Ex Parte Peerlings et al

Patent Trial and Appeal Board

Jan 29, 2013

12358356 (P.T.A.B. Jan. 29, 2013)

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.
12/358,356 01/23/2009 Henricus Peerlings 15778*187 (BMS 08 1 009) 2371
23416 7590 01/30/2013
NOVAK DRUCE CONNOLLY BOVE & QUIGG LLP
P O BOX 2207
WILMINGTON, DE 19899-2207
EXAMINER
SERGENT, RABON A
ART UNIT PAPER NUMBER
1765
MAIL DATE DELIVERY MODE
01/30/2013 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 HENRICUS PEERLINGS,
FAISAL SHAFIQ, and MARKUS BROICH
____________________

Appeal 2012-000441
Application 12/358,356
Technology Center 1700
____________________

Before FRED E. McKELVEY, TERRY J. OWENS, and GEORGE C. BEST,
Administrative Patent Judges.

McKELVEY, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2012-000441
Application 12/358,356

Statement of the case
Bayer MaterialScience AG (“applicant”), the real party in interest (Brief, 1
page 2), seeks review under 35 U.S.C. § 134(a) of a final rejection dated 21 July 2
2010. 3
The application was filed in the USPTO on 23 January 2009. 4
The application on appeal claims priority of German Patent Application 5
102008006003.8 filed 25 January 2008. 6
The application has been published as U.S. Patent Application Publication 7
2009/0189314 A1. 8
In support of prior art rejections, the Examiner relies on the following 9
evidence. 10
Bugmann U.S. Patent 3,730,936 1 May 1973
Frisch et al.
“Frisch”
U.S. Patent 4,741,961 3 May 1988
Peerlings et al.
“Peerlings”
U.S. Patent Application
Publication
2006/0142531 A1

29 June 2006
Sonnenschein et al.
“Sonnenschein”
International Published
Application
WO 02/50151 A1

27 June 2002
Farah et al.
“Farah”
International Published
Application
WO 2008/057101 A1
15 May 2008
PCT filed
17 Nov. 20061

Applicant does not contest the prior art status of the evidence relied upon by 11
the Examiner. 12
We have jurisdiction under 35 U.S.C. § 134(a). 13

1 Farah is prior art under 35 U.S.C. § 102(e). Farah is equivalent to U.S. Patent
Application Publication 2009/0104449 A1 published 23 April 2009, based on
application 12/085,612 with a “PCT Filed” date of 17 November 2006.
Appeal 2012-000441
Application 12/358,356

3
The invention 1
The inventors apparently set out to find thermoplastic polyurethanes having 2
(1) a haze of less that 10% as measured by ASTM D-1003 and (2) “good technical 3
processability”. Specification, ¶ 0007. 4
The desired haze and processability is said to be achieved through the use of 5
a specific combination of isocyanates, chain extenders, and polyols used in 6
specified amounts and ratios. Specification, ¶ 0008. 7
Claims on appeal 8
Claims 1-13 are on appeal. Brief, page 2; Answer, page 3. 9
In presenting the appeal, applicant does not single out any claim for separate 10
consideration of patentability. Accordingly, we elect to decide the appeal on the 11
basis of independent Claim 1. 37 CFR § 41.37(c)(1)(vii) (2010). 12
Claim 1 13
Claim 1, which we reproduce from page A-1 of the Claim Appendix of the 14
Brief, reads [bracketed material and some indentation added; principal limitations 15
in issue in italics]: 16
A light-stable, thermoplastic polyurethane having an 17
ASTM D-1003 haze value of less than 10%, the polyurethane 18
prepared by a process comprising[] reacting: 19
(a) a diisocyanate component comprising 1,6-hexamethylene 20
diisocyante [HDI]; 21
(b) a chain extension component consisting of 22
(b1) 1,4-di(β-hydroxyethyl) hydroquinone [HQEE] and 23
(b2) at least one chain extender selected from the group 24
consisting of diols having a 2 or 3 carbon atom chain length between 25
the two OH groups, 26
Appeal 2012-000441
Application 12/358,356

