Ex Parte Heijkants et al

Patent Trial and Appeal Board

Oct 28, 2014

11584682 (P.T.A.B. Oct. 28, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte RALF GUILLAUME HEIJKANTS,
ALBERT JOHAN PENNINGS, JACQUELINE HERMINA DE GROOT,
RALPH VINCENT VAN CALCK
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Appeal 2013-001175
Application 11/584,682
Technology Center 1700
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Before CHUNG K. PAK, KAREN M. HASTINGS, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

PER CURIAM.

DECISION ON APPEAL

Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
rejection of claims 23–32, 35, and 37–39 (mailed 03/23/2011). We have
jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b).
Initially, we note that an obviousness-type double patenting rejection
over related US Patent 7,943,678 has been maintained by the Examiner but
is not substantively addressed by Appellants in the Brief (e.g., Br. 2, 4).
Accordingly, we summarily affirm this rejection.
The prior art rejections maintained on appeal all rely upon the
combined prior art of Müller et al. (US 5,374,704, patented Dec. 20, 1994),
Oertel (Polyurethane Handbook Chemistry – Raw Materials – Processing –
Application - Properties 26–27 (Hanser Publishers, Second Edition, 1993),
Appeal 2013-001175
Application 11/584,682

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and Brady et al. (US 2002/0142413 A1, published Oct. 3, 2002) as evidence
of obviousness under 35 U.S.C. § 103(a). (See Ans. 5–11.)
Upon consideration of the evidence on this record and each of
Appellants contentions, we find that the preponderance of evidence on this
record supports the Examiner’s conclusion that the subject matter of
Appellants’ claims is unpatentable over the applied prior art.1 We sustain
the above rejections based on the findings of fact, conclusions of law, and
rebuttals to arguments expressed by the Examiner in the Answer.2
We add the following for emphasis. Appellants’ main argument, that
Müller fails to explicitly suggest using and removing excess diisocyanate
(Br. 6, 8), is not persuasive of error for reasons well stated by the Examiner
(Ans. 12–15). It is well established that ordinary creativity is presumed on
the part of one of ordinary skill in the art. See KSR Int’l Co. v. Teleflex Inc.,
550 U.S. 398, 421 (2007) (“A person of ordinary skill is also a person of
ordinary creativity, not an automaton.”). As pointed out by the Examiner,
[T]he examiner sees no difference between appellants’ reaction
and the reaction of the [Müller] reference. The fact remains that
the reference discloses the production of a prepolymer, wherein
an excess of diisocyanate is reacted with a macrodiol to yield a
prepolymer. The reference discloses a molar ratio of
diisocyanate to macrodiol as high as 22:1 at column 3, lines 64-
66. This reaction parallels that of appellants’ claims. The
prepolymer is then chain extended; though the reference does
not disclose the removal of excess diisocyanate prior to
extension, the examiner has explained why this step would have
been obvious to the skilled artisan. Appellants’ arguments

1 Appellants mainly present arguments directed to the common features of
the independent claims 23, 38, and 39 (Br. generally).
2 No Reply Brief has been filed.
Appeal 2013-001175
Application 11/584,682

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pertaining to their high diisocyanate concentration within page
8 of the appeal brief simply do not distinguish the claims from
the reference, and it is noted that these arguments are not
commensurate in scope with the claims. The claims set forth no
limitations with respect to index ratios or diisocyanate
quantities that would mandate a high diisocyanate
concentration.

(Ans. 11–12.) See also KSR, 550 U.S. at 416 (“The combination of familiar
elements [or steps] according to known methods is likely to be obvious
when it does no more than yield predictable results.”). The analysis need not
seek out precise teachings directed to the specific subject matter of the
claim, for it is proper to take account of the inferences and creative steps that
a person of ordinary skill in the art would employ. Id. at 418.
Appellants further argument that the applied prior art does not suggest
the claimed temperature range of between 60◦ and 85◦ C (Br. 7), is also not
persuasive of error for reasons well stated by the Examiner (Ans. 12–15; see
also Ans. 6, 7 (Müller discloses a temperature as low as 90◦C which is so
close it renders the claimed range obvious, Brady explicitly teaches a
comparable reaction may be performed at 70◦ – 80◦ C, and the claims do not
preclude some catalyst being present).
The decision of the Examiner is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED

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