Ex Parte Mayer et al

Board of Patent Appeals and Interferences

Jul 14, 2011

11334987 (B.P.A.I. Jul. 14, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte EDUARD MAYER, THOMAS MUENZMAY,
YULIYA BEREZKIN, POLI C. YU, RICHARD R. ROESLER,
and
MARY A. CRISCI
__________

Appeal 2010-009430
Application 11/334,987
Technology Center 1700
__________

Before DEMETRA J. MILLS, ERIC GRIMES, and LORA M. GREEN,
Administrative Patent Judges.

MILLS, Administrative Patent Judge.

DECISION ON APPEAL

This is an appeal under 35 U.S.C. § 134. The Examiner has rejected
the claims for obviousness. We have jurisdiction under 35 U.S.C. § 6(b).
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STATEMENT OF CASE
The following claim is representative.
8. An aqueous polyurethane dispersion suitable for producing a film
having alcohol resistance, the polyurethane dispersion comprising a
polyurethane prepolymer, component D) and component E):
a polyurethane prepolymer having an NCO content of from about 1 to about
6% by weight, the polyurethane prepolymer prepared by reacting
components A), B), and C):
A) an isocyanate selected from the group consisting of
i) an aliphatic and/or a cycloaliphatic isocyanate; and
ii) a mixture of an aromatic isocyanate and an aliphatic and/or a
cycloaliphatic isocyanate; and
B) a polyester diol having a number average molecular weight of 800
to 4,000,
C) a polyether triol having a number average molecular weight of 200
to 3,000;
D) a compound having an anionic or potentially anionic group and
two groups which are reactive to isocyanate groups; and
E) a chain extender having two amine groups which are reactive with
isocyanate groups,
wherein the polyester diol, the polyether triol and the amine chain extender
are present according to the ratio 55-90% diol, 2-25% triol and 0-35% chain
extender, all percentages based on hydroxyl equivalents.

Cited References

Ruetman et al. US 4,956,438 Sept. 11, 1990
Seneker et al. US 5,576,382 Nov. 19, 1996
Bechara et al. US 5,985,955 Nov. 16, 1999
Eckert et al. CA 1,089,141 Nov. 8, 2004

Grounds of Rejection
1. Claims 8 and 10-20 are rejected under 35 U.S.C. § 103(a) for
obviousness over Bechara in view of Eckert and Ruetman.
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2. Claims 8 and 10-20 are rejected under 35 U.S.C. § 103(a) for
obviousness over Bechara in view of Eckert, Ruetman, and Seneker.

FINDINGS OF FACT
The Examiner’s findings of fact are set forth in the Answer at pages 3-6.

Discussion
1. Claims 8 and 10-20 are rejected under 35 U.S.C. § 103(a) for
obviousness over Bechara in view of Eckert and Ruetman.

ISSUE
The Examiner concludes
it would have been obvious to one of ordinary skill in the art at
the time of the invention to utilize a mixture of aliphatic and
aromatic diisocyanates in amounts that coincide with appellants'
claimed ranges in Bechara et al based on the motivation that it
improves the mechanical performance of the resulting
polyurethane mechanical strength without sacrificing crucial
feel characteristics, which are important in a glove.
… Ruetman et al also teach polyurethane film
comprising polyurethane which is the reaction product of
isocyanate-terminated polyurethane prepolymer and diamine
chain-extender. The polyurethane imparts toughness, abrasion
resistance, and solvent resistance to the film (Col 1 lines 32-42;
col 9 lines 3-4, 49-51). The prepolymer is the reaction product
of polyol and diisocyanate, wherein 5 to 50 equivalent percent
of the polyol consists of trifunctional polyether, with the
remainder consisting of polyester diol, wherein said polyester
diol and triol have molecular weights between 500-6,000 and
500-2,000 respectively (Col 3 lines 23- 26, 32-33; col 4 lines
43-57; col 5 lines 46-51).
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One of ordinary skill would understand that the addition
of the tri-functional compounds improve the toughness/solvent
resistance in the final polyurethane by increasing the amount of
cross-links and branching in the final polymer. Moreover, the
increase in cross-linking is achieved without the need of excess
diisocyanate, which in unreacted form is known to be toxic (Col
1 lines 24-27; col 4 lines 55-67; col 5 lines 1-8). Therefore it
would have been obvious to one of ordinary skill in the art at
the time of the invention to include the tri-functional polyether
polyol, and its corresponding amounts, in Bechara et al based
on the motivation it improves the mechanical strength/solvent
resistance of a polyurethane film.

