Ex Parte Munzmay et alDownload PDFBoard of Patent Appeals and InterferencesApr 27, 200910854371 (B.P.A.I. Apr. 27, 2009) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte THOMAS MUNZMAY, MARTIN MELCHIORS, JURGEN MEIXNER, REINHARD HALPAAP, TORSTEN POHL, and UWE KLIPPERT ____________ Appeal 2009-1677 Application 10/854,371 Technology Center 1700 ____________ Decided:1 April 27, 2009 ____________ Before EDWARD C. KIMLIN, CATHERINE Q. TIMM, and BEVERLY A. FRANKLIN, Administrative Patent Judges. FRANKLIN, Administrative Patent Judge. DECISION ON APPEAL 1 The two-month time period for filing an appeal or commencing a civil action, as recited in 37 C.F.R. § 1.304, begins to run from the Decided Date shown on this page of the decision. The time period does not run from the Mail Date (paper delivery) or Notification Date (electronic delivery). Appeal 2009-1677 Application 10/854,371 STATEMENT OF THE CASE Appellants seek our review under 35 U.S.C. § 134 of the final rejection of claims 1-15. We have jurisdiction under 35 U.S.C. § 6(b) (2002). Claims 1 and 8 are representative of the subject matter on appeal and are set forth below: 1. Aqueous coating compositions comprising A) at least one aqueous formulation of an ionically modified, substantially hydroxyl-free polyurethane and/or polyurethaneurea, B) at least one aqueous formulation of an ionically modified, hydroxyl-containing polyurethane and/or polyurethaneurea, and C) at least one crosslinker, wherein component A) is synthesized from Al) 30.0 to 83.5 parts by weight of one or more polyhydroxyl compounds having a number- average molecular weight (Mn) ≥ 500 daltons and an average OH functionality of ≥ 1.5, wherein the one or more polyhydroxyl compounds have been distilled at a temperature ≥ 150°C and a pressure ≤10 mbar, A2) 0 to 30 parts by weight of one or more polyhydroxyl compounds having a number- average molecular weight (Mn) of from 62 to 499 daltons and an OH functionality of ≥ 2, A3) 0 to 10 parts by weight of one or more hydrophilic compounds having an ethylene oxide content of 50% by weight and a number-average molecular 2 Appeal 2009-1677 Application 10/854,371 weight (Mn) of more than 400 daltons, which contain at least one NCO-reactive group, A4) 15 to 20 parts by weight of one or more polyisocyanates, A5) 0.5 to 13 parts by weight of one or more aliphatic polyamines having a number-average molecular weight (Mn) of from 60 to 300 daltons and at least two primary or secondary amino groups or hydrazine and A6) 1 to 8 parts by weight of one or more compounds containing at least one NCO-reactive hydrogen atom or at least one NCO group and simultaneously at least one ionic or potentially ionic group and different from the aforementioned compounds of compounds A1) - A5); wherein the amounts of A1) - A6) total 100 parts by weight. 8. Soft feel coating materials comprising one or more polyhydroxyl compounds having a number-average molecular weight (Mn) ≥ 500 daltons and an average OH functionality of ≥ 1.5, wherein the one or more polyhydroxyl compounds have been distilled at a temperature ≥ 150°C and a pressure ≤10 mbar. The prior art relied upon by the Examiner in rejecting the claims on appeal is: Noll 4,237,264 Dec. 02, 1980 Blum 5,569,707 Oct. 29, 1996 SUMMARY OF THE DECISION We affirm. 3 Appeal 2009-1677 Application 10/854,371 THE REJECTIONS Claims 1-15 are rejected under 35 U.S.C. 102(b) as anticipated by Blum and Noll (incorporated by reference in Blum at col. 7, ll. 5-6).2 Claims 1-15 are rejected under 35 U.S.C. 103(a) as being unpatentable over Blum and Noll (incorporated by reference in Blum at col. 7, ll. 5-6).3 ISSUE Have Appellants shown that the Examiner reversibly erred in finding that the claimed requirement of distilling one or more polyhydroxyl compounds at a temperature ≥ 150°C and a pressure ≤ 10 mbar does not patentably distinguish the claimed composition from that described by the applied art? FINDINGS OF FACT The Examiner finds that component A1 and component A2 of claim 1 can be present in an equal amount (30 parts by weight of component A). Ans. 4. Claim 1 recites that A1 can be 30.0 parts by weight and A2 can be 30 parts by weight. Thus, the Examiner’s position is that any removal of volatile compounds from component A1 does not necessarily result in a different component A from polyurethane(urea) of the applied art. 2 On page 3 of the Answer, the Examiner includes Noll in this rejection as being incorporated by reference in Blum. We recite the rejection in the same manner here. 3 On page 4 of the Answer, the Examiner includes Noll in this rejection as being incorporated by reference in Blum. We recite the rejection in the same manner here. 4 Appeal 2009-1677 Application 10/854,371 PRINCIPLES OF LAW When the prior art product is either identical with or only slightly different from Appellants’ claimed subject matter, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product. “‘Whether the rejection is based on ‘inherency’ under 35 U.S.C. § 102, or ‘prima facie obviousness’ under 35 U.S.C. § 103, jointly or alternatively, the burden of proof is the same.’” In