Ex Parte Krebs et al

Patent Trial and Appeal Board

Dec 29, 2016

10822625 (P.T.A.B. Dec. 29, 2016)

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.
10/822,625 04/12/2004 Michael Krebs 104388.000066/H5395 3301
38857 7590 01/03/2017
Raker & Hostetler T T P
EXAMINER
CIRA CENTRE, 12TH FLOOR NILAND, PATRICK DENNIS
2929 ARCH STREET
PHILADELPHIA, PA 19104-2891 ART UNIT PAPER NUMBER
1762
NOTIFICATION DATE DELIVERY MODE
01/03/2017 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):
eofficemonitor@bakerlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL KREBS, KATJA BROSA, ANDREAS BRENGER,
UWE FRANKEN, and CHRISTOPH LOHR
Appeal 2015-000288
Application 10/822,625
Technology Center 1700
Before PETER F. KRATZ, MARK NAGUMO, and JAMES C. HOUSEL,
Administrative Patent Judges.
HOUSEL, Administrative Patent Judge.
DECISION ON APPEAL1
Pursuant to 35 U.S.C. § 134(a), Appellants2 appeal from the
Examiner’s decision finally rejecting claims 1—8, 10—13, 16—34, and 36. We
have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We REVERSE.
1 Our decision refers to the Specification (Spec.) filed April 12, 2004,
Appellants’ Appeal Brief (Appeal Br.) filed May 15, 2014, the Examiner’s
Answer (Ans.) delivered July 24, 2014, and Appellants’ Reply Brief (Reply
Br.) filed September 24, 2014.
2 According to Appellants, the real party in interest is Henkel AG & Co.
KGaA. Appeal Br. 1.
Appeal 2015-000288
Application 10/822,625
STATEMENT OF THE CASE
The invention relates to a reactive adhesive which is solid at room
temperature. See claim 1. Appellants disclose that reactive polyurethane
adhesives and sealants based on prepolymers with free isocyanate groups
have very high performance profiles, and are often used either in single
component systems as hot melt and laminating adhesives or in two
component systems that are mixed immediately prior to application. Spec.
3—5. According to Appellants, one disadvantage of such adhesives is the
residual content of monomeric/unreacted isocyanates, in particular the more
volatile diisocyanates. Id. at 1 6. Thus, Appellants disclose that the
development of reactive polyurethane compositions with drastically reduced
diisocyanate monomeric content is highly desirable. Id. at 17. Appellants
disclose that the invention provides reactive adhesives including at least one
reaction product from diphenylmethane diisocyanate, including at least 95%
of 2,4'-diphenylmethane diisocyanate, and at least one polyether-polyol,
polyalkylene diol, and polyester-polyol. Id. at 117.
Claim 1, reproduced below from the Claims Appendix to the Appeal
Brief, is illustrative of the subject matter on appeal. The limitation at issue
is italicized.
1. A reactive adhesive, which is solid at room temperature, and
which comprises:
(i) at least one reaction product having free isocyanate
groups obtained by reacting reactants consisting essentially of:
(a) diphenylmethane diisocyanate, of which at least 95
wt.%o is 2,4'-diphenylmethane diisocyanate; and
(b) one or more compounds, each selected from the
2
Appeal 2015-000288
Application 10/822,625
group consisting of polyalkylene diols having number average
molecular weights less than 1,000 and polyesterpolyols which
are solid at room temperature and are crystalline, partly
crystalline or vitreously amorphous, wherein said one or more
compounds includes at least one of said polyester polyols;
( c) optionally, one or more of tackifying resins
containing active hydrogen atoms, low molecular weight
polymers of olefmically unsaturated monomers containing
hydroxyl groups, and polyether-polyols having a number
average molecular weight greater than 1,000; and wherein said
polyether-polyols are selected from the group consisting of
polytetramethylene glycols, polypropylene glycols, copolymers
of ethylene oxide and propylene oxide, and alkylene diols and
(ii) at least one adhesion-intensifying additive which is
capable of migration; said adhesion-intensifying additive
comprising polyisocyanate having a vapour pressure of less
than 10'6 hPa at 20°C;
wherein said adhesive has a monomeric diisocyanate
content of less than 0.5 wt.%.
