Ex Parte Kime

Board of Patent Appeals and Interferences

Jan 7, 2011

11150927 (B.P.A.I. Jan. 7, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/150,927 06/13/2005 Daniel A. Kime COC-0530 6404
23575 7590 01/07/2011
CURATOLO SIDOTI CO., LPA
24500 CENTER RIDGE ROAD, SUITE 280
CLEVELAND, OH 44145
EXAMINER
EASHOO, MARK
ART UNIT PAPER NUMBER
1767
MAIL DATE DELIVERY MODE
01/07/2011 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________

Ex parte DANIEL A. KIME
________________

Appeal 2009-015003
Application 11/150,927
Technology Center 1700
________________

Before CHARLES F. WARREN, CATHERINE Q. TIMM, and
MARK NAGUMO, Administrative Patent Judges.

Opinion for the Board filed by Administrative Patent Judge NAGUMO.

Opinion Dissenting filed by Administrative Patent Judge WARREN.

NAGUMO, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

Appeal 2009-015003
Application 11/150,927

A. Introduction2
Daniel A. Kime (“Kime”) timely appeals under 35 U.S.C. § 134(a)
from the final rejection3 of claims 1-24. We have jurisdiction under
35 U.S.C. § 6. We REVERSE.
The subject matter on appeal relates to low volatile organic content-
sealant materials comprising polyurethanes and a non-reactive fatty acid
ester that replaces most of the volatile organic solvent and that is said to
provide improved material extrusion, gunning and tooling, and package
stability. (Spec. 3, ll. 8-19.) Such materials are said to be especially useful
as sealants for gaps or joints between materials having widely different
thermal coefficients of expansion in commercial and home construction and
repair, and in the transportation market. (Id. at 1, ll. 17-26.)
Representative Claim 1 reads:
1. A polyurethane sealant comprising the components:
a. a non-reactive fatty acid ester;
b. a reaction product of polyoxyalkylene polyol and
polyisocyanate; and,
c. a thixotropic agent;
wherein the polyurethane sealant has a non-volatile
materials content of at least 96%,
is capable of extruding, gunning, and tooling and

2 Application 11/150,927, Volatile Organic Compound (VOC) Compliant
Sealing Material, filed 13 June 2005, claiming the benefit of a provisional
application filed 15 June 2004. The specification is referred to as the
“927 Specification,” and is cited as “Spec.” The real party in interest is
listed as Construction Research & Technology GmbH (Appeal Brief,
filed 20 April 2009 (“Br.”), 3.)
3 Office action mailed 21 November 2008.
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wherein the polyurethane sealant has a Brookfield
viscosity of less than 16,000 poise at 75°F without
separation of the components after such gunning, tooling
or extruding and
wherein the polyurethane sealant exhibits improved
package stability.
(Claims App., Br. 32; indentation, paragraphing, and emphasis added.)
The Examiner has maintained the following grounds of rejection:4
A. Claims 1-13 stand rejected under 35 U.S.C. § 103(a) in view of
the combined teachings of Kamemura5 and Ishikawa .6
B. Claims 14-24 stand rejected under 35 U.S.C. § 103(a) in view
of the combined teachings of Kamemura and Ishikawa.
B. Discussion
Findings of fact throughout this Opinion are supported by a
preponderance of the evidence of record.
As Kime has not argued the separate patentability of any claim, and
has not separately argued the two rejections, which apply the same art, we
treat all claims as standing or falling with claim 1.
37 C.F.R. § 41.37(c)(1)(vii) (2007).