re Fitzgerald, 619 F.2d 67, 70 (CCPA 1980); In re Best, 562 F.2d 1252, 1255 (CCPA 1977). The transitional term “comprising” is an “open” term, in the sense that it leaves the claim open for the inclusion of unspecified ingredients, “even in major amounts.” Ex parte Davis and Tuukkanen, 80 USPQ 448, 450 (BPAI 1948). See also North Am. Vaccine, Inc. v. American Cyanamid Co., 7 F.3d 1571, 1585 (Fed. Cir. 1993). Because the term “comprising” is one of enlargement, it can cause a claim to be broader than the invention. See In re Fenton, 451 F.2d 640, 642 (CCPA 1971). Whether an applicant seeks to establish an unobvious difference to overcome an inherency finding or unexpectedly improved results to overcome an obviousness conclusion, the objective evidence an applicant provides must be commensurate in scope with the claims which the evidence is offered to support. In other words, the showing must be reviewed to see if the results occur over the entire claimed range. In re Marosi, 710 F.2d 799, 803 (Fed. Cir. 1983); In re Clemens, 622 F.2d 1029, 1035-36 (CCPA 1980); In re Peterson, 315 F.3d 1325, 1330-31 (Fed. Cir. 2003); In re Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983). 5 Appeal 2009-1677 Application 10/854,371 ANALYSIS Beginning on page 5 of the Brief, Appellants point out that component A1 of Claim 1 is defined as one or more polyhydroxyl compounds having a number-average molecular weight (Mn) ≥ 500 daltons and an average OH functionality of ≥ 1.5, wherein the one or more polyhydroxyl compounds have been distilled at a temperature ≥ 150°C and a pressure ≤ 10 mbar. Appellants state that claim 1 requires that component A1 represents 30 to 83.5 parts by weight of component A, while component A2 represents 0 to 30 parts by weight of component A. Appellants assert that component A1 will thus represent the largest component of component A in terms of weight. Br. 5-6. Appellants explain that the claimed aqueous coating compositions produce "soft-feel" coatings that find particular applications in automotive vehicles. Br. 6. Appellants state that one object of the present invention is to provide soft-feel coatings that do not produce the amount of "fogging" that takes place with soft-feel coatings of the prior art. Appellants state that the Specification, at page 4, lines 7-8, discloses that this object is achieved by distilling the high-molecular weight polyhydroxyl compounds prior to inclusion in the aqueous coating composition. Br. 6-7. Appellants argue that the requirement of the claims that the polyhydroxyl compounds have been distilled at a temperature ≥ 150°C and at a pressure ≤ 10 mbar is not disclosed nor suggested in Blum or Noll. Appellants argue that the references do not teach the idea of distilling the compounds, and neither discloses any potential advantages for removing the volatile components. Br. 6. 6 Appeal 2009-1677 Application 10/854,371 Appellants reiterate that because of the amounts required by claim 1, the distilled component will be the largest component of component A in the presently claimed composition. Appellants assert that thus the amount of volatiles present overall in the composition will be far less than the compositions disclosed in Blum and Noll. Br. 6. Appellants argue that while the Examiner asserts that the presence of potential volatiles in component A2 would negate the removal of the volatiles from component A1, component A1 is the predominant component in the composition, and thus, removing the volatiles from component A1 via distillation, as required by the claims, results in a substantially different composition, and is enough to lead to the improved properties, as illustrated in the Examples (beginning on page 22 of the Specification). Br. 6-7. Appellants argue that Example 13 includes the improved component A1 as required by claim 1. It is compared with Example 11, which utilizes PUD II and PUD III as the hydroxyl-free component, wherein PUD II and PUD III were not subjected to distillation to remove the volatile components. Br. 7 and Spec. 22-27. Appellants argue that the results show that the inclusion of a hydroxyl-free component that has been distilled at a temperature >150°C and at a pressure ≤10 mbar achieves greatly improved VOC and Fog values, especially when compared to Example 11. Br. 7. Appellants assert that because Blum (and through incorporation by reference, Noll) does not disclose the inclusion of polyhydroxyl compounds that have been distilled at a temperature ≥ 150°C and at a pressure ≤ 10 mbar, in the amounts required by the current claims, the current claims cannot be anticipated by Blum. Br. 7. 