Ex Parte Nefzger et al

Board of Patent Appeals and Interferences

Aug 25, 2009

11002942 (B.P.A.I. Aug. 25, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte HARTMUT NEFZGER, ERIKA BAUER,
ERHARD MICHELS and NILS PERCHENEK
____________________

Appeal 2009-011320
Application 11/002,942
U.S. Patent Publication 2005/0137275
Technology Center 1700
____________________

Decided: August 25, 2009
____________________

Before: FRED E. McKELVEY, Senior Administrative Patent Judge,
and JAMESON LEE and SALLY C. MEDLEY, Administrative Patent
Judges.

McKELVEY, Senior Administrative Patent Judge.
DECISION ON APPEAL
1
A. Statement of the case 2
Bayer MaterialScience AG ("Bayer"), the real party in interest, seeks 3
review under 35 U.S.C. § 134(a) of a final rejection (mailed 28 May 2008). 4
The application was filed on 2 December 2004. 5
Claims 1-6 are in the application. 6
We have jurisdiction under 35 U.S.C. § 134(a). 7

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B. Findings of fact 1
The following findings of fact are supported by a preponderance of 2
the evidence. 3
To the extent that a finding of fact is a conclusion of law, it may be 4
treated as such. 5
Additional findings as necessary may appear in the Discussion portion 6
of the opinion. 7
The invention 8
Bayer's invention relates to a process (claims 1-5) for preparing 9
polymer dispersions in polyester polyols and to the polymer dispersion 10
(claim 6). Specification, page 1:6-8. 11
Involved is a process for the preparation of polymer dispersions by the 12
step of free-radical polymerizing: 13
(a) one or more olefinically unsaturated monomers, in 14
the presence of 15
(b) a base polyester polyol component comprising at 16
least one base polyester polyol without olefinically unsaturated 17
groups, and 18
(c) one or more double-activated methylene compounds. 19
Specification, page 3:17-21. 20
Optionally, the process occurs in the presence of (b) a polyester 21
polyol component without olefinically unsaturated groups that comprises at 22
least one second base polyester polyol without olefinically unsaturated 23
groups. Specification, page 4:1-3. See also Specification, page 4:4-13: 24

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In accordance with the present invention, the polymer 1
dispersions comprise the free-radical polymerization product of 2
(a) one or more olefinically unsaturated monomers, in the 3
presence of (b) a base polyester polyol component without 4
olefinically unsaturated groups that comprises (1) at least one 5
base polyester polyol without olefinically unsaturated groups, 6
and (c) one or more double-activated methylene compound 7
without olefinically unsaturated groups which corresponds to 8
formula (I) as described above, and optionally, (b) a polyester 9
polyol component without olefinically unsaturated groups that 10
comprises (2) at least one second base polyester polyol without 11
olefinically unsaturated groups. 12
According to the specification (page 6:14-24) (bracketed 13
matter and italics added): 14
The polyester polyols suitable for use in accordance with 15
the . . . invention have . . . a number-average molecular weight 16
of 1,000 to 5,000, preferably of 1,300 to 4,800 and more 17
preferably of 1,600 to 4,500 g/mol. 18
If the base polyester polyol component [which is 19
component (b)(1)] comprises several polyester polyols, the 20
molecular weight limits as set forth in the above paragraph refer 21
to the mixture of polyester polyols. In this case, it is of course 22
possible for the number-average molecular weight of one or 23
more of the individual components to fall outside the above 24

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stated, such as, for example, in the range from 450 to 1,600 1
g/mol. 2
The specification goes on to say (page 7:25-30): 3
In a preferred embodiment of the invention, the base 4
polyester polyol, component (b), used comprises two different 5
polyester polyols which differ at least with respect to their 6
number-average molecular weights. In this preferred 7
embodiment, the polyester polyol having the smaller molecular 8
weight is mixed in only when the free-radical polymerization of 9
the vinylic monomer in the mixture of polyester polyol having 10
the higher molecular weight has ended. 11
"Component (b)" refers to the combination of based polyol (b)(1) and, 12
when present, optional polyol (b)(2). See Specification, page 4:4-13, quoted 13
above. 14
Prosecution history 15
Claim 1 of the Bayer application, as filed, read: 16
A process for the preparation of polymer dispersions 17
comprising (1) free-radical polymerizing (a) one or more 18
olefinically-unsaturated monomers, in the presence of (b) a base 19
polyester polyol component comprising (1) at least one base 20
polyester polyol without olefinically unsaturated groups, and 21
(c) a double-activated methylene compound without olefinically 22
unsaturated groups, and, optionally, (b) a polyester polyol 23
component comprising (2) at least one second polyester polyol 24
without olefinically unsaturated groups. 25

