Ex Parte O et alDownload PDFPatent Trial and Appeal BoardAug 1, 201411903362 (P.T.A.B. Aug. 1, 2014) Copy Citation UNITED STATES PATENT AND TRADEMARKOFFICE 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. 11/903,362 09/21/2007 James O'Connor 103028-100 8917 27267 7590 08/01/2014 WIGGIN AND DANA LLP ATTENTION: PATENT DOCKETING ONE CENTURY TOWER, P.O. BOX 1832 NEW HAVEN, CT 06508-1832 EXAMINER SERGENT, RABON A ART UNIT PAPER NUMBER 1765 MAIL DATE DELIVERY MODE 08/01/2014 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 PATENT TRIAL AND APPEAL BOARD ____________ Ex parte JAMES O'CONNOR and YE MING ____________ Appeal 2012-011297 Application 11/903,362 Technology Center 1700 ____________ Before PETER F. KRATZ, MARK NAGUMO, and MICHAEL P. COLAIANNI, Administrative Patent Judges. KRATZ, Administrative Patent Judge. DECISION ON APPEAL This is a decision on an appeal under 35 U.S.C. § 134 from the Examiner’s final rejection of claims 1-15. We have jurisdiction pursuant to 35 U.S.C. § 6. Appellants’ claimed invention is directed to the preparation of a liquid isocyanurate-modified polymeric methylene bis(phenylisocyanate) (isocyanurate-modified/trimerized PMDI) composition with controlled viscosities via admixture with conventional polymeric methylene bis(phenylisocyanate) (conventional PMDI), which admixture of trimerized PMDI and conventional PMDI can be further formulated and used for making foams, including a rigid polyurethane/polyisocyanurate foam Appeal 2012-011297 Application 11/903,362 2 product (Spec. ¶¶ 0001, 0002, 0009 – 00012, 00015). According to Appellants, conventional PMDI is a product mixture having a viscosity within the range of 100-300 cps and typically includes about 50 to about 70 percent, by weight of two-ring compounds with the remainder of the mixture containing compounds having three or more rings (Spec. ¶ 0003). Claims 1and 7 are illustrative and reproduced below: 1. A method for producing a liquid, isocyanurate-modified PMDI having controlled viscosity comprising the steps of: (a) trimerizing PMDI containing from about 50 wt% to about 70 wt% of two ring compounds based on the total weight of said PMDI and having a viscosity at 25° C within a range of from 100 cps to 300 cps in the presence of a catalytically effective amount of a trimerization catalyst to produce isocyanurate-containing PMDI having a viscosity at 25° C of from about 2,000 mPas to about 200,000 mPas; (b) deactivating the trimerization catalyst to provide a mixture containing isocyanurate-modified PMDI and deactivated trimerization catalyst; and (c) admixing the mixture from step (b) with a sufficient amount of PMDI containing from about 50 wt% to about 70 wt% of two ring compounds based on the total weight of said PMDI and having a viscosity at 25° C within a range of from 100 cps to 300 cps to provide an admixture having a viscosity at 25° C of from about 400 mPas to about 20,000 mPas. 7. A composition comprising an admixture of (a) PMDI containing from about 50 wt% to about 70 wt% of two ring compounds based on the total weight of said PMDI and having a viscosity at 25° C within a range of from 100 cps to 300 cps and (b) isocyanurate-modified PMDI, wherein the weight ratio (a) to (b) is from about 1:10 to about 10:1, and wherein the admixture has a viscosity at 25° C of from about 400 mPas to about 20,000 mPas. The Examiner relies on the following prior art references as evidence in rejecting the appealed claims: Appeal 2012-011297 Application 11/903,362 3 Zemlin US 3,590,411 July 6, 1971 Markusch US 3,981,831 Sept. 21, 1976 Blount US 4,377,659 Mar. 22, 1983 Narayan (‛125) US 4,382,125 May 3, 1983 Narayan (‛627) US 4,743,627 May 10, 1988 The Examiner maintains the following grounds of rejection:1 Claims 1-15 stand provisionally rejected on the ground of non- statutory obviousness-type double patenting over claims 1-21 of co-pending Application No. 12/211,217.2 Claims 1-15 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Narayan ‘125 in view of Narayan ‘627, Zemlin, Markusch, and Blount. We affirm the stated rejections substantially for the reasons set forth by the Examiner in the Answer. We add the following for emphasis. Concerning the Examiner’s provisional obviousness-type double patenting (ODP) rejection, Appellants offer no argument to the contrary in the Appeal Brief. In the Reply Brief (p. 5), Appellants note a previously made request that the provisional ODP rejection be held in abeyance pending an indication of allowable subject matter. On this appeal record and given the decision we reach herein respecting the Examiner’s rejection of the appealed claims under 35 U.S.C. § 103(a), we decline to entertain Appellants’ request for delay in reaching the ODP rejection. Accordingly, we summarily sustain the Examiner’s provisional ODP rejection. 