Ex Parte Haberle et al

Patent Trial and Appeal Board

Mar 4, 2013

12430954 (P.T.A.B. Mar. 4, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte BASF SE
Inventors: Karl Häberle, Rainer Königer,
Eva Wagner and Klaus Dieter Höerner
____________________

Appeal 2012-000642
Application 12/430,954
Technology Center 1700
____________________

Before FRED E. McKELVEY, RICHARD E. SCHAFER and
LINDA M. GAUDETTE, Administrative Patent Judges.

McKELVEY, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2012-000642
Application 12/430,954

2

Statement of the case
BASF SE (“applicant”), the real party in interest (Brief, page 1), seeks 1
review under 35 U.S.C. § 134(a) of a final rejection dated 15 October 2010. 2
The application was filed in the USPTO on 28 April 2009. 3
The application on appeal was filed on 24 July 2003 as International 4
Application PCT/EP03/08099 which entered the national stage as to the United 5
States. 35 U.S.C. § 371. 6
The application on appeal claims priority of German patent application 7
102 38 146.1, filed 15 August 2002. 8
The application has been published as U.S. Patent Application Publication 9
2009/0211704 A1. 10
In support of prior art rejections, the Examiner relied on several prior art 11
documents. In view of the manner in which the appeal is presented in the Brief, 12
we need to discuss only one prior art patent and one textbook: 13
Hombach et al.
“Hombach”
U.S. Patent 4,663,337 5 May 1987
Odian PRINCIPLES OF POLYMERIZATION, pages
29-33 (2d ed.) ISBN 0-471-61020-8
1991

Hombach and Odian are prior art under 35 U.S.C. § 102(b). 14
Applicant includes the following documents in an Evidence Appendix of the 15
Brief: 16

Appeal 2012-000642
Application 12/430,954

3

Haeberle I

First Declaration of Karl Haeberle1

Dated: 27 July
2010

Haeberle II

Second Declaration of Karl Haeberle

Dated: 26 May
2008

Haeberle III

Third Declaration of Karl Haeberle,
including an Evonik Industries
VESTANAT® T 1890/100 data sheet

Dated: 3
December 2008

We have jurisdiction under 35 U.S.C. § 134(a). 1
Claims on appeal 2
Claims 1-14 are on appeal. Brief, page 2; Answer, page 3. 3
Claim 1, which we reproduce from page 1 of the Claim Appendix of the 4
Brief, reads: 5
A water-emulsifiable isocyanate composition comprising: 6
(C) at least one emulsifier obtained by reacting 7
(B) an isocyanurate of 1-isocyanato-3,5,5-8
trimethyl-5-isocyanatomethylcyclohexane (IPDI) with 9

1 In the oath filed 28 April 2009, the inventor’s name is spelled Häberle; in the
declarations the name is spelled Haeberle. We will refer to Haeberle.

Appeal 2012-000642
Application 12/430,954

4

at least one emulsifier (C1) comprising at least one 1
isocyanate-reactive group and at least one nonionic 2
hydrophilic group 3
and excluding an isocyanurate and/or biuret of 4
1,6-diisocyanatohexane (HDI) from (C); 5
(A) an isocyanurate and/or biuret of 6
1,6-diisocyanatohexane (HDI); and 7
(D) optionally, a solvent. 8
Claim 1 is not a model of clarity. 9
We understand Claim 1 to define a composition having two required 10
elements and one optional element. 11
A first required element, identified as an “emulsifier”, is made by reacting 12
(1) an isocyanurate of IPDI with (2) a “material” having at least one isocyanate-13
reactive group and at least one nonionic hydrophilic group. The first element 14
cannot contain an isocyanurate and/or biuret of HDI. An example of a “material” 15
is a monofunctional polyethylene oxide prepared stating from methanol 16
(Specification, page 22, Example 1): 17
Methanol + Ethylene oxide ────► Monofunctional polyethylene oxide 18
CH3OH + nCH2CH2O ────► CH3─O[CH2CH2O]n─H 19
A second required element is an isocyanurate and/or biuret of HDI. 20
A third optional element is a solvent. 21
Rejections 22
The Examiner has maintained two rejections in the Answer. 23