4 Examiner’s Answer mailed 14 July 2009 (“Ans.”). The rejection of
claims 1 and 14 under 35 U.S.C. § 112(2), imposed following entry of
claims amended after the final rejection (Office Action mailed 3 February
2009), has been withdrawn. (Ans. 8.)
5 Ichiro Kamemura et al., Plasticizer and Urethane Curable Composition,
U.S. Patent Application Publication US 2002/0198312 A1 (2002)
6 Kazunori Ishikawa & Hiroyuki Hosoda, Moisture Curable Polyurethane
and/or Epoxy Resin Composition and Storage Stabilizer Contained Therein,
U.S. Patent Application Publication US 2003/0130411 A1 (2003).
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The issue dispositive of this appeal is whether, as Kime argues
(Br. 17, last para.), the Examiner erred in determining that a person having
ordinary skill in the art would have considered the curable urethane
compositions described by Kamemura to be in need of the slump-resistance
aides, i.e., improved thixotropic properties, recommended by Ishikawa.
Kamemura describes curable urethane compositions that have a low
viscosity at room temperature. (Kamemura p.1, para. [0001].) Such
compositions are said to be “widely used for building applications such as a
waterproof coating, a floor coating, a corrosion-preventing material, a
sealing material and an elastic road material, making use of their excellent
elasticity.” (Id. at [0002].) Kamemura classifies the invented compositions
by coating method (“a hand coating type or “a spray coating type”) (id.). In
particular, Kamemura describes preferred applications of the compositions
as “[a] hand coating type waterproof coating, floor coating or corrosion-
preventing material” (id. at 2 [0019]), and as “[a] ultra rapid-curing spray
type waterproof coating, floor coating or corrosion-preventing material” (id.
at [0020]).
Ishikawa describes “moisture curable polyurethane . . . suitable for
use as a joint filling material, sealant, or adhesive, or the like.” (Ishikawa
p.1, para. [0002].) As Ishikawa indicates, “joint filling materials” are also
known as “joint compound.” (Id. at [0004].) Ishikawa teaches that when
such compositions “are used in particular as sealants, joint filling materials,
etc., the property of good workability without causing sagging, in other
words thixotropic properties (slump resistance) are required.” (Ishikawa p.1,
para. [0006].) According to Ishikawa, “[t]he thixotropic properties can
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usually be improved by blending colloidal silica, etc., in the polyurethane
compositions with using calcium carbonate as a filler having smaller surface
area.” (Id.)
The 927 Specification teaches that a rheology modifier can be added
to the inventive sealant:
[T]o increase the viscosity of the material immediately after
application to a substrate. This can prevent the sealant from
dripping or running when initially applied to a substrate.
Examples of the rheology modifier include, but are not
limited to, fumed silica, polyamide waxes, modified castor
oil, and clay intercalated with organic cations, acrylates, PVC
plastisols, polyurea-plasticizer dispersions. Talc may be used
as both a filler and rheology modifier.
(Spec. 6, ll. 25-31.) The 927 Specification teaches further that a thixotropic
agent may be present at 1-26 weight-percent of the sealant. (Spec. 12,
Table 1.)
Kime argues, based on a definition of the term “thixotropy” from a
technical dictionary,7 that a thixotropic agent is “a compound that aids in the
liquification and re-solidification of certain gels.” (Br. 14, last para.) Thus,
it is apparent that persons having ordinary skill in the art recognize that not
all rheology modifiers are necessarily thixotropic agents.
The Examiner maintains that because Kamemura and Ishikawa are
both concerned with “sealants,” that their teachings are combinable.