1 A previously maintained rejection of claims 1 through 15 under the first paragraph of 35 U.S.C. § 112 for failing to comply with the written description requirement was withdrawn by the Examiner (Ans. 4). 2 Related Appeal No. 2012-011465 (Application No. 12/211,217) is being decided concurrently with this appeal. Appeal 2012-011297 Application 11/903,362 4 Concerning the Examiner’s rejection of the appealed claims under 35 U.S.C. § 103(a), Appellants present arguments for the method claims 1-6 based on claim 1 and for the composition claims 7-15 based on claim 7 without separately arguing the other appealed claims. Accordingly, we limit our discussion to one representative claim in each group, that is, claims 1 and 7. The other claims in each group stand or fall with the corresponding representative claim we address. See 37 C.F.R. § 41.37(c)(1)(vii) (2007). Concerning claim 1, the Examiner has determined that Narayan ‘125 teaches or suggests a method for trimerizing PMDI that corresponds to Appellants’ claim 1 method with the exception that Narayan ‘125 lacks disclosure of a step of admixing other organic polyisocyanates with the trimerized PMDI product of Narayan ‘125 to modify its properties (e.g., viscosity and NCO content), such as by admixture of PMDI with trimerized PMDI, as required by step (c) of Appellants’ claim 1 (Ans. 5 and 6). In so determining, the Examiner notes Appellants’ acknowledgment concerning conventional PMDI set forth in the subject Specification (Ans. 5; Spec. ¶ 0003). In particular, Appellants report that conventional PMDI is a product mixture having a viscosity within the range of 100- 300 cps and typically includes about 50 to about 70 percent, by weight, of two ring compounds with the remainder of the mixture containing compounds having three or more rings (Spec. ¶ 0003). Appellants limit their argument to step c of claim 1(App. Br. 11-13). Concerning step (c) of claim 1, the Examiner turns to Narayan ‘627, Zemlin, Markusch, and Blount for teachings of blending various polyisocyanates with a trimerized PMDI product or other modified polymeric polyisocyanate to adjust the polyisocyanate blend properties such as by controlling/reducing Appeal 2012-011297 Application 11/903,362 5 the viscosity of the polyisocyanate product (Ans. 6). In addition, the Examiner has found that Narayan ‘627 teaches that trimerized (isocyanurate- modified) PMDI has a raised viscosity level (Ans. 6; Narayan, col. 4, ll. 39- 40; compare Spec. ¶¶ 00015, 00016). Based on the applied prior art, the Examiner reasonably maintains that adding a known lower viscosity polyisocyanate, such as a conventional PMDI to the trimerized PMDI of Narayan ‘125, would have been an obvious viscosity adjustment for one of ordinary skill in the art to make in order to control/decrease the viscosity of the trimerized PMDI of Narayan ‘125 to manipulate/enhance the processing characteristics thereof (Ans. 6-7). In this regard, it would have been reasonably expected that blending a complex mixture of isocyanurate-modified PMDI with a conventional PMDI mixture would yield a product mixture having a viscosity value between that of the isocyanurate-modified PMDI and that of the conventional PMDI before they are blended together. Narayan ‘125 discloses examples showing that both PMDI (Polyisocyanate A) and isocyanurate modified PMDI (trimerized Polyisocyanate A) can be utilized for forming foams (Table II, Examples 7, 9, and 10). Consequently, one of ordinary skill in the art would have readily recognized that providing a mixture of PMDI and trimerized PMDI would yield a useful polyisocyanate component of a formulation for producing foams. In light of the foregoing and for reasons set forth by the Examiner in the Examiner’s Answer (Ans. 5-8), Appellants’ arguments to the effect that none of Narayan ‘627, Zemlin, Markusch, and Blount discloses blending the particular polyisocyanate (conventional PMDI) required