Ex Parte Munzmay et al

Board of Patent Appeals and Interferences

Mar 31, 2011

11827252 (B.P.A.I. Mar. 31, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/827,252 07/11/2007 Thomas Munzmay 15778*45 (BMC041033C) 1077
23416 7590 04/01/2011
CONNOLLY BOVE LODGE & HUTZ, LLP
P O BOX 2207
WILMINGTON, DE 19899
EXAMINER
EASHOO, MARK
ART UNIT PAPER NUMBER
1767
MAIL DATE DELIVERY MODE
04/01/2011 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte THOMAS MUNZMAY, TORSTEN POHL,
and UWE KLIPPERT
__________

Appeal 2010-011232
Application 11/827,252
Technology Center 1700
__________

Before DEMETRA J. MILLS, ERIC GRIMES, and JEFFREY N.
FREDMAN, Administrative Patent Judges.

GRIMES, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a process
for preparing polyester-polyurethane dispersions. The Examiner has
rejected the claims as anticipated and obvious. We have jurisdiction under
35 U.S.C. § 6(b). We reverse.
Appeal 2010-011232
Application 11/827,252

2

STATEMENT OF THE CASE
Claims 1-8 are on appeal. Claim 1 is representative and reads as
follows:
1. A process for preparing polyester-polyurethane dispersions
comprising:
A) reacting
i) one or more polyol components having a number average
molecular weight of at least 300 daltons, at least 60% by weight of
component i) being a polyester polyol with the fraction of aromatic
carboxylic acid groups relative to all of the carboxylic acid groups used to
prepare said polyester polyol being at least 60 mol %,
ii) optionally one or more polyol components having a number
average molecular weight of 62 to 299 daltons, and
iii) optionally a compound which is monofunctional for the
purposes of the isocyanate polyaddition reaction and has an ethylene oxide
content of at least 50% by weight and a number average molecular weight of
at least 400 daltons, with
iv) a polyisocyanate to form a prepolymer,
B) dissolving the prepolymer in an organic solvent,
C) reacting the prepolymer with v) one or more aliphatic and/or
alicyclic primary and/or secondary polyamines having a number average
molecular weight of 60 to 300 daltons, said polyamine optionally being in
combination with hydrazine or hydrazine hydrate, and vi) a hydrophilicized
aliphatic diamine,
D) precipitating the product from C) by adding water to form a
dispersion, and
E) removing the organic solvent.

I.
The Examiner has rejected claims 1-4 under 35 U.S.C. § 102(b) as
anticipated by Noll1 (Answer 3-4).

1 Noll et al., US 4,237,264, Dec. 2, 1980
Appeal 2010-011232
Application 11/827,252

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Appellants argue that Noll does not disclose the claimed “polyol
components wherein at least 60% by weight of the polyol component is a
polyester polyol prepared with a dicarboxylic acid component, 60% of
which is aromatic carboxylic acid” (Appeal Br. 4).
We agree with Appellants that the evidence of record does not support
the Examiner’s finding that Noll discloses the claimed polyol component
that is at least 60% by weight a polyester polyol prepared with a
dicarboxylic acid component, 60% of which is aromatic carboxylic acid.
Noll discloses a process for making polyurethanes by reacting a
diisocyanate with “an organic compound which behaves as a difunctional
material in the reaction with the diisocyanate and which contains isocyanate
reactive hydrogen atoms,” and other materials (Noll, col. 3, ll. 24-53). Noll
discloses that examples of the difunctional material are:
(1) dihydroxypolyesters generally known in
polyurethane chemistry, which are obtained from dicarboxylic
acids (such as succinic acid, adipic acid, suberic acid, azelaic
acid, sebacic acid, phthalic acid, isophthalic acid; terephthalic
acid; tetrahydrophthalic acid; and the like) and diols…;
(2) polylactones …;
(3) polycarbonates …;
(4) polyethers …;
(5) polythioethers, polythio mixed ethers and polythio
ether esters generally known in polyurethane chemistry;
(6) polyacetals …; and
(7) difunctional polyether esters containing isocyanate-
reactive end groups.

