Ex Parte PajerskiDownload PDFPatent Trial and Appeal BoardApr 9, 201411259451 (P.T.A.B. Apr. 9, 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. 11/259,451 10/26/2005 Anthony D. Pajerski 203CT063-01 4998 37535 7590 04/09/2014 THE LUBRIZOL CORPORATION 29400 LAKELAND BLVD MAIL DROP 022B WICKLIFFE, OH 44092-2298 EXAMINER GRESO, AARON J ART UNIT PAPER NUMBER 1726 MAIL DATE DELIVERY MODE 04/09/2014 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 ANTHONY D. PAJERSKI ____________ Appeal 2012-010630 Application 11/259,451 Technology Center 1700 ____________ Before JEFFREY T. SMITH, MARK NAGUMO, and KRISTINA M. KALAN, Administrative Patent Judges. KALAN, Administrative Patent Judge. DECISION ON APPEAL Appeal 2012-010630 Application 11/259,451 2 Appellant1 appeals under 35 U.S.C. § 134 from the final rejection of claims 1-32. We have jurisdiction under 35 U.S.C. § 6. STATEMENT OF THE CASE Appellant’s invention is directed to water-borne dispersions of oil-modified urethane (OMU) polymers. Spec., Title. Appellant’s Specification provides that “the invention relates to air curable water-borne or aqueous dispersions of urethane polymers suitable for use in coating compositions for application to various substrates such as wood, paper, plastic, metal, or the like.” Spec. ¶ [0002]. Claim 1 is the only independent claim on appeal and is reproduced below from the Claims Appendix to the Appeal Brief: 1. A water dispersible, self-crosslinkable isocyanate terminated polyurethane prepolymer composition reacted from a mixture comprising: a) an organic polyisocyanate component; b) an isocyanate reactive oil modified polyol component having olefinic unsaturation; c) an isocyanate reactive polymeric polyol component containing pendant anionic functional groups; and d) a reactive diluent component having a boiling point of no less than 150°C containing at least two ethylenically unsaturated double bonds per molecule wherein said isocyanate reactive oil modified polyol component having olefinic unsaturation of the prepolymer and said reactive diluent component containing at least two ethylenically unsaturated double bonds per molecule are retained in such condition in said water dispersible polyurethane prepolymer that the reactive diluent component is capable of being incorporated into the urethane polymer film network during a subsequent air oxidation stage free radical process. App. Br. 12, Claims App’x. 1 Appellant identifies the real party in interest as Lubrizol Advanced Materials, Inc. Appeal Brief filed March 7, 2012 (“App. Br.”) at 2. Appeal 2012-010630 Application 11/259,451 3 The Examiner maintains the following rejections in the Examiner’s Answer mailed April 24, 2012 (“Ans.”): 1. Claims 1, 5-7, 9, 13-14, 22-27, and 32 under 35 U.S.C. §103(a) over Ingrisch;2 2. Claims 2-3 and 28-31 under 35 U.S.C. §103(a) over Ingrisch and Overbeek;3 3. Claim 4 under 35 U.S.C. §103(a) over Ingrisch and Blum;4 4. Claim 8 under 35 U.S.C. §103(a) over Ingrisch and Williams;5 5. Claims 10-12 and 15 under 35 U.S.C. §103(a) over Ingrisch and Housel;6 6. Claims 16-17 under 35 U.S.C. § 103(a) over Ingrisch and Bederke;7 7. Claims 18-19 under 35 U.S.C. §103(a) over Ingrisch and Lubnin;8 8. Claims 20-21 under 35 U.S.C. §103(a) over Ingrisch and Noll.9 Although Appellant states that the rejection of all pending claims 1-32 is being appealed, App. Br. 2, Appellant also states that “Applicant is only appealing the use of Ingrisch . . . as the primary reference against all claims and is neither objecting to the seven secondary references nor the appropriateness of combining Ingrisch et al. with each of the secondary references.” Id. at 4. We render our decision accordingly. 37 C.F.R. § 41.37(c)(1)(vii). 2 US 6,462,127 B1, issued to Ingrish et al. on October 8, 2002. 3 US 6,730,733 B2, issued to Overbeek et al. on May 4, 2004. 4 US 6,586,523 B1, issued to Blum et al. on July 1, 2003. 5 US 4,277,380, issued to Williams et al. on July 7, 1981. 6 US 5,880,250, issued to Housel et al. on March 9, 1999. 7 US 5,430,107, issued to Bederke et al. on July 4, 1995. 8 US 2003/0195293 A1, published in the name of Lubnin et al. on October 16, 2003. 