Ex Parte Gloyer et al

Board of Patent Appeals and Interferences

Mar 30, 2006

09802760 (B.P.A.I. Mar. 30, 2006)

Application for patent filed March 8, 2001.1
1
The opinion in support of the decision being entered today for
publication and is not binding precedent of the Board.
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte PAUL GLOYER, GEORGE R. WALGROVE, III,
CRISTINA DEJESUS and WILLIAM B. VREELAND

_____________
Appeal No. 2006-0739
Application 08/802,7601
______________
ON BRIEF
_______________
Before PAK, WARREN, and WALTZ, Administrative Patent Judges.
PAK, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal from the examiner’s final
rejection of claims 1, 3 through 10, 25 through 33 and 47.
Claims 11 through 24, 34 through 46 and 48, the only other claims
pending in the present application, stand withdrawn from
consideration by the examiner as being directed to a non-elected
invention. We have jurisdiction pursuant to 35 U.S.C. § 134.
Appeal No. 2006-0739
Application No. 09/802,760
2
APPEALED SUBJECT MATTER
Claims 1, 25 and 47 are representative of the subject matter
on appeal and read as follows:
1. A polyurethane elastomer comprising the
reaction product of:
a polyisocyanate prepolymer formed by reacting an
isocyanate with a polyol, said polyisocyanate
prepolymer being present in an amount of from 45 to 70
weight percent based on total weight of the elastomer
composition;
a polyether polyol prepolymer present in an amount
of from 25 to 50 weight percent based on total weight
of the elastomer composition; and
a hardener mixture comprising at least one
additional polyol and at least one charge-control
agent, the at least one charge control agent being a
polyol capable of being copolymerized with the
polyisocyanate prepolymer, the polyether polyol, and
the hardener mixture, the hardener mixture being
present in an amount of from 1 to 25 weight present of
the total elastomer composition,
the amounts of the polyisocyanate prepolymer, the
polyether polyol, and hardener mixture being selected
such that the equivalent ratio of hydroxyl
functionality to isocyanate functionality is from 0.96
to 1.04.
25. A polyurethane elastomer comprising the
reaction product of:
a polyisocyanate prepolymer formed by reacting an
isocyanate with a polyol, said polyisocyanate
prepolymer being present in an amount of from 45 to 70
weight percent based on total weight of the elastomer
composition;
a polyether polyol prepolymer present in an amount
of from 25 to 50 weight percent based on total weight
of the elastomer composition; and
a hardener mixture comprising at least one
additional polyol and at least one charge-control agent
Appeal No. 2006-0739
Application No. 09/802,760
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capable of being copolymerized with the polyisocyanate
prepolymer, the polyether polyol prepolymer, and the
hardener mixture such that the charge-control agent is
covalently bonded to the polyurethane elastomer, the
hardener mixture being present in an amount of from 1
to 25 weight percent of the total elastomer
composition,
the amounts of the polyisocyanate prepolymer, the
polyether polyol prepolymer, and hardener mixture being
selected such that the equivalent ratio of hydroxyl
functionality to isocyanate functionality is from 0.96
to 1.04, and the charge-control agent is present in an
amount of less than 2 weight percent based on total
weight of the elastomer.
47. A polyurethane elastomer comprising:
a polyisocyanate prepolymer formed by reacting an
isocyanate with a polyether polyol, said polyisocyanate
prepolymer being present in an amount of from 45 to 70
weight percent based on total weight of the elastomer
composition;
a polyether polyol prepolymer present in an amount
of from 25 to 50 weight percent based on total weight
of the elastomer composition; and
a hardener mixture comprising at least one
additional polyol and at least one polyol charge-
control agent, the hardener mixture being present in an
amount of from 1 to 25 weight percent of the total
elastomer composition;
the amounts of the polyisocyanate prepolymer, the
polyether polyol prepolymer, and the hardener mixture
being selected such that the equivalent ratio of
hydroxyl functionality to isocyanate functionality is
from 1.00 to 1.04, and the charge-control agent is
present in an amount of less than 1 weight percent
based on total weight of the elastomer, the polyol
charge-control agent being selected from at least one
of formula (I) or formula(II):
Appeal No. 2006-0739
Application No. 09/802,760
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wherein R represents:1
R represents sulfonate, oxyphenylene sulfonate,6
oxycyclohexylene sulfonate, or p-
toluenesulfonamidosulfonyl;
R represents oxyphenylene sulfonate,2
oxycyclohexylene sulfonate, or p-
toluenesulfonamidosulfonyl;
R presents:7
Appeal No. 2006-0739
Application No. 09/802,760
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R represents a straight or branched chain3
alkylene group having 2 to 7 carbon atoms;
R is the same as R or is4 3
R is the same as R ;5 3
x is from 2 to 7;
m and n are integers which together are of
sufficient value to achieve an R weight average1
molecular weight of 300 to 30,000;
p and q in are integers which together are of
sufficient value to achieve an R weight average7
molecular weight of 300 to 30,000; and
M represents hydrogen, an alkali metal, ammonium,
6 5 3 3or P (C H ) CH .
+

