Ex parte Kubitza et al.

Board of Patent Appeals and Interferences

Mar 18, 1999

08318328 (B.P.A.I. Mar. 18, 1999)

Application for patent filed October 5, 1994. According to appellants,1
this application is a continuation of application 08/009,522, filed January
27, 1993, now abandoned.
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1)
was not written for publication in a law journal and (2) is
not binding precedent of the Board.
Paper No. 13
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte WERNER KUBITZA, ROLF ROSCHU,
FERDINAND ZOLLNER and HANS J. LAAS
_____________
Appeal No. 96-2504
Application 08/318,3281
______________
ON BRIEF
_______________
Before KIMLIN, WEIFFENBACH and HANLON, Administrative Patent
Judges.
KIMLIN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 7-
24, all the claims remaining in the present application.
Claim 7 is illustrative:
Appeal No. 96-2504
Application 08/318,328
2
7. A process for the preparation of a coating which
comprises
a) applying to a water-resistant substrate an
aqueous coating composition containing water and a
binder which consists essentially of a
hydrophilically-modified polyisocyanate component
containing one or more hydrophilically-modified
polyisocyanates which are dispersible in water, said
hydrophilically-modified polyisocyanate component
having a viscosity at 23°C of 100 to 5000 mPa.s, an
average NCO functionality of 2 to 4, a content of
(cyclo)aliphatically bound isocyanate groups of 12
to 21.5% by weight, based on the weight of said
hydrophilically modified polyisocyanate component,
and a content of ethylene oxide units (calculated as
C H 0, molecular weight = 44) present within2 4
polyether chains of 2 to 20% by weight, based on the
weight of said hydrophilically modified
polyisocyanate component, and
b) curing said aqueous coating composition in the
presence of moisture to form a polyurea coating.
In the rejection of the appealed claims, the examiner
relies upon the following references:
Hombach et al. (Hombach) 4,663,377 May 05, 1987
"Aqueous Polyurethane Dispersions from TMXDI®
(MEDTA) Aliphatic Isocyanate", CYANAMID BULLETIN,
Feb. 1989.
Appellants' claimed invention is directed to a process
Appeal No. 96-2504
Application 08/318,328
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for preparing a cured polyurea coating. The process comprises
coating a water-resistant substrate with a composition
containing water and a binder which consists essentially of a
hydrophil-ically-modified polyisocyanate having the recited
characteris-tics.
Appellants separately argue claims 13-18, as a group, and
claims 11, 12, 17, 18, 23 and 24, as a group. Accordingly,
such two groups of claims stand or fall together, as do claims
7-10 and 19-22.
Appealed claims 7-24 stand rejected under 35 U.S.C. § 102
as being anticipated by Hombach. In addition, claims 7-24
stand rejected under 35 U.S.C. § 103 as being unpatentable
over Hombach in view of the CYANAMID BULLETIN.
We have carefully reviewed the respective positions
advanced by appellant and the examiner. In so doing, we will
not sustain the examiner's section 102 rejection of claims 11,
12, 17, 18, 23 and 24. However, we will sustain the
examiner's section 102 rejection of claims 7-10, 13-16 and 19-
Appeal No. 96-2504
Application 08/318,328
4
22, as well as the section 103 rejection of all the appealed
claims for essentially the reasons expressed in the answer.
We consider first the examiner's rejection of claims 7-
10, 13-16 and 19-22 under 35 U.S.C. § 102. Appellants do not
dispute
the examiner's factual determination that Hombach describes
coating a substrate with a composition containing a hydrophil-
ically-modified polyisocyanate of the kind claimed, including
one having the recited viscosity. Appellants' principal
contention on appeal is that the claim language "a binder
which consists essentially of a hydrophilically-modified
polyisocyanate component . . ." does not allow for the
presence of the adhesive components disclosed by Hombach.
However, we are in full agreement with the examiner that the
claim language "coating composition containing water and a
binder which consist essen-tially of" defines a coating
composition which comprises the recited ingredients in
addition to non-specified components. Appellants do not
challenge the examiner's position that the claim term
"containing" is equivalent to the term "comprises". On this
Appeal No. 96-2504
Application 08/318,328
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point, the examiner is on sound legal footing. See Swain v.
Crittendon, 332 F.2d 820, 823, 141 USPQ 811, 813 (CCPA 1964),
and In re Pangrossi, 277 F.2d 181, 185, 125 USPQ 410, 413