Appeal 2012-000642
Application 12/430,954

5

Rejection 1: Claims 1-14 stand rejected as being unpatentable under § 103 1
over Hombach “in view of” Laas, Lenz, Odian, Wild and Burkus. Answer, page 5. 2
Rejection 2: Claims 1-14 stand rejected as being unpatentable under § 103 3
over Hombach “in view of” Huyna-Ba, Lenz, Odian, Wild and Burkus. Answer, 4
page 11. 5
The rejections are based on the same evidence except that Rejection 1 relies 6
on Laas whereas Rejection 2 relies on Huyna-Ba. 7
In the Brief and with respect to both rejections, applicant does not separately 8
argue the patentability of Claims 2-14. Accordingly, we decide the appeal on the 9
basis of Claim 1. 37 CFR § 41.37(c)(1)(vii) 10
In addressing Claim 1, applicant in effect limits its argument to the 11
applicability of Hombach. In the analysis which follows, we likewise address 12
Hombach. 13
Rejection 1 and Rejection 2 stand or fall together. 14
Analysis 15
Hombach 16
Hombach is owned by applicant’s competitor—Bayer AG, 17
Hombach relates to a “polyisocyanate preparation dispersible in water”. 18
Col. 2:13-14. 19
Like the composition of applicant’s Claim 1, the Hombach “preparation” 20
comprises two required elements. 21
Hombach’s required element (a) corresponding to applicant’s second 22
required element is “an aliphatic polyisocyanate or a mixture of aliphatic 23
polyisocyanates. Col. 2:16-17. 24
1
2
3
4
5
6
7
8
9
10
11
12
13

Appeal
Applica

H
polyisoc
Col. 2:3
A
set out b
T
structur
isocyan
In
(also kn
Specific
In
isocyan
2012-0006
tion 12/43
ombach’s
yantes ba
7-39.
formula r
elow (col
he “OCN─
e with thre
ate used to
the case
own as HD
ation, pag
the case
atomethylc
42
0,954
required e
sed on alip
epresentat
. 2:60):
” and “─N
e nitrogen
make the
of an isocy
I), the X’
e 5, formu
of an isocy
yclohexan
lement (a)
hatic and/
ion of suit
CO” gro
s (N) is an
isocyanur
anurate m
s are hexa
la 1a.
anurate m
e (also kn

6
can be an
or cycloal
able eleme
ups are iso
isocyanur
ate.
ade from
methylene
ade from
own as IP
“isocyanu
iphatic diis
nt (a) isoc
cyanate gr
ate group
1,6-hexam
groups ─
1-isocyana
DI), the X
rate group
ocyantes.
yanate-iso

oups. Th
. The X’s
ethylene d
(CH2)6─.
to-3,5,5,-t
’s having t
-containin
”
cyanurate
e ring
depend on
iisocyanat
See
rimethyl-5
he structu
g
s is
the
e
-
re:

Appeal 2012-000642
Application 12/430,954

7

The isocyanurate made from IPDI has four (4) cyclic groups including the 1
isocyanurate group. 2
Hombach’s required element (b) corresponding to applicant’s first 3
requirement element is an “emulsifier” in a quantity sufficient to ensure the 4
dispersibility of the polyisocyanates. Col. 2:18-19. 5
Hombach’s required element (b) is made by reacting an aliphatic 6
polyisocyanate with a nonionic ethylene oxide polyether alcohol. Col. 4:6-8. 7
A suitable nonionic ethylene oxide polyether alcohol is made from methanol 8
(col. 4:14) and from “preferably about 15-60 ethylene oxide units.” Col. 4:19. 9
Hombach Example 1 describes preparation of an emulsifier from (1) an 10
isocyanurate made from HDI (Polyisocyanate 1—col. 6:63 to col. 7:2) and (2) a 11
monofunctional polyether alcohol (Polyether 1—col. 6:48-50). The emulsifier of 12
Example 1 is not within the scope of applicant’s first required elements because it 13
is made from HDI. Example 12 describes an emulsifier made from (1) an 14
isocyanurate made from IPDI (Polyisocyanate 5—col. 7:23-28) and (2) the same 15
monofunctional polyether alcohol used in Example 1. See col. 8: Table 1, 16
Example 12). The emulsifier of Example 12 falls within the scope of applicant’s 17
first required element. 18

