Ex parte Narayan

Board of Patent Appeals and Interferences

Jan 19, 2000

08263496 (B.P.A.I. Jan. 19, 2000)

Application for patent filed June 20, 1994. According1
to appellant, this application is a continuation of
Application No. 07/881,922, filed May 12, 1992, now abandoned.
-1-
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered
today (1) was not written for publication in a law
journal and (2) is not binding precedent of the Board.
Paper No. 27
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte THIRUMURTI NARAYAN
________________
Appeal No. 1997-1997
Application No. 08/263,4961
________________
ON BRIEF
________________
Before CAROFF, KIMLIN and OWENS, Administrative Patent Judges.
KIMLIN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 1-
22, all the claims in the present application. Claim 1 is
illustrative:
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Application No. 08/263,496
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1. A liquid polyisocyanate prepolymer comprising the
reaction product of an organic polyisocyanate blend and a
polyoxypropylene polyether polyol, said polyisocyanate
blend comprising
A) a diphenylmethane diisocyanate component comprising
from 50 weight percent to 98 weight percent
4,4N-diphenyl-methane diisocyanate, from 2 weight
percent to 50 weight percent 2,4N-diphenylmethane
diisocyanate, and less than 10 weight percent
2,2N-diphenylmethane diisocyanate, said weight
percentages based on the total weight of the
ingredients in A);

B) a polymethylene polyphenyl polyisocyanate component
comprising from 30 weight percent to 70 weight percent
diphenylmethane diisocyanate, the remainder comprising
polymethylene polyphenyl polyisocyanates having
functionalities greater than two, said weight
percentages based on the total weight of the
ingredients in B);

