Ex Parte Dorr et al

Patent Trial and Appeal Board

Oct 10, 2013

12001830 (P.T.A.B. Oct. 10, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
12/001,830 12/13/2007 Sebastian Dorr 15778-00061-US 4886
23416 7590 10/11/2013
NOVAK DRUCE CONNOLLY BOVE + QUIGG LLP
P O BOX 2207
WILMINGTON, DE 19899-2207
EXAMINER
SALVITTI, MICHAEL A
ART UNIT PAPER NUMBER
1767
MAIL DATE DELIVERY MODE
10/11/2013 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________

Ex parte SEBASTIAN DORR, HEINO MULLER,
HELMUT MULLER, and TANJA HEBESTREIT
________________

Appeal 2012-008345
Application 12/001,830
Technology Center 1700
________________

Before ADRIENE LEPIANE HANLON, CHUNG K. PAK, and
TERRY J. OWENS, Administrative Patent Judges.

OWENS, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2012-008345
Application 12/001,830

2
STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-5. We have jurisdiction under 35 U.S.C. § 6(b).
The Invention
The Appellants claim a process for making a self-crosslinking
aqueous polyurethane dispersion. Claim 1 is illustrative:
1. A process for preparing self-crosslinking aqueous
polyurethane dispersions, comprising the following steps:

I. reacting a
a1) polyisocyanate with a mixture of
a2) anionic hydrophilicizing agent containing at least one
isocyanate-reactive group and having an average OH
functionality of ≥1 and
a3) at least one polyol component having an average OH
functionality of >l, either the mixture of a2) and a3) or
component al) comprising k) at least one catalyst,

II. obtaining an OH-functional and NCO-free polyurethane
from step I, the polyurethane subsequently being mixed with

III. a4) a reactive blocking agent for isocyanate groups selected
from the group consisting of oximes, amines, pyrazoles, and
mixtures thereof,

IV. subsequently reacting this mixture from step III with
a5) one or more polyisocyanates being identical to or different
from the polyisocyanate used in a1), and subsequently

V. obtaining a physical mixture of OH-functional, NCO-free
polyurethane and blocked polyisocyanate from step IV, wherein
subsequently either

VI. the acid groups of the OH-functional polyurethane are
subjected to total or partial deprotonation by addition of a6) a
neutralizing agent
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Application 12/001,830

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VII. and the polyurethane obtained from this step VI is
dispersed in water or step VII takes place before step VI.

The References
Burkhardt US 4,098,933 Jul. 4, 1978
Melchiors US 2002/0165334 A1 Nov. 7, 2002
The Rejections
The claims stand rejected under 35 U.S.C. § 103 as follows: claims 1-
4 over Melchiors and claim 5 over Melchiors in view of Burkhardt.
OPINION
We affirm the rejections.
The Appellants argue claims 1-4 as a group and, although an
additional reference is applied in the rejection of claim 5, the Appellants do
not provide a substantive argument as to the separate patentability of that
claim (Br. 3-7). We therefore limit our discussion to one claim, i.e., claim 1,
which is the sole independent claim. Claims 2-5 stand or fall with that
claim. See 37 C.F.R. § 41.37(c)(1)(vii) (2007).
The Appellants’ claim 1 requires mixing an OH-functional and NCO-
free polyurethane with a reactive blocking agent for isocyanate groups,
wherein the reactive blocking agent can be a pyrazole, and then reacting that
mixture with one or more polyisocyanates.
Melchiors mixes an OH-functional and NCO-free polyurethane with a
polyisocyanate which has been blocked with a pyrazole derivative (¶¶ 0007-
11, 0035).
The Appellants argue that one of ordinary skill in the art would not
have mixed Melchiors’ OH-functional polyurethane with an unblocked
Appeal 2012-008345
Application 12/001,830

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polyisocyanate because such a person would have expected some of the
unblocked polyisocyanate to react with the polyurethane’s OH groups
instead of the pyrazole derivative blocking agent, thereby resulting in
premature crosslinking which would render the composition unsuitable for
its intended purpose of crosslinking after application to a surface (Br. 4-5).
In Melchiors’ Example D9 an OH-functional, NCO-free polyurethane
resin melt is prepared by heating a mixture of polyols and a diisocyanate to
130 ºC and keeping the mixture at that temperature until no NCO groups can
be detected (¶¶ 0100, 0103). The resin melt then is cooled to 65 ºC and
mixed with a blocked polyisocyanate prepared by mixing a polyisocyanate
with a pyrazole derivative blocking agent at 50 ºC in such a way that the
temperature does not exceed 65 ºC (¶¶ 0062, 0102). Thus, Melchiors would
have indicated to one of ordinary skill in the art that isocyanate groups react
with a pyrazole derivative blocking agent at a lower temperature (50 ºC)
than the temperature (130 ºC) required to react them with OH groups to form
urethane groups.
Establishing a prima facie case of obviousness requires showing that
one of ordinary skill in the art would have had both an apparent reason or
suggestion to modify the prior art and predictability or a reasonable
expectation of success in doing so. See KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398, 418 (2007); In re Vaeck, 947 F.2d 488, 493 (Fed. Cir. 1991).
The Examiner finds that Melchiors would have fairly suggested, to
one of ordinary skill in the art, mixing the pyrazole derivative blocking agent
with the OH-functional polyurethane after the OH-functional polyurethane
has been cooled from 130 ºC to 65 ºC (¶¶ 0100, 0102), and then reacting the
pyrazole derivative blocking agent with a polyisocyanate at the lower
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Application 12/001,830

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temperature to reduce the equipment and process step requirements, thereby
resulting in cost and time savings (Ans. 7). Because the Appellants have not
challenged that finding, we accept it as fact. See In re Kunzmann, 326 F.2d
424, 425 n.3 (CCPA 1964). Melchiors’ indication that at the lower 65 ºC
temperature the added polyisocyanate’s isocyanate groups would react with
the pyrazole derivative blocking agent but not the polyurethane’s OH groups
(¶¶ 0062, 0100, 0102) would have provided one of ordinary skill in the art
with a reasonable expectation of success in doing so.1
Thus, we are not persuaded of reversible error in the rejections.
DECISION/ORDER
The rejections under 35 U.S.C. § 103 of claims 1-4 over Melchiors
and claim 5 over Melchiors in view of Burkhardt are affirmed.
It is ordered that the Examiner’s decision is affirmed.
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

kmm

1 The Appellants’ argument regarding reaction between aliphatic amines and
isocyanate groups (Br. 5-6) is not well taken for the reasons given by the
Examiner (Ans. 16).