’s decision is affirmed.
TIME PERIOD FOR RESPONSE
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).

AFFIRMED

ssl