9 US 3,905,929, issued to Noll on September 16, 1975. Appeal 2012-010630 Application 11/259,451 4 ANALYSIS After review of the respective positions provided by Appellant and the Examiner, we sustain the appealed prior art rejections. We add the following. Appellant argues that Ingrisch teaches away from (i) urethane polymers that do not include a hybridized polyacrylate or polystyrene copolymer; ii) using 100% polyethylene glycol dimethacrylate; and (iii) leaving the reactive solvent and/or reactive diluent in a form where it still retains its unsaturation. App. Br. 6-7. The Examiner responds that Ingrisch “discloses a self-crosslinking oxidatively drying polyurethane polymer dispersion . . . comprising monomers with one or more double bonds and a reactive diluent with one or more double bonds inert to polyisocyanates,” and therefore is not taken as teaching away. Ans. 13. “We will not read into a reference a teaching away . . . where no such language exists.” DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1364 (Fed. Cir. 2006). A reference may be said to teach away if a person of ordinary skill, upon reading the reference, would be discouraged from following the path that was taken by the applicant. In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). As for (i), the present claim 1 does not exclude hybridized polyacrylate or polystyrene copolymer, particularly in view of the transitional language ‘comprising’ of claim 1. Genentech, Inc. v. Chiron Corp., 112 F.3d 495, 501 (Fed. Cir. 1997). As for (ii), claim 1 does not specify a percentage of reactive diluent. As for (iii), Appellant presents insufficient proof that that the components disclosed in Ingrisch would not produce a composition having the properties of the claimed composition. Accordingly, Appellant has not adequately explained why Ingrisch teaches away from the prepolymer composition of claim 1. Appellant argues in (A), App. Br. 7, that “the design of the polymer composition” has not been given adequate weight by the Examiner, particularly in Appeal 2012-010630 Application 11/259,451 5 light of the composition’s other features such as being “safer to store and have stored in warehouses or merchant stores.” Id. at 9. The Examiner responds that “the features upon which applicant relies (i.e. application as a paint) are not recited in the rejected claims(s).” Ans. 14. The subject matter of claim 1 is directed to a water dispersible, self-crosslinkable isocyanate terminated polyurethane prepolymer composition. Arguments must be commensurate in scope with the actual claim language. In re Self, 671 F.2d 1344, 1348 (CCPA 1982). Appellant’s claims are broad enough to read on the composition suggested by Ingrisch. Appellant argues in (B), App. Br. 8, that Appellant “does not understand why the Examiner alleges that the reactive diluents of Applicant’s claims perform the same function or yield nothing beyond what would be expected from such arrangement . . . .” Id. The Examiner responds that it is the Examiner’s position the mechanical properties of Ingrish provide for enhanced film properties, Ans. 14, and as the reactive diluent taught by Ingrish is inert towards polyisocyanates, the composition would not be expected to react until after placement of the coating composition on a surface. Id. at 15. Appellant does not respond to this position. Moreover, “[f]rom the standpoint of patent law, a compound and all of its properties are inseparable; they are one and the same thing.” In re Papesch, 315 F.2d 381, 391 (CCPA 1963). Appellant argues in (C), App. Br. 9, that the Examiner “has not provided the argument why one, skilled in the art, would select polyethylene glycol dimethacrylate as the reactive diluent or solvent when Ingrisch et al. teaches (column 10, line[s] 49-59) that he prefers monofunctional reactive diluents such as styrene, methyl methacrylate, and n-butyl acrylate.” Id. at 10. However, Ingrisch specifically discloses polyethylene glycol dimethacrylate as a reactive diluent. Ingrisch, col. 9, ll. 21-22. A reference is available for all that it teaches to a person Appeal 2012-010630 Application 11/259,451 6 of ordinary skill in the art. Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (“the fact that a specific [embodiment] is taught to be preferred is not controlling, since all disclosures of the prior art, including unpreferred embodiments, must be considered”) (quoting In re Lamberti, 545 F.2d 747, 750 (CCPA 1976)). A person of ordinary skill in the art would have recognized the suitability of utilizing polyethylene glycol dimethacrylate as a reactive diluent based on the disclosure of Ingrisch. Accordingly, we sustain the Examiner’s decision rejecting claims 1-32 under 35 U.S.C. §103(a) for the reasons stated above and those presented by the Examiner. ORDER The rejection of claims 1-32 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. AFFIRMED cam Copy with citationCopy as parenthetical citation