Ex Parte O et al

Patent Trial and Appeal Board

Aug 1, 2014

12211217 (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.
12/211,217 09/16/2008 James O'Connor 103028-200 8038
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 2012-011465
Application 12/211,217
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 1-21. We have jurisdiction pursuant to
35 U.S.C. § 6.
Appellants’ invention is directed to the preparation of controlled
viscosity, liquid isocyanurate-modified polymeric methylene
bis(phenylisocyanate) (isocyanurate-modified/trimerized PMDI)
compositions and their use in making rigid polyurethane/polyisocyanurate
foams.
The controlled viscosities are achieved via an admixture of the
isocyanurate-modified PMDI with conventional polymeric methylene
bis(phenylisocyanate) (conventional PMDI), which admixture of trimerized
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PMDI and conventional PMDI can be further formulated and used for
making foams, including a rigid polyurethane/polyisocyanurate foam
product (Spec. ¶¶ 0002 -0004, 00010 – 00013, 00015, 00016). According to
Appellants, conventional PMDI is a product mixture having a viscosity
within the range of 30- 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. ¶¶ 0004, 00015).

Claims 1, 7, and 16 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 having 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 about 30 to about 100 cps in the
presence of a catalytically effective amount of a trimerization catalyst to
produce isocyanurate-containing PMDI having a viscosity at 25° C within a
range 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 having 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 about 30 to about 100 cps to provide an admixture
having a viscosity at 25° C within a range of from about 400 mPas to about
20,000 mPas.

7. A composition comprising an admixture of (a) PMDI having from
about 50 wt% to about 70 wt% of two ring compounds based on the total
weight of aid PMDI and having a viscosity at 25° C within a range of from
about 30 to about 100 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
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admixture has a viscosity at 25° C within a range of from about 400 mPas to
about 20,000 mPas.

16. A method for producing a liquid, isocyanurate-modified PMDI
having controlled viscosity comprising the steps of:
(a) trimerizing PMDI having 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 about 30 to about 300 cps in the
presence of a catalytically effective amount of a trimerization catalyst being
1, 3, 5 tris(N,N-dimethylaminopropyl)-s hexahydro-5-triazine to produce
isocyanurate-containing PMDI having a viscosity at 25° C within a range of
from about 2,000 mPas to about 200,000 mPas;
(b) deactivating the trimerization catalyst with PMDI having from
about 50% to about 70% of two ring compounds and having a viscosity at
25° C within a range of from about 30 to about 300 cps, optionally in
combination with an acid chloride or an acid to provide a mixture; and
(c) admixing the mixture from step (b) with a sufficient amount of
PMDI having from about 50 wt% to about 70 wt% of two ring compounds
and having a viscosity at 25° C within a range of from about 30 to about 300
cps sufficient to provide an admixture having a viscosity at 25° C within a
range 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:
Zemlin US 3,590,411 July 6, 1971
Falkenstein US 3,970,600 July 20, 1976
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

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The Examiner maintains the following grounds of rejection:1
Claims 16-21 stand rejected under 35 U.S.C. § 112, second paragraph
as being indefinite for failing to particularly point out and distinctly claim
the subject matter which applicant regards as invention.
Claims 1-21 stand provisionally rejected on the ground of non-
statutory obviousness-type double patenting over claims 1-15 of co-pending
Application No. 11/903,362.2
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.
Claims 16-21 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Narayan ‘125 in view of Narayan ‘627, Zemlin,
Markusch, Blount, and Falkenstein.
We reverse the stated rejection of claims 16-21 under 35 U.S.C.
§ 112, second paragraph and the Examiner’s rejection of claims 16-21 under
35 U.S.C. § 103(a). We affirm all of the other rejections maintained by the
Examiner substantially for the reasons set forth in the Examiner’s Answer.
Concerning the indefiniteness rejection of claims 16-21, the Examiner
maintains that the percentage values in step b of claim 16 are indefinite
because it is not clear if the percent is by weight or by mole percent or if the
percent is based on the PMDI component or some other entity (Ans. 5).

