Ex Parte KALBE

Patent Trial and Appeal Board

Apr 28, 2016

13116737 (P.T.A.B. Apr. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/116,737 05/26/2011 Michael KALBE
22850 7590 05/02/2016
OBLON, MCCLELLAND, MAIER & NEUSTADT, LLP,
1940 DUKE STREET
ALEXANDRIA, VA 22314
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.
380532US99 6106
EXAMINER
REDDY, KARUNA P
ART UNIT PAPER NUMBER
1764
NOTIFICATION DATE DELIVERY MODE
05/02/2016 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):
patentdocket@oblon.com
oblonpat@oblon.com
ahudgens@oblon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL KALBE 1
Appeal2014-002342
Application 13/116,737
Technology Center 1700
Before CHUNG K. PAK, TERRY J. OWENS, and JEFFREY T. SMITH,
Administrative Patent Judges.
SMITH, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134(a) from the
Examiner's final rejection of claims 1-8.2 An oral hearing was held on
April 7, 2016.3 We have jurisdiction pursuant to 35 U.S.C. § 6(b). We
REVERSE.
1 According to the Appeal Brief, the Real Party in Interest is BASF SE.
(App. Br. 2).
2 Claims 9-15 have been withdrawn from consideration. (Final Act. l; App.
Br. 2).
3 A written transcript of the oral hearing will be entered into the record when
the transcript is made available.
Appeal2014-002342
Application 13/116,737
BACKGROUND
Appellants' invention relates to a formaldehyde-free binder for
granular and/or fibrous substrates. (Spec. 3.) Claim 1 is reproduced below
from the Claims Appendix to the principal Brief:
1. A binder, comprising:
a polymer A obtained by a process comprising a free-
radical addition polymerization,
a crosslinker B which is an organic compound
comprising at least two functional groups selected from the
group consisting of a hydroxyl group, an epoxy group, a
primary amino group, and a secondary amino group, and
an isocyanate C which is an organic compound
comprising at least two isocyanate groups,
wherein the polymer A consists of, in polymerized form:
from 5% to 100% by weight of at least one monomer A 1,
which is at least one ethylenically unsaturated C3 to C6 mono-
or dicarboxylic acid, and
from 0% to 95% by weight of at least one monomer A2,
which is at least one other ethylenically unsaturated compound
which is copolymerizable with the at least one monomer Al.
The Examiner maintains, and Appellants appeal, the following
rejections:
Claims 1-8 under 35 U.S.C. § 103(a) as unpatentable over the
combination of Michl et al. (US 2007/0027281 Al, published Feb. 1, 2007)
("Michl") and Murachi (JP 05-125347 A, published May 21, 1993).
Claims 1-5, 7, and 8 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Michl and Gothlich et al. (US 2008/0233390 Al,
published Sept. 25, 2008).
2
Appeal2014-002342
Application 13/116,737
OPINION4
The dispositive issue on appeal is: Did the Examiner err in
determining that the combination of Michl and either Murachi or Gothlich
would have suggested a formaldehyde-free binder for granular and/or
fibrous substrates comprising an isocyanate having at least two isocyanate
groups as required by independent claim 1?
After review of the respective positions provided by Appellants and
the Examiner, we agree with Appellants that the Examiner did not establish
that the combination of Michl and either Murachi or Gothlich would have
suggested a formaldehyde-free binder comprising an isocyanate having at
least two isocyanate groups for granular and/ or fibrous substrates as required
by independent claim 1. 5
The Examiner found Michl, Murachi, and Gothlich all are directed to
binder compositions. (Non-Final Act. 4 and 5). The Examiner found Michl
discloses an aqueous binder system comprising a polymer formed from 70%
by weight of acrylic acid and 30% by weight of maleic acid, and
triethanolamine that corresponds to the recited crosslinker made of an
organic compound comprising at least two functional groups selected from
the group consisting of a hydroxyl group, an epoxy group, a primary amino
group, and a secondary amino group for fibrous substrates that differs from
the claimed invention by not disclosing an isocyanate having at least two
isocyanate groups. (Id.; Ans. 2.) The Examiner found Murachi discloses a
method of curing a binder having an acrylic polymer having carboxylic
4 We limit our discussion to independent claim 1.
5 The statement of the rejections on appeal appear in the November 30, 2012
Non-Final Office Action.
3
Appeal2014-002342
Application 13/116,737
groups and a polyisocyanate curing catalyst, such as diphenylmethane
diisocyanate, and Gothlich disclose curing polyacrylate binders with a
polyisocyanate crosslinker. (Non-Final Act. 4 and 5). In other words,
Murachi and Gothlich teach that a polyisocyanate functions as a crosslinker
and a curing catalyst. Id. The Examiner concluded it would have been
obvious to add a polyisocyanate to the binder system of Michl in light of the
teachings of Murachi or Gothlich. (Id.)
According to Appellants, the use of isocyanate compounds in binders
were known by persons of ordinary skill in the art to produce tacky fibrous
substrates, necessitating the use of expensive and undesirable release agents
in the molding process (App. Br. 7; Spec. 3, 11. 13-19). Appellants argue a
skilled artisan would have lacked any suggestion or reasonable expectation
of success in modifying Michl by the disclosure of Murachi because of the
disparities in both the compositions and applications of the binders of Michl
and Murachi and because the combination would have been expected to
result in an excessively tacky binder. (App. Br. 7-8). Appellants also argue
a skilled artisan would have lacked motivation to modify the fibrous
substrate binder of Michl with Gothlich's metal coating binder, due to the
selection of a polyisocyanate crosslinker from among the many crosslinkers
in the binder of Gothlich, and because the polyisocyanate would have been
expected to result in an excessively tacky binder. (App. Br. 8-9).
We agree with Appellants. The Examiner has not adequately
addressed how a person of ordinary skill in the art would have arrived at the
claimed invention by selecting the polyisocyanate crosslinker, in lieu of
triethanolamine that corresponds to the recited crosslinker made of an
organic compound comprising at least two functional groups selected from
4
Appeal2014-002342
Application 13/116,737
the group consisting of a hydroxyl group, an epoxy group, a primary amino
group, and a secondary amino group. The Examiner also has not adequately
addressed why a person of ordinary skill in the art would have had an
apparent reason or a reasonable expectation of success for including the
polyisocyanate from either the coating adhesive of Murachi or the metal
coating binder of Gothlich in the substrate consolidation binder of Michl in
term of the applicability of the desired level of adhesion for coating on the
desired level of adhesion for the consolidating binder of Michl and the effect
of Murachi's or Gothlich's polyisocyanates on the desired levels of
adhesion for the consolidation binder of Michl.
Thus, the Examiner has not established that the relied-upon
disclosures are sufficient to support a prima facie case of obviousness of the
Appellants' claimed binder. See In re Warner, 379 F.2d 1011, 1017 (CCPA
1967) ("A rejection based on section 103 clearly must rest on a factual basis,
and these facts must be interpreted without hindsight reconstruction of the
invention from the prior art"). Accordingly, we reverse the rejections.
We reverse the appealed prior art rejections.
REVERSED
5