7 Kime has not provided a copy of the reference cited in the Brief in the
Evidence Appendix as required by 37 C.F.R. § 41.37(c)(1)(ix) (2007),
although Kime does state that the reference was provided during
prosecution. The Examiner does not dispute the accuracy of the definition
or Kime’s arguments about the function of a thixotropic agent.
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(Ans. 4.) However, the Examiner has not directed our attention to any
credible evidence that the “sealants” described by Kamemura would have
been recognized as being in need of (or potentially benefitting from) the
thixotropic properties—the “good workability without sagging,” or the
“slump resistance”—described by Ishikawa. In fact, Kamemura’s “sealants”
are described as coatings, and the Examiner states that “it is understood that
a thixotropic agent would not greatly improve a coating.” (Ans. 8.)
Although the Examiner focused on the disclosures of the sealing
utility of the polyurethane products described by each of Kamemura,
Ishikawa, and the 927 Specification, the Examiner failed to consider the
detailed properties of the polyurethane compositions as disclosed by the two
prior art references. Obviousness is based on the facts—here, the properties
of the prior art compositions—not on general functional labels such as
“sealant.” The Examiner argues that “the reference(s) teaches all of the
claimed ingredients,” and that therefore “the claimed effects and physical
properties would implicitly be achieved by a composite with all the claimed
ingredients, as a chemical composition and its properties are inseparable.”
(Ans. 4.) This inherency argument overlooks the range of properties
obtainable from polyurethane compositions comprising the recited
ingredients. The weight of the evidence of record supports Kime’s position
that Ishikawa provides no motivation to add a thixotropic agent to the low
viscosity curable urethane compositions described by Kamemura.
We are not unsympathetic to the position of our dissenting colleague.
We note, however, that the Examiner’s analysis is quite different, and that
the Examiner failed to provide sufficient findings and analysis to support the
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rejections of record. As our primary role is the review of appealed
rejections, we express no opinion as to the ultimate patentability of the
appealed claims.
We have considered Kime’s other arguments, but find them of little or
no persuasive value. The question of whether Kamemura and Ishikawa are
two references directed to “analogous” art is at best a consideration
secondary to the direct issue on which we have resolved this appeal.
Kimes’s argument that the combination of Ishikawa with Kamemura would
destroy the intended function of Kamemura (Br. 18-20), and the related
arguments (id. at 20-26) misconstrue the Examiner’s position. We
understand the Examiner to have argued that the teachings of Ishikawa
would have motivated the ordinary worker to add a thixotropic agent to
another polyurethane composition, in particular, to the polyurethane
compositions taught by Kamemura. It is not apparent anywhere that the
Examiner ever proposed that the compositions taught by Ishikawa should be
incorporated into those of Kamemura.
C. Order
We REVERSE the rejection of claims 1-24 under 35 U.S.C. § 103(a)
in view of the combined teachings of Kamemura and Ishikawa.
REVERSED

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WARREN, Administrative Patent Judge, Dissenting:
I cannot join in the decision of the majority of this panel to reverse the
decision of the Primary Examiner. I would affirm for the following reasons.
I.
The issues in this appeal principally turn on the meaning of the term
“sealant.” The term “sealant” appears in the preambular language “[a]
polyurethane sealant” in representative product claim 1. Indeed, Appellant’s
arguments in effect contend that the combination of Kamemura and
Ishikawa does not teach the polyurethane “sealant” compositions as claimed
in claims 1 and 14. See generally Brs. Thus, as an initial matter, I interpret
claim 1, giving the claim terms thereof the broadest reasonable interpretation
consistent with the written description in the Specification. See, e.g., In re
