Ex Parte James et al

Board of Patent Appeals and Interferences

Sep 29, 2004

09733286 (B.P.A.I. Sep. 29, 2004)

The opinion in support of the decision being entered today was
not written for publication and is not precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ALLAN A. JAMES and KENNETH B. ARNOLD

____________

Appeal No. 2004-2031
Application No. 09/733,286

____________

ON BRIEF
____________

Before OWENS, JEFFREY T. SMITH and PAWLIKOWSKI, Administrative
Patent Judges.
PAWLIKOWSKI, Administrative Patent Judge.

DECISION ON APPEAL

This is an appeal under 35 U.S.C. § 134 from the examiner’s
final rejection of claims 17-25 and 33-45.
On page 3 of the brief, appellants set forth the grouping
on the claims. Accordingly, we consider claims 17, 18, 19, and
24 in this appeal. See 37 CFR § 1.192(c)(7) and (8)(2003).
A copy of claims 17, 18, 19, and 24 are set forth below:

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17. A method of improving a molded polyurea
polymer’s blister resistance, said method comprising:
(A) adding an effective amount of a fatty acid
ester to a polyisocyanate and an isocyanate-reactive
material to prepare a polyurea-polymer mixture, said
fatty-acid ester being jojoba oil; and
(B) molding said mixture to prepare a molded
polyurea polymer, wherein said molded mixture is
substantially free of blisters and has improved
blister resistance, as compared to a molded mixture
that is substantially free of jojoba oil, when exposed
to moisture and a temperature of at least about 390ºF
(199ºC), said molded polyurea polymer being exposed to
said temperature for at least 20 minutes and no longer
than 60 minutes.

18. The method of claim 17, wherein said mixture
has an isocyanate index between 1.05 and 1.40.

19. The method of claim 17, wherein said mixture
further comprises a polyepoxide.

24. The method of claim 17, wherein said molded
mixture is substantially free of blisters and has
improved blister resistance, as compared to a molded
mixture that is substantially free of jojoba oil, when
exposed to a temperature of at least about 400ºF
(204ºC).

The examiner relies upon the following references as
evidence of unpatentability:
Barron et al. (Barron) 5,525,681 Jun. 11, 1996
Muenstermann WO 96/22182 Jul. 25, 1996

Claims 17, 18, 21-25, and 35 stand rejected under 35 U.S.C.
§ 102(b) as being anticipated Muenstermann.
Claims 19, 33, 34, and 36-45 stand rejected under 35 U.S.C.
§ 103 as patentable over Muenstermann in view of Barron.