4
in a molar ratio of chain extender (b1) to chain extender (b2) of 1
10:1 to 1:4; and 2
(c) at least one polyol component having a number average 3
molecular weight of 450 to 10000 g/mole, and an average number of 4
Zerewitinoff-active hydrogen atoms of at least 1.8 to at most 3.0; 5
wherein the ratio of isocyanate groups in component (a) to 6
isocyanate-reactive groups in components (b) and (c) is 0.9:1 to 1.1:1. 7
Examiner’s Rejection 8
In the Answer (page 4), the Examiner maintains a rejection of Claims 1-13 9
as being unpatentable under § 103(a) based on: 10
(1) Peerlings; 11
(2) WO 2008/057101 A1 (Farah); 12
(3) WO 02/50151 A1 (Sonnenschein); 13
(4) Bugmann; and 14
(5) Frisch. 15
Analysis 16
Scope and content of Peerlings 17
Following a suggestion made in Ex parte Braeken, 54 USPQ2d 1110, 18
1112-13 (BPAI 1999), we find that Peerlings generically describes the following 19
limitations of Claim 1: 20
A light-stable [¶ 0002 “light-resistant”], thermoplastic 21
polyurethane [¶ 0002] having an ASTM D-1003 haze value of less 22
than 10% [not described], the polyurethane prepared by a process 23
comprising reacting [¶ 0012 “reaction product”]: 24
(a) a diisocyanate component comprising 1,6-hexamethylene 25
diisocyante [¶ 0014 100 mole % HDI]; 26
Appeal 2012-000441
Application 12/358,356

5
(b) a chain extension component consisting of 1
(b1) 1,4-di(β-hydroxyethyl) hydroquinone [¶ 0020, 2
lines 7-8] and 3
(b2) at least one chain extender selected from the group 4
consisting of diols having [two OH groups and] a 2 or 3 carbon atom 5
chain length between the two OH groups [¶¶ 0022 and 0039 “aliphatic 6
diols which contain 2 to 14 carbon atoms”, including ethanediol, 7
1,2-propanediol, and 1,3-propanediol] 8
in a molar ratio of chain extender (b1) to chain extender (b2) of 9
10:1 to 1:4 [¶¶ 0020, 0022 and 0023: 75-100 mole % (b1) and 0-25% 10
mole % (b2)]; and 11
(c) at least one polyol component having a number average 12
molecular weight of 450 to 10,000 g/mole [¶ 0026; ¶ 0042 (polyether 13
diols preferably having an average Mn of 450 to 6000); ¶ 0043 14
(polyester diols having an average Mn of 450 to 10,000)], and an 15
average number of Zerewitinoff-active hydrogen atoms of at least 1.8 16
to at most 3.0 [¶ 0026 “at least 1.8 to at most 3.0 Zerewitinoff-active 17
hydrogen atoms”]; 18
wherein the ratio of isocyanate groups in component (a) to 19
isocyanate-reactive groups in components (b) and (c) is 0.9:1 to 1.1:1 20
[¶ 0046]. 21
Applicant’s contentions on appeal 22
In support of the appeal, applicant makes three points (Brief, page 4): 23
(Point 1) the combination of prior art references relied upon by 24
the Examiner “fails to teach or suggest each and every element of the 25
claimed invention” (see also Reply Brief, pages 2-3); 26
Appeal 2012-000441
Application 12/358,356