Suitco Surface, Inc., 603 F.3d 1255, 1259 (Fed. Cir. 2010) (“During
reexamination, as with original examination, the PTO must give claims their
broadest reasonable construction consistent with the specification.”)
(quoting In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir.
2007) (citing In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed.
Cir. 2004)); In re Morris, 127 F.3d 1048, 1054-55 (Fed. Cir. 1997) (“[T]he
PTO applies to the verbiage of the proposed claims the broadest reasonable
meaning of the words in their ordinary usage as they would be understood
by one of ordinary skill in the art, taking into account whatever
enlightenment by way of definitions or otherwise that may be afforded by
the written description contained in the applicant’s specification.”).
I find no specific definition of the term “sealant” in the Specification.
Appellant acknowledges in the Specification that “[s]ealants are used to
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isolate an environment, serving as a barrier to the passage of gases, liquids,
and solid particles,” and “to attenuate mechanical shock, vibration, and
sound, maintain a pressure differential, and protect items mechanically,
electrically, and thermally.” Spec. 1: 12-15 (emphasis supplied). It is
further acknowledged that “[t]he largest use of sealants is in commercial and
home construction and repair, and in the transportation market,” where
“[e]xterior commercial construction sealants must accommodate large
changes in joint gaps or width from temperature cycling and wind loads,” as
well as resist rain and heat, in such materials as concrete, stone, marble,
aluminum, steel, glass, and plastic. Spec. 1:16-26. “Polyurethanes have
utility as high performance sealants which are suitable for commercial
building and construction for interior and exterior sealing,” and “[h]igh
performance sealants can typically accommodate significant joint movement
in compression or tension with good recovery.” Spec. 1: 30 to 2:2 (emphasis
supplied). “Regulatory requirements require reduction in the volatile
organic compounds (voc) content of sealing materials such as joint
sealants.” Spec. 2:10-11 (emphasis supplied). Appellant teaches that
“[i]mproved performance is typically obtained for clean and dry substrate
surfaces.” Spec. 12:4-8. The disclosed invention is further described with
single part, ambient moisture-curing polyurethane sealants encompassed by
the categories of ingredients set forth in Table I, as discussed below, wherein
“[t]o test solvent replacement, heat aging was used as a method to estimate
the long-term package stability of the finished sealant formulation.” Spec.
12:10 to 13:23.
On this basis, I find that, contrary to Appellant’s contentions, the
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disclosure in the Specification does not limit the preambular term “sealant”
to polyurethane joint filling material sealants, but includes polyurethane
coating sealants for such surfaces as concrete, stone, marble, aluminum,
steel, glass, and plastic. See, e.g., App. Br. 12 (“Therefore, the [Kamemura]
invention is not that of a three-dimensional polyurethane sealant capable of
extruding, gunning or tooling, but that of a polyurethane coating.”); see also,
e.g., App. Br. 15, citing Spec. 1:17-26, and Kamemura ¶¶ 0019 and 0020.
My finding comports with the common usage of the term “sealant” as
set forth in technical and ordinary dictionaries: “any organic material that is
soft enough to pour or extrude and is capable of subsequent hardening to
form a permanent bond with the substrate,” including synthetic polymers
such as urethanes “that are semisolid before application and are cured to
form elastomers;”8 and as “[a] substance . . . used to seal a surface to
prevent passage of a liquid or gas.”9
My finding also comports with the meaning of the term “sealant” in
the polyurethane arts as acknowledged by Kamemura and Ishikawa. In this
respect, I find that Ishikawa would have acknowledged that it was known in
the art that “[p]olyurethane compositions comprising such urethane
polymers as main integrants have heretofore found wide use as joint filling
materials (joint compound), sealants, adhesives, etc..” Ishikawa ¶ 0004; see
also ¶¶ 0006. I further find that Ishikawa would have disclosed to one of