by step (c) of Appeal 2012-011297 Application 11/903,362 6 claim 1 with a trimerized PMDI are not persuasive of substantive error in the Examiner’s obviousness position. Appellants assert that other properties of the trimerized PMDI are changed by blending it with a low viscosity PMDI and that such would not have been predictable (App. Br. 13; Reply Br. 7). However, Appellants have not substantiated why one of ordinary skill in the art would have expected that blending a conventional PMDI with a trimerized PMDI would yield an unpredictable NCO content or unpredictable stability property for the blend and/or why such a blend would have been deemed contraindicated by one of ordinary skill in the art at the time of the invention. Indeed, Appellants disclose that other polyisocyanates may be employed and claim 1 uses open “comprising†language, which claim language embraces other polyisocyanate component additions (Spec. ¶ 00026). As indicated above, Narayan ‘125 suggests that both PMDI and trimerized PMDI, which each include mixtures of polyisocyanate compounds, can be utilized as a polyisocyanate component individually in the formation of foam products. These circumstances suggest that a compatible polyisocyanate addition of known properties, such as conventional PMDI, would have been expected to yield predictable outcomes for the resultant blend of conventional PMDI with trimerized PMDI rather than unpredictable properties and functionalities as argued (Narayan ‘125, col. 2, ll. 27-55, col. 6, ll. 30-32, Examples 7, 9, and 10; Spec. ¶ 0003). “The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.†KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). Appeal 2012-011297 Application 11/903,362 7 Appellants reliance on the arguments made with respect to claim 1 for advocating reversal of the Examiner’s obviousness rejection of composition claim 7 are correspondingly unpersuasive as to the resultant composition from blending conventional PMDI with trimerized PMDI for reasons discussed above and in the Examiner’s Answer. As for the separate argument concerning the blending ratio of “from about 1:10 to about 10:1†required in composition claim 7, we concur with the Examiner that one of ordinary skill in the art would have readily arrived at a workable blend ratio within the broadly recited range in order to obtain a workable viscosity for further processing the product polymeric polyisocyanate mixture utilizing the known respective viscosity values of the trimerized PMDI and the conventional PMDI and the fact that the final viscosity of the mixture would be expected to be based on the relative amounts of each of these components employed therein (Ans. 8). As a final point, we concur with the Examiner that Appellants have not substantiated unexpected results for the claimed process or product based on comparative evidence (Ans. 8-9). Appellants have not articulated, if such were intended, how the examples of the subject Specification provide such comparative evidence showing unexpected results for the subject matter of Appellants’ invention as compared with the closest prior art. After all, it is well settled that Appellants have the burden to establish unexpected results by presenting evidence of such unexpected results for subject matter that is reasonably commensurate in scope with the claimed subject matter as compared to the closest prior art. “The evidence presented to rebut a prima facie case of obviousness must be commensurate in scope with the claims to which it pertains.†In re Dill, 604 F.2d 1356, 1361 (CCPA 1979); see also, Appeal 2012-011297 Application 11/903,362 8 In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991) (“[W]hen unexpected results are used as evidence of nonobviousness, the results must be shown to be unexpected compared with the closest prior art.â€). Evidence of superior results does not establish “unexpected†results. See Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1371 (Fed. Cir. 2007) (“[B]y definition, any superior property must be unexpected to be considered as evidence of non- obviousness.â€). On this record, we shall sustain the Examiner’s obviousness rejection of the appealed claims. CONCLUSION/ORDER The Examiner’s decision to reject the appealed claims 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). AFFIRMED cam Copy with citationCopy as parenthetical citation