Ex Parte Lawrey et al

Board of Patent Appeals and Interferences

Nov 8, 2004

10158988 (B.P.A.I. Nov. 8, 2004)

The opinion in support of the decision being entered today was
not written for publication and is not binding precedent of the
Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte BRUCE D. LAWREY,
THOMAS A.J. GROSS,
and
ROLF-VOLKER MEYER
__________

Appeal No. 2004-2208
Application No. 10/158,988
___________

ON BRIEF
___________

Before OWENS, DELMENDO, and PAWLIKOWSKI, Administrative Patent
Judges.

DELMENDO, Administrative Patent Judge.

DECISION ON APPEAL

This is a decision on an appeal under 35 U.S.C. § 134
(2004) from the examiner’s final rejection of claims 1 through 4
and 6 through 21 (final Office action mailed Nov. 7, 2003) in
the above-identified application. Claim 5, the only other
pending claim, stands “objected to for depending on rejected
claims.” (Id. at 3.)
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Application No. 10/158,988

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The subject matter on appeal relates to a process for the
production of a polyurethane/urea in solution (claims 1-4 and 6-
14) and to a polyurethane/urea produced by such a process
(claims 15-21). Further details of this appealed subject matter
are recited in representative claims 1, 4, 15, and 16 reproduced
below:
1. A process for the production of a
polyurethane/urea in solution comprising
a) reacting
1) a diisocyanate with
2) an isocyanate-reactive component
comprising
(i) a diol component comprising
(a) from about 10 to about 100
equivalent percent of at least
one polyoxypropylene diol having
a number average molecular
weight of at least about 1500 Da
and an average unsaturation
level less than or equal to 0.03
meq/g,
(b) up to 90 equivalent percent of
at least one polytetramethylene
glycol having a number average
molecular weight of at least 200
Da, and optionally,
(ii) an isocyanate-reactive material which
is different from 2)(i)(a) and
2)(i)(b),
in the presence of
3) a catalyst which promotes linear
polymerization but does not cause
degradation of a polymer produced
therewith under processing conditions,
in amounts such than an NCO prepolymer having an NCO
group content of from about 1.0 to about 3.75% will be
formed, and
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b) chain extending the NCO prepolymer with
4) at least one aliphatic diamine chain
extender in
5) a solvent
to form the polyurethane/urea in solution.

4. The process of Claim 1 in which the catalyst
used is a naphthenic acid or a C6-C20 monocarboxylic
acid salt of a metal selected from the group
consisting of zinc, barium, lead, calcium, cerium,
cobalt, copper, tin, lithium, manganese, bismuth, and
zirconium.

15. The polyurethane/urea produced by the
process of Claim 1.

16. The polyurethane/urea produced by the
process of Claim 4.

The examiner relies on the following prior art reference as
evidence of unpatentability:
Seneker et al. 5,691,441 Nov. 25, 1997
(Seneker)

Claims 1 through 4, 6 through 16, and 18 through 21 on
appeal stand rejected under 35 U.S.C. § 112, ¶1, as failing to
comply with the enablement requirement. (Examiner’s answer
mailed May 12, 2004, pages 3-4.) In addition, claims 15 through
18, 20, and 21 on appeal stand rejected under 35 U.S.C. § 102(b)
as anticipated by or, in the alternative, under 35 U.S.C.
§ 103(a) as obvious over Seneker. (Id. at 4-5.)
We reverse the rejection under 35 U.S.C. § 112, ¶1, but
affirm the rejection under 35 U.S.C. § 102(b) or, in the
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alternative, 35 U.S.C. § 103(a) for the reasons well stated in
the answer.1
35 U.S.C. § 112, ¶1
The examiner’s position is stated as follows (answer at 3-
4):
The claims are directed to a process for making a
polyurethane/urea in the presence of a catalyst that
“promotes linear polymerization but does not cause
degradation”. In claim three, the appellant narrows
the catalyst to metal salts or soaps of monocarboxylic
acids or napthenic [sic, naphthenic] acid, and claim
four lists twelve metals. In the disclosure, the
appellant names only two specific catalysts - zinc and
calcium octoate - that will perform according to the
claims, and one catalyst, dibutyltin dilaurate, that
won’t. In order to determine which catalyst to use,
one of ordinary skill would have to undergo undue
experimentation of making up batches of
polyurethane/urea and testing their properties. Claim
four encompasses about 200 possible catalysts and even
encompasses dibutyltin dilaurate, which the appellant
shows, in comparison example 8, to make a fiber with
poor tenacity.

