Ex Parte Mager

Board of Patent Appeals and Interferences

Mar 22, 2011

11451963 (B.P.A.I. Mar. 22, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MICHAEL MAGER
____________

Appeal 2010-003864
Application 11/451,963
Technology Center 1700
____________

Before CHUNG K. PAK, JEFFREY T. SMITH, and
BEVERLY A. FRANKLIN, Administrative Patent Judges.

PAK, Administrative Patent Judge.

DECISION ON APPEAL1
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1 through 10, all of the claims pending in the above-
identified application.2 We have jurisdiction under 35 U.S.C. § 6.

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

2 See generally the Appeal Brief (“App. Br.”) filed July 13, 2009, the
Examiner’s Answer (“Ans.”) filed October 16, 2009, and the Reply Brief
(“Reply Br.”) filed December 15, 2009.
Appeal 2010-003864
Application 11/451,963

STATEMENT OF THE CASE
The subject matter on appeal is directed to “a one-stage process for
preparing polyamines having primary amino groups, preferably aromatic
amino groups, by hydrolyzing compounds containing terminal isocyanate
groups…” (Spec. 1, ll. 9-11). Details of the appealed subject matter are
recited in illustrative claim 1 reproduced from the Claims Appendix to the
Appeal Brief as shown below:
1. A process for the production of a polyamine having (i) primary
amino groups and (ii) a monomeric di- or triamine fraction of
less than 0.1% by weight comprising:
A) hydrolyzing free isocyanate groups of a polyisocyanates
prepolymer with an average isocyanate functionality of at
least 1.5 with elimination of CO2
a1) in the presence of at least 10 parts by weight, per
100 parts by weight of the polyisocyanates
prepolymer, of a water-soluble or water-miscible
solvent,
a2) in the presence of water in an amount such that a
molar ratio of water to isocyanate groups of from
0.75 to 50 and a weight ratio of solvent to water of
from 3 to 200 are achieved,
a3) in the presence of from 0.00005% to 1% by
weight, based on the amount of prepolymer used,
of catalyst, and
a4) at a temperature of from 30 to 70°C, and
subsequently
B) separating the volatile constituents from the hydrolyzed
mixture by a continuous distillation method.

As evidence of unpatentability of the claimed subject matter, the
Examiner relies upon the following prior art references (Ans. 2):
Rasshofer ‘595 4,931,595 Jun. 5, 1990
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Application 11/451,963

Rasshofer ‘364 5,283,364 Feb. 1, 19943
Appellants seek review of the following grounds of rejection set forth
by the Examiner at pages 3 through 8 of the Answer:
1) Claims 1 through 10 under 35 U.S.C. § 103 as unpatentable
over the disclosure of Rasshofer ‘364; and
2) Claims 1 through 6 and 9 under 35 U.S.C. § 103(a) as
unpatentable over the combined disclosures of Rasshofer ‘595 and ‘364.
(See App. Br. 3.)

FACTUAL FINDINGS, PRINCIPLES OF LAW, ISSUES, ANALYSIS,
AND CONCLUSION
As a preliminary matter, we note Appellant does not separately argue
the claims on appeal (App. Br. 3-10 and Reply Br. 1-4). Therefore, for
purposes of this appeal, we select claim 1 as representative of the claims on
appeal and decide the propriety of the § 103 rejections set forth in the
Answer based on this claim alone. See 37 C.F.R. § 41.37(c)(1)(vii) (“When
multiple claims subject to the same ground of rejection are argued as a group
by appellant, the Board may select a single claim from the group of claims
that are argued together to decide the appeal with respect to the group of
claims as to the ground of rejection on the basis of the selected claim
alone.”).

3 As is apparent from page 3 of the Appeal Brief and page 2 of the final
Office action dated December 12, 2008, the Examiner inadvertently refers to
Rasshofer ‘364 as U.S. Patent 5,283,634 at page 2 of the Answer.
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Application 11/451,963

Appellant does not dispute the Examiner’s finding that either
Rasshofer ‘364 or’595 teaches a process for the production of a polyamine
having primary amino groups via hydrolyzing free isocyanate groups of
polyisocyanate prepolymer with the claimed average isocyanate
functionality and with elimination of CO2, in the presence of the claimed
amounts of a water-soluble or water-miscible solvent, water, and a catalyst
and separating the volatile constituents from the resulting hydrolyzed
mixture by a continuous distillation. (Compare Ans. 3 and 6-7 with App. Br.
3-9 and Reply Br. 1-4.) Rather, Appellant contends that either Rasshofer
‘364 alone or the combination of Rasshofer ‘595 and ‘364 would not have
suggested forming such polyamine having a monomeric diamine or triamine
(TDA) fraction of less than 0. 1 % by weight and employing a hydrolyzing
temperature of 30 to 70 oC. (See App. Br. 3-9.)
Thus, the dispositive question raised here is: Would either Rasshofer
‘364 alone or the combination of Rasshofer ‘595 and ‘364 have suggested
forming such polyamine having a monomeric diamine or triamine (TDA)
fraction of less than 0. 1% by weight and employing a hydrolyzing
temperature of 30 to 70 oC within the meaning of 35 U.S.C. § 103(a)? On
this record, we answer this question in the affirmative.
As correctly found by the Examiner (Ans. 3), Rasshofer ‘364 and ‘595
teach employing a hydrolysis temperature as low as 20oC, preferably from
35o to 165o C or 50o to 165o C, more preferably from 40o to 150o C and most
preferably from 80o to 130o C to form polyamines containing primary amino
groups. (See Rasshofer ‘364, col. 6, ll. 5-8 and col. 7, ll14-16 and Rasshofer
‘595, col. 13, ll. -17.) The Examiner has also correctly found that Rasshofer
‘364 and ‘595 teach that the employment of a hydrolysis temperature within
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Appeal 2010-003864
Application 11/451,963

