Ex Parte Haider et alDownload PDFPatent Trial and Appeal BoardMay 14, 201814108865 (P.T.A.B. May. 14, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/108,865 12/17/2013 157 7590 05/16/2018 Covestro LLC 1 Covestro Circle PITTSBURGH, PA 15205 FIRST NAMED INVENTOR Karl W. Haider 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 ATTORNEY DOCKET NO. CONFIRMATION NO. BMS 132046/MD06-39/06-40 9578 EXAMINER LEONARD, MICHAEL L ART UNIT PAPER NUMBER 1763 NOTIFICATION DATE DELIVERY MODE 05/16/2018 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address( es): veronica. thompson@covestro.com US-IPR@covestro.com laura.finnell@covestro.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte KARL W. HAIDER, JULIE OPERCHAL, RICHARD R. ROESLER, RICK STARCHER, and STEPHANIE STRAZISAR Appeal 2016-005365 Application 14/108,865 Technology Center 1700 Before ADRIENE LEPIANE HANLON, MICHAEL P. COLAIANNI, and LILAN REN, Administrative Patent Judges. REN, Administrative Patent Judge. DECISION ON APPEAL Appeal2016-005365 Application 14/108,865 STATEMENT OF THE CASE Appellants 1 appeal under 35 U.S.C. § 134 from a rejection2 of claims 1-12. We have jurisdiction under 35 U.S.C. § 6(b ). We reverse and enter a new ground of rejection based on obviousness pursuant to 37 CPR§ 41.50(b). CLAIMED SUBJECT MATTER The claims are directed to polyurethaneureas or polyureas and a process of preparing them using a catalyst. Spec. i-f 1. 3 Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A polyurethane/polyurea material that comprises the reaction product of: (A) a ( cyclo )aliphatic polyisocyanate or ( cyclo )aliphatic polyisocyanate prepolymer having an NCO group content of about 4 to 60%, and an average functionality of 1.8 to 6; with (B) an isocyanate-reactive component comprising at least one aromatic diamine compound which contains from 1 to 8 thiomethyl groups, and has a molecular weight of from 150 to 1000; in the presence of (C) one or more catalysts selected from the group consisting of tin (II) catalysts, bismuth (III) catalysts and mixtures thereof; wherein the relative quantities of (A) and (B) are such that the Isocyanate Index is from about 70 to about 130. 1 Covestro LLC is identified as the real party in interest. (Appeal Brief, filed November 2, 2015 ("App. Br."), 1.) 2 Final Rejection mailed June 2, 2015 ("Final Act."). In this decision, we also refer to the Examiner's Answer mailed February 29, 2016 ("Ans."), and the Reply Brief filed April 29, 2016 ("Reply Br."). 3 U.S. Patent Application No. 14/108,865 ("Spec."), Polyurethaneureas or Polyureas. 2 Appeal2016-005365 Application 14/108,865 Claims Appendix, App. Br. 9. REFERENCE The prior art relied upon by the Examiner in rejecting the claims on appeal is: Markusch et al. US 6,562,932B1 May 13, 2003 (hereinafter "Markusch") REJECTIONS Claims 1-12 are rejected under 35 U.S.C. § 102(a) as being anticipated by Markusch. Final Act. 2. OPINION The Examiner finds that claim 1 4 is anticipated because example XIX in Table 5 of Markusch discloses a reaction for producing polyurethane using the recited components. Ans. 3; see also Final Act. 2. Specifically, the Examiner finds that example XIX discloses "reacting an NCO-terminated prepolymer that has an NCO content of 23% and a functionality of 2.0, ... with dimethylthiotoluene diamine (2,4 and 2,6- isomer)" with the "selection of catalyst [being] the only change to the example." Ans. 3. The recited catalysts are among the preferred prior art catalysts. Markusch 10:54--55 ("preferably, tin(II) salts of carboxylic acids, ... as well as tin(IV) compounds"). The Examiner reasons that "because the selection of catalyst is chosen from such a small number (12) the example 4 Consistent with the provisions of 37 C.F.R. § 41.37(c)(l)(iv) (2013), claims 2-11 stand or fall with claim 1, as Appellants make no distinct arguments beyond the arguments regarding claim 1. See, e.g., App. Br. 3-8. 