C) and optionally a uretonimine-carbodiimide modified
diisocyanate component comprising from 10 weight
percent to 35 weight percent uretonimine-carbodiimide
species, the remainder comprising essentially pure
4,4,N- diphenylmethane diisocyanate, said weight
percentages based on the weight of the ingredients in
C);
said polyoxypropylene polyether polyol having a number average
molecular weight ranging from greater than 1500 to 10,000 and
an average functionality from 1.6 to about 3, wherein the
polyol is reacted with the polyisocyanate blend at
temperatures less than 80EC, the liquid polyisocyanate
prepolymer having an overall NCO content of from 22 weight
percent to 31 weight percent.
In the rejection of the appealed claims, the examiner
relies upon the following references:
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Application No. 08/263,496
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Carroll et al. (Carroll) 4,261,852 Apr. 14, 1981
Watts et al. (Watts) 5,070,114 Dec. 03, 1991
Appellant's claimed invention is directed to a liquid
polyisocyanate prepolymer that is the reaction product of an
organic polyisocyanate blend and a polyoxypropylene polyether
polyol. The polyisocyanate blend comprises a diphenylmethane
diisocyanate and a polymethylene polyphenyl polyisocyanate.
The prepolymer of the present invention has an overall NCO
content of from 22 to 31 weight percent. According to
appellant's specification, the claimed prepolymer is used in
the manufacture of polyurethane foams.
Appealed claims 1-3, 5-7 and 18-22 stand rejected under
35 U.S.C. § 102(b) as being anticipated by Carroll. Claims 8-
17 stand rejected under 35 U.S.C. § 103 as being unpatentable
over Watts. In addition, claim 4 stands rejected under
35 U.S.C. § 103 as being unpatentable over Carroll in view of
Watts.
Upon careful consideration of the opposing arguments
presented on appeal, we agree with appellant that the
examiner's rejections are not sustainable.
We consider first the examiner's rejection of claims 1-3,
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Application No. 08/263,496
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5-7 and 18-22 under § 102 over Carroll. Since Carroll
discloses a prepolymer formed by reacting a polyoxypropylene
polyol with diphenylmethane diisocyanate, and blending the
prepolymer with polymethylene polyphenylene polyisocyanate,
the examiner concludes that "Carroll's composition would be
the same as that of appellant's" (page 3 of Answer). However,
as detailed by appellant, the presently claimed prepolymer is
the chemical reaction product of three components, whereas the
prepolymer of Carroll is the reaction product of only two
components, a polyol and diphenylmethane diisocyanate, which
reaction product is then physically admixed with a
polymethylene polyphenylene polyisocyanate composition.
Carroll expressly teaches that the diphenylmethane
diisocyanate used in making the prepolymer is in pure form,
i.e., it is substantially free from polymethylene polyphenyl
polyisocyanates (column 2, lines 10-16 and column 3, lines 10-
12). We also invite attention to Carroll's disclosure that
"[t]he polyisocyanate compositions of the invention may be
manufactured by mixing appropriate amounts of component A and
component B in any convenient manner" (column 3, lines 38-41,
emphasis added). While the examiner contends that "[d]ue to
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Application No. 08/263,496
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the large quantity of MDI and its greater reactivity, the
polyol is going to combine with the MDI and not the polymeric
MDI," and that, therefore, "appellant's invention represents
the same mixture as Carroll's" (page 3 of Answer), the
examiner has not provided any evidentiary factual support for
this assertion. In our view, the examiner has not established
on this record that it is reasonable to conclude that the
claimed prepolymer, which is the reaction product of three
components, is essentially the same as the two-component
reaction product of Carroll.
We now turn to the examiner's rejection of claims 8-17
under 35 U.S.C. § 103 over Watts. Although Watts discloses
the preparation of a polyisocyanate prepolymer by reacting the
same three components that are employed by appellant, i.e., a
polyoxypropylene polyether polyol, diphenylmethane
diisocyanate and a polymethylene polyphenyl polyisocyanate,
the prepolymer of Watts does not have the claimed "overall NCO
content of from 22 weight percent to 31 weight percent" (claim
8). Rather, Watts specifically teaches that the prepolymer
has an NCO content of from 2 to 15 percent by weight,
preferably 2 to 12 percent by weight (column 2, lines 27 et
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Application No. 08/263,496
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seq.). Recognizing this deficiency of Watts, the examiner
reasons that "[o]ne needing a quasi-prepolymer having a NCO
content of 22 to 31% for a reaction injection molding
application would be motivated to use Watt's [sic, Watts']
process because it's a simple way of making a mixture of an
MDI prepolymer and polymeric MDI" (page 3 of Answer). In
response, appellant refutes the examiner's reasoning with the
following at page 6 of the Brief:
There is simply no motivation to increase the NCO
content of Watts et al. from the levels specifically
set forth in the reference. In this regard, there
is no reason to expect that the invention of Watts
et al. would even be operable if one were to
increase the NCO content beyond that which is
clearly described under Watts. Moreover, one
skilled in the art would recognize that the free NCO
content of the Watts prepolymer is specifically
limited to a maximum of 15% by weight because higher
free NCO contents would provide a greater number of
isocyanate groups available for reaction with water
to form insoluble polymer linkages. Higher polymer
linkages, in turn, would result in undesirable foam
collapse. Thus, one skilled in the art would, in
fact, be motivated not to increase the NCO content
of Watts et al. beyond these levels.
The examiner has not rebutted appellant's refutation with
compelling reasoning or objective evidence, and, therefore, we
concur with appellant that, although it may well be that one
skilled in the art could have modified Watts, the examiner has
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Application No. 08/263,496
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not established sufficient motivation why one of ordinary
skill in the art would have modified the teachings of Watts in
a manner that ignores the expressed teachings. In general, it
is not a matter of obviousness for one of ordinary skill in
the art to operate outside a range disclosed in the prior art.
In re Sebek, 465 F.2d 904, 907, 175 USPQ 93, 95 (CCPA 1972).
As for the examiner's rejection of claim 4 under § 103
over Carroll in view of Watts, we disagree with the examiner,
for the reasons set forth above with respect to the § 102
rejection, that "Carroll shows the prepolymer of the claims"
(page 4 of Answer).
In conclusion, based on the foregoing, the examiner's
decision rejecting the appealed claims is reversed.
REVERSED
MARC L. CAROFF )
Administrative Patent Judge )
)
)
)
)
EDWARD C. KIMLIN ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
Appeal No. 1997-1997
Application No. 08/263,496
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)
TERRY J. OWENS )
Administrative Patent Judge )
ECK:clm
Appeal No. 1997-1997
Application No. 08/263,496
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Dennis V. Carmen
BASF Corp.
Patent Dept.
1419 Biddle Ave.
Wyandotte, MI 48192-3736