Appeal 2012-000642
Application 12/430,954

8

As is apparent, applicant’s two required elements are described by 1
Hombach. 2
Applicant’s arguments 3
According to applicant, Hombach fails to suggest the use of different 4
isocyanurates for making its elements (a) and (b). Further according to applicant, 5
there is nothing in Hombach to suggest the use of a combination of (1) an HDI 6
isocyanurate as Hombach’s component (a) (corresponding to applicant’s second 7
required element) and (2) of an emulsifler based on IPDI as Hombach’s element 8
(b) (corresponding to applicants first required element). Brief, page 3. 9
The Examiner found otherwise. Answer, page 6: 10
“Polyisocyantes suitable for the production of the emulsifiers include, 11
in addition to the already above-mentioned polyisocyanates, other 12
aliphatic diisocyanates [Hombach, col. 4:9-11].”which shows that the 13
emulsifier can use a different polyisocyanate than polyisocyanate (a) 14
and it can be one of the previously mentioned isocyanates [Hombach, 15
col. 2:37-43], including isocyanurate of . . . [IPDI] 16
The Examiner’s finding is supported by the evidence. 17
Hombach describes the use of its element (b) as an emulsifier. That element 18
can be an isocyanurate of IPDI and a monofunctional polyether alcohol. Hombach 19
describes the use of an isocyanurate of HDI as its element (a). Applicant is using 20
known elements in a known manner to achieve predictable results, i.e., a 21
preparation dispersible in water. Hombach, col. 2:14; Specification, page 25:1 22
(“emulsifiability”). 23

Appeal 2012-000642
Application 12/430,954

9

Applicant seeks to remove from the public domain compositions that one 1
skilled in the art should be free to use, i.e., a composition made up of (1) Hombach 2
element (a) based on an isocyanurate of HDI and (2) Hombach element (b) based 3
on an isocyanurate of IPDI. Absent an unexpected result, § 103(a) precludes 4
applicant from removing the compositions from the public domain. 5
Unexpected results 6
The Examiner declined to credit applicant’s unexpected results evidence, 7
finding that the data in the Specification Examples and the Haeberle Declarations 8
was not convincing. 9
According to applicant, its Example 2 is within the teaching of Hombach. 10
Brief, page 4. However, according to counsel for applicant: 11
polyisocyanate b1 [described in Example 2] is only weakly 12
emulsifiable, yielding a coarse emulsion, despite the fact that the 13
content of the emulsifying polyethylene glycol is 11.2 wt%[2] and, 14
therefore, at the upper limit taught by Hombach. This [weak 15
emulsifiability] is an [said to be an] unexpected result, because one of 16
ordinary skill in the art would have expected good emulsifiability due 17
to such a high content of emulsifier, based on the teaching of 18
Hombach. 19
An argument of counsel cannot take the place of evidence in the record. In 20
re Walters, 168 F.2d 79, 80 (CCPA 1948). Counsel’s unsupported “testimony” 21

2 Counsel does not indicate the basis for the 11.2%. We assume that it was
determined from the use of 60 g of isocyanate B and 6.7 g of the monofunctional
polyethylene oxide. 6.7 / 60 = 0.112 = 11.2%. Specification, Example 2, line 2.

Appeal 2012-000642
Application 12/430,954

10

provides no basis for what one skilled in the art would have expected. More to the 1
point is that the “coarse emulsion” mentioned by counsel is a reference in the 2
Specification only to applicant’s first element. But, Hombach like applicant 3
requires two elements. According to applicant’s Example 2, once applicant’s first 4
element is added to applicant’s second element, “better emulsifiabiilty” is said to 5
result. Thus, applicant gets a result consistent with Hombach when its two element 6
composition is used: a “preparation dispersible in water . . .” Col. 2:14. 7
Applicant argues that the claimed invention “additionally yields improved 8
coating . . . hardness . . .” Brief, page 5, first full sentence. According to 9
applicant, improved hardness is an unexpected result. An applicant attempting to 10
establish unexpected results must do so with clear and convincing evidence. In re 11
Heyna, 360 F.2d 222, 228 (CCPA 1966) (“It was incumbent upon appellants to 12
submit clear and convincing evidence to support their allegation of unexpected . . . 13
property.”). See also McClain v. Ortmayer, 141 U.S. 419, 429 (1891) (conclusive 14
evidence needed to establish new function). 15
Some of applicant’s data supporting alleged increased hardness is 16
summarized in the following table. 17

Appeal 2012-000642
Application 12/430,954

11

Baking
Temp.
Pendulum damping (high value means increased hardness)
ºC Ex. 2.1 Ex. 2.2 Ex. 2.3 Ex. 2.4 Comparative
60 24 28 32 42 26
70 39 58 53 62 40
80 55 72 70 76 50
90 62 80 73 94 58
100 69 91 85 107 67
110 71 94 96 109 70
120 72 96 100 111 73

