Ex Parte Johnston et al

Patent Trial and Appeal Board

Feb 17, 2016

13175026 (P.T.A.B. Feb. 17, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/175,026 07 /01/2011
157 7590 02/19/2016
Covestro LLC
1 Covestro Circle
PITTSBURGH, PA 15205
FIRST NAMED INVENTOR
JAY A JOHNSTON
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.
P09020D/MD06-54 1841
EXAMINER
LEONARD, MICHAEL L
ART UNIT PAPER NUMBER
1763
NOTIFICATION DATE DELIVERY MODE
02/19/2016 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 BAYER MATERIALSCIENCE LLC
Appeal2014-002152
Application 13/175,026
Technology Center 1700
Before FREDE. McKEL VEY, CHUNG K. PAK, and SALLY GARDNER LANE,
Administrative Patent Judges.
McKEL VEY, Administrative Patent Judge.
DECISION ON APPEAL
37 C.F.R. § 41.50
I. Statement of the Case
1 Bayer MaterialScience LLC ("Appellant"), the real party in interest (Appeal
2 Brief ("Br."), page 1 ), seeks review under 35 U.S.C. § 134(a) of a final rejection
3 dated 30 November 2012.
4 The named inventors are: Jay A. Johnston, Karl W. Haider, and Wendy S.
5 Gustavich.
6 We have jurisdiction under 35 U.S.C. § 134(a).
Appeal2014-002152
Application 13/175,026
1 The application on appeal was filed in the US PTO on 1 July 2011. 1
2 Appellant claims priority of U.S. application 11/881,611, filed 27 July 2007.
3 The application on appeal has been published as U.S. Patent Application
4 Publication 2011/0263797 Al (27 October 2011).
5 The Examiner relies on the following evidence.
Reiff et al. U.S. Patent 3,920,598 18 Nov. 1975
"Reiff'
Slack et al. U.S. Patent, 5,319,053 7 June 1994
"Slack"
Madan et al. U.S. Patent 5,821,275 13 Oct. 1998
"Madan"
6 Appellant does not contest the prior art status of the Examiner's evidence, all
7 of which is prior art under 35 U.S.C. § 102(b).
8 We mention the following additional evidence in this opinion .
.._ 1 .._ 1 I TT C1 Tl .._ .._ A 1· .._. Tl 1 1· .._.
vv 111terniante1 et ai. u.~. ratent rtpp11cat1011 ruo11cat1011 LO Jan. LVVO
''Wintermantel'' 2006/0020101 Al
Thesis: CHARACTERIZATION OF
Matthew J. STRUCTURE-PROPERTY RELATIONSHIPS OF
O'Sickey POLY(URETHANE-UREAS)S FOR FIBER 2002
"Dissertation" APPLICATIONS, Virginia Tech, pages i-iii
and 5-18 (etd-04122022-012330)2
1 Because the application on appeal was filed before the enactment of the Leahy-
Smith America Invents Act ("AIA"), Pub. L. No. 112-29, 125 Stat. 284 (2011), we
apply the pre-AIA version of 35 U.S.C. §§ 102 and 103.
2 Downloaded from the Internet on 5 February 2016:
httns://theses.lib. vt.edu/theses/ available/ etd-04122002-012440/.
2
Appeal2014-002152
Application 13/175,026
ICIS ICIS Chemical Business, Arco takes 11June1995
Acclaim for polyols breakthrough3
1 II. Claims on Appeal
2 Claims 12-15 4 and 17 are on appeal. Br., page 1; Answer, page 3.
3 III. Rejection
4 Claims 12-15 and 17 stand rejected under 35 U.S.C. § 103(a) over Madan
5 (with Slack having been incorporated by reference) and Reiff. Answer, page 3.
6 Appellant does not argue the separate patentability of claims 13-15 apart
7 from claim 12. Accordingly, we decide the appeal as to claims 12-15 on the basis
8 of claim 12. 37 C.F.R. § 41.37(c)(l)(iv).
9 Claim 17 is separately argued. Br., page 4.
10 IV. Analysis
11 A. Claim 12
12 Claim 12 reads (principal limitation in dispute in italics):
13 A one-component polyureaurethane comprising the
14 reaction product of:
15
16
17
(A) a prepolymer of an allophanate-modified
diisocyanate having an NCO group content of 0.25
to 26% and comprising the reaction product of:
3 Downloaded from the Internet on 4 February 2016:
http://www.icis.com/resources/news/1995/06/11/20598/arco-takes-acclaim-for-
po 1yols-breakthrough/.
