Ex parte Konig et al.

Board of Patent Appeals and Interferences

Aug 24, 2000

08922818 (B.P.A.I. Aug. 24, 2000)

Application for patent filed 9 September 1997. Applicants claim priority under1
35 U.S.C. § 119 of German patent application 19637334.4, filed 13 September 1996. The
real party in interest is Bayer AG.
The opinion in support of the decision being
entered today is not binding precedent of the Board.
Paper 18
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte EBERHARD KONIG, KALR-LUDWIG NOBLE
and THEODOR ENGBERT

_____________
Appeal 2000-0115
Application 08/922,8181
______________
Before: McKELVEY, Senior Administrative Patent Judge, and
SCHAFER and GARDNER-LANE, Administrative Patent Judges.
McKELVEY, Senior Administrative Patent Judge.
MEMORANDUM OPINION and ORDER
Decision on appeal under 35 U.S.C. § 134
The appeal is from a decision of the Primary Examiner
rejecting claims 1-5. We affirm-in-part and reverse-in-part.
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A. Findings of fact
The record supports the following findings by a
preponderance of the evidence.
The invention
1. The invention described in the specification,
as filed, relates to a composition comprising a blocked
(cyclo)aliphatic polyisocyanate containing
(A) a stabilizer which is a 2,2,6,6-
tetramethyl-piperidine which does not
contain any hydrazide structure,
(B) optionally, an additional stabilizer which
is a hydrazide, and
(C) optionally an additional stabilizer beyond
stabilizers (A) and (B).
Specification, pages 2-3.
2. The composition is said to be useful as a
crosslinking resin for organic polyhydroxyl compounds in
the production of stoving lacquers. Specification, page 5,
lines 25-27).
Prosecution history
3. Applicants originally presented claims 1-3.
Gras is prior art vis-a-vis applicants under 35 U.S.C. § 102(b).2
Cook is prior art vis-a-vis applicants under 35 U.S.C. § 102(b).3
Konig is prior art vis-a-vis applicants under 35 U.S.C. § 102(a) and § 102(e).4
Uhrhan is prior art vis-a-vis applicants under 35 U.S.C. § 102(b).5
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4. There came a time during the prosecution when
the examiner rejected claims 1 and 3 as being unpatentable
under 37 U.S.C. § 102(b) over Gras, U.S. Patent 5,173,5602
(Paper 4, page 2).
5. The examiner also rejected the claims 1-3 as
being unpatentable under 35 U.S.C. § 103(a) over Cook, U.S.
Patent 5,216,078 or Konig, U.S. Patent 5,523,377 in view of3 4
Uhrhan, U.S. Patent 4,178,279 (Paper 4, pages 3-4).5
6. Part of applicants' effort to overcome the
anticipation rejection based on Gras involved an amendment to
claim 1. Specifically, applicants amended claim 1 as follows
(relevant additional limitations underscored) (Paper 8, page
2):
1. (Amended) A (cyclo)aliphatic polyisocyanate
composition which has a content of blocked and unblocked
isocyanate groups (calculated as NCO) of 5 to 25 wt%, in
which at least 95% of the isocyanate groups are present
in a form blocked with a blocking agent, which does not
contain a 2,2,6,6-tetramethyl piperydinyl group, and
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which also contains the following stabilizing compounds:
A) *** B) *** and C) ***.
7. Applicants also added claims 4 and 5 to the
application.
8. In support of their amendment to claim 1,
applicants made the following observation (Paper 8, pages 3-
4):
Claim 1 has been amended to indicate that the blocking
agent of the polyisocyanate does not contain a 2,2,6,6-
tetramethyl piperydinyl group. Support for the amendment
can be found in the following sections of the
specification which reasonably convey to one skilled in
the art that [a]pplicants have invented a polyisocyanate
that is blocked with a blocking agent that does not
contain the 2,2,6,6-tetramethyl piperydinyl group. In
page 4, lines 3-6 and lines 7-13, for instance, the
specification lists blocking agents [page 4] and
stabilizing agents separately. The blocking agents do
not contain the 2,2,6,6-tetramethyl piperydinyl group.
Support can also be found in example 1 in which a
polyisocyanate is blocked with butanone oxime. As such,
the amendments have been made to better define the
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invention. Neither amendment introduces new matter into
the application.
9. The specification, as filed, states (page 4,
lines 3-6):
Examples of suitable blocking agents that may be used
