Ex Parte Krebs

Board of Patent Appeals and Interferences

Mar 29, 2010

10755702 (B.P.A.I. Mar. 29, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MICHAEL KREBS
____________

Appeal 2009-005338
Application 10/755,702
Technology Center 1700
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Decided: March 29, 2010
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Before MICHAEL P. COLAIANNI, JEFFREY T. SMITH, and
KAREN M. HASTINGS, Administrative Patent Judges.

SMITH, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision finally rejecting claims 1, 2, 4-18, 21, 24, and 28-33, all of the
pending claims. We have jurisdiction under 35 U.S.C. § 6(b).1

1 In rendering this decision we have considered Appellant’s Brief dated
April 22, 2008.

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Application 10/755,702

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We AFFIRM.
STATEMENT OF THE CASE
Claim 1 is illustrative of the subject matter on appeal, and is
reproduced from the Claims Appendix to the Appeal Brief (“App. Br.”):
1. A process for producing a reactive polyurethane containing free
isocyanate groups said process consisting of the step of reacting a
monomeric asymmetrical diisocyanate with a polyhydric alcohol,
wherein:

(a) the monomeric asymmetrical diisocyanate used contains at least
95% by weight of diphenylmethane-2,4'-diisocyanate (2,4'-MDI) and
less than 5% by weight of 4,4'-MDI and 2,2'-MDI, the 2,2'-MDI
content being under 0.4%, by weight;

(b) at least one diol with a number average molecular weight of 60
g/mol to 2,000 g/mol is used as the polyhydric alcohol;

(c) the ratio of isocyanate groups to hydroxyl groups is a value of
1.05:1 to 2.0:1; and

(d) the reactive polyurethane thereby obtained has a content of
monomeric asymmetrical diisocyanate of at most 0.3% by weight.

THE REJECTION
Claims 1, 2, 4-18, 21, 24, and 28-33 stand rejected under 35 U.S.C. §
102(b) and 35 U.S.C. § 103(a) as over Bolte, WO 00/05290, published PCT
application dated February 3, 2000.2

2 We refer to the English language equivalent document that has been filed
in the present record on July 9, 2008.
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PRINCIPLES OF LAW
Anticipation under 35 U.S.C. § 102 requires that a prior art reference
sufficiently describe the claimed invention to have placed the invention in
the possession of the public. See Minnesota Mining & Mfg. Co. v. Johnson
& Johnson Orthopaedics, Inc., 976 F.2d 1559, 1572 (Fed. Cir. 1992).
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 406
(2007) (quoting 35 U.S.C. § 103).
“[I]n considering the disclosure of a reference, it is proper to take into
account not only specific teachings of the reference but also the inferences
which one skilled in the art would reasonably be expected to draw
therefrom.” In re Preda, 401 F.2d 825, 826 (CCPA 1968).

ISSUE
Appellant initially argues that Bolte does not disclose the use of
monomeric asymmetric diisocyanate as specified by the claimed invention.
Appellant also argues that claim 1 uses the transitional phrase “consisting
of” and therefore is distinguishable over the process of Bolte. Specifically,
Appellant states “the Bolte application teaches that two steps are required to
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Application 10/755,702

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obtain a suitable low monomeric isocyanate product whereas the instant
claims provide a one-stop process to achieve this objective.” (App. Br. 4). 3

Did the Examiner err in determining that Bolte describes a process for
producing a reactive polyurethane containing free isocyanate groups
(Component A) in a single stage process as required by claim 1.4
We answer this question in the negative. Therefore we affirm.
ANALYSIS
The Examiner found that Bolte describes a process for producing a
reactive polyurethane containing free isocyanate groups (Component A) in a
single stage process as required by the claimed invention. Specifically, in
responding to Appellant's arguments, the Examiner states:
At page 14, line 20 to page 15, line 9, the reference discloses
making the polyurethane prepolymer having terminal isocyanate
groups, referenced as "component A” by the reference, by reacting
difunctional isocyanate and difunctional polyol in which the
diisocyanate may be “diphenyl methane-2,4’-diisocyanate” solely
(page 15, line 7), which coupled with the reference's description of
how much NCO to OH is required to obtain the isocyanate
terminated polyurethane prepolymer, gives the instantly claimed
method with no additional steps nor ingredients... (Ans. 11).

3 Appellant has not presented separate argument directed to the ratio of
isocyanate groups to hydroxyl groups. Arguments not presented in
Appellant’s Brief are waived from further appellate review.

4 Appellant has not presented separate arguments for all the claims subject to
the appealed rejections. Consequently, we will limit our discussion to
independent claim 1. Any claim not separately argued will stand or fall with
independent claim 1.

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The Examiner properly determined Bolte places a person of ordinary
skill in the art in possession of a process for producing reactive polyurethane
containing free isocyanate groups in a single stage process. Bolte
specifically discloses that the list of difunctional isocyanate provided on
page 15 could have been used individually. This disclosure would meet the
requirements of the reactants identified in part (a) of the claimed invention.5
Appellant argues that the Bolte disclosure appearing on pages 8 to 9
of the application is evidence of a two step polymerization process. (App.
Br. 4 and 6). This disclosure does not detract from the disclosures appearing
in the other portions of the Bolte reference. It appears that the portions of
the Bolte reference identified by the Examiner for the production of
component (A) are sufficient to place a person of ordinary skill in the art in
possession of a single stage process.
Assuming arguendo that the description in Bolte, identified by the
Examiner the production of component (A), is insufficient to establish
anticipation, this disclosure would at least have provided a person of
ordinary skill in the art with a reasonable expectation that the reactive
polyurethane could have been produced in a single stage process.
Appellant in response to the obviousness rejection state that “it would
not be obvious from the Bolte application, that a one stage process would be
capable of producing a reactive polyurethane with a free monomeric
isocyanate content of not more than 0.3%.” (App. Br. 7). This argument is
not persuasive because Bolte describes the utilization of the ratio of
isocyanate groups to hydroxyl groups that falls within the scope of the

5 Appellant did not specifically address the Examiner’s citation to pages 14
and 15 of Bolte in a responsive Brief.
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claimed invention. (Bolte, p. 10, ll. 1-3). Appellant has not explained how
the utilization of isocyanate groups and hydroxyl groups in the ratio
identified in the reference would not produce reactive polyurethane that falls
within the scope of the claimed invention.
Under these circumstances, we cannot conclude that the Examiner
erred in determining that the appealed subject matter is anticipated and/or
obvious under 35 U.S.C. §§ 102 and 103. Therefore, the Examiner’s
decision to reject claims 1, 2, 4-18, 21, 24, and 28-33 is affirmed.

CONCLUSION
The decision of the Examiner rejecting claims 1, 2, 4-18, 21, 24, and
28-33 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(v).

AFFIRMED

PL Initial:
sld

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