4 In the Claims Appendix (Br., page 7) claim 15 refers to "Claim 4" but we
believe Appellant intended to refer to claim 14.
3
1
2
3
4
5
6
7
8
9
10
11
12
13
Appeal2014-002152
Application 13/175,026
(1) an allophanate-modified diphenylmethane
diisocyanate having an NCO [isocyanate] group
content of 0.25 to 30% and which comprises the
reaction product of:
(a) diphenylmethane diisocyanate, with
(b) a polyether mono! having an equivalent
weight of greater than 1000 up to about
10, 000; in the presence of
( c) a suitable catalyst; and
(2) at least one polyether polyol having a functionality
of from 1.5 to 6 and a molecular weight of from
500 to 10,000; with
14 (B) water; optionally, in the presence of
15 (C) one or more catalysts.
16 The reaction product is a polyureaurethane. The "urea" portion of the
17 reaction product is a result of reaction of isocyanate groups with water (B).
18 The "urethane" portion of the reaction product is a result of reactions of
19 isocyanate groups with the monol (A)(l)(b) and polyether (A)(2).
20 B. Madan
21 The Examiner found that Madan differs from claim 12 in that Madan does
22 not describe "the molecular weight of polyether monol component." Answer,
23 page 4.
24 Appellant maintains that Madan "does not disclose the use of ... [the] ether
25 monols." Br., page 3.
4
Appeal2014-002152
Application 13/175,026
1 According to Appellant, Madan "only specifically discloses the use of
2 1-butanol (see Examples)." Id.
3 By "Examples" we assume Appellant refers to ISO A ( 1-butanol---col.
4 10:50); ISO B (1-butanol---col. 10:66); ISO C (1-butanol---col 11:14); and ISO D
5 (1-butanol---col 11 :29).
6 To overcome any difference, the Examiner turned to Reiff.
7 Reiff describes products made from TDI (toluene diisocyanate) and
8 ethoxylated butanol. See col. 11, allophanate diisocyanate components A
9 through E.
10 The Examiner held that it would have been obvious to use the Reiff
11 allophanate diisocyanate components in the Madan environment.
12 Our review of the record leads us to find that a significant disclosure of
13 Madan is:
14 It is, of course, also possible to use liquid polyether
15 pol yo ls containing a very low concentration of unsaturated, low
16 molecular weight mono-hydroxyl moieties (monol). Such liquid
17 polyether polyols are commercially available under the
18 tradename Acclaim polyether polyols, from ARCO Chemicals.
19 Madan, col. 6:6-11.
20 Insofar as we can tell, neither the Examiner nor Appellant appear to have
21 given the quoted portion of Madan much attention.
22 What is an ARCO Chemicals "Acclaim" polyether polyol?
23 And, what is its molecular weight?
24 A 1995 ICIS publication reveals that ARCO commercially promoted new
25 polyols under the brand-name "Acclaim."
5
Appeal2014-002152
Application 13/175,026
1 According to the ICIS publication, the "Acclaim" polyols contain less than
2 2% monol. ICIS, page 2: 1-2.
3 "Acclaim" therefore comprises (1) a polyether polyol and (2) a monol.
4 The polyol is described as having a molecular weight of 2000, 4000, or
5 8000. ICIS, page 2, last two lines.
6 The polyol falls within the scope of Appellant's claimed item (A)(2) calling
7 for a functionality of 1.5 to 6 (the ICIS polyether has a functionality of about 2)
8 and a molecular weight of from 500 to 10,000.
9 The molecular weight of the monol is not reported.
10 However, Dissertation (published in 2002) reveals that the molecular weight
11 is 1596. Dissertation, Chapter 2, page 11, Fig. 2-7. 5
12 Claim 12 defines the monol in terms of "equivalent weight" not molecular
13 weight. Equivalent weight = molecular weight I functionality. The monol has a
14 functionality of 1. See, e.g., Dissertation, Chapter 2, page 6, Fig. 2-2:
5 Madan describes "Acclaim" as being sold by ARCO. The Dissertation reveals
that ARCO is now Bayer. Chapter 2, page 14, Table 2-1, line 3. Accordingly,
Bayer should be in a position to advise the PTO of the molecular weight of the
monol portion of Acclaim polyols.
6
Appeal2014-002152
Application 13/175,026
Ally!
Alcohol
Mono!
1 Fig. 2-2. Based catalyzed production of poly(propylene glycol)
2 primary product and monol side reaction product
3 Accordingly, in the case of the "Acclaim" monol the equivalent weight and
4 the molecular weight are the same.