Rejections
The Examiner maintains, and Appellants request review of, the
following grounds of rejection:
1. Claims 1-8, 10-13, 16, 17, 19-22, 24, 25, 27-29, 31-34, and
36 under 35 U.S.C. § 102(b) as anticipated by Heider;
2. Claims 1-8, 10-13, 16, 17, 19-22, 24, 25, 27-29, 31-34, and
36 under 35 U.S.C. § 103(a) as unpatentable over Heider;
3. Claims 1-8,10-13, 16-34, and 36 under 35 U.S.C. § 103(a)
as unpatentable over Heider in view of Krebs; and
4. Claims 1-8, 10-13, 16, 17, 19-22, 2U-34, and 36 under
35 U.S.C. § 103(a) as unpatentable over Heider in view of
3
Appeal 2015-000288
Application 10/822,625
Stobbie and Coyner.
ANALYSIS
Rejection 1: Anticipation by Heider
The dispositive issue before us for this rejection is whether the
Examiner reversibly erred in finding that Heider teaches use of a
diphenylmethane diisocyanate (MDI), of which at least 95 wt.% is 2,4'-
diphenylmethane diisocyanate (2,4'-MDI). We answer this question in the
affirmative and, therefore, will not sustain the Examiner’s § 102(b) rejection
of claims 1—8, 10-13, 16, 17, 19-22, 24, 25, 27—29, 31—34 as anticipated by
Heider for the reasons expressed by the Appellants in the Brief and the
Reply Brief. The following comments are added for emphasis.
The Examiner finds Heider teaches a reactive adhesive including,
inter alia, a first reactant “consisting essentially of all 2,4'-diphenylmethane
diisocyanate.” Ans. 2, noting Heider, claims 4 and 22. Because each of
Heider’s claims 4 and 22 recite the 2,4'-MDI isomer as one of only 3
specified diisocyanates, the Examiner finds that the use of 2,4'-MDI “is
described with sufficient specificity as to be anticipated by Heider.” Ans. 2.
Appellants contend that this finding is in error because it fails to
consider the entirety of the disclosure on which Heider’s claims draw
descriptive support. Appeal Br. 4—6; see also Reply Br. 1—3. In particular,
Appellants urge that Heider discloses that the pure 4,4'-MDI isomer is
preferred, but this isomer may be mixed with the 2,4'-MDI isomer, though in
amounts less than 50 wt.% of the latter isomer. Appeal Br. 6. In addition,
Appellants assert that Heider teaches that such mixtures with the 2,4'-MDI
isomer “affect[] the content of unreacted diisocyanate, thermal stability and
4
Appeal 2015-000288
Application 10/822,625
the duration of adhesive film reachability.” Id. at 6, citing Heider 4:37—40.
Appellants also note that all of Heider’s examples only use the 4,4'-MDI
isomer. Id.
In response, the Examiner finds that “[f]rom the context of claim 4,
particularly noting ‘and mixtures thereof, it is clear that the individually
claimed diisocyanates, including the claiming of 2,4'-diphenylmethane
diisocyanate, are intended to be claimed for individual use or else ‘and
mixtures thereof would not have been required.” Ans. 21. The Examiner
notes given that claims 4 and 22 only recite 3 members of which the 2,4'-
MDI isomer is one, the ordinary artisan would readily and immediately be
able to select only the 2,4'-MDI isomer from such a small list as to warrant a
finding of anticipation. Id. at 31. The Examiner also finds that Heider’s use
of the term, “preferably,” does not exclude nor teach away from the use of
more than 50 wt.% of the 2,4'-MDI isomer, especially given Heider’s claims
4 and 22. Id. at 30. Moreover, the Examiner notes that a prior art disclosure
is valid for all that it teaches, and is not limited to its examples. Id.
To begin, it is important to understand the scope and context of
Heider. The claims of a prior art patent are part of its disclosure.
Therasense, Inc. v. Becton, Dickinson and Co., 593 F.3d 1289, 1295—1296
(Fed. Cir. 2010) (on rehearing en banc, Parts I, III, and IV reinstated in
Therasense, Inc. v. Becton, Dickinson and Co., 649 F.3d 1276, 1296 (Fed.
Cir. 2011). Nonetheless, we note that claims of a patent are interpreted in
light of the patent’s specification and do not circumscribe scope beyond that
of the written descriptive support provided therein. Ariad Pharmaceuticals,
Inc. v. Eli Lilly and Co., 598 F.3d 1336, 1347 (Fed. Cir. 2010). What a prior
art patent teaches is measured by the scope of the disclosure, not the claims.
