Ex Parte O et al

Patent Trial and Appeal Board

Aug 1, 2014

11903362 (P.T.A.B. Aug. 1, 2014)

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
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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
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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:
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Application 11/903,362

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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.
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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
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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
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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).
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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,
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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.”). 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.”).
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

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