(Ans. 5.)

Appellants argue that Bechara does not disclose the claimed
combination of isocyanates, nor the use of trifunctional polyols, and that the
films produced by Eckert have no resistance to alcohol, as claimed. (App.
Br. 5.)
The issue is: Does the cited prior art support the Examiner’s rejection
of the claims for obviousness?

PRINCIPLES OF LAW
“In rejecting claims under 35 U.S.C. § 103, the examiner bears the
initial burden of presenting a prima facie case of obviousness. Only if that
burden is met, does the burden of coming forward with evidence or
argument shift to the applicant.” In re Rijckaert, 9 F.3d 1531, 1532 (Fed.
Cir. 1993) (citations omitted). In order to determine whether a prima facie
case of obviousness has been established, we consider the factors set forth in
Graham v. John Deere Co., 383 U.S. 1, 17 (1966): (1) the scope and content
of the prior art; (2) the differences between the prior art and the claims at
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issue; (3) the level of ordinary skill in the relevant art; and (4) objective
evidence of nonobviousness, if present.
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007).

ANALYSIS
We agree with the Examiner’s fact finding, statement of the rejection
and responses to Appellants’ arguments as set forth in the Answer. We
provide the following additional comment.
Appellants argue that Bechara does not disclose the combination of
isocyanates, nor the use of trifunctional polyols, and that the films produced
by Eckert have no resistance to alcohol, as claimed. (App. Br. 5.)
With respect to Appellants’ first argument, the Examiner relies on Ruetman,
not Bechara, for the disclosure of trifunctional polyols. (Ans. 5.) The
Examiner has provided a sufficient reason, suggestion or motivation for one
of ordinary skill in the art to combine Ruetman with Bechara. Furthermore,
the Examiner relies on Eckert for the disclosure of the claimed combination
of isocyanates. (Ans. 4.) Appellants err in attacking the references
individually, as the rejection is based on a combination of references. See In
re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). The references
cannot be read in isolation, but for what they teach in combination with the
prior art as a whole. See id.
Appellants argue that the film of Example 1 of Eckert is not resistant
to alcohol and one of ordinary skill in the art could not combine the
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teachings of Eckert with Bechara to arrive at the present invention. (App.
Br. 5.)
We are not persuaded by Appellants’ argument. Ruetman, col. 9, ll.
1-10, discloses that the advantageous physical properties of film polymers
with a mixture of diols and organic triols (Claim 1, Examples 5 and 6)
include abrasion resistance, solvent resistance, and water absorption.
Appellants have not explained why one of ordinary skill in the art
would not have been motivated by Ruetman to improve the solvent
resistance of the films of Bechara and Eckert by including a mixture of diols
and triols. We do not find that Example 1 of Eckert is commensurate in
scope with the pending claims or the full disclosure of Eckert, and therefore
the fact that the film of Example 1 is not solvent resistant is not persuasive.
Having no other argument of Appellants, we affirm the rejection of
the Examiner.

2. Claims 8 and 10-20 are rejected under 35 U.S.C. § 103(a) for
obviousness over Bechara in view of Eckert, Ruetman, and Seneker.
Appellants argue that Seneker does not provide the missing teaching
of a mixture of isocyanates and does not discuss alcohol resistance. (App.
Br. 6.)
We are not persuaded. Bechara (col. 4, ll. 23-50), Eckert (page 3, ll.
27-30) and Ruetman (col. 3, ll. 18-22) each disclose mixtures of aliphatic
and aromatic isocyanates. While Seneker may not disclose alcohol
resistance in a film, Ruetman does disclose how to achieve solvent
resistance in a film.
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Appellants have not provided sufficient argument or evidence to rebut
the Examiner’s prima facie case of obviousness and the obviousness
rejection is affirmed.

CONCLUSION OF LAW
The cited references support the Examiner’s obviousness rejections.
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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