Ex Parte HALG et al

Board of Patent Appeals and Interferences

Jan 29, 2004

08318702 (B.P.A.I. Jan. 29, 2004)

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The opinion in support of the decision being entered
today was not written for publication in a law journal
and is not binding precedent of the Board.
Paper No. 22
UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES

Ex parte PAUL HALG, UDO BUCHHOLZ, PAUL ROHRER,
CURTIS L. VOLKMANN and ULRICH TRIBELHORN

Appeal No. 1998-1737
Application No. 08/318,702

ON BRIEF

Before KIMLIN, WARREN and OWENS, Administrative Patent Judges.
KIMLIN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 1, 3,
5, 7, 10, 11, 14, 15, 22 and 54-59. Claims 1 and 57 are
illustrative:
1. Storable modular component comprising a modular
component and a profiled strip of adhesive of a latently reactive
adhesive disposed along the edge of the modular component which
adhesive comprises:
one or more polyurethanes with blocked isocyanate groups;
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one or more polyurethane prepolymers consisting of polyols
and/or polyamines and encapsulated polyisocyanates; or
one or more polyurethane prepolymers with radically
polymerizable groups;
wherein the adhesive strip at ambient temperature is solid
and does not deform when handled; has an activation temperature
of 70°C to 180°C, and has a softening point at temperature of
25°C to 80°C wherein the adhesive strip is tacky and non-flowing
and plastically deformable for a time sufficient for assembly and
the modular component can be stored for 1 to 3 months.
57. Latently reactive polyurethane adhesive which comprises:
one or more polyurethanes with blocked or free isocyanate
groups;
one or more polyurethane preproducts consisting of polyols
and/or polyamines and encapsulated polyisocyanates; or
one or more polyurethanes with radically polymerizable
groups;
wherein up to about 20 weight percent of the polyols used to
prepare the polyurethanes are solid crystallizing polyester
polyols which in the adhesive display a melting point of 35°C to
80°C while the remainder of the polyols are polyether polyols.
The examiner relies upon the following references as
evidence of obviousness:
Hoeschele 3,933,759 Jan. 20, 1976
Hung 5,063,269 Nov. 05, 1991
Münzmay et al. (Münzmay) 5,100,995 Mar. 31, 1992
Backus et al., "Polyurethanes," 13 Encyclopedia of Polymer
Science and Engineering 243-303
Appellants' claimed invention is directed to a storable
modular component comprising a strip of a latently reactive
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adhesive, and the latently reactive polyurethane adhesive,
per se. The adhesive strip is solid at ambient temperature and
does not deform when handled. A particular modular component of
the present invention is a glass pane which is stored with the
adhesive strip lined directly on its edge.
Appealed claims 1, 3, 5, 7, 10, 11, 14, 15, 22, 54 and 55
stand rejected under 35 U.S.C. § 112, second paragraph. Claim 1
stands rejected under 35 U.S.C. § 103 as being unpatentable over
Hoeschele. Claims 3, 5, 7, 10, 11, 14, 15, 22, 55 and 56 stand
rejected under 35 U.S.C. § 103 as being unpatentable over
Hoeschele in view of Hung and Münzmay. Also, claims 54 and 57-59
stand rejected under 35 U.S.C. § 103 as being unpatentable over
Münzmay in view of the Encyclopedia of Polymer Science and
Engineering.
According to the grouping of claims set forth at page 3 of
the principal brief, the following groups of claims stand or fall
together:
(1) claims 3, 6 and 10; (2) claims 7 and 11; (3) claims 55, 56
and 22; and (4) claims 54 and 57.
We have thoroughly reviewed the respective positions
advanced by appellants and the examiner. In so doing, we will
not sustain the examiner's rejections under 35 U.S.C. § 112,
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second paragraph. Nor will we sustain the examiner's § 103
rejections based on Hoeschele. We will, however, sustain the
examiner's § 103 rejection of claims 54 and 57-59 based on
Münzmay.
We consider first the examiner's rejections under § 112,
second paragraph. We do not subscribe to the examiner's position
that the claim 1 language "the adhesive strip . . . does not
deform when handled" is indefinite because "it is not clear under
what force the material maintains its shape" (page 4 of Answer,
first paragraph). We concur with appellants that the examiner
has not established that, when the claim language is read in
light of the specification, one of ordinary skill in the art of
adhesives for placing glass modules in window frames would not
understand that the module would maintain its shape during normal
handling.
As for the "low molecular solid compounds" of claims 11 and
15, appellants have provided sufficient evidence in their Reply
Brief that one of ordinary skill in the art would be able to
reasonably ascertain the scope of the claimed isocyanates when
the specification and state of the prior art are taken into
consideration.