their more preferred or most preferred temperature range results in the
formation of polyamines containing a monomeric diamine or triamine
(TDA) fraction of 0.087% by weight, 0.064% by weight, 0.034% by weight
or 0.024% by weight (less than 0. 1% by weight as required by claim 1).
(See Rasshofer ‘364, col. 19, ll. 8-25, Example 18 and Rasshofer ‘595, col.
15, ll. 45-62, Examples 1. col. 17, ll. 1-8, Example 8, col. 18, ll. 1-4,
Example 13.)
Given the above teachings, we concur with the Examiner that either
Rasshofer ‘364 alone or the combination of Rasshofer ‘595 and ‘364 would
have suggested employing a hydrolyzing temperature of 30 to 70 oC to form
polyamines having primary amino groups and a monomeric diamine or
triamine (TDA) fraction of less than 0. 1% by weight within the meaning of
35 U.S.C. § 103(a). See In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir.
2003)(“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 Woodruff, 919 F.2d 1575, 1578 (Fed. Cir.
1990)(“The law is replete with cases in which the difference between the
claimed invention and the prior art is some range or other variable within the
claims. These cases have consistently held that in such a situation, the
applicant must show that the particular range is critical, generally by
showing that the claimed range achieves unexpected results relative to the
prior art range.”)
In reaching this determination, we have considered Appellant’s
argument that Rasshofer ‘364 and/or ‘595 do not recognize that a hydrolysis
temperature range of 30o to 70o C is useful for producing polyamines having
a monomeric diamine or triamine (TDA) fraction of less than 0. 1%. (See,
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Application 11/451,963

e.g., Reply Br. 2.) However, we are not persuaded by this argument. As
indicated supra, Rasshofer ‘364 and/or ‘595 as a whole would have
suggested producing polyamines having a TDA fraction of less than 0.1% at
their preferred hydrolysis temperature range, inclusive of the claimed
hydrolysis temperatures. Nowhere do Rasshofer ‘364 and/or ‘595 indicate
that their preferred hydrolysis temperature range, inclusive of the claimed
hydrolysis temperature range, is not useful for producing polyamines having
a monomeric diamine or triamine (TDA) fraction of less than 0. 1%. In this
regard, we note that Rasshofer ‘364 and/or ‘595 exemplify forming
polyamines having a TDA fraction of greater than or less than 0.1% by
weight via employing the different types and/or proportions of solvents
and/or catalyst at the same hydrolysis temperature of 90o C., thus implying
that polyamines having a TDA fraction of less than 0.1% by weight can be
obtained at their preferred hydrolysis temperatures, inclusive of those
claimed, with variations in the types of catalysts employed and/or the types
and proportions of the solvents employed. (See Rasshofer ‘595, cols. 15-18,
Examples 1-13, and Rasshofer ‘364, cols. 18-19, Examples 16-19.). We also
note that Rasshofer ‘595 mentions using a hydrolysis temperature as low as
20o C, but prefers using a higher hydrolysis temperature to suppress urea
formation, implying that a higher hydrolysis temperature of either 90o C or
70o C has the same or substantially the same effect on the presence of TDA
impurities (col. 13, ll. 15-27).
Appellant refers to Examples 1and 2 and Comparative Examples 2
and 3 in the Specification. (See App. Br. 4 and 6-7.) However, Appellant
has not relied on them to show that the claimed invention imparts
unexpected results relative to the closest prior art, namely Rasshofer ‘364 or
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Application 11/451,963

‘595. (Id.) Nor has Appellant demonstrated, much less alleged, that the
showing in such Examples and Comparative Examples is unexpected by one
of ordinary skill in the art. (Id.)
Accordingly, based on the totality of record, including due
consideration of the evidence and arguments advanced by both the Examiner
and Appellant in the Answer and Briefs, respectively, we determine that the
preponderance of evidence weighs most heavily in favor of obviousness of
the claimed subject matter within the meaning of 35 U.S.C. § 103(a).

ORDER
Upon consideration of the record, and for the reasons set forth in the
Answer and above, it is
ORDERED that the decision of the Examiner to reject claims 1
through 10 under 35 U.S.C. § 103 as unpatentable over the disclosure of
Rasshofer ‘364 is AFFIRMED;
FURTHER ORDERED that the decision of the Examiner to reject
Claims 1 through 6 and 9 under 35 U.S.C. § 103(a) as unpatentable over the
combined disclosures of Rasshofer ‘595 and ‘364 is AFFIRMED; and
FURTHER ORDERED that no time period for taking any subsequent
action in connection with this appeal may be extended under 37 C.F.R. §
1.136(a)(1)(iv).

AFFIRMED

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Appeal 2010-003864
Application 11/451,963

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