Ex Parte Kurz et al

Board of Patent Appeals and Interferences

Aug 19, 2009

11058918 (B.P.A.I. Aug. 19, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte HELMUT KURZ and MICHAEL HROUDA
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Appeal 2009-001857
Application 11/058,918
Technology Center 1700
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Decided: August 19, 2009
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Before EDWARD C. KIMLIN, BRADLEY R. GARRIS, and
JEFFREY T. SMITH, Administrative Patent Judges.

KIMLIN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal from the final rejection of claims 13, 21, 29, 30, 32,
34, 36, and 37. We have jurisdiction under 35 U.S.C. § 6(b).
Claim 29 is illustrative:

29. A skin-like covering for a structure, the covering
comprising:

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Application 11/058,918

a support layer; and

a lacquer coating on the support layer, forming an outer
surface of the support layer, having a polymer component comprised
of an acrylate or a polyacrylate, and containing a color pigment,
the support layer and lacquer coating each being formed of a
reactive polymer aqueous one- or multi component dispersion
containing a cross-linker.

The Examiner relies upon the following reference in the rejection of
the appealed claims (Ans. 3):
König 4,242,410 Dec. 30, 1980

Appellants’ claimed invention is directed to a skin-like covering for a
structure, such as the instrument panel of a vehicle. The covering comprises
a support layer having a lacquer coating thereon. The lacquer coating
comprises an acrylate or a polyacrylate as a polymer component, as well as a
color pigment. Dependent claim 21 recites that the support layer is backed
by a polyurethane foam.
Appealed claims 13, 21, 29, 30, 32, 34, 36, and 37 stand rejected
under 35 U.S.C. § 102(b) as anticipated by or, in the alternative, under 35
U.S.C. § 103(a) as being unpatentable over König.
We have thoroughly reviewed each of Appellants’ arguments for
patentability. However, we are in complete agreement with the Examiner
that the claimed subject matter is unpatentable over the cited prior art.
Accordingly, we will sustain the Examiner’s rejection for essentially those
reasons expressed in the Answer.
There is no dispute that König, like Appellants, discloses a skin-like
covering for a structure comprising a lacquer coating containing an acrylate
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or a polyacrylate component and polyurethane foam backing for the lacquer
coating. The principal argument presented by Appellants is that their “skin-
like covering comprises two distinct layers: a support layer and a lacquer
coating on the support layer [whereas König’s] skin-like covering comprises
a unitary layer on top of a foam core” (Reply Br. 1, second para.).
Appellants emphasize that “[t]here is no disclosure of a separate and distinct
lacquer coating on the support layer” (id.).
Appellants’ argument fails to address the thrust of the Examiner’s
rejection. The Examiner makes the reasonable finding that at least the
surface of König’s polyurethane foam backing meets the requirement for the
claimed support layer upon which the lacquer is coated. The claims on
appeal do not assign any particular limitation on the support layer, such as
thickness, that would serve to distinguish it over the surface layer of König’s
supporting foam layer. While Appellants state that König does not “refer to
the polyurethane foam core as a polyurethane foam layer” (Reply Br. 2,
second para.), it is clear from the König disclosure that the surface of
König’s foam core comprises a layer that is in contact with the lacquer
coating. Also, we find no merit in Appellants’ argument that “the
thicknesses of the support layer and especially of the lacquer coating on the
support layer should be read into the claims as these thicknesses are clearly
defined in the Specification” (Reply Br. 5, second para.). It is axiomatic that
limitations in the Specification are not to be read into the claims. In re Etter,
756 F.2d 852, 858 (Fed. Cir. 1985).
Appellants also maintain that the polyurea of König, which is the
reaction product of a polyamine hardener with a pre-polymer that is formed
by the reaction of a polyisocyanate and a hydroxy-containing compound, “is
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chemically different from what the Appellants are claiming as their top layer
in the skin-like covering” (App. Br. 8, first para.). However, as noted by the
Examiner, Appellants’ argument is not germane to the claimed subject
matter which only requires that the lacquer coating have a polymer
component comprised of an acrylate or a polyacrylate. The Examiner
properly points out, and Appellants acknowledge, that König expressly
teaches that the hydroxy-containing compound may be a polyhydroxy
polyacrylate (col. 3, l. 10). Hence, we agree with the Examiner that König
teaches a lacquer coating that is within the scope of the appealed claims.
Appellants also submit that “the support layer adjacent to the lacquer
layer is not composed purely of reactive components, but rather an aqueous
dispersion, specifically a polymeric component that is contained in the
dispersion and a cross-linking agent” (App. Br. 9, second para.). However,
this argument also is not commensurate in scope with the appealed claims
which do not define the support layer as comprising an aqueous dispersion
but, rather, as a layer formed of a dispersion. The Examiner has properly
concluded that Appellants have not demonstrated that the support layer
defined by the product-by-process language is materially different than the
polyurethane support layer of König.
Appellants also point out that the specific examples of König do not
form “a lacquer coating using polyhydroxy polyacrylates as the polyhydroxy
compound” (App. Br. 10, first para.). However, the Examiner has correctly
pointed out that a reference must be read for all that it fairly teaches and is
not limited to its exemplified, or preferred, embodiments. As noted above,
Appellants acknowledge that König expressly teaches that the hydroxy-
containing compound may be a polyhydroxy polyacrylate.
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Regarding separately argued claim 32, which recites that “the support
layer has a polymer component in the form of polyurethane resin”,
Appellants submit that the present Specification, at page 9, lines 24-26,
discloses that
such a dispersion also contains isocyanate or carbodiimide as
a cross linker, and is clearly a layer distinctly different from
either the lacquer coating layer lying above the support layer
and forming together with the lacquer coating layer the skin-
like covering or the layer of polyurethane foam lying below
the skin-like covering

(App. Br. 11, first para.). However, as explained above, limitations from the
Specification are not read into the claims.
Appellants also separately argue claims 36 and 37 which recite,
respectively, that the lacquer coating has a thickness of 10-300 µm
(0.01mm-0.3mm), and 60-90µm (0.60mm-0.09mm). König, however,
specifically discloses that the skin or lacquer coating may have a thickness
of 0.1mm, which falls directly within the range of claim 36, and is just
barely outside the range of claim 37. We find that the reference thickness of
0.1mm establishes the prima facie obviousness for the claimed lacquer
thickness of 0.09mm. We agree with the Examiner that one of ordinary skill
in the art would have reasonably expected the reference lacquer coating to
be substantially the same as lacquer coatings within the scope of claim 37.
Moreover, it is well settled that where patentability is predicated upon a
change in a condition of a prior art composition, such as a change in
concentration, thickness or the like, the burden is on the applicant to
establish with objective evidence that that change is critical, i.e., it leads to a
new, unexpected result. In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir.
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1990). In the present case, Appellants have proffered no such evidence of
criticality.
As a final point, we note that Appellants base no argument upon
objective evidence of non-obviousness, such as unexpected results.
In conclusion, based on the foregoing and the reasons well-stated by
the Examiner, the Examiner’s decision rejecting the appealed claims 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) (2008).

AFFIRMED

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