include butanone oxime, diisopropylamine, 1,2,4-triazole,
imidazole, malonic ester, acetoacetic ester, dimethyl
pyrazole, ,-caprolactam, and mixtures thereof. Butanone
oxime is particularly preferred.
10. Example 1 of applicants' specification, as
filed, describes the use of the blocking agent butanone oxime
(page 6).
11. Upon consideration of the amendment to claim 1,
the examiner withdrew the anticipation rejection based on Gras
and entered a final rejection of claims 1-5 under the first
paragraph of 35 U.S.C. § 112 finding that applicants'
specification, as filed, does not describe the invention of
amended claim 1 (Paper 9, page 2).
12. The examiner also finally rejected claims 1-5 as
being unpatentable for obviousness based on Cook or Konig in
view of Uhrhan (Paper 9, pages 3-5).
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13. A copy of claims 1-5 as finally rejected appears
as an appendix to this MEMORANDUM OPINION and ORDER.
Examiner's Answer
14. In the Examiner's Answer, claims 1-4 stand
rejected under the first paragraph of 35 U.S.C. § 112 as
claiming subject matter not described in the specification, as
filed (Paper 14, page 3). The examiner did not pursue a § 112
rejection of claim 5 in the Examiner's Answer.
15. Claims 1-5 stand rejected under 35 U.S.C. § 103
as being unpatentable over Cook or Konig in view of Uhrhan.
Other findings
16. Other findings appear in the discussion portion
of this MEMORANDUM OPINION and ORDER.
B. Discussion
1. Prior art rejection
The examiner acknowledges that neither Cook nor Konig
describe a composition containing a stabilizer (1) having
a 2,2,6,6-tetramethyl piperidinyl radical and (2) not having a
hydrazide structure (Paper 14, page 4). However, the examiner
found that the use of compounds "lacking hydrazide groups ***
to stabilize polyisocyanates and prepolymers *** [were] known
***" (Paper 14, page 4). To support his finding, the examiner
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relies on Uhrhan. Finding that applicants are using the
Uhrhan compounds for their intended use, the examiner further
found that there was motivation to use the Uhrhan compounds in
place of the hydrazide group-containing compounds of Cook or
Konig.
The mere fact that all of the elements of a claimed
combination are found in the prior art is not per se
sufficient to justify a § 103 rejection. Smith Industries
Medical Systems, Inc. v. Vital Signs, Inc., 183 F.3d 1347,
1356, 51 USPQ2d 1415, 1420-21 (Fed. Cir. 1999) (there is no
basis for concluding that an invention would have been obvious
solely because it is a combination of elements that were known
in the art at the time of the invention. The relevant inquiry
is whether there is a reason, suggestion, or motivation in the
prior art that would lead one of ordinary skill in the art to
combine the teachings of the references, and that would also
suggest a reasonable likelihood of success. Such a suggestion
or motivation may come from the references themselves, from
knowledge by those skilled in the art that certain references
are of special interest in a field, or even from the nature of
the problem to be solved); In re Kotzab, 217 F.3d 1365, ____,
55 USPQ2d 1313, ____ (Fed. Cir. 2000) (identification in the
prior art of each individual part claimed is insufficient to
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defeat patentability of the whole claimed invention; rather,
to establish obviousness based on a combination of elements
disclosed in the prior art, there must be some motivation,
suggestion or teaching of the desirability of making the
specific combination that was made by the applicant)
Our disagreement with the examiner in this appeal is his
finding of motivation. The mere fact that an element is being
used for its known purpose may not be sufficient in a
particular case. In this case, Cook and Konig describe the
use of hydrazide-containing stabilizers and do not give the
slightest hint that a non-hydrazide-containing stabilizer
could be used in place of their hydrazide-containing
stabilizers. Thus, it is not apparent to us why a person of
ordinary skill in the art would have been motivated to use a
non-hydrazide containing stabilizer in the Cook and Konig
inventions. The use of a non-hydrazide-containing stabilizer
would appear to be inconsistent with the inventions described
by Cook and Konig.
The decision of the examiner rejecting claims 1-5 over
Cook or Konig in view of Uhrhan will be reversed.