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In an Office Action dated 14 November 2007, the Examiner rejected 1
claims 1 as being indefinite. First, the Examiner found the word "base" to 2
be unclear. Second, the Examiner found that it was not clear how polyester 3
polyol (b)(1) differs from polyol (b)(2)—a single polyester polyol satisfies 4
both the base polyester polyol and the second polyester polyol. Office 5
Action, page 2. 6
Responding to the rejection with an amendment filed 13 February 7
2008, Bayer amended claim 1 [strikethrough is material deleted from 8
original claim 1 and underlined material is material added to original 9
claim 1, italics added]: 10
A process for the preparation of polymer dispersions 11
comprising (1) free-radical polymerizing (a) one or more 12
olefinically unsaturated monomers, in the presence of (b) a base 13
polyester polyol component comprising (1) at least one base 14
polyester polyol without olefinically unsaturated groups, and, 15
optionally, (2) at least one second polyester polyol without 16
olefinically unsaturated groups which differs from (b)(1) said 17
based polyester polyol in at least number average molecular 18
weight; and (c) a double-activated methylene compound 19
without olefinically unsaturated groups, and, optionally, (b) a 20
polyester polyol component comprising (2) at least one second 21
polyester polyol without olefinically unsaturated groups. 22
Bayer stated at page 5 of the amendment that support for amended 23
claims 1 appears in the Specification at page 7:25-27 (italics added): 24

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In a preferred embodiment of the invention, the base 1
polyester polyol, component (b), used comprises two different 2
polyester polyols which differ at least with respect to their 3
number-average molecular weights. 4
Final rejection 5
The Examiner entered the amendment, but rejected the claims as 6
being unpatentable under 35 U.S.C. § 112 based on a lack of written 7
description. Final Rejection, page 2. 8
The Examiner found that the concept described in the specification 9
with respect to the optional embodiment (i.e., the "optionally" portion of 10
claim 1) also required consideration of page 7:27-30 of the Specification: 11
In this preferred embodiment, the polyester polyol having the 12
smaller molecular weight is mixed in only when the free-radical 13
polymerization of the vinylic monomer in the mixture of 14
polyester polyol having the higher molecular weight has ended. 15
Claims on appeal 16
Claim 1 on appeal is claim 1 as amended on 13 February 2008. 17
Claim 1 is reproduced earlier in this opinion as amended claim 1. 18
C. Discussion 19
Some of the relevant principles governing written description 20
rejections are set out in In re Alton, 76 F.3d 1168 (Fed. Cir. 1996). The 21
issue of whether a patent specification adequately describes the subject 22
matter claimed is a question of fact. Id. at 1171. The written description 23
requirement is to ensure that the inventor had possession, as of the filing 24
date of the application relied on, of the specific subject matter later claimed 25

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by the inventor; how the specification accomplishes this is not material. Id. 1
at 1172. In order to meet the written description requirement, the applicant 2
does not have to utilize any particular form of disclosure to describe the 3
subject matter claimed, but the description must clearly allow persons of 4
ordinary skill in the art to recognize that the inventor invented what is 5
claimed. Id. Put another way, the applicant must convey with reasonable 6
clarity to those skilled in the art that, as of the filing date sought, the 7
applicant was in possession of the invention. Id. Precisely how close the 8
original description must come to comply with the description requirement 9
of section 112 is determined on a case-by-case basis. Id. 10
The Examiner "agrees that . . . [Bayer discloses] the optional use of a 11
second polyester polyol during polymerization . . . ." Examiner's Answer, 12
page 5. However, the Examiner did "not agree that one of ordinary skill in 13
the art would ascertain from the specification that the two polyester polyols 14
present during polymerization differ in at least their number-average 15
molecular weight." Id. 16
The specification seems to discuss two possible scenarios for use of 17
two polyols. 18
A first possibility is discussed at page 6:16-24—reproduced above. 19
According to claim 1, the base polyester polyol (b)(1) comprises at least one 20
polyester polyol. The "at least one" means that (b)(1) can be made up of 21
more than one polyol. The specification indicates that the number-average 22
molecular weight of the polyols useful in the invention varies from 1,000 to 23
5,000. Page 6:17. The specification goes on to say that when "several" 24
polyester polyols are used, the number-average molecular weight refers to 25