5 ~vfadan describes inter alia a reaction product of:
6
7
8
9
10
(1) an allophanate-group containing diisocyanate made from a
diphenylmethane diisocyanate and an aliphatic alcohol
(col. 5: 16 and 28--42 (incorporating Slack by reference,
col. 5:40--42));
(2) a polyether polyol (col. 5: 17 and col. 5:53---col. 6:5); and
7
1
Appeal2014-002152
Application 13/175,026
(3) a polymeric diphenylmethane isocyanate having an isocyanate
2 (-NCO) functionality greater than about 2 (col. 5:21). 6
3 As noted earlier, the polyether polyol can be an "Acclaim" polyether polyol
4 having small amounts of monol. Madan, col. 6: 6-11.
5 When the allophanate-group diisocyanate is reacted with an "Acclaim"
6 polyol, one skilled in the art would have expected that both (1) the polyether polyol
7 and (2) the monol (both having hydroxyl (-OH) groups) would react with
8 isocyanate groups on the allophanate-group diisocyanate.
9 The same two reactions take place according to the process set out in
10 Appellant's product-by-process claim 12.
11 The PTO is in no position to determine whether a Madan product made with
12 an "Acclaim" polyether polyol would ultimately have "an NCO group content of
13 0.25 to 30%" as called for by claim 12. In particular, the PTO is in no position to
14 ascertain whether the diisocyanate of Madan would preferably react with the
15 monol and then the polyether polyol. Nor is the PTO in a position to determine
16 how, if at all, a Madan poly(ureaurethane) foam differs from the
17 poly(ureaurethane) of claim 12. Both the claimed product and the Madan product
18 are made using water. Water is a well-known blowing agent. Claim 12 is not
19 limited to non-foam products. Accordingly, on the record before us it would
20 reasonably appear that Madan products made with "Acclaim" polyether polyols
21 may be the same as the claimed poly(ureaurethane) one-component products.
6 Claim 12 does not call for the presence of a polymeric diphenylmethane
isocyanate, but due to the "comprising" language does not exclude the presence of
a polymeric diphenylmethane isocyanate.
8
Appeal2014-002152
Application 13/175,026
1 Appellant therefore has a burden to establish that there is a patentable difference.
2 See, e.g., In re Best, 562 F.2d 1252, 1254 (CCPA 1977); In re Fitzgerald, 619 F.2d
3 67, 70 (CCPA 1980); andin re Spada, 911F.2d705, 708-9 (Fed. Cir. 1990), all of
4 which hold that where a claimed composition and prior art composition appear to
5 be the same, PTO may require applicant to prove there is a difference.
6 We have not found it necessary to rely on Reiff, which we note describes
7 dispersions (col. 1:5-7 and col. 19:62-latex) whereas Madan describes flexible
8 foams (col. 2:49-50 and col. 14:11).
9 While our rationale differs from that of the Examiner for holding claim 12
10 unpatentable under § 103, for the reasons given, we conclude that the Examiner
11 was correct on this record in holding claim 12 to be unpatentable under§ 103.
12 Should there be further prosecution in response to our affirmance, Appellant
13 should fully inform the Examiner of the precise nature of "Acclaim" polyethers
14 given that on the record before us that Appellant now owns the ARCO "Acclaim"
15 products. 37 C.F.R. § 1.105(a). The time for submitting any information is the
16 same as the time for submitting an amendment or evidence or both in response to
17 our new rejection (37 C.F.R. § 41.50(b)(l)) and is not extendable under 37 C.F.R.
18 § 1.136.
19 Claim 1 7
20 Claim 17 is separately argued. Br., page 4.
21 Claim 1 7 is directed to a "caulking agent." Br., page 7.
22 The Examiner held that if a prior art structure is capable of performing a
23 claimed intended use (in this case "caulking agent") it (the prior art structure)
24 meets the claim. Answer, page 6. The prior art structure is a "foam" whereas the
9
Appeal2014-002152
Application 13/175,026
1 claimed structure is a non-foam "caulking agent." Accordingly, Appellant
2 maintains that the prior art does not describe the claimed "caulking agent"
3 structure. We find it unnecessary to resolve any difference between the Examiner
4 and the Appellant as to any possible structural differences. Answer, page 6; Final
5 Rejection, page 3.
6 Appellant acknowledges that:
7 [ c ]aulking agents are prepared as is known in the art. Various
8 processes are known and described in, for example, U.S.