8 See, e.g., Hawley’s Condensed Chemical Dictionary 984 (emphasis
supplied) (14th ed., Richard J. Lewis, Sr., revisor, John Wiley & Sons, Inc.,
2001).
9 See, e.g., The American Heritage Dictionary of the English Language 1570
(emphasis supplied) (4th ed., Houghton Mifflin Co., 2000).
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ordinary skill in the art that the disclosed polyurethane containing
compositions having thixotropic properties “can be widely used in ordinary
applications of flexible polyurethane . . . [containing] compositions, such as
sealants, joint filling materials, and adhesives,” and “[i]n particular, it is
suitable for use as sealants, joint filling materials, etc.” Ishikawa ¶ 0142
(emphasis supplied). Similarly, I find that Kamemura would have
acknowledged that it was known in the art that two-component and one-
component polyurethane compositions “are widely used for building
applications such as a waterproof coating, a floor coating, a corrosion-
preventing material, a sealing material and an elastic road material, making
use of their excellent elasticity.” Kamemura ¶ 0002 (emphasis supplied).
On this record, I determine that the broadest reasonable interpretation
of the preambular language “[a] polyurethane sealant” is any polyurethane
composition meeting the ingredient and other limitations of claim 1 which is
capable of functioning to any extent as any manner of sealant, including
coating sealants and joint filling material sealants. In this respect, the
polyurethane composition comprises at least any amounts of the components
of any reaction product, including pre-polymers, formed from any amount of
any polyoxyalkylene polyol and polyisocyanate; any amount of any non-
reactive fatty acid ester; and any amount of any thixotropic agent. The
claimed polyurethane sealant compositions can further contain any amount
of any additional ingredients. See, e.g., Exxon Chem. Patents, Inc. v.
Lubrizol Corp., 64 F.3d 1553, 1555 (Fed. Cir. 1995) (“The claimed
composition is defined as comprising - meaning containing at least - five
specific ingredients.”); In re Baxter, 656 F.2d 679, 686 (CCPA 1981) (“As
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long as one of the monomers in the reaction is propylene, any other
monomer may be present, because the term ‘comprises’ permits the
inclusion of other steps, elements, or materials.”). I find no basis in claim 1
or in the Specification on which to limit the polyoxyalkylene polyol,
polyisocyanate, non-reactive fatty acid ester, thixotropic agent, and any
additional ingredient(s) to those listed in dependent claim 13 or listed for
illustration purposes in the Specification. Spec., e.g., 3-10. See, e.g.,
Phillips v. AWH Corp., 415 F.3d 1303, 1323 (Fed. Cir. 2005)(en banc); In re
Van Geuns, 988 F.2d 1181, 1184-185 (Fed. Cir. 1993); In re Zletz, 893 F.2d
319, 321-22 (Fed. Cir. 1989). In this respect, I find no example of a
“thixotropic agent” described in the Specification. Spec., e.g., 6:5 and Table
1. I further find that it is disclosed in the Specification that “[p]olyurethane
sealants may be one component, two component or multi-component.” Spec.
10:24-30.
The claimed compositions encompassed by claim 1 are further limited
by the claim language specifying certain properties of the compositions. I
find that it is disclosed in the Specification that the limitations “the
polyurethane sealant has a non-volatile materials content of at least 96%,”
“is capable of extruding, gunning, and tooling,” and has “improved package
stability,” are attributed to the non-reactive fatty acid. Spec. 3:11-19. In this
respect, I interpret these claim limitations to permit the presence of any
volatile material, including solvents, in the composition to the extent of a
volatile materials content of no greater than 4% (see, e.g., dependent claim
13 (“solvents”)); require that the composition must be capable of any
manner of extruding, gunning, and tooling to any extent; and require that the
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composition must be package stable to any extent in any manner of
packaging. The claim 1 limitation “the polyurethane sealant has a
Brookfield viscosity of less than 16,000 poise at 75ºF without separation of
the components after such gunning, tooling or extruding” is disclosed with
respect to compositions having ingredients which fall within the categories
listed in Table 1. Spec. 12:10 to 13:20. However, the only specific
ingredients for the tested compositions disclosed are the non-reactive fatty
acid ester methyl oleate, and the polyisocyanate toluene diisocyanate.
Indeed, not all of the additional ingredients listed in dependent claim 13 are
represented in Table 1. Thus, in the absence of guidance in the Specification
with respect to this claim limitation, any composition would have to be
tested to determine whether that composition meets the claim limitation.
II.
The Examiner finds that Kamemura would have disclosed to one of
ordinary skill in the art one-component and two-component polyurethane
compositions containing a non-reactive fatty acid ester, which are useful as
sealing materials. Ans. 3-4 and 8-10, citing Kamemura, among other things,
¶¶ 0002, 0023, 0027, 0038, 0042, 0044, 0050, 0051, and 0073. The
Examiner finds that the Kamemura’s polyurethane sealant compositions
differ from those encompassed by claim 1 in the absence of a thixotropic