2. The lack of written description rejection
The examiner found that applicants' specification, as
filed, did not describe a polyisocyanate composition
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containing isocyanate groups blocked with any blocking agent
except a blocking agent containing a 2,2,6,6-tetramethyl
piperidinyl group. Accordingly, the examiner found that the
subject matter of claims 1-4, as amended, define subject
matter not described in the specification, as filed.
We agree-in-part and disagree-in-part.
Claim 2 depends from claim 1 and limits the blocking
agent to one which comprises butanone oxime. Claim 4 depends
from claim 1 and limits the blocking agent to a Markush group
of butanone oxime, diisopropylamine, 1,2,4-triazole,
imidazole, malonic ester, acetoacetic ester, dimethyl pyrazole
and ,-caprolactam. The lack of 2,2,6,6-tetramethyl
piperidinyl group limitation would not apply to the block
agents of claims 2 and 4. Hence, the examiner's rejection of
claims 2 and 4 based on a lack of written description cannot
be sustained.
However, we agree with the examiner's findings with
respect to claims 1 and 3 (with claim 3 [1] depending from
claim 1 and [2] not further limiting the blocking agent). The
specification, as filed, does not evidence applicants'
possession of the invention of claim 1, as currently worded.
Rather, on this record, it plainly appears that applicants
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came into possession of the invention defined by claim 1 only
after the examiner cited Gras.
There is nothing inherently wrong with limiting a claim
to avoid prior art. And, in fact, applicants often find that
they have claimed subject matter described in the prior art
thereby necessitating a limiting amendment to a claim. As
noted by In re Wertheim, 541 F.2d 257, 263, 191 USPQ 90, 97
(CCPA 1976):
Inventions are constantly made which turn out not to
be patentable, and applicants frequently discover
during the course of prosecution that only a part of
what they invented and originally claimed is
patentable.
But, the subject matter of the claim, as amended, must have
described in the specification, as filed. For example, an
applicant may describe a genus and certain species. A
description of a genus and certain species, however, may not
entitle the applicant to a claim to a subgenus. In re Smith,
458 F.2d 1389, 1395, 173 USPQ 679, 683 (CCPA 1972).
Applicants rely on the description of a Markush group of
blocking agents to establish factually that their
specification describes blocking agents which do not have a
2,2,6,6-tetramethyl piperidinyl group. But, the Markush would
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also mean that numerous blocking agents other than those with
a 2,2,6,6-tetramethyl piperidinyl group likewise are not
described. It was not until Gras was cited that applicants
seem to have arrived at the "subgenus" now claimed, i.e.,
isocyanates blocked with any blocking agent other than one
having a 2,2,6,6-tetramethyl piperidinyl group. The appeal
does not involve a case where an applicant describes and
originally claims a plurality of species, some of which turn
out to be in the prior art. An amendment to eliminate the
species within the prior art may be appropriate. Compare In
re Johnson, 558 F.2d 1008, 194 USPQ 187 (CCPA 1977). Each
species may be regarded as a different invention and
cancellation of one invention from a claim does not mean that
the remaining inventions claimed are not described. Thus, if
applicants elected to cancel one member of the Markush group
of claim 4, we doubt it could be argued that the specification
did not describe the remaining members of the Markush group.
C. Decision
The examiner's rejection of claims 1-5 over Cook or Konig
in view of Uhrhan is reversed.
The examiner's rejection of claims 1-4 as failing to
comply with the description requirement of the first paragraph
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of 35 U.S.C. § 112 is affirmed as to claims 1 and 3 and is
reversed as to claims 2 and 4.
AFFIRMED-IN-PART and REVERSED-IN-PART
______________________________
FRED E. McKELVEY, Senior )
Administrative Patent Judge )
)
)
______________________________)
RICHARD E. SCHAFER ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
______________________________)
SALLY GARDNER-LANE )
Administrative Patent Judge )
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