(CCPA 1960). Rather, appellants maintain that "the binder
portion of the composition has been closed to other binder
components, such as the adhesive binders of Hombach et al."
(page 4 of principal
brief). We however, find no error in the examiner's reasoning
articulated at page 5 of the answer:
Consistent with the PTO's policy to interpret claims
in their broadest meaning reasonable to one of
ordinary skill in the art, it is the examiner's
position that "containing" allows the claimed
composition to contain any other ingredients and is
analogous to "comprising". Therefore, the added
adhesive binder of Hombach et al. is not excluded.
The consisting essentially of and consisting
language cited by the applicant serves to limit the
polyisocyanate subsequently described to those
having the parameters following consisting
essentially of and consisting.
The appealed claims do not specify that the recited binder is
the only binder in the coating composition. In our view, the
appealed claims encompass an aqueous coating composition
Appeal No. 96-2504
Application 08/318,328
6
containing water, the specified binder, and other additional
components, including additional binders. Also, we find no
merit in the argument that since the final product of the
reference is an adhesive, it is "not a coating." (page 2 of
reply brief). Manifestly, the application of an adhesive
composition results in an adhesive coating.
We also agree with the examiner that Hombach's disclosure
of an emulsifier prepared from polyether alcohols having
"generally about 10" ethylene oxide units anticipates the "9
alkylene units"
of claims 13-18. In re Ayers 154 F.2d 182, 185, 69 USPQ 109,
112 (CCPA 1946), see also In re DeVaney, 185 F.2d 679, 88 USPQ
97 (CCPA 1950).
We will not sustain the examiner's section 102 rejection
of claims 11, 12, 17, 18, 23 and 24, which require that the
coating composition contain a pigment. Appellants have
presented objective evidence that the chalk disclosed by
Hombach does not qualify as a pigment.
Regarding the section 103 rejection of all the appealed
Appeal No. 96-2504
Application 08/318,328
7
claims, appellants do not challenge the examiner's legal
conclusion that it would have been obvious for one of ordinary
skill in the art to make the polyisocyanate of Hombach with
TMXDI in order to give the polyurethanes a lower viscosity
(page 10 of answer). Rather, appellants again contend that
such compositions of Hombach "will be outside the scope of
Claims 7-24, because these claims exclude the presence of the
aqueous adhesives required by Hombach et al." (page 7 of
brief). For the reasons discussed above, we find that this
argument is non-persuasive. While appellants also maintain at
page 7 of the principal brief "there would be no motivation
for a skilled artisan to omit
these adhesives from the coating composition of Hombach et
al."
this misstates the issue. Since we find that the claim
language "containing" does not preclude the presence of
Hombach's adhesive components in the claimed composition, we
do not reach the issue of whether the claim language "consists
essentially of" excludes the adhesive components of Hombach to
Appeal No. 96-2504
Application 08/318,328
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the extent that their incorporation in the claimed composition
would materially affect the basic and novel characteristic of
the claimed invention.
As for the separately argued claims, we are satisfied
that Hombach's disclosure of preparing polyisocyanates from a
polyether polyol having about 10 ethylene oxide units
establishes a prima facie case of obviousness for the claimed
polyether polyol having 9 ethylene oxide units. Also, we are
convinced that one of ordinary skill in the art would have
found it obvious to include a pigment, as well as a filler, in
adhesive compositions of Hombach for the purpose of adding
color to the composition. Also, concerning the section 103
rejection of the appealed claims, we note that appellants base
no argument upon objective evidence of nonobviousness, such as
unexpected results.
In conclusion, based on the foregoing, the examiner's
decision rejecting the appealed claims is affirmed.
No time period for taking any subsequent action in
Appeal No. 96-2504
Application 08/318,328
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connection with this appeal may be extended under 37 CFR
§ 1.136(a).
EDWARD C. KIMLIN )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
CAMERON WEIFFENBACH ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
ADRIENE LEPIANE HANLON )
Administrative Patent Judge )
vsh
Appeal No. 96-2504
Application 08/318,328
10
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