1 With respect to the rejection under 35 U.S.C. § 102(b) or
35 U.S.C. § 103(a), the appellants submit that “[c]laims 16 and
17 do not stand or fall with [c]laims 15, 18, 20 and 21.”
(Appeal brief filed Apr. 8, 2004, p. 3.) We therefore select
claims 15 and 16 from these two groups of claims and decide this
appeal as to the examiner’s alternative grounds of rejection on
the bases of these two selected claims. 37 CFR §
1.192(c)(7)(2003)(effective Apr. 21, 1995). Also, prior to an
allowance, the examiner should reconsider whether claim 19
should be rejected on this ground.

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Application No. 10/158,988

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We cannot agree. Like any other rejection, the initial
burden of establishing a prima facie case of unpatentability
based on non-enablement under 35 U.S.C. § 112, ¶1, rests on the
examiner. In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443,
1444 (Fed. Cir. 1992).
“Although not explicitly stated in section 112, to be
enabling, the specification of a patent must teach those skilled
in the art how to make and use the full scope of the claimed
invention without ‘undue experimentation.’”2 In re Wright, 999
F.2d 1557, 1561, 27 USPQ2d 1510, 1513 (Fed. Cir. 1993). As long
as “undue experimentation” is not involved, a specification
would comply with the enablement requirement of the statute even
if a reasonable amount of routine experimentation is necessary
to practice the claimed invention. Enzo Biochem Inc. v.
Calgene, 188 F.3d 1362, 1371, 52 USPQ2d 1129, 1135 (Fed. Cir.

2 The question of whether making and using the invention
would have required “undue experimentation” depends on several
underlying factual inquiries including: (1) the quantity of
experimentation necessary; (2) the amount of direction or
guidance presented; (3) the presence or absence of working
examples; (4) the nature of the invention; (5) the state of the
prior art; (6) the relative skill of those in the art; (7) the
predictability or unpredictability of the art; and (8) the
breadth of the claims. In re Wands, 858 F.2d 731, 735, 736-37,
8 USPQ2d 1400, 1402, 1404 (Fed. Cir. 1988).

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1999). That is, even “a considerable amount of experimentation
is permissible, if it is merely routine, or if the specification
in question provides a reasonable amount of guidance with
respect to the direction in which the experimentation should
proceed...” Wands, 858 F.2d at 737, 8 USPQ2d at 1404.
Here, the specification provides explicit guidance with
respect to the direction in which the experimentation should
proceed in determining suitable catalysts. (Specification, page
9, lines 18-26.) Given this guidance, we hold that the examiner
has not adequately established that the experimentation would be
undue rather than considerable but routine.
For these reasons, we reverse the examiner’s rejection
under 35 U.S.C. § 112, ¶1, of appealed claims 1 through 4, 6
through 16, and 18 through 21 as failing to comply with the
enablement requirement.
35 U.S.C. § 102(b)/103(a)
We are in complete agreement with the examiner’s concise
and cogent analysis.
Seneker describes aliphatic diamine-extended
polyurethane/urea spandex-type elastomers. (Column 1, lines 4-
15.) Specifically, Seneker teaches that the polyurethane/urea
is prepared by a “prepolymer process” in which a polyol
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component composed essentially of diols is reacted with an
excess of diisocyanate to yield an isocyanate-terminated
prepolymer containing a relatively low isocyanate content
(preferably 2-4%) and then chain extended with a diamine.
(Column 6, lines 17-30.) According to Seneker, the polyol
component must comprise one or more high molecular weight,
ultra-low unsaturation polyoxypropylene polyols in admixture
with one or more polytetramethylene ether glycols (PTMEG).
(Column 7, lines 31-36.)
Seneker’s working examples describe the use of diols having
the here recited characteristics to form isocyanate prepolymers
having the here recited NCO contents. (Examples 1-4, Tables 1-
4.) No mention is made in Seneker’s examples regarding the use
of any catalysts to form the isocyanate prepolymer.3 (Column 11,
lines 24-58.) As pointed out by the examiner, Comparative
Example 5 of the present specification shows that a
polyurethane/urea made from an isocyanate prepolymer prepared
without any catalyst and a polyurethane urea made from an