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OPINION
I. The anticipation rejection
We consider claims 17, 18 and 24 in this rejection.
We refer to pages 3-5 of the answer regarding the
examiner’s position in this rejection.
With regard to claim 17, appellants set forth the arguments
on pages 4-7 of the brief and appellants set forth additional
arguments in the reply brief. Primarily, appellants argue that
claim 17 is directed to a method of improving a molded polyurea
polymer’s blister resistance. Appellants argue that
Muenstermann does not disclose that blister resistance may be
increased by the presence of jojoba oil in the formulation.
Appellants also argue that Tables I and II of their
specification demonstrate the unexpected results obtained by the
addition of jojoba oil to polyurea. We are not convinced by
these arguments for the following reasons.
As pointed out by the examiner on page 4 of the answer,
because Muenstermann discloses the same composition as used in
appellants’ claimed method, the composition inherently possesses
the blister resistant characteristics of appellants’ claimed
composition used in the method of improving blister resistance.
Because appellants have not shown that their composition is
different from the composition utilized in Muenstermann, we must
follow the logic of In re Tomlinson, 363 F.2d 928, 934, 150 USPQ
623, 628 (CCPA 1966), and determine that appellants' process
claims are unpatentable by reason of their reading on a process
utilizing an old composition. In In re Tomlinson, the claim at
issue was directed to a process of inhibiting degradation of
polypropylene caused by exposure to light, comprising admixing
one of a genus of compounds, including nickel dithiocarbamate,
with polypropylene. A reference taught mixing polypropylene
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with nickel dithiocarbamete to lower heat degradation. The
court held that the claims read on the process of mixing
polypropylene with the nickel dithiocarbamate and that the
preamble of the claim was merely directed to the result of
mixing the two materials. “While the references do not show a
specific recognition of that result, its discovery by appellants
is tantamount only to finding a property in the old composition,
not in the nickel compound for which, it is argued, a new use
has been found”. [emphasis added] Id., 363 F.2d at 934, 150
USPQ at 628. The court ruled the process claims unpatentable by
reason of their reading on the admixture of polypropylene and
nickel dithiocarbamate, an old mixture.
Applying this same analysis to the present case, we can
state that the method of improving blister resistance is merely
directed to the result of processing in the claimed manner set
forth in claim 17 when utilizing the particularly claimed
components.
With regard to Tables 1 and 2, because this rejection is
under 35 U.S.C. § 102(b), evidence of unexpected results is of
no effect. Appellants’ burden is to show that in fact the
composition in Muenstermann does not exhibit improved blister
resistance.
In view of the above, we affirm the anticipation rejection
of claim 17.
With regard to claim 18, appellants state that
“Muenstermann does not recite the isocyanate index”. However,
we refer to page 5 of the answer, wherein the examiner states
that the examples of Muenstermann do disclose index values and
states the index values are 1.20, 1.10, 1.10 and 1.10,
respectively, in the examples, beginning on page 13 of
Muenstermann. The examples pointed out by the examiner do show
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index values. In the reply brief, appellants do not dispute the
examiner’s rebuttal in this regard.
Therefore, we also affirm the anticipation rejection of
claim 18.
With regard to claim 24, appellants argue on page 7 of the
brief, that Muenstermann does not anticipate claim 24 because
Muenstermann fails to disclose the ability that when the molded
polyurea is exposed to moisture, it takes up no more than 2
weight percent water based on the weight of molded polyurea
polymer.
We refer to page 5 of the answer, wherein the examiner
states that this characteristic is also deemed an inherent
property of the disclosed polyurea set forth in Muenstermann.
We agree and refer to our discussion above regarding the burden
involved in an inherency rejection, and additionally note that
it is well settled that the Patent and Trademark Office can
require appellants to prove that a function or property relied
upon for novelty is not possessed by prior art otherwise meeting
the limitations of the claims. In re Best, 562 F.2d 1252, 1255,
195 USPQ 430, 433 (CCPA 1977).
In view of the above, we affirm the 35 U.S.C. § 102(b) of
claims 17, 18, 21-25, and 35.

II. The 35 U.S.C. § 103 rejection of claims 19, 33, 34, and
36-45

We consider claim 19 in this rejection (on page 3 of the
brief, appellants state claims 19, 33, 34, and 36-45 stand or
fall together).
We refer to pages 5-7 of the answer regarding the
examiner’s position in this rejection.
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Appellants set forth their arguments regarding this
rejection on pages 7-9 of the brief, and also provide additional
arguments in the reply brief on pages 2-4.
Claim 19 recites the “method of claim 17 wherein the
mixture further comprises a polyepoxide”. The examiner relies
on Muenstermann in view of Barron for teaching this aspect of
claim 19. The examiner refers to the abstract and columns 1 and
2 of Barron, where it is disclosed that polyurea polymers
prepared from formulations including a polyepoxide can have good
heat stability and good physical properties, and the resultant
polyurea polymers can withstand higher temperatures than
conventional polyurea polymers without blistering. Hence, the
examiner concludes that it would have been obvious to have
incorporated a polyepoxide into the composition of Muenstermann
in view of the teachings in Barron.
Beginning on page 8 of the brief, appellants argue that the
examiner has not provided a proper motivation for combining
Muenstermann in view of Barron, and provide reasons therein.
We do not agree, as Barron clearly teaches that polyurea
polymers prepared from formulations including a polyepoxide can
have good heat stability and good physical properties, and the
resultant polyurea polymers can withstand higher temperatures
than conventional polyurea polymers without blistering. We note
that obviousness can be established by combining or modifying
the teachings of the prior art to produce the claimed invention
where there is some teaching, suggesting, or motivation to do so
found either in the reference or in the knowledge generally
available to one of ordinary skill in the art. In re Fine, 837
F.2d 1071, 1074, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988).
In view of the above, we also affirm the 35 U.S.C. § 103
rejections of claims 19, 33, 34, and 36-45.
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III. Conclusion
Each of the rejections is affirmed.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).

AFFIRMED

TERRY J. OWENS )
Administrative Patent Judge )
)
)
)BOARD OF PATENT
) APPEALS AND
JEFFREY T. SMITH ) INTERFERENCES
Administrative Patent Judge )
)
)
)
)
)
BEVERLY A. PAWLIKOWSKI )
Administrative Patent Judge )

BAP/sld
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Application No. 09/773,286

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