7 Appeal 2009-1677 Application 10/854,371 In response, beginning on page 4 of the Answer, the Examiner states that while Appellants assert that component A1 will represent the largest component of component A in terms of weight, this is not correct because component A1 and component A2 can be present in an equal amount (30 parts by weight of component A). We agree because A1 can be 30.0 parts by weight and A2 can be 30 parts by weight, according to claim 1. On pages 4-5 of the Answer, the Examiner also states that while Appellants argue that Blum and Noll do not teach the claimed distilled polyhydroxyl compound, Appellants’ claims recite "comprising" (in claims 1 and 8), permitting the presence of any compound in any amount in the claimed coating compositions, and same or at least very similar volatile compounds would be present in both component A1 and component A2. The Examiner explains that, for example, component A1 would have lower molecular weight polyhydroxyl compounds (such as component A2), as well as other volatile components such as unreacted monomers (acid, polyols, or carbonates), also present in component A2. The Examiner concludes that “any removal of volatile compounds from component A1) does not make a different component A) from polyurethane(urea) of the cited art since [the] presence of [the] volatile compounds in component A2) negates such removal from component A1) absent further limitation such as any amount thereof, for example.” Ans. 4-5. We agree with the Examiner’s interpretation of Appellants’ claim 1 as discussed above. The transitional term “comprising” is an “open” term, in the sense that it leaves the claim open for the inclusion of unspecified ingredients, “even in major amounts.” Ex parte Davis and Tuukkanen, 80 USPQ at 450. See also North Am. Vaccine, Inc. v. American Cyanamid Co., 8 Appeal 2009-1677 Application 10/854,371 7 F.3d at 1585. Because the term “comprising” is one of enlargement, it can cause a claim to be broader than the invention. See In re Fenton, 451 F.2d at 642. In addition to the scope of claim 1 as described by the Examiner, we add that the aqueous coating compositions of claim 1 can comprise, for example, 1% of component A, of which 30% is from a polyhydroxyl compound that has been distilled, because claim 1 does not recite particular amounts for components A, B, and C. In view of such a claim scope, we agree with the Examiner’s conclusion that any removal of volatile compounds from component A1 does not necessarily result in a different component A from polyurethane(urea) of the applied art. Therefore, it is reasonable to conclude that the appealed claims embrace compositions that are the same or similar to compositions taught by the prior art. As such, when the prior art product is either identical with or only slightly different from Appellants’ claimed subject matter, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product. “‘Whether the rejection is based on ‘inherency’ under 35 U.S.C. § 102, or ‘prima facie obviousness’ under 35 U.S.C. § 103, jointly or alternatively, the burden of proof is the same.’” In re Fitzgerald, 619 F.2d at 70 quoting In re Best, 562 F.2d at 1255. In the instant case, Appellants have not provided such proof (for either the anticipation rejection or the obviousness rejection). With specific regard to Appellants’ rebuttal of the obviousness rejection, as pointed out by the Examiner on page 5 of the Answer, the showing involving the comparison of examples 11 and 13 is not 9 Appeal 2009-1677 Application 10/854,371 commensurate in scope with Appellants’ claims, and therefore is not an effective rebuttal of the prima facie obviousness case. Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the “‘objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support.’” In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d at 1035-36; In re Peterson, 315 F.3d at 1330- 31; In re Grasselli, 713 F.2d at 743. With regard to the aspect of claim 8 directed to “soft feel”, again, when the prior art product is either identical with or only slightly different from Appellants’ claimed subject matter, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product. “‘Whether the rejection is based on ‘inherency’ under 35 U.S.C. § 102, or ‘prima facie obviousness’ under 35 U.S.C. § 103, jointly or alternatively, the burden of proof is the same.’” In re Fitzgerald, 619 F.2d at 70 quoting In re Best, 562 F.2d at 1255. In the instant case, Appellants have not provided such proof (for either the anticipation rejection or the obviousness rejection) that the product of the applied art does not possess “soft feel” properties. We also refer to the Examiner’s response made on page 5 of the Answer in support of the Examiner’s position. CONCLUSIONS OF LAW Appellants have not shown that the Examiner reversibly erred in finding that the claimed requirement of distilling one or more polyhydroxyl 10 Appeal 2009-1677 Application 10/854,371 compounds at a temperature ≥ 150°C and a pressure ≤ 10 mbar patentably distinguishes the claimed composition from that described by the applied art. DECISION The rejection of claims 1-15 under 35 U.S.C. 102(b) as anticipated by Blum and Noll (incorporated by reference in Blum at col. 7, ll. 5-6) is affirmed. The rejection of claims 1-15 under 35 U.S.C. 103(a) as being unpatentable over Blum and Noll (incorporated by reference in Blum at col. 7, ll. 5-6) is affirmed. 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 ssl BAYER MATERIAL SCIENCE LLC 100 BAYER ROAD PITTSBURGH, PA 15205 11 Copy with citationCopy as parenthetical citation