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the number-average molecular weight of "the mixture" (meaning the mixture 1
of the "several" polyester polyols). The number-average molecular weight 2
of one of the several polyols can differ from the required 1,000 to 5,000 for 3
the mixture. For example, one of the polyols in the mixture might have a 4
number-average molecular weight of from 450 to 1,600. Page 6:23. 5
In addition to the "at least one" polyol (b)(1), a second possibility is to 6
have "at least one second" polyester polyol (b)(2). According to Bayer's 7
amendment, the use of "at least one second" polyester polyol (b)(2) is a 8
"preferred embodiment." Specification, page 7:25. The specification makes 9
clear that when "preferred embodiment" is involved, then "the polyester 10
polyol having the smaller molecular weight is mixed in only when the free-11
radical polymerization of the vinylic monomer in the mixture of polyester 12
polyol having the higher molecular weight has ended." Page 7:28-30 (italics 13
added). 14
A fair reading of the preferred embodiment described in the 15
specification is that the statement "the vinylic monomer in the mixture of 16
polyester polyol having the higher molecular weight has ended" 17
(page 7:29-30) refers to the mixture of (i) one or more olefinically 18
unsaturated monomers and (ii) the "at least one base polyester polyol" (b)(1) 19
mentioned in claim 1. The "base" polyester polyol (b)(1) cannot include the 20
"optionally" "second polyester polyol" (b)(2). 21
Generally, the number-average molecular weight of the base 22
"polyester polyol" (b)(1) has to range from 1,000 to 5,000 (page 6:17). 23
When the base polyester polyol (b)(1) is a mixture, the number-average 24

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molecular weight of the polyols making up the mixture of the base polyester 1
polyols can differ. Page 6:19-24. 2
When the "optionally" embodiment of claim 1 is involved, the (b)(2) 3
second polyester polyol (i) is added only after the unsaturated monomer(s) 4
is/are polymerized in the presence of the base polyester polyol and (ii) the 5
second polyester polyol must have a molecular weight which is lower than 6
the molecular weight of the base polyester polyol present during 7
polymerization of the unsaturated monomer(s). Page 7:25-30. Neither of 8
these limitations appears in the amended portion of claim 1. The amended 9
portion of method claim 1 does not require that (i) the second polyester 10
polyol (b)(2) to be added after polymerization of the unsaturated monomer 11
and (ii) the number-average molecular weight of the second polyester 12
polyol (b)(1) be lower than the number-average molecular weight of the base 13
polyester (b)(1). 14
It is not apparent from the specification, when considered in light of 15
Bayer's amendment remarks, is what described embodiment the "optionally" 16
part of claim 1 is attempting to claim except for the "preferred embodiment." 17
Page 7:25-30. The concept attempted to be covered by the "optionally" part 18
of claim 1 has not been shown to have been described in the specification, as 19
filed. 20
We have considered Bayer’s remaining arguments and find none that 21
warrant reversal of the Examiner’s rejections. Cf. Hartman v. Nicholson, 22
483 F.3d 1311, 1315 (Fed. Cir. 2007). 23

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D. Decision 1
Bayer has not sustained its burden on appeal of showing that the 2
Examiner erred in rejecting the claims on appeal as being unpatentable based 3
on a lack of written description. 4
On the record before us, Bayer is not entitled to a patent containing 5
claims 1-6. 6
Upon consideration of the appeal, and for the reasons given herein as 7
well as those given by the Examiner, it is 8
ORDERED that the decision of the Examiner rejecting 9
claims 1-6 based on a lack of written description is affirmed. 10
FURTHER ORDERED that no time period for taking any 11
subsequent action in connection with this appeal may be extended under 12
37 C.F.R. § 1.136(a)(1)(iv) (2008). 13

AFFIRMED

Appeal 2009-011320
Application 11/002,942

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