Ex parte GILLIS et al.

Board of Patent Appeals and Interferences

Oct 30, 1998

07925347 (B.P.A.I. Oct. 30, 1998)

Application for patent filed August 4, 1992.1
1
Paper No. 18
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________
Ex parte HERBERT R. GILLIS
and JOHN R. ROBERTSON
______________
Appeal No. 95-0999
Application 07/925,3471
_______________
ON BRIEF
_______________
Before KIMLIN, JOHN D. SMITH and PAK, Administrative Patent
Judges.
PAK, Administrative Patent Judge.

DECISION ON APPEAL
Gillis et al. (appellants) appeal from the examiner’s
final rejection of claims 1 through 21 and 27 through 32,
which are all of the claims remaining in the application.
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Application 07/925,347
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According to appellants (Brief, pages 3 an 4):
Claims 1-21 and 27-32 stand or fall together
with respect to the rejection under 35 U.S.C. §
102(b) over Gillis.
Claims 1-21 and 27-32 stand or fall together
with respect to the rejection under 35 U.S.C. §
102(b) over Cassidy.
Therefore, for purposes of this appeal, we will limit our
discussion to the broadest claim on appeal, claim 1, which is
reproduced below:
1. A liquid adhesive/sealant reaction system for use in
the preparation of lignocellulosic and cellulosic composites
comprising:
(a) a polyisocyanate having aromatically linked
isocyanate groups and a number average isocyanate
functionality in the range of 1.8 to 4.0; and
(b) a curing agent having at least one imino- or enamino-
functional linkage wherein the molecular number ratio of the
total number of isocyanate groups in the polyisocyanate to the
total number of imino- or enamino-functional linkages is at
least 2:1.
The references of record relied upon by the examiner are:
Gillis Jr. et al. (Gillis) 4,794,129 Dec. 27,
1988
Cassidy et al. (Cassidy) 4,935,460 Jun.
19, 1990
Appeal No. 95-0999
Application 07/925,347
The examiner has expressly withdrawn the rejection of claim 1 under 2
35 U.S.C. § 112, second paragraph. See Answer, pages 2 and 5.
3
Claims 1-21 and 27-32 stand rejected under 35 U.S.C. §
102 (b) as anticipated by Gillis or Cassidy.2
We have carefully reviewed the entire record, including
all of the arguments advanced by the examiner and appellants
in support of their respective positions. This review leads
us to conclude that the examiner’s § 102 rejections are well-
founded. Accordingly, we will sustain the examiner’s § 102
rejections for substantially those reasons set forth in the
Answer. We add the following primarily for emphasis.
The claimed subject matter is directed to a liquid
adhesive/sealant “reaction system” which comprises a
particular polyisocyanate and a curing agent having at least
one imino- or enamino-functional linkage. Appellants define
“imino-functional” so broadly as to include thousands, if not
millions, of compounds having at least one imino- or enamino-
functional linkage. See specification, pages 8-13.
Appellants also broadly define “reaction system” as including
a combination of at least two containers containing the
claimed components individually for the purpose of using them
Appeal No. 95-0999
Application 07/925,347
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as an adhesive/sealant. Specifically, the specification
states (page 8):
“Reaction system” as used herein means a system
or assemblage of reaction components which, in the
system, are unreacted or not fully reacted but which
in use, are reacted with each other. (Emphasis
added).
Thus, we construe the claimed liquid adhesive/sealant
“reaction system” as including or covering a combination of at
least two containers, with each container having only one of
at least one particular polyisocyanate and at least one
broadly recited component having at least one imino- or
enamino-functional linkage. The amounts of the components
releasable from the containers are such that they, upon
combining, form solid polymer, e.g., dry sealant, at room
temperature within a short time period. See specification,
page 3. According to appellants, the molecular number ratio
of the total number of isocyanate groups in the polyisocyanate
to the total number of the imino-or enamino-functional linkage
is at least 2:1.
Appellants do not dispute that Gillis and Cassidy
individually describe the claimed polyisocyanate and the
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Application 07/925,347
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claimed curing agent having an imino- or enamino-functional
linkage. See Brief, page 7. Nor do appellants dispute the
following factual finding:
The weight ratio of polyisocyanate to curing
agent of [the applied prior art] is 9:1 to 1:9 and
the preferred ratio of isocyanate groups to
isocyanate reactive groups is between 0.70 and 1.90
([see, e.g. Gillis,] column 21, lines 3-11). Note
that the curative must include imino groups as
defined at [e.g. Gillis,] column 3, line 51 to
column 4, line 7. The instant claims recite
comprising and therefore do not exclude the
additional isocyanate reactive groups of the
patentee. The number of isocyanate groups to imino
groups falls within that of the appellant’s claims
in the upper portion of the patentee’s preferred
range of isocyanate groups to isocyanate reactive
groups where the isocyanate groups other than imino
and enamino groups are disregarded as can be clearly
seen mathematically. Furthermore, based upon the
weight ratio of polyisocyanate to curing agent
([see, e.g., Gillis]column 21, lines 3-8[)] and the
molecular weights and functionalities of the
reactants ([see, e.g., Gillis,] column 3, line 39 to
column 4, line 21[)], it is clear mathematically
that a large majority of the compositions
encompassed by [the applied prior art] will have 2
or more isocyanate groups per imino group. (Compare
Answer, pages 4 and 5, with Brief, pages 7-12).
Given the preference for the limited molecular number
ratios, inclusive of the claimed ratios, we find that the
claimed molecular number ratios would have been readily
envisaged by one skilled in the art from reading the
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Application 07/925,347
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disclosure of either Gillis or Cassidy. See In re Schaumann,
572 F.2d 312, 316, 197 USPQ 5, 9 (CCPA 1978)(prior art
preferred genus which disclosed limited species, inclusive of
claimed species, constituted description
of the claimed species within the meaning of 35 U.S.C. §
102(b));
In re Petering, 301 F.2d 676, 681, 133 USPQ 275, 280 (CCPA
1962) (prior art genus containing only 20 compounds inherently
anticipated a claimed species within the genus because “one
skilled in [the] art would . . . envisage each member” of the
genus). Accordingly, we agree with the examiner that the
claimed subject matter is fully described by either Gillis or
Cassidy within the meaning of 35 U.S.C. § 102 (b).
In reaching this conclusion, we note appellants’ argument
that both Gillis and Cassidy are directed to “systems for
preparing polymers by reaction injection molding processes
(emphasis our own).” See Brief, page 7. However, we also
note that the claimed subject matter is directed to a system,
rather than to a composition. The claimed system comprises
two individually packaged known components for the purpose of
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Application 07/925,347
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mixing them so that they can be used as an adhesive/sealant.
Both Gillis and Cassidy also place the same components in
separate containers before mixing them for the purpose of
preparing polymers by reaction injection molding processes.
See, e.g., column 20, lines 49-52. While the system of
Gillis or Cassidy is used for a purpose different than
appellants’, we find that it is identical to the claimed
system.
Appellants argue that the examiner fails to consider the
preamble of the claims on appeal. In this regard, appellants
ask us to focus on the term “adhesive/sealant”. Appellants
then go onto argue (Brief, page 12) that:
even though the present claims recite a
“composition”, the limitations in the preamble
characterizing the composition as “adhesive/sealant
reaction systems” must be considered by the
Examiner.
In so arguing, appellants themselves fail to consider the
claim preamble as a whole, including appellants own definition
of “reaction system”. As indicated supra, appellants claim
systems (not compositions) which are taught by either Gillis
or Cassidy.
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Application 07/925,347
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In view of the foregoing, we affirm the examiner’s
decision rejecting claims 1-21 and 27-32 under 35 U.S.C. § 102
(b).
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED
EDWARD C. KIMLIN )
Administrative Patent Judge )
)
)
)
JOHN D. SMITH ) BOARD OF
PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
CHUNG K. PAK )
Administrative Patent Judge )

CKP/cam
Patent and Trademark Administrator
ICI Americas Inc., Law Dept.
Appeal No. 95-0999
Application 07/925,347
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Intellectual Property Section
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Wilmington, DE 19897