5
Appeal 2015-000288
Application 10/822,625
“The scope of a patent’s claims determines what infringes the patent; it is no
measure of what it discloses. A patent discloses only that which it describes,
whether specifically or in general terms, so as to convey intelligence to one
capable of understanding.” In re Benno, 768 F.2d 1340, 1346 (Fed. Cir.
1985). See also In re Rasmussen, 650 F.2d 1212, 1214 (CCPA 1981)
(“Disclosure is that which is taught, not that which is claimed.”)
Anticipation under § 102 requires that the prior art “describe” subject matter
within the scope of the claims. 35 U.S.C. § 102(b) (“A person shall be
entitled to a patent unless ... the invention was patented or described . . . .”)
(pre-AIA version applicable to the claims subject to this appeal).
Heider’s claims 4 and 22 recite that the aromatic polyisocyanate of the
adhesive composition of claim 1 is selected from the group consisting of
toluene diisocyanate, the 4,4'-MDI isomer, the 2,4'-MDI isomer, and
mixtures thereof. The Examiner correctly notes that such a recitation
implies that each individually recited polyisocyanate may be used alone, i.e.,
100 wt.%, or in mixtures together in any amounts. However, Heider’s
specification discloses that the aromatic polyisocyanate may be toluene
diisocyanate, diphenylmethane diisocyanate (MDI), and mixtures thereof,
where the term “MDI” is understood to encompass both the 4,4'- and the
2,4'- isomers. Heider 4:30—34. But, Heider further teaches a preference for
the pure 4,4'-MDI isomer, as well as a preference, when using the 2,4'-MDI
isomer, that this isomer not exceed 50 wt.%. Heider 4:34—37. In addition,
Heider cautions that the admixture of the 4,4'-MDI isomer with the 2,4'-MDI
isomer affects the content of unreacted diisocyanate, thermal stability and
the duration of adhesive film reactivation. Heider 4: 37-40. Further,
Heider’s examples all require the pure 4,4'-MDI isomer. Heider 10:6—7.
6
Appeal 2015-000288
Application 10/822,625
Heider does not describe a pure 2,4'-MDI isomer (or at least 95 wt.%), but
instead expresses a specific preference for the pure 4,4'-isomer, or in
admixture with the 2,4'-isomer at no greater than 50 wt.%. Heider’s specific
preferences for the pure 4,4'-MDI isomer and, if present in admixture, no
more than 50 wt.% of the 2,4'-MDI isomer inform one of ordinary skill in
the art as to the scope of claims 4 and 22, and in particular, as to the use of
the three recited aromatic polyisocyanates. Thus, while the Examiner’s
focus on Heider’s claims is understandable given that they recite each
polyisocyanate individually as well as in mixtures, such reliance ultimately
is unreasonable where, as here, the specification presents a narrower scope
of disclosure for the diphenylmethane diisocyanate. Absent more, we find
that the Examiner has not established that Heider describes a reactive
adhesive, as Appellants’ claim, including the 2,4'-MDI isomer in an amount
of at least 95 wt.%.
It follows, therefore, that we will not sustain the anticipation rejection.
Rejection 2: Obviousness over Heider
The Examiner relies on the same fact findings regarding Heider as
made in the above discussed anticipation rejection of the same claims by
Heider, especially with regard to the limitation that the reactive adhesive
include MDI, or which at least 95 wt.% is the 2,4'-MDI isomer. Ans. 8—12.
The Examiner acknowledges “Heider does not describe the instantly claimed
invention in the instantly claimed terminology.” Id. at 13. The Examiner
nonetheless concludes that it would have been obvious to have used the
Heider components and amounts thereof in the reactive hot melt adhesive
compositions of Heider, where the properties recited in the claims are
inherent given that these adhesive compositions are the same as claimed. Id.
7
Appeal 2015-000288
Application 10/822,625
at 13—14. Moreover, the Examiner finds that “[t]here is no showing of
unexpected results stemming from any differences between the instant
claims and the cited prior art which is commensurate in scope with the
instant claims and the cited prior art.” Id. at 14.
Appellants first contend that for the same reasons given with regard to
the limitation that the MDI is at least 95 wt.% of the 2,4'-isomer, the § 103
rejection is also deficient. Appeal Br. 6. Appellants also contend that “there
is no reason or suggestion to utilize a reaction product obtained by reactants
consisting essentially of at least 95 wt.% 2,4'-MDI and the one or more
polyalkylene diols or polyester polyols recited in the claims.” Id.