3 Appeal2016-005365 Application 14/108,865 anticipates the claims, i.e., 6 of the 12 catalysts meet" the catalysts recited in claim 1. Ans. 3. Appellants argue, on the other hand, that because example XIX uses a tin(IV) catalyst which differs from those recited, the Examiner reversibly erred in finding the claim anticipated. App. Br. 6. "[T]o hold that a prior art reference anticipates a claim, the Board must expressly find that every limitation in the claim was identically shown in the single reference." Gechter v. Davidson, 116 F.3d 1454, 1460, 43 USPQ2d 1030, 1035 (Fed. Cir. 1997); see also In re Arkley, 455 F.2d 586, 587 (CCPA 1972) (prior art reference "must clearly and unequivocally disclose the claimed [invention] or direct those skilled in the art to the compound without any need for picking, choosing, and combining various disclosures not directly related to each other by the teachings of the cited reference"). Here, reactants (A), (B), and the catalysts recited in claim 1 have been disclosed in Markusch as among the class of reactants and catalysts, respectively, for producing the recited polyurethane. Markusch 4:17-22, 7:35----67, 10:54----67. Markusch, however, does not disclose a reaction using "one or more catalysts selected from the group consisting of tin (II) catalysts, bismuth (III) catalysts and mixtures thereof' as recited in claim 1. The Examiner acknowledges that a skilled artisan would have to make a "change" (albeit "the only change") in order to arrive at claim 1. Ans. 3. A finding of anticipation therefore cannot be sustained based on the record before us. 4 Appeal2016-005365 Application 14/108,865 New Ground of Rejection Claims 1 and 7 are rejected under 35 U.S.C. § 103(a) as unpatentable over Markusch. 5 Markusch undisputedly discloses a process for producing a polyurethane (at an isocyanate index range that overlaps with that recited) from the reaction of a polyisocyanate and an isocyanate-reactive compound in the presence of a metal catalyst. Compare App. Br. 3--4 with Final Act. 2-3; see Markusch 4: 17-22, 7:35----67, 10:54----67, Table 5. Appellants do not disagree that each of the recited reactants as well as the recited catalysts are used in the prior art process to produce the polyurethane. Compare App. Br. 3-5 with Final Act. 2-3. That is, Markusch discloses the reaction for producing the recited polyurethane using reactants and catalysts encompassing those recited in claim 1 and more specifically discloses a reaction using the recited reactants with a dimethyl tin dilaurate catalyst. Markusch 12:53-57, 14:29-30, Table 5. The Examiner finds that Markusch discloses a specific example (example XIX) using the recited reactants (A) and (B) to produce the polyurethane in the presence of a tin(IV) catalyst (id. at 12:53-57, 14:29-30, Table 5; see App. Br. 6; Reply Br. 2) which is a subgroup of the prior art catalysts that include the tin(II) catalysts recited in claim 1. See Ans. 3 (citing Markusch 10:54----67); see also App. Br. 5 (citing the same). The Examiner further finds that Markusch's catalysts include a genus having a small number of species (e.g., 12) half of which are recited as catalysts in 5 In the event of further prosecution, the Examiner should consider whether dependent claims 2----6 and 8-12 are unpatentable under 35 U.S.C. § 103 based on Markusch. 5 Appeal2016-005365 Application 14/108,865 claim 1. Ans. 3. Both the recited tin(II) catalysts and the tin(IV) catalyst used in example XIX are disclosed in Markusch as preferred catalysts for the recited reaction. Markusch 10:58---63. Markusch further teaches that any of the catalysts disclosed in column 10, lines 58---63 may be used as mixtures. Markusch 11: 1-2. In other words, Markusch teaches that more than one catalyst may be used including tin(II) catalysts for the recited reaction. Based on the teachings in Markusch, one of ordinary skill in the art would have understood that a tin(II) catalyst may be used along with the tin(IV) catalyst-both of which are preferred. See Markusch 10:55-62 ("Suitable organic tin compounds include ... preferably, tin(II) salts of carboxylic acids, ... , as well as tin(IV) compounds"). Claim 1 is open-ended and does not exclude catalysts in addition to the tin(II) catalyst. Moreover, Markusch teaches that any of the disclosed catalysts, including the tin(II) catalyst, would have been suitable in the disclosed reaction. Thus, one of ordinary skill in the art would have been motivated to substitute the tin(IV) catalyst in Example XIX with any of the other catalysts disclosed in Markusch, including the tin(II) catalyst, with a reasonable expectation of success. See In re Fout, 675 F.2d 297, 301 (CCPA 1982) ("Express suggestion to substitute one equivalent for another need not be present to render such substitution obvious."). Other than generally stating their disagreement with the Examiner's findings, Appellants do not specify an error in the Examiner's findings that Markusch discloses a specific example of the recited reaction using both recited reactants (A) and (B) in the presence of half of a small class of catalysts which encompasses the catalysts recited in claim 1. Compare App. Br. 4--7 and Reply Br. 2-3 with Ans. 3. We accordingly find