(Id. at col. 4, l. 30-col. 5, l. 6.) Noll also discloses that, in addition to the
above examples, the difunctional material can be a low molecular weight
reactant such as a diol or diamine (id. at col. 5, ll. 11-27).
Appeal 2010-011232
Application 11/827,252

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It is true, as the Examiner finds, that Noll’s difunctional material can
be a “polyester polyol … obtained from dicarboxylic acids such as phthalic,
isophthalic, and terephthalic acid, and a diol” (Answer 4), and therefore
“100% of the carboxylic acid component may be aromatic, ie. phthalic,
isophthalic, or terephthalic acid” (id., emphasis added).
To anticipate under 35 U.S.C. § 102, however, a reference “must
clearly and unequivocally disclose the claimed compound or direct those
skilled in the art to the compound without any need for picking, choosing,
and combining various disclosures not directly related to each other by the
teachings of the cited reference.” In re Arkley, 455 F.2d 586, 587 (CCPA
1972). We agree with Appellants that the Examiner has not adequately
explained how Noll clearly discloses the polyol component required by
claim 1.
Specifically, we cannot agree with the Examiner’s finding that, since
four of the nine dicarboxylic acids named by Noll include aromatic groups,
“4 out of 9 of Noll’s embodiments meet the claimed limitation” (Answer 6).
On the contrary, Noll discloses that any of a variety of difunctional materials
are suitable, including dihydroxypolyesters (which may or may not include
aromatic dicarboxylic acids), polylactones, polyethers, polycarbonates,
polythioethers, polythioethers, polyacetals, and difunctional polyether esters,
as well as low molecular weight components that may be diols or diamines.
The Examiner has not adequately explained how Noll would have
been understood by a skilled worker to disclose using, specifically, a
dihydroxypolyester containing a dicarboxylic acid component that is at least
60% aromatic dicarboxylic acid, from among all the possible difunctional
materials disclosed by Noll. Thus, arriving at the invention of claim 1 based
Appeal 2010-011232
Application 11/827,252

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on the disclosure of Noll would require the type of picking and choosing that
is foreclosed by Arkley. The rejection of claim 1, and dependent claims 2-4
and 6, is therefore reversed.
II.
The Examiner has rejected claims 5-8 under 35 U.S.C. § 103(a) as
being obvious in view of Blum2 and Munzmay3 (Answer 4). Claims 5-8 are
directed to coating compositions that require, among other things, a
polyester-polyurethane resin dispersion obtained according to the process of
claim 1.
The Examiner finds that Blum discloses a coating composition
comprising a polyol component, other binders, and a polyisocyanate cross-
linking resin (Answer 4-5). The Examiner further finds that Blum discloses
that “a preferred other binder is the polyurethane described in US 4,237,264
[Noll],” and thus the Examiner finds that Blum, via citation to Noll,
discloses a polyester-polyurethane resin dispersion obtained according to the
process of claim 1 (id. at 5). The obviousness rejection therefore relies on
the Examiner’s finding that Noll discloses the process of claim 1.
Because we have found, as discussed above, that the evidence of
record does not support the Examiner’s finding that Noll discloses the
process of claim 1, we also find that the Examiner has not adequately
explained how Blum and Munzmay would have suggested a coating
composition comprising a dispersion made by that process. Thus, the

2 Blum et al., US 5,569,707, Oct. 29, 1996
3 Munzmay et al., US 6,677,400, Jan. 13, 2004
Appeal 2010-011232
Application 11/827,252

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rejection of claims 5-8 as being obvious in view of Blum and Munzmay is
reversed.
SUMMARY
We reverse the rejection of claims 1-4 under 35 U.S.C. § 102(b) and
the rejection of claims 5-8 under 35 U.S.C. § 103(a).

REVERSED

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