3 In this regard, Seneker teaches: “The reaction of the
isocyanate with the polyol may be catalyzed with standard
catalysts such as dibutyltin dilaurate, but may take place
without catalysis.” (Emphasis added; col. 9, ll. 56-59.)
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isocyanate prepolymer prepared with zinc octoate catalyst have
substantially the same properties. (Table 1.)
While Seneker’s polyurethane/urea is prepared by a process
that is different from that recited in appealed claim 1, this
does not defeat the examiner’s rejection. When a product
recited in a product-by-process claim reasonably appears to be
the same as or obvious from a product of the prior art, the
burden is on the applicants to show that the prior art product
is in fact different from the claimed product, even though the
products may be made by different processes. In re Thorpe, 777
F.2d 695, 697, 227 USPQ 964, 966 (Fed. Cir. 1985).
The appellants argue that they have demonstrated that a
catalyst must be used to obtain a polyurethane/urea that does
not degrade under processing conditions. (Appeal brief at 7.)
The appellants further contend (id. at 8):
Appellants have demonstrated in their examples
that use of a catalyst satisfying the criteria
specified in their claims during preparation of the
prepolymer has a significant effect upon the product
properties and in the types and amounts of diol
necessary to produce the polyurethane/urea solution.
For example, in Comparative Example 5 in which no
catalyst was used to prepare the prepolymer, the
rheology of the polymer solution was so sensitive that
with only a small change in the mono-amine chain
extender level, either a spinnable solution or an
unspinnable gel could be obtained. This sensitivity
was not, however, seen with the polymer solution of
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Application No. 10/158,988

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Example 4 which was produced in accordance with the
present invention.

We see no merit in the appellants’ position. When a
mixture of ethylene diamine and diethylamine was used as a chain
extender, Seneker obtained a spinnable solution without any
difficulty. Furthermore, the appellants do not identify any
evidence (i.e., data) to support the allegation of a palpable
difference in terms of polymer solution sensitivity. To the
extent that Example 4 and Comparative Example 5 of the present
specification are seen as establishing some criticality for the
use of zinc octoate on polymer solution sensitivity, we note
that the relied upon examples are limited to specific reactants
in particular amounts under a limited set of conditions. The
appealed claims, by contrast, are significantly broader in
scope. Thus, it is our judgment that the showing is
insufficient to establish any difference, much less an
unexpected difference, between the claimed invention and the
relied upon prior art.
The appellants urge that Seneker requires a polyol
component that includes from 50 to 95% polytetramethylene
glycol, whereas the appealed claims require 0 to 90% of the
same. (Appeal brief at 8; reply brief filed Jul. 15, 2004,
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Application No. 10/158,988

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pages 3-4.) Seneker, however, teaches the use of
polytetramethylene glycol amounts within the range recited in
the appealed claims.
Separately argued claim 16 is of no help to the appellants.
Like appealed claim 15, the patentability of appealed claim 16
rests on the actual product made, not on the process by which it
is made. In re Thorpe, 777 F.2d at 697, 227 USPQ at 966.
For these reasons, we uphold the examiner’s rejection on
this ground.
Summary
In summary, we reverse the 35 U.S.C. § 112, ¶1, rejection
of appealed claims 1 through 4, 6 through 16, and 18 through 21.
We affirm, however, the rejection of appealed claims 15 through
18, 20, and 21 under 35 U.S.C. § 102(b) as anticipated by or, in
the alternative, under 35 U.S.C. § 103(a) as obvious over
Seneker.
The decision of the examiner is therefore affirmed in part.

Appeal No. 2004-2208
Application No. 10/158,988

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No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED IN PART

Terry J. Owens )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
Romulo H. Delmendo )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
)
Beverly A. Pawlikowski )
Administrative Patent Judge )

RHD/kis
Appeal No. 2004-2208
Application No. 10/158,988

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