6
(Point 2) the prior art would not “motivate” a person having 1
ordinary skill in the art to “select” a chain extension agent consisting 2
of (b1) and (b2) (see also Reply Brief, pages 3-4); and 3
(Point 3) one skilled in the art would have had no reasonable 4
expectation of successfully obtaining a low-haze thermoplastic 5
polyurethane (see also Reply Brief, page 4-5). 6
Level of skill in the art 7
The Examiner cited evidence to establish, at least in part, the level of 8
ordinary skill in the art. 9
Bugmann 10
Bugmann describes non-porous polyurethanes useful for making injection 11
molded and extruded articles. Bugmann, Abstract. 12
An object of the Bugmann invention was to make injection molded articles 13
which are “transparent” and have “improved physical properties.” Col. 1:55-59. 14
The polyurethanes are made by reacting (1) a diisocyanate with (2) a glycol 15
component and (3) a chain-lengthening agent. Col. 1:68 to col. 2:1. 16
The diisocyanate can be aromatic or aliphatic. Col. 2:65-57. HDI is said to 17
be a suitable aliphatic diisocyante. Id. at 66-67. 18
The glycol component is a reaction product of a lactone and a glycol to 19
make a polycaprolactone polymer. Col. 2:35. The average molecular weight of 20
the glycol component is said to be between 1000 and 3000. Col. 2:6-11. 21
The chain-lengthening agent may be (1) the same as the glycol used to make 22
the polycaplactone polymers (e.g., 1,4-butanediol) or (2) hydroquinone-23
diglycolether (HQEE). Col. 2:56-64. 24
Frisch 25
Frisch relates to a polyurethane adhesive coating or film. Col. 1:8-9. 26
Appeal 2012-000441
Application 12/358,356

7
The polyurethanes are described as being made from aliphatic 1
polyisocyanates, moisture-insensitive polyols and an aromatic chain-lengthening 2
agent. Col. 1:14-16. 3
HDI is one suitable aliphatic diisocyanate. Col. 2:9. 4
Moisture-insensitive polyols include polyether polyols having molecular 5
weights between about 300 and about 3000. Col. 1:68 to col. 2:4. 6
HQEE is a suitable aromatic chain-lengthening agent. Col. 2:16. 7
In comparing its invention to what was presumably in the prior art, Frisch 8
states the following (col. 4:7-12): 9
For the sake of comparison [of a product made in accordance 10
with Example 1], if a polyurethane is fabricated with the same 11
components except that the chain-lengthening agent is replaced with 12
1,4-butanediol, the adhesive coating or film [1] becomes turbid [and 13
therefore presumably not transparent] and [2] its adhesion to the 14
support is decreased after 2 hr immersion in boiling water. 15
Sonnenschein 16
Sonnenschein sought to overcome difficulties associated with “undesirable 17
opacity and low tensile strength” in thermoplastic polyurethanes. Page 1:9-10. 18
Relevant to the issues before us, Sonnenschein describes polyurethanes 19
made from (Sonnenschein, page 1:16-22) 20
(a) a diisocyanate, 21
(b) ethylene glycol, diethylene glycol (not within the scope of 22
Claim 1) or 1,3-propanediol, 23
(c) a diol other than the one selected as component (b), having a 24
molecular weight of less than 400 Daltons; and 25
Appeal 2012-000441
Application 12/358,356

8
(d) an ethylene oxide polyol or an ethylene oxide-capped 1
propylene oxide polyol. 2
Diisocyanate (a) can be HDI. Sonnenschein, page 3:4. 3
Diols (b) and (c) can be a combination of ethylene glycol and HQEE. Id. 4
at 6:6. 5
Polyol (d) can be a polyether polyol. Id. at 4:6-13. 6
Example 11 describes a polyurethane made with HQEE, but does not 7
describe any transparency testing of the polyurethane. Id. at 6:4-10. Applicant 8
tested the polyurethane of Example 11 and according to applicant it has a haze 9
value of 67%. Specification, page 10 (Example 20). 10
Sonnenschein seeks optical transmission rates of “most preferably” at least 11
80%. Sonnenschein, page 4:15-16. 12
Optical transmission measurements described by Sonnenschein are based on 13
ASTM E179 and E805. Id. at 4:16. Insofar as we are aware, the record does not 14
reveal the differences between the ASTM tests described by Sonneschein and 15
ASTM D-1003 described by applicant. 16
Farah 17
Farah is concerned with “low haze thermoplastic polyurethanes.” Farah, 18
page 1:4-5. The Farah polyurethanes are made with 1,4-butanediol. Id. at 8:16. 19
The 1,4-butanediol is incorporated in amounts sufficient to provide good 20
mechanical properties, but only up to level where “phase segregation tends to 21
occur and/or light transmission properties are [adversely] affected.” Id. at 8:19-25. 22
The Farah polyurethanes also include a second chain-extender “in amounts 23
sufficient to provide, in conjunction with the other extenders, significant 24
improvement in clarity.” Id. at 9:5-6 (emphasis added). A third chain-extender is 25
Appeal 2012-000441
Application 12/358,356

