Ex Parte Ludewig et al

Board of Patent Appeals and Interferences

May 25, 2011

11512487 (B.P.A.I. May. 25, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte MICHAEL LUDEWIG,
MATHIAS MATNER, and FRANK KOBELKA
__________

Appeal 2010-008531
Application 11/512,487
Technology Center 1700
__________

Before TONI R. SCHEINER, FRANCISCO C. PRATS, and
STEPHEN WALSH, Administrative Patent Judges.

WALSH, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) involving claims to an
alkoxysilane-functional prepolymer, a process for preparing the prepolymer,
and a coating, primer, adhesive or sealant prepared from the prepolymer.
The Patent Examiner rejected the claims as obvious. We have jurisdiction
under 35 U.S.C. § 6(b). We affirm.

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STATEMENT OF THE CASE
Claims 1-5 and 9-18 are on appeal. Claim 1 is representative and
reads as follows:
1. A process for preparing an alkoxysilane-functional prepolymer
comprising reacting
A) 1.0 equivalent of a polyol component having a number average
molecular weight of 3000 g/mol to 20,000 g/mol and
comprising one or more polyoxyalkylene polyols or
polyoxyalkylene polyol prepolymers
with
B) 1.05 to 1.50 equivalents of an isocyanate- and alkoxysilane-
functional compound of the formula I),

wherein
X, Y, and Z independently of one another are linear or branched
C1-C8 alkyl or C1-C8 alkoxy radicals, wherein at least one of the
radicals is a C1-C8 alkoxy group and
R is an organic radical having a functionality of at least two,

and subsequently further reacting the remaining free NCO groups by
allophanatization or by reaction with
C) an isocyanate-reactive compound added in an amount such that
for each remaining free NCO group there are 1 to 1.5 equivalents of
isocyanate-reactive groups in compound C), and
such that after the further reacting of the remaining free NCO groups,
the amount of NCO groups remaining is less than 0.05% by weight, based
on the weight of the reaction mixture.

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The Examiner rejected the claims as follows:
• claims 1-5 and 9 under 35 U.S.C. § 103(a) as unpatentable over
Ziche,1Mougin,2 Seneker,3 Detig-Karlou,4 and Soucek;5 and
• claims 10-18 under 35 U.S.C. § 103(a) as unpatentable over Ziche,
Mougin, Seneker, Detig-Karlou, and Soucek.
Claims 2-5 and 9-18 have not been argued separately and therefore
stand or fall with claim 1. 37 C.F.R. § 41.37(c)(1)(vii).

OBVIOUSNESS
The Issue
The Examiner’s position is that Ziche taught a process for preparing
an alkoxysilane-functional prepolymer by reacting 1.0 equivalent of Acclaim
12200, which is a polyol that has a number average molecular weight of
12,200 g/mol (as evidenced by Detig-Karlou) and comprises one or more
polyoxyalkylene polyols or polyoxyalkylene polyol prepolymers, with ˃1.05
equivalents of an isocyanate and an alkoxysilane-functional compound.
(Ans. 3.) The Examiner also found that Ziche taught adding bismuth and
zinc complexes as urethane reaction-promoting catalysts. (Id.) However,
the Examiner found that Ziche did not explicitly teach that any unreacted

1 Patent Application Publication No. US 2005/0119436 A1 by Wolfgang
Ziche et al., published Jun. 2, 2005.
2 US Patent No. 6,395,265 B1 issued to Nathalie Mougin, May 28, 2002.
3 US Patent No. 5,691,441 issued to Stephen D. Seneker, Nov. 25, 1997.
4 Patent Application Publication No. US 2004/0143084 A1 by Kamelia
Detig-Karlou et al., published Jul. 22, 2004.
5 Hai Ni et al., Effect of Catalysts on the Reaction of an Aliphatic Isocyanate
and Water, J. POLYMER SCIENCE, no. 40, 1677-1688 (2002).

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isocyanate groups can be reacted further with an isocyanate-reactive
compound. (Id.)
The Examiner found that Mougin taught a similar process of reacting
a polyol with a polyisocyanate. (Id.) The Examiner also found that Mougin
taught that its reaction proceeds until the isocyanate (NOC) IR band is no
longer present. (Id.) Further, the Examiner found that Mougin taught that, if
necessary, ethanol (an isocyanate-reactive compound) can be added and the
mixture stirred under heat to completely remove any unreacted isocyanate
groups. (Id. at 4.) According to the Examiner, Ziche and Mougin are from
the same field of endeavor, namely, polyurethane compositions, and are thus
combinable. (Id.)
According to the Examiner, a person of ordinary skill in the art at the
time the invention was made would have found it obvious to add an
isocyanate-reactive compound, such as ethanol, as taught by Mougin, to
completely remove any unreacted isocyanate groups present in the process
of Ziche. (Id.) The Examiner found that the artisan would have been
motivated to do so because it was known at the time of the invention that
free isocyanate groups react in the presence of water, having a detrimental
effect on the final composition. (Id., citing Soucek.)
According to the Examiner, while Mougin did not teach adding the
isocyanate-reactive compound (i.e., ethanol) in an amount from 1 to 1.5
equivalents based on one equivalent of remaining NCO groups, using that
amount would have been obvious to a skilled artisan at the time of invention.
(Id.) Specifically, the Examiner found that the skilled artisan would have
recognized that employing a stoichiometric equivalent or slight excess of an
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isocyanate-reactive compound would provide the least amount of waste
while ensuring full conversion of all remaining NCO groups. (Id. at 4-5.)
Appellants contend that Ziche did “not explicitly teach reacting the
free NCO groups by allophanatization.” (App. Br. 5.)
Appellants also contend that Ziche did not “teach the advantage of
forming the alkoxysilane-functional prepolymer at an NCO:OH ratio of
˃1.05 as required by the present claims.” (Id. at 6.) According to
Appellants, “an excess of NCO with subsequent quenching leads to a higher
modulus or a higher shore-A hardness.” (Id. at 8.) Appellants assert that
although Ziche disclosed that “a ratio of up to 1.25 is possible,” based upon
Ziche’s examples, a skilled artisan would have concluded that Ziche was
“aiming for a ratio as close as 1:1 as possible.” (Id.) According to
Appellants, “[w]ithout the finding of the excess leading to better application
properties, one skilled in the art would not be motivated to use more of the
very expensive isocyanatosilane than necessary, nor combine the use of an
excess with the subsequent destruction of the same with an alcohol.” (App.
Br. 8.)
Additionally, Appellants contend that Mougin also “does not even
suggest an initial excess of isocyanate is useful, but instead wants to make
sure no isocyanate is left in a cosmetic application.” (App. Br. 8.)
According to Appellants, there would have been no motivation to combine
the teachings of Ziche and Mougin to arrive at the claimed invention. (Id.)
The issue with respect to this rejection is whether the record supports
the Examiner’s conclusion that the cited references would have made the
claimed invention obvious.
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Findings of Fact
1. We agree with the Examiner’s explicit findings regarding the scope
and content of the prior art references. (See Ans. 3-8.)