agent. Ans. 4. The Examiner finds that Ishikawa would have disclosed to
one of ordinary skill in the art polyurethane sealant compositions having
thixotropic properties which can be improved with colloidal silica. Ans. 4
and 8, citing Ishikawa ¶ 0006. The Examiner determines that one of
ordinary skill in the art would have found it obvious to add a thixotropic
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agent to Kamemura’s polyurethane sealant compositions to improve the
workability of the sealant compositions for use as joint filling sealants. Ans.
4. The Examiner further finds that while Kamemura and Ishikawa do not
describe the other limitations of claim 1, the ingredients taught by the
combination of references provide sealant compositions that otherwise fall
within claim 1 and thus, the prior art compositions would reasonably appear
to have the claimed properties. Ans. 4.
III.
I am not convinced by Appellant’s contentions that the Examiner
erred in combing Kamemura and Ishikawa, and thence in arriving at a
polyurethane sealant composition falling within claim 1.
A.
I cannot agree with Appellant’s contention that Kamemura is not
analogous prior art to the claimed invention because Kamemura “does not
address the art of polyurethane sealants but rather, only addresses the art of
polyurethane coatings,” and Kamemura’s polyurethane compositions are not
“a three-dimensional polyurethane sealant capable of extruding, gunning or
tooling, but that of a polyurethane coating.” App. Br. 11-12; see also App.
Br. 13-14; Reply Br. 4-5. I determined above that, based on common usage
of the term “sealant” to one of ordinary skill in this art, as acknowledged by
Appellant in the Specification, Kamemura, and Ishikawa, and by technical
and ordinary dictionary definitions, the term as used in the polyurethane
sealant composition arts covers all manner of sealants including coating
sealant compositions and joint filing sealant compositions, and thus I
interpreted the preambular term “sealant” accordingly. Accordingly, on this
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record, Kamemura clearly is applicable prior art with respect to the claimed
polyurethane sealant compositions encompassed by representative claim 1.
Thus, on this record, Appellant’s further argument that Kamemura’s
polyurethane sealant compositions are not “capable of extruding, gunning or
tooling” as claimed is not convincing. App. Br. 12-14. I determined above
that the claim limitations require the claimed polyurethane sealant
composition to be “capable of extruding, gunning or tooling” to any extent,
finding that this capability is disclosed in the Specification as due to the non-
reactive fatty acid ester. I find that Kamemura would have disclosed that the
disclosed non-reactive fatty acid ester containing polyurethane sealant
compositions have “an adequately low viscosity without using a solvent and
it is thereby excellent in workability” in applying sealant coatings to
substrates. Kamemura ¶ 0073; see also ¶ 0010. Thus, Kamemura’s
polyurethane sealant compositions meet the subject claim limitation on the
same basis as the polyurethane sealant compositions disclosed in the
Specification. Indeed, as Appellant acknowledges, Kamemura’s
polyurethane sealant compositions can be applied by hand and by spraying,
which the Examiner finds to fall within the claimed “extruding, gunning and
tooling.” App. Br. 13, citing Kamemura ¶¶ 0019 and 0020; Ans. 8-9. See
also Kamemura, e.g., ¶ 0039. In this respect, I determined above that this
claim limitation encompassed any manner of “extruding, gunning and
tooling.”
B.
I also cannot agree with Appellant’s contention that the alleged
difference between “three-dimensional materials” applied to joint gaps and
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apparently two-dimensional coatings would have led one of ordinary skill in
the art away from combining Ishikawa’s thixotropic agent with Kamemura’s
polyurethane sealant composition on the basis that the thixotropic agent
would provide workability without sagging. App. Br. 14-18, citing Ishikawa
¶ 0006; see also Reply Br. 6-7. Appellant contends that “the process of
applying coatings does not require the liquifaction [sic, liquefaction] and re-
solidification of the substance constituting the coating” when applying
Kamemura’s polyurethane coating sealant compositions by hand or by
spraying. App. Br. 15, citing Kamemura ¶¶ 0019 and 0020.
As Appellant further recognizes, the Examiner cited Ishikawa as
providing a thixotropic agent to obtain a sealant having good workability
without sagging. Ans. 6, App. Br. 17. Appellant further recognizes that it is
the thixotropic agent which liquefies upon application and solidifies upon
standing, and not the polyurethane composition as a whole. See App. Br. 14
(“A thixotropic agent, therefore, is a compound that aids in the liquifaction
[sic, liquefaction] and re-solidification of certain gels.”).10
Appellant does not contend that Ishikawa’s thixotropic agent would
not function as such agents when added to Kamemura’s polyurethane
compositions.
The difficulty with Appellant’s position is that the contention that
coatings do not require workability aids such as a thixotropic agent is
unsupported. Indeed, to the contrary, one of ordinary skill in this art would
have recognized that Ishikawa acknowledges that where “polyurethane
compositions are used in particular as sealants, joint filling materials, etc.,