9
also used and would include HQEE (page 2:12) which falls within the scope of the 1
formula 2
HO─R─O─(ring)─O─R’─OH 3
set out on page 9:24. 4
Analysis of applicant’s arguments on appeal 5
Point (1) 6
Applicant argues that the prior art does not describe all the “elements” of the 7
claimed polyurethane. As set out above in our Braeken analysis of Claim 1 each 8
ingredient of the claimed composition is described by Peerlings. The fact that all 9
the ingredients are shown, however, does not necessarily render a claimed 10
combination of those ingredients per se obvious. Claim 1 requires a combination 11
of ingredients that create a thermoplastic polyurethane with a haze value less than 12
10%. On this record, a finding cannot be made that all of the Peerlings 13
compositions inherently have the claimed haze value. 14
Point (2) 15
Applicant’s Point (2) is bottomed on an alleged lack of the prior art to 16
provide a “motivation” to use particular combinations of the ingredients disclosed 17
in Peerlings to achieve the invention of Claim 1. In a post-KSR era, we view 18
applicant’s position to be that the Examiner has not provided sufficient “articulated 19
reasoning with some rational underpinning to support the [Examiner’s] legal 20
conclusion of obviousness.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 21
(2007). 22
Peerlings is related to moldings used, e.g., for automotive parts. Brief, 23
page 6; Peerlings, ¶ 0006. Low haze (transparency) generally is not a concern with 24
automotive parts. Peerlings describes “low fogging polyurethanes.” Applicant 25
maintains that the property of “low fogging” is not the same as having a haze value 26
Appeal 2012-000441
Application 12/358,356

10
of less than 10% under testing via ASTM D-1003. We agree. Given its context, it 1
should be no surprise that Peerlings does not discuss the haze values of its 2
polyurethane compositions. 3
The level of skill prior art cited by the Examiner establishes, and applicant 4
cannot deny, that those having ordinary skill in the art often seek a polyurethane 5
elastomer which has high light transmission (or in applicant’s words, “low haze”). 6
Does the level of skill in the low haze art cited by the Examiner suggest the 7
chain-extender combination (b) of applicant’s Claim 1? The combination is 8
claimed as “consisting of” (b1) and (b2). Thus, the (b) combination is limited to a 9
mixture of (b1) and (b2) and consistent with the definition of “consisting of” other 10
elements cannot be present in combination (b). See Ex parte Davis, 80 USPQ 448, 11
450 (Bd. App. 1948) (defining “consisting of”). 12
In particular, applicant argues that the level of skill established by the cited 13
prior art does not render obvious the “selection” of (b2) polyols to the exclusion of 14
1,4-butanediol (extensively described in the prior art), particularly since 15
“transparency” is not mentioned in Peerlings. We agree. 16
Bugmann states that “transparent” polyurethanes can be obtained using 17
1,4-butanediol or HQEE. Col. 1:58 and col. 2:45-62. While physical property data 18
is reported by Bugmann (Table 1, col. 4; Table 2, col. 6), none of that data includes 19
a transparency measurement. Applicant reports haze values based on experimental 20
data for polyurethanes made with 1,4-butanediol. See Specification, page 10 21
(Example 2 haze value 30). Applicant