that each and 6 Appeal2016-005365 Application 14/108,865 every element of claim 1 has been taught or suggested by Markusch. Moreover, based on the record before us, it would have been prima facie obvious to one of ordinary skill in the art to combine those elements in the manner recited in claim 1. "If a prima facie case is made in the first instance, and if the applicant comes forward with reasonable rebuttal, whether buttressed by experiment, prior art references, or argument, the entire merits of the matter are to be reweighed." In re Hedges, 783 F.2d 1038, 1039 (Fed. Cir. 1986). Appellants' argument and evidence that the reaction product in claim 1 "would result in improved gel times, and ... improved cure times" (App. Br. 8) does not sufficiently show that the results obtained through the claimed invention as compared with those of the prior art would have been unexpected by one skilled in the art. Appellants point to Table 1 of the Specification in which comparative Example 5 uses a tin(IV) catalyst and illustrative Examples 10, 11, and 14-- 16 each using a tin(II) catalyst. App. Br. 7. The gel time for Example 5 is 21.2 minutes whereas the gel time for Examples 10, 11, and 14--16 is 13.9 minutes, 7 .2 minutes, 9. 5 minutes, 15. 8 minutes, and 17.8 minutes, respectively. Spec. i-f 55, Table 1. The record before us lacks any showing that the gel time from 21.2 minutes to 17 .8 minutes (for illustrative Example 16) is unexpected by the skilled artisan. "[I]t is well settled that unexpected results must be established by factual evidence. 'Mere argument or conclusory statements in the specification does not suffice."' In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (quoting In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984)). "Attorneys' argument is no substitute for evidence." Johnston v. IVAC Corp., 885 F.2d 1574, 1581 (Fed. Cir. 1989). 7 Appeal2016-005365 Application 14/108,865 Moreover, Appellants' evidence is solely based on the examples using tin(II) catalyst. App. Br. 7-8. Appellants have not explained why such evidence supports any unexpected results for the recited "one or more catalysts selected from the group consisting of tin (II) catalysts, bismuth (III) catalysts and mixtures thereof." Appellants' evidence is therefore not commensurate in scope with the claim. See In re Lindner, 457 F .2d 506, 508 (CCPA 1972) ("It is well established that the objective evidence of nonobviousness must be commensurate in scope with the claims."). Weighing the Graham factors including the prior art teachings and Appellants' evidence in support of any unexpected results, we find that a preponderance of the evidence supports an obviousness rejection of claim 1. See, e.g., Graham vs. John Deere Co., 383 U.S. 1 (1966). For these reasons, we find that a preponderance of the evidence supports an obviousness rejection of claim 7. DECISION The Examiner's rejection of claims 1-12 is reversed. A new ground of rejection of claims 1 and 7 under 35 U.S.C. § 103(a) as unpatentable over Markusch has been entered. TIME PERIOD FOR RESPONSE This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). Section 41.50(b) provides "[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review." Section 41.50(b) also provides: 8 Appeal2016-005365 Application 14/108,865 When the Board enters such a non-final decision, the appellant, within two months from the date of the decision, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: ( 1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new Evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the prosecution will be remanded to the examiner. The new ground of rejection is binding upon the examiner unless an amendment or new Evidence not previously of Record is made which, in the opinion of the examiner, overcomes the new ground of rejection designated in the decision. Should the examiner reject the claims, appellant may again appeal to the Board pursuant to this subpart. (2) Request rehearing. Request that the proceeding be reheard under§ 41.52 by the Board upon the same Record. The request for rehearing must address any new ground of rejection and state with particularity the points believed to have been misapprehended or overlooked in entering the new ground of rejection and also state all other grounds upon which rehearing is sought. Further guidance on responding to a new ground of rejection can be found in the Manual of Patent Examining Procedure§ 1214.01. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv). REVERSED 9 Copy with citationCopy as parenthetical citation