Ex Parte Munzmay et al

Board of Patent Appeals and Interferences

Apr 27, 2009

10854371 (B.P.A.I. Apr. 27, 2009)

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
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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
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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.

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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.
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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).

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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.
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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.
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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.,
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Appeal 2009-1677
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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
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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
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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

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