PRIOR ART
The prior art references relied upon by the examiner are:
Chen et al. (Chen) 4,729,925 Mar. 8, 1988
Schlueter, Jr. et al. (Schlueter) 5,286,570 Feb. 15, 1994
Ramos et al. (Ramos) 0 604 334 A1 Jun. 29, 1994
(Published European Patent Application)
Appeal No. 2006-0739
Application No. 09/802,760
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REJECTIONS
Claims 1, 3 through 10, 25 through 33 and 47 stand rejected
under 35 U.S.C. § 103(a) as unpatentable over the combined
disclosures of Schlueter, Chen and Ramos.
OPINION
For the reasons set forth in the Brief and the Reply Brief,
we reverse the aforementioned § 103 rejection. We add the
following primarily for emphasis and completeness.
As evidence of obviousness of the claimed subject matter
under § 103, the examiner relies on the combined disclosures of
Schlueter, Chen and Ramos. See the Answer, page 3. According to
the examiner (id.):
Schlueter discloses polyurethanes (example II) made
from 50 wt.% prepolymer, 38 wt.% polyether polyol and
25 wt.% hardener comprising a polyol and less than 2
wt% of a charge control agent, and made at an NCO/OH
ratio of 0.96 and having a resistivity value of 3x10 . 9
Schlueter differs from the claims by not showing a
charge control agent that becomes chemically
incorporated into the polyurethane molecule.
The examiner then relies on Chen and Ramos which are said to show
the claimed charge control agent. Id. Based on these teachings,
the examiner concludes (the Answer, page 4) that:
It would have been obvious to one of ordinary skill in
the art at the time the invention was made to use the
charge control agents of Chen and Ramos in the
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Application No. 09/802,760
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polyurethane of Schlueter’s formulation to prevent the
charge control agent from leaching out.

The examiner’s reasoning has two flaws. First, we observe
that Example II of Schlueter relied upon by the examiner does not
mention the amount of polyisocyanate prepolymer used in terms of
a percentage based on the total weight of a polyurethane
elastomer composition. See column 10, line 65 to column 11, line
38. However, the examiner has not explained how the percentage
of polyisocyanate prepolymer used in Example II of Schlueter is
obtained. See the Answer in its entirety. Nor has the examiner
explained why the appellants’ calculation of the percentage of
polyisocyanate prepolymer used in Example II of Schlueter is
incorrect. Compare the Brief, pages 16-21, and the Reply Brief,
pages 1-3, with the Answer in its entirety.
Second, as urged by the appellants (the Brief, pages 7-15)
Schlueter employs a particular polyurethane elastomer due to the
type of a charge control agent employed. Schlueter teaches the
importance of employing its particular charge control agent for
the specific polyurethane elastomer described therein. See
column 4, lines 26-43 and column 7, line 25 to column 8 line 8.
However, the examiner has not adequately explained why one of
ordinary skill in the art would have selected the particular
Appeal No. 2006-0739
Application No. 09/802,760
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polyurethane elastomer described in Schlueter with the charge
control agents described in Chen and Ramos. In re Kotzab, 217
F.3d 1365, 1371, 55 USPQ2d 1313, 1317 (Fed. Cir. 2000)
(“[P]articular findings must be made as to the reason the skilled
artisan, with no knowledge of the claimed invention, would have
selected the components for combination in the manner claimed.”).
From our perspective, to modify the polyurethane elastomer
composition of Schlueter in the manner proposed by the examiner
is to destroy the invention on which Schlueter is based. Ex
parte Hartman, 186 USPQ 366, 367 (Bd. App. 1974).
On this record, we are constrained to agree with the
appellants that the examiner has not carried the burden of
establishing a prima facie case of obviousness. In re Oetiker,
977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992).
Accordingly, we reverse the examiner’s decision rejecting the
claims on appeal under § 103(a).
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Application No. 09/802,760
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CONCLUSION
In view of the foregoing, we reverse the examiner’s decision
rejecting the claims on appeal under § 103(a).
REVERSED
CHUNG K. PAK )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
CHARLES E. WARREN ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
THOMAS A. WALTZ )
Administrative Patent Judge )
CKP:sld
Appeal No. 2006-0739
Application No. 09/802,760
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MARK G. BOCCHETTI
EASTMAN KODAK COMPANY
343 STATE STREET
ROCHESTER, NY 14650-2201