1 A previously maintained rejection of claims 1 through 21 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. 2012-011297(Application No. 11/903,362, the parent
of this continuation-in-part application) is being decided concurrently with
this appeal.
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However, we agree with Appellants that when claim 16 is read as a
whole in light of the subject Specification as it would have been understood
by one of ordinary skill in the art, the percentage range for the two ring
compounds content of the PMDI specified in step b of claim 16 would have
been understood as specifying percentages by weight based on the total
weight of the PMDI component (Reply Br. 5). As recited in the other steps
of claim 16, the PMDI has a recited percentage range of two ring
compounds present, based on weight percent. The Specification provides
that conventional production processes typically yield PMDI product
“containing from about 50% to about 70% of the two ring compounds” and
that the described PMDI content amounts are specified “based on the total
weight of the PMDI batch” (Spec. 0004). In light of the above, the
Examiner has not persuasively articulated why the percentage recitation for
the two ring compounds present in PMDI as set forth in step b of claim 16
would have been understood as being based on something other than a
weight percent based on the PMDI total weight.
On this record, we reverse the Examiner’s rejection of claims 16-21
under the second paragraph of 35 U.S.C. § 112.
Turning to 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, we
decline to entertain Appellants’ request for delay in reaching the ODP
rejection. Accordingly, we summarily sustain the Examiner’s provisional
ODP rejection.
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Concerning the Examiner’s rejections of the appealed claims under
35 U.S.C. § 103(a), we begin with the Examiner’s rejection of claims 1-15
over Narayan ‘125 in view of Narayan ‘627, Zemlin, Markusch, and Blount.
Appellants present arguments for 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 (making an
isocyanurate-modified 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. ¶ 0004). In particular, Appellants
report that conventional PMDI is a product mixture having a viscosity within
the range of about 30-300 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. ¶¶ 0004,
00015).
Appellants limit their argument to step c of claim 1(App. Br. 12-14).
Concerning the latter step, the Examiner turns to Narayan ‘627, Zemlin,
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Markusch, and Blount for disclosures 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
the viscosity of the polyisocyanate product (Ans. 6-7). In addition, the
Examiner has found that Narayan ‘627 teaches that trimerized (isocyanurate-
modified) PMDI has an increased viscosity level (Ans. 6; Narayan, col. 4, ll.
39-40; compare Spec. ¶ 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.
In light of the foregoing and for reasons set forth by the Examiner in
the Examiner’s Answer (Ans. 5-7), 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 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
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have been predictable (App. Br. 14; Reply Br. 8). 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 considered
contraindicated to 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. ¶ 00028). 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 the addition of a compatible
polyisocyanate having 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 (Narayan ‘125, col. 2, ll. 27-55, col. 6, ll. 30-
32, Examples 7, 9, and 10; Spec. ¶ 0004). “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).
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
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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 based on the relative amounts of each of these components employed
therein (Ans. 10).
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. 10). 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,
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
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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 claims 1-15.
Concerning the Examiner’s separate stated obviousness rejection of
claims 16-21, Appellants argue the claims together as a group. We select
claim 16 as the representative claim on which we decide this appeal as to
this ground of rejection.3 Claim 16 is drawn to a method similar to claim 1
with the additional proviso that deactivation of the trimerizing catalyst is
accomplished with PMDI, optionally together with acid chloride or an acid.
Concerning this additional claim feature, the Examiner adds
Falkenstein to the previously discussed combination of Narayan ‘125 in
view of Narayan ‘627, Zemlin, Markusch, and Blount. The Examiner
maintains that Narayan teaches or suggests that an acid or an acid chloride
can be employed to deactivate the trimerizing catalyst but is silent as to the
role of unmodified PMDI in such catalyst deactivation (Ans. 8). The
Examiner turns to Falkenstein for evincing that as catalyst level decreases
trimerizing decreases, with a minimum level of catalyst required for
promoting the reaction (id.). The Examiner basically maintains that
combining additional reactant (PMDI) with the known acid or acid chloride
deactivators would have been obvious to one of ordinary skill in the art to
assist catalyst deactivation/quenching.4

3 Neither Appellants nor the Examiner separately addressed the obviousness
of product claim 21.
4 The Examiner interprets claim 16 as requiring the addition of unmodified
PMDI for the catalyst deactivation step (Ans. 8). The Specification supports
this interpretation of claim 16 (Spec. ¶ 00025).
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Appellants argue that the disclosure of Falkenstein as to the
relationship between the degree of conversion and catalyst amounts
employed taken together with the disclosures of the previously discussed
references is not suggestive of the use of added PMDI in a trimerizing
catalyst deactivation step (App. Br. 16; Reply Br. 10). In particular,
Appellants argue that Falkenstein teaches employing acids and acid
compounds for deactivating the trimerizing catalyst but does not describe
using any PMDI for catalyst deactivation (id.; Falkenstein, col. 5, ll. 4-12).
We agree with Appellants because the Examiner’s citation to the
column 4 passage of Falkenstein concerning the relationship between the
amount of catalyst used and the degree of conversion desired has not been
shown to reasonably suggest using PMDI addition for deactivating
trimerizing catalyst whereas the column 5 disclosure of Falkenstein cited to
by Appellants reasonably supports Appellants’ opposing position.
Accordingly, we reverse the Examiner’s obviousness rejection of
claims 16-21 on this appeal record.

CONCLUSION/ORDER
The Examiner’s decision to reject claims 16-21 under 35 U.S.C.
§ 112, second paragraph as being indefinite for failing to particularly point
out and distinctly claim the subject matter which applicant regards as
invention and to reject claims 16-21 under 35 U.S.C. § 103(a) as being
unpatentable over Narayan ‘125 in view of Narayan ‘627, Zemlin,
Markusch, Blount, and Falkenstein is reversed.
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The Examiner’s decision to reject claims 1-21 provisionally on the
ground of non-statutory obviousness-type double patenting over claims 1-15
of co-pending Application No. 11/903,362 is affirmed.
The Examiner’s decision to reject claims 1-15 under 35 U.S.C. §
103(a) as being unpatentable over Narayan ‘125 in view of Narayan ‘627,
Zemlin, Markusch, and Blount 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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