10 See also, e.g., Hawley’s Condensed Chemical Dictionary 1098.
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the property of good workability without causing sagging, in other words
thixotropic properties (slump resistance) are required.” Ishikawa ¶ 0006. In
fact, one of ordinary skill in the art would have recognized from Ishikawa
that good workability for both “sealants, [and] joint filing materials” requires
thixotropic properties. As I found above Kamemura teaches that “excellent
in workability” is desired for the polyurethane sealant compositions. Thus,
on this record, there is ample motivation for one of ordinary skill in this art
to include Ishikawa’s thixotropic agent to Kamemura’s polyurethane coating
sealant compositions in the reasonable expectation that the agent would
predictably provide increased workability in hand coating and spray coating
surfaces with the compositions, as the Examiner contends. Ans. 4 and 8-9.
C.
I cannot subscribe to Appellant’s contention that the combination of
Kamemura and Ishikawa would destroy the intended function of
Kamemura’s polyurethane sealant compositions because Ishikawa would
have taught “that the moisture curable polyurethane composition may be
blended with solvents, along with other additives, ‘as needed for the purpose
of adjusting the viscosity, physical properties, and the like of the
composition.’” App. Br. 18, citing Ishikawa ¶ 0096; see also App. Br. 18-20;
Reply Br. 8. As the Examiner points out, “thixotropic agents do not require
solvents as shown by both Kamemura and Ishikawa.” Ans. 9. Indeed, as I
found above, Kamemura teaches that a non-reactive fatty acid ester is used
substantially in place of solvents, and the passage from Ishikawa cited by
Appellant does not require the use of a thixotropic agent in the presence of a
solvent.
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D.
Appellant contends that the combined teachings of Kamemura and
Ishikawa would not have suggested to one of ordinary skill in the art that the
addition of a thixotropic agent to a combination of a non-reactive fatty acid
ester and a reaction product of a polyoxyalkylene polyol and polyisocyanate
“would result in a polyurethane sealant that has a Brookfield viscosity of
less than 16,000 poise at 75ºF without separation of the components after
gunning, tooling or extruding and which exhibits improved package
stability” as claimed. App. Br. 20-21. In support of this contention,
Appellant argues that Ishikawa “[c]onsidered in its entirety and as a whole
. . . teaches that the presence of a volatile organic solvent is inextricably
linked with the presence of a thixotropic agent,” and thus, the combination
of Kamemura and Ishikawa would have not have suggested to one of
ordinary skill in the art that that “a thixotropic agent, which requires the
presence of a volatile solvent for improved workability in sealants,” can be
combined “with a non-volatile solvent containing urethane curable
composition as disclosed in Kamemura.” App. Br. 22, citing Ishikawa ¶¶
0006, 0007, and 0096; see also App. Br. 22.
In my view, Appellant’s contentions are not supported by the record.
Indeed, as discussed above, the Examiner has shown that the combination of
Kamemura and Ishikawa does not require the use of a thixotropic agent in
the presence of a volatile organic solvent. Furthermore, as discussed above,
Kamemura’s polyurethane sealant compositions meet the claim limitation
“capable of extruding, gunning or tooling” and “improved package stability”
on the same basis of the presence of a non-reactive fatty acid ester as the
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claimed polyurethane sealant compositions. Indeed, as the Examiner points
out, Kamemura discloses polyurethane sealant compositions that include all
of the same ingredients as claimed except for a thixotropic agent which is
taught to be useful in polyurethane sealant compositions by Ishikawa. Ans.
4.
I agree with Appellant that the combined teachings of Kamemura and
Ishikawa would not have suggested that the combination of a thixotropic
agent in Kamemura would result in a polyurethane sealant that has a
Brookfield viscosity of less than 16,000 poise at 75ºF without separation of
the components after such gunning, tooling or extruding. However, the
characterization of a claimed composition using a property not specified in
the applied references does not alone establish the patentably of the claimed
composition. See, e.g., In re Skoner, 517 F.2d 947, 950-51 (CCPA 1975)
(“Appellants have chosen to describe their invention in terms of certain
physical characteristics . . . . Merely choosing to describe their invention in
this manner does not render patentable their method which is clearly obvious
in view of [the reference].” (citation omitted)).
Here, the Examiner has established that it reasonably appears that the
claimed polyurethane sealant compositions are identical or substantially
identical to the polyurethane sealant compositions taught by the combined
teachings of Kamemura and Ishikawa because the ingredients are identical
or substantially identical. Indeed, as discussed above, Appellant discloses in
the Specification that it is the claimed non-reactive fatty acid ester that is
responsible for the claimed performance limitations of the claimed
polyurethane sealant compositions and Kamemura’s polyurethane sealant
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composition contains non-reactive fatty acids falling within the term “non-
reactive fatty acid ester” in claim 1. Thus, the burden is with Appellant to
patentably distinguish the claimed polyurethane sealant compositions over
the polyurethane compositions of the combined teachings of Kamemura and
Ishikawa even though the ground of rejection is under § 103(a). See, e.g., In
re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990) (“[W]hen the PTO shows
sound basis for believing that the products of the applicant and the prior art
are the same, the applicant has the burden of showing that they are not.”); In
re Best, 562 F.2d 1252, 1254-56 (CCPA 1977);11 see also, e.g., In re Kahn,
441 F.3d 977, 985-86 (Fed. Cir. 2006) (“‘On appeal to the Board, an
applicant can overcome a rejection by showing insufficient evidence of
prima facie obviousness or by rebutting the prima facie case with evidence
of secondary indicia of nonobviousness.’” (quoting In re Rouffet, 149 F.3d
1350, 1355 (Fed. Cir. 1998)).
In my view, Appellant has not carried the burden. Indeed, Appellant
has not established that Kamemura’s non-reactive fatty acid ester containing
polyurethane sealant compositions that differ from the claimed polyurethane

