Ex Parte Kaifu et al

Board of Patent Appeals and Interferences

Oct 31, 2006

10191449 (B.P.A.I. Oct. 31, 2006)

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for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte NOBUO KAIFU and
HIROSHI SATOH
____________

Appeal 2006-2516
Application 10/191,449
Technology Center 1700
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Decided: October 31, 2006
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Before OWENS, WALTZ, and GAUDETTE, Administrative Patent Judges.
GAUDETTE, Administrative Patent Judge.

DECISION ON APPEAL
This appeal involves claims 10-13, the only claims pending in this
application. We have jurisdiction over the appeal pursuant to 35 U.S.C.
§ 134.
Appeal 2006-2516
Application 10/191,449

INTRODUCTION
The claims are directed to a peel treating agent. According to
Appellants, the presence of bisurea in a peel treating agent can decrease the
adhesive force when the peel-treating agent containing the bisurea is coated
on the back side of a tape opposed to the adhesive agent. Moreover, higher
contents of bisurea can disrupt the process of preparing such a product by
creating undesirably high amounts of precipitate in the storage tank of the
process, particularly if the temperature of the storage tank is lowered.
Appellants maintain that they have discovered that by adjusting the particle
size of the ethylene/vinyl alcohol copolymer or polyvinyl alcohol to be at
most 10 mesh, the resulting product peel treating agent contains at most 3
wt% of bisurea, thus providing a superior final product.
Claim 10 is illustrative of the invention and is reproduced below:
10. A peel-treating agent comprising a reaction product of an
aliphatic isocyanate having an aliphatic group of at least 8 carbon
number with an ethylene/vinyl alcohol copolymer or polyvinyl
alcohol, as an effective component, wherein a bisurea form content in
the reaction product is at most 3 wt%, wherein the ethylene/vinyl
alcohol copolymer or polyvinyl alcohol has a particle size no larger
than particles that would pass through a sieve of size 10 mesh.
The Examiner relies on the following prior art references to show
unpatentability:
Halpern US 3,052,652 Sep. 4, 1962
Kumagai JP 55-142096 Nov. 6, 1980
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Appeal 2006-2516
Application 10/191,449

The sole ground of rejection is as follows:
Claims 10-13 are rejected under 35 U.S.C § 103(a) as unpatentable
over Kumagai in view of Halpern.
We reverse.
OPINION
The Examiner relies on Kumagai for a disclosure of a releasing agent
(peel-treating agent) which is a reaction product of an ethylene/vinyl alcohol
copolymer and an alkylisocyanate having at least 8 carbon atoms. (Answer
3). The Examiner maintains that Kumagai’s use of xylene as the solvent in
the process of making the releasing agent would virtually eliminate the
bisurea by-product, since bisurea is a by-product produced in the presence of
water. Id. The Examiner relies on Halpern to illustrate that it is
conventional to use polyvinyl alcohol particles of size 80 mesh or smaller in
order to effect more uniform dispersion of the particles in the solvent and to
provide more surface area for reaction with the isocyanate. Id at 4. The
Examiner maintains that the result of using smaller particles would be a
higher yield of polyurethane and less bisurea by-product. Id.
Appellants argue that merely selecting an ethylene/vinyl alcohol
copolymer or polyvinyl alcohol starting material for production of the
polyurethane (without reference to any controlling of the particle size) is not
sufficient to ensure production of a product having the claimed low levels of
bisurea. (Br. 5). Appellants direct us to Example 1 and Comparative
Example 1 of the present application as evidence that a product produced
using Kumagai’s method would not inherently be the same as the presently
claimed peel-treating agent. According to Appellants, Example 1 and
Comparative Example 1 of the present Specification “are the definitive test
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Appeal 2006-2516
Application 10/191,449

of the effect of controlling the particle size as required by the present
invention,” since both examples are performed under identical conditions,
the only difference being the pre-sieving of the Example 1 ethylene/vinyl
alcohol copolymer to control its particle size. Id. at 4. Appellants note that
there is no detectable bisurea content in the final product of Example 1. Id.
In contrast, the final product of Comparative Example 1 contains 4 wt% of
bisurea. Id.
Appellants further rely on these examples to disprove the Examiner’s
assertion that use of a xylene solvent would yield a final product having a
low level of bisurea. Appellants point out that the solvent used in the
examples was toluene, which is similar to xylene in that it is also immiscible
with water and, therefore, would have essentially no water present in the
solvent. (Reply 2). The starting materials in the examples also underwent
the identical dehydration step of refluxing for 2 hours to remove water. Id.
According to Appellants, the difference in bisurea content in Example 1 and
Comparative Example 1 establish that the controlling parameter in reducing
bisurea by-product is not the solvent and its immiscibility with water, but the
presieving of the polymer to control particle size which provides
significantly more effective dehydration of the reaction mixture. Id.
We find Appellants’ arguments and evidence in support thereof
persuasive in establishing that control of particle size of the ethylene/vinyl
alcohol copolymer or polyvinyl alcohol in a reaction with an aliphatic
isocyanate as claimed provides an unexpected reduction of bisurea content
in the final product. The Examiner does not attempt to refute and, in fact, it
is unclear whether he has even considered (Br. 5) Appellants’ evidence of
nonobviousness. See In re Dow Chemical Co., 837 F.2d 469, 473,
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Appeal 2006-2516
Application 10/191,449

5 USPQ2d 1529, 1532 (Fed. Cir. 1988) ("Evidence that supports, rather than
negates, patentability must be fairly considered."). Therefore, we conclude
that the appealed claims are patentable over the combined teachings of
Kumagai and Halpern1 The rejection is reversed.
REVERSED

tf

OBLON, SPIVAK, MCCLELLAND,
MAIER & NEUSTADT, P.C.
1940 DUKE STREET
ALEXANDRIA, VA 22314

1 For the sake of completeness, we note that during oral hearing,
Appellants’ counsel also argued that the Examiner had relied upon improper
hindsight reasoning and, therefore, had not established a prima facie
showing of obviousness. In particular, it was noted that the Examiner failed
to explain why one of ordinary skill in the art, in considering the problem of
bisurea by-product formation, would have looked to Halpern which
discloses alkoxylation of PVA, acetylation and reaction with isocyanate to
produce a product which is said to be useful in the manufacture of foam
products. In addition, the Examiner did not explain why one of ordinary
skill in the art would apply Halpern’s teaching relating to polyvinyl alcohol
particle sizes to Kumagai’s ethylene/vinyl alcohol copolymer. We are in
agreement with Appellants that the only relationship between an
ethylene/vinyl alcohol copolymer and polyvinyl alcohol appears to emanate
from Appellants’ disclosure. In re Fritch, 972 F.2d 1260, 1266, 23 USPQ2d
1780, 1783-74 (Fed. Cir. 1992) (“The mere fact that the prior art may be
modified in the manner suggested by the Examiner does not make the
modification obvious unless the prior art suggested the desirability of the
modification.”). However, we do not find this argument on the written
record before us.

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