Appellants argue that Heider teaches away from the level of 2,4'-MDI purity
in the claims in favor of pure 4,4'-MDI, specifically noting Heider’s
disclosures that, preferably, the 2,4'-MDI isomer should not exceed 50 wt.%.
Id. at 7. Appellants assert that our reviewing court has found that an
expressed preference in the prior art can constitute a teaching away from the
claimed invention. Id., citing leva Pharmaceuticals USA v. Sandoz, Inc.,
723 F.3d 1363, 1372—73 (Fed. Cir. 2013). Given Heider’s disclosed
preferences, Appellants urge that “[n]ot surprisingly, the examples of Heider
are also based on 4,4' MDI.” Appeal Br. 7. According to Appellants, “there
is no suggestion or reasonable expectation provided in Heider of the
beneficial results of pure 2,4'-MDI when compared to conventional hot melt
adhesives based on 4,4' MDI (see, e.g., Examples in specification at [0050]
to [0057]), results the Examiner does not address.” Id.
With regard to the use of at least 95 wt.% of the 2,4'-MDI isomer as
the polyisocyanate, we first direct attention to our discussion of this issue
above. As we indicated above, the Examiner has not shown that Heider
8
Appeal 2015-000288
Application 10/822,625
provides a description of using at least 95 wt.% of the 2,4'-isomer. In view
of this finding, we further find that the Examiner has not shown that Heider
suggests to one of ordinary skill in the art the use of at least 95 wt.% of the
2,4'-isomer. In this regard, Heider expresses a preference for the pure 4,4'-
MDI isomer and, if used, no more than 50 wt.% of the 2,4'-MDI isomer. We
agree with Appellants that these expressed preferences evidence more than
merely a general preference, and indeed provide a teaching away from the
use of the 2,4'-MDI isomer alone or in amount of at least 95 wt.% as
claimed. We note that the court in the Teva Pharmaceuticals decision noted
that a reference expressing a specific preference for copolymer-1
compositions having molecular weights of 10-20 kDa and greater taught
away from the claimed lower molecular weight copolymer-1. Teva Pharm.,
723 F.3d at 1372.
“A reference does not teach away, however, if it merely expresses a
general preference for an alternative invention but does not ‘criticize,
discredit, or otherwise discourage’ investigation into the invention claimed.”
DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327
(Fed. Cir. 2009). To teach away, a reference must discourage one of
ordinary skill in the art from following the path set out in the reference, or
lead that person in a direction divergent from the path that was taken by the
applicant. In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). Here, Heider not
only expresses a specific preference for the 4,4'-MDI isomer and, if used, no
more than 50wt.% of the 2,4'-MDI isomer (Heider 4:34—37), Heider also
teaches that the admixture of the 4,4’-MDI isomer with the 2,4'-MDI isomer
“affects the content of unreacted diisocyanate, thermal stability and the
duration of adhesive film reactivability” (id. at 4:37). Such disclosure
9
Appeal 2015-000288
Application 10/822,625
criticizes, discredits, or otherwise discourages use of the 2,4'-MDI isomer as
the aromatic polyisocyanate, either alone or in amounts greater than 50
wt.%. When the prior art teaches away from a combination, that
combination is more likely to be nonobvious. KSR Int'l. Co. v. Teleflex Inc.,
550 U.S. 398,417 (2007).
Under these circumstances, we cannot conclude that the Examiner has
met the minimum threshold of establishing obviousness under 35 U.S.C.
§ 103(a). See In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992); KSR
Int’l, 550 U.S. at 418. Because the Examiner has not established
obviousness of the claimed invention, we do not reach Appellants’ argument
and evidence of unexpected results.
Rejections 3 and 4: Obviousness over Heider in view of Krebs or Heider
Appellants contend that neither Krebs, nor Stobbie and Coyner
remedy the deficiencies in Heider argued previously. Appeal Br. 8. As the
Examiner does not rely on these secondary references to remedy the
deficiencies in Heider discussed above and we found Appellants’ arguments
as to these deficiencies persuasive, we likewise will not sustain these
rejections for the same reasons as given above.
DECISION
Upon consideration of the record, and for the reasons given above and
in the Appeal and Reply Briefs, the decision of the Examiner rejecting
claims 1—8, 10-13, 16—34, and 36 is reversed.
REVERSED
10