Principles of Law
“[I]t is not necessary in order to establish a prima facie case of
obviousness that there be a suggestion in or expectation from the prior art
that the claimed compound or composition will have the same or a similar
utility as one newly discovered by applicant.” In re Dillon, 919 F.2d 688,
693 (Fed. Cir. 1990) (emphasis in original).
“In cases involving overlapping ranges, we and our predecessor court
have consistently held that even a slight overlap in range establishes a prima
facie case of obviousness.” In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir.
2003).
“[I]n a section 103 inquiry, ‘the fact that a specific [embodiment] is
taught to be preferred is not controlling, since all disclosures of the prior art,
including unpreferred embodiments, must be considered.’” Merck & Co.,
Inc. v. Biocraft Laboratories, Inc., 874 F.2d 804, 807 (Fed. Cir. 1989)
(quoting In re Lamberti, 545 F.2d 747, 750 (C.C.P.A. 1976)).
“Two criteria have evolved for determining whether prior art is
analogous: (1) whether the art is from the same field of endeavor, regardless
of the problem addressed, and (2) if the reference is not within the field of
the inventor's endeavor, whether the reference still is reasonably pertinent to
the particular problem with which the inventor is involved.” In re Clay,
966 F.2d 656, 658-659 (Fed. Cir. 1992).
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Analysis
We are not persuaded of nonobviousness by Appellants’ assertion that
Ziche did not teach allophanatization. (App. Br. 5.) As the Examiner
correctly explained, the claims recite that the remaining free NCO groups
can either be reacted by allophanatization “or by reaction with an
isocyanate-reactive compound….” (Id. at 10, Claims App’x., emphasis
added.) In rejecting the claims, the Examiner found that Mougin’s teaching
to add an isocyanate-reactive compound to remove any unreacted isocyanate
groups by adding ethanol suggested this claim element. (Ans. 4.) We
agree, and Appellants have not established otherwise with persuasive
evidence.
Further, Appellants’ assertion that Ziche and Mougin did not “teach
the advantage of forming the alkoxysilane-functional prepolymer” initially
using an excess of isocyanate, is misdirected. (App. Br. 5, 8.) The claims
are not limited by any such “advantage,” and establishing prima facie
obviousness does not require a suggestion or expectation in the prior art of
the same advantage discovered by applicant. See Dillon, 919 F.2d at 693.
We disagree with Appellants’ assertion that a skilled artisan would not
have been motivated to use an excess of isocyanate. As Appellants have
acknowledged, Ziche disclosed that when reacting a polyol and isocyanate to
form an alkoxysilane-functional prepolymer, “a ratio of up to 1.25 is
possible.” (See App. Br. 8.) This disclosure establishes prima facie
obviousness because the NCO:OH ratio of up to 1.25 is an excess within the
claimed range. See Peterson, 315 F.3d at 1329. Further, this disclosure in
Ziche provided motivation for using the required excess of NCO even if
Ziche’s examples “were aiming for a ratio as close to 1:1 as possible,” as
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asserted by Appellants (see App. Br. 6). See Merck & Co., Inc., 874 F.2d at
807.
To the extent that Appellants contend that there would be no
motivation to combine the teachings of Ziche and Mougin because Mougin
is directed to a cosmetic application, we disagree. As the Examiner found,
both references are directed to preparing polyurethane compositions. (Ans.
4). Additionally, both references disclose compositions potentially
comprising an excess isocyanate, with Mougin specifically disclosing how
to consume such excess by adding ethanol. Therefore, we agree with the
Examiner that Ziche and Mougin are analogous art. See Clay, 966 F.2d at
658-659.
Accordingly, we affirm the Examiner’s obviousness rejections.

CONCLUSION OF LAW
The record supports the Examiner’s conclusion that the cited
references would have made the claimed invention obvious.

SUMMARY
We affirm the rejection of claims 1-5 and 9 under 35 U.S.C. § 103(a)
as unpatentable over Ziche, Mougin, Seneker, Detig-Karlou, and Soucek,
and
we affirm the rejection of claims 10-18 under 35 U.S.C. § 103(a) as
unpatentable over Ziche, Mougin, Seneker, Detig-Karlou, and Soucek.

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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

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