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We now turn to the § 103 rejections over Hoeschele. We must
agree with appellants that the cited prior art fails to teach or
suggest the claimed storable modular component comprising a solid
strip of latently reactive adhesive disposed on its edge. It was
not until the Supplemental Answer that the examiner addressed
appellants' argument that the claims at issue are directed to a
modular component comprising a solid strip of adhesive, and not
to an adhesive composition. As explained by appellants,
Hoeschele discloses a powder composition, not a solid strip, that
may be coated upon a substrate and heated to form a polyurethane
film. While Hoeschele teaches that the powder composition is
suited for coating techniques, such as fluidized bed, electro-
static spray, powder flow coating and heat-fusion, the examiner
has not established that such techniques would have been suitable
for forming a solid strip on the edge of a modular component.
The examiner's statement that "it would have been obvious to one
having ordinary skill in the art at the time the invention was
made to place the adhesive composition on the substrate wherever
it was meant to bond to a second material" is no substitute for a
teaching in the prior art that adhesive strips of the type
claimed are formed from latently reactive polyurethane powder
compositions (see page 2 of Supplemental Answer, second
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paragraph). The examiner's reliance on Hung and Münzmay for
disclosing polyurethane adhesive compositions for bonding
fiberglass-reinforced polyester substrates does not remedy the
basic deficiency of Hoeschele.
The examiner's rejection of claims 54 and 57-59 over Münzmay
in view of the Encyclopedia of Polymer Science and Engineering is
another matter. Appellants maintain that:
The Münzmay reference does not teach or suggest a
polyurethane adhesive wherein the polyol component used
to prepare the polyurethane prepolymer contains up to
20 percent crystalline polyester polyol and the
remainder of the polyol is a polyether polyol, nor does
the reference teach that the polyester polyol should
have a melting point or softening point of from 35°C
to 80°C.
(Page 10 of principal brief, second paragraph). However, claim
57 on appeal recites that such a mixture of polyester polyols and
polyether polyols is an alternative embodiment (the word "or"
precedes the relevant recitation). As apparently conceded by
appellants, Münzmay discloses a latently reactive polyurethane
adhesive comprising a polyurethane with blocked isocyanate groups
and polyurethane preproducts of polyols and polyamines. Appealed
claim 59, as well, does not require the argued mixture of
polyester and polyether polyols. Rather, claim 59 encompasses a
latently reactive polyurethane adhesive comprising one or more
polyurethanes with free isocyanate groups. Although Münzmay
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discloses a polyurethane prepolymer containing masked isocyanate
groups, there is no teaching that all the isocyanate groups are
masked or blocked. Since Münzmay discloses that the equivalent
ratio of isocyanate groups to blocking agents can be 1.15:1, it
is reasonable to conclude that the polyurethane prepolymer of
Münzmay contains free isocyanate groups in addition to the masked
isocyanate groups. Moreover, even if the claimed alternative
regarding a maximum of 20 weight percent of polyester polyol was
not optional, we concur with the examiner that it would have been
obvious for one of ordinary skill in the art to formulate a
polyurethane adhesive composition comprising the claimed amounts
of polyester and polyether polyols in order to achieve a desired
balance of mechanical properties at room temperature, impact
strength at low temperature, and stiffness at high temperature.
Concerning the melting point of 35-80°C of the optional
component, the examiner has correctly noted that Münzmay
discloses crystallizing polyester polyols that have a melting
point within the claimed range.
Finally, pertaining to the § 103 rejection of claims 54 and
57-59, appellants base no argument upon objective evidence of
nonobviousness, such as unexpected results.
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Application No. 08/318,702
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In conclusion, based on the foregoing, the examiner's
§ 112, second paragraph, rejections are reversed, as are the
examiner's § 103 rejections based on Hoeschele. The examiner's
§ 103 rejection of claims 54 and 57-59 is sustained.
Accordingly, the examiner's decision rejecting the appealed
claims is affirmed-in-part.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART
EDWARD C. KIMLIN )
Administrative Patent Judge )
)
)
)
)
CHARLES F. WARREN ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
)
TERRY J. OWENS )
Administrative Patent Judge )
ECK:clm
Appeal No. 1998-1737
Application No. 08/318,702
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Richard G. Waterman
P.O. Box 1967
Midland, MI 48641-1967