11 Where, as here, the claimed and prior art products are
identical or substantially identical, or are produced by identical
or substantially identical processes, the PTO can require an
applicant to prove that the prior art products do not necessarily
or inherently possess the characteristics of his claimed product.
Whether the rejection is based on “inherency” under 35 U.S.C.
§ 102, on “prima facie obviousness” under 35 U.S.C. § 103,
jointly or alternatively, the burden of proof is the same, and its
fairness is evidenced by the PTO’s inability to manufacture
products or to obtain and compare prior art products.
Best, 562 F.2d at 1255 (footnote and citations omitted).
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sealant compositions solely in the absence of a thixotropic agent, would not
meet the claimed limitation when a thixotropic agent is added thereto
compositions as taught by Ishikawa. Indeed, as I discussed above, the
Specification does not provide a reasonable basis for such a comparison
because, with only the exceptions of the polyisocyanate and the non-reactive
fatty acid ester, the ingredients in the compositions specified by generic
terms in Specification Table 1, on which the claimed limitation is based, are
not identified, thus affording no guidance with respect to whether a
polyurethane sealant composition meets the claim limitation.
E.
On this record as discussed above, I cannot agree with Appellant’s
contentions that the combined teachings of Kamemura and Ishikawa would
not have suggested the claimed polyurethane sealant compositions
encompassed by claim 1. App. Br. 23-24.
F.
I also cannot agree with Appellant’s contention that Ishikawa teaches
away from the combination with Kamemura because Ishikawa would have
disclosed a calcium carbonate surface treated with “a fatty acid” in order to
increase the thixotropic properties of the composition, whereas the claimed
polyurethane compositions have “a fatty acid ester,” thus teaching away
“from the improved package stability provided by the fatty acid ester
component of Applicant’s sealant.” App. Br. 24, citing Ishikawa ¶ 0055.
Appellant further contends, in this respect, that Ishikawa teaches that
calcium carbonate surface “treated with a fatty acid ester such as a fatty silyl
ester is undesirable because it decreases the storage stability.” App. Br.
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24-26, citing Ishikawa ¶¶ 0011 and 0012; see also Reply Br. 8-11.
As the Examiner points out, Appellant’s contention is not persuasive
because Kamemura’s fatty acid esters are methyl esters, and thus not the
fatty acid silyl esters argued by Appellant. Ans. 10, citing Kamemura ¶
0027. See also Ishikawa ¶¶ 0009 and 0011. Indeed, Ishikawa would have
taught that when high thixotropic properties are required, calcium carbonate
can preferably be surfaced traded with a fatty acid ester. Ishikawa ¶ 0055.
IV.
Accordingly, based on my consideration of the totality of the record
before this merits panel, I have weighed the evidence of obviousness found
in the combined teachings of Kamemura and Ishikawa with Appellant’s
countervailing evidence of and argument for nonobviousness and conclude,
by a preponderance of the evidence and weight of argument, that the claimed
invention encompassed by appealed claims 1-24 would have been obvious
as a matter of law under 35 U.S.C. § 103(a).

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CURATOLO SIDOTI CO., LPA
24500 CENTER RIDGE ROAD, SUITE 280
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