9 Published Patent Application 2006/0020101 Al [Wintermantel].
10 Specification, page 21 :2--4.
11 Wintermantel describes and claims a:
12 [p]rocess for preparing MDI-based prepolymers which are free
13 of carboxylic ester groups and have shear viscosities of< 100 000
14 mPa.s at 23° C., wherein
15 i\) an isocyanate \vhich is an l\1DI type containing at least 95%
16 by weight of2,4'-MDI is reacted with
17 B) a polyether polyol mixture composed of
18 b 1) at least one polyether polyol with a number-average
19 molecular weight Mn of 2000 to 20000 g/mol and an average OH
20 functionality of 3 to 8 and
21 b2) optionally, one or more polyether polyols having number-
22 average molecular weights of more than 2000 g/mol
23 and wherein the fraction of b 1) in B) is at least 20% by weight
24 and B) is composed of b 1) and b2) in such a way as to result in
25 an overall functionality, relative to OH groups, of >2 and a
10
Appeal2014-002152
Application 13/175,026
1 number-average molecular weight Mn of from 3000 to 20000
2 g/mol.
3 Page 9, claim 1.
4 Wintermantel also initially claimed a sealant made by the process of
5 claim 1. Page 9, claim 10.
6 Wintermantel teaches that useful polyether polyols "are typically obtained
7 starting from low molecular weight, polyfunctional OH- ... compounds as starters
8 by reaction with cyclic ethers ... [using] bases such a KOH [potassium
9 hydroxide]" Page 2, i-f 0032.
10 ICIS teaches that a conventional KOH catalyzed polyether having a
11 molecular weight of 4000 "would contain 34% byproduct 'monol' .... " ICIS,
12 page 1, last paragraph.
13 Use of a KOH catalyzed polyether described by Wintermantel would
14 therefore involve reaction of MDI with a mixture of (1) a polyether polyol
15 containing (2) as much as 34% monol.
16 Use of the mixture would meet not only claim 17, but also claims 12-15.
1 7 Alternatively, one skilled in the art would have understood from the broad
18 teaching of Wintermantel that the "Acclaim" polyethers could be used in the
19 Wintermantel environment.
20 We have not overlooked the claimed requirement for water.
21 Wintermantel describes and claims preparation of a composition from an
22 isocyanate and a monol-containing polyether (the (A) of claims 12-15 and 17) and
23 subsequent curing with moisture (the (B) of claims 12-15 and 17). The cured
11
Appeal2014-002152
Application 13/175,026
1 composition is a reaction product of an isocyanate, a monol-containing polyether
2 polyol, and water from moisture in the air.
3 On the record before us, the claimed invention falls within the general
4 scope of the subject matter described by Wintermantel. Unless it can be
5 established that the claimed invention has unexpected properties vis-a-vis the
6 subject matter generally described by Wintermantel, we hold that the subject
7 matter of claims 12-15 and 17 on appeal would have been obvious. The subject
8 matter described by Wintermantel is in the public domain and, absent an
9 unexpected result, one skill in the art would be free to use embodiments within the
10 scope of the invention described by Wintermantel.
11 V. Decision
12 Upon consideration of the appeal, and for the reasons given herein, it is
13 ORDERED that the decision of the Examiner rejecting claims 12-15
14 and 1 7 is affirmed.
15 FURTHER ORDERED that because we have cited several new prior
16 art references, our obviousness rationale differs from the rationale of the Examiner,
17 and we have newly rejected claims 12-15 and 17 over Wintermantel, our
18 affirmance is designated as a new rejection. 37 C.F.R. § 41.50(b).
19 FURTHER ORDERED that our decision is not a final agency action.
20 FURTHER ORDERED that within two (2) months from the date of
21 our decision, appellant may further prosecute the application on appeal by
22 exercising on of the two following options:
23 Option 1: Request reopening of prosecution by submitting an
24 amendment or evidence or both. 3 7 C.F .R. § 41.50(b )(1 ). If Option 1 is exercised,
12
Appeal2014-002152
Application 13/175,026
1 Appellant must also comply at the same time with our requirement under 37 C.F.R.
2 § 1.105.
3 Option 2: Request rehearing on the record presently before the
4 Board. 37 C.F.R. § 41.50(b)(2).
5 FURTHER ORDERED that no time period for taking any
6 subsequent action in connection with this appeal may be extended under
7 37 C.F.R. § 1.136(a)(l )(iv), including any time to respond to our requirement
8 under 37 C.F.R. § 1.105.
9 AFFIRMED
10 (New Rejection; 37 C.F.R. § 41.50(b))
13