The Examiner observed that the claims on appeal “require no amounts . . .” 1
Answer, page 27, second line from bottom. What the Examiner means is that the 2
claims do not call for any particular hardness. On the record, it is difficult to 3
determine precisely what new function applicant has achieved. Thus a 4
“Comparative” hardness of 73 at a baking temperature of 120 ºC is higher than an 5
inventive Example 2.1 hardness of 55 at a baking temperature of 80 ºC. The 6
claims do not call for any particular hardness at any particular baking temperature. 7
The record reveals that coatings based on IPDI trimer (i.e., IPDI isocyanurate) 8
results in coating having comparatively high levels of hardness that can be 9
lessened by addition of HDI derivatives. Additionally, the Examiner found that the 10
presence of cyclic groups would be expected to increase hardness. Answer, page 8 11
(last full paragraph) and page 27, first full paragraph. The Examiner’s finding is 12
consistent with Odian which states on page 32: “The rigidity of polymer chains is 13
especially high when there are cyclic structures in the main polymer chains.” An 14
IPDI isocyanurate has several cyclic structures. Increased hardness seemingly 15
would have been expected and it is not apparent what degree of increased hardness 16

Appeal 2012-000642
Application 12/430,954

12

would be necessary to establish that applicant has found a new and unexpected 1
function. 2
Likewise, the claims do not call for any particular energy needed to 3
emulsify. Like Example 2, in his “First” Declaration, inventor Haeberle testifies 4
that a mixture of a hydrophilicized IPDI isocyanurate and an HDI isocyanuarate 5
“exhibit better emulsifiabiilty . . .” First Declaration, page 2, third full paragraph. 6
The difference between applicant’s “better emulsifiability” and Hombach’s 7
“dispersible in water” (col. 2:14) is not readily apparent. 8
The “First” Declaration also presents hardness data. See page 3. However, 9
that data does not answer the defects in the data resulting from Example 2. 10
Applicant seemingly relies on what is characterized as a “higher ultimate 11
hardness.” Brief, page 7, fourth full paragraph. What applicant means by 12
“ultimate” is not at all clear. To the extent that applicant means a hardness at a 13
baking temperature of 120 ºC, no such hardness appears in the claims. 14
We have no basis for disagreeing with the weight the Examiner assigned to 15
the experimental data reported in the Specification and the Declarations. 16
Other arguments 17
We have considered applicant’s remaining arguments and find none that 18
warrant reversal of the Examiner’s rejections. Cf. In re Antor Media Corp., 689 19
F.3d 1282, 1294 (Fed. Cir. 2012). 20
Other observations 21
In addition to the points discussed above responding to applicant’s 22
unexpected results arguments, we will note that we are in general agreement with 23
the Examiner’s observations concerning those arguments. 24

Appeal 2012-000642
Application 12/430,954

13

We have not found it necessary to consider or rely on the Examiner’s 1
observations (1) concerning his 20 years of examining polyurethane applications 2
(Answer, page 20:6-9) or (2) having received a sample of polypropylene oxide 3
from a representative of BASF (Answer, page 22:1-3). Our determination of the 4
level of skill was determined solely on the evidence without regard to the two 5
observations mentioned above. See Fromson v. Anitec Printing Plates, Inc., 132 6
F.3d 1437, 1448 (Fed. Cir. 1997) (Mayer, C.J., concurring; I "know" what 7
anodization means from my own undergraduate studies and experiments; the 8
concept is not difficult and I need no further education to grasp it. I happen to 9
have a dictionary in my chambers from the era pertinent here, which would 10
confirm my "knowledge" about anodization. ***. But, I am neither an expert in 11
the field nor one of ordinary skill in the art despite how much I think I "know" 12
about a process I once studied. Nor do my colleagues on this court or the district 13
court possess such expertise, and even if they did, they would have to defer to the 14
record made in the case.) 15
Decision 16
Upon consideration of the appeal, and for the reasons given herein, it is 17
ORDERED that the decision of the Examiner rejecting claims 1-14 as 18
being unpatentable over the prior art is affirmed. 19
FURTHER ORDERED that no time period for taking any 20
subsequent action in connection with this appeal may be extended under 37 C.F.R. 21
§ 1.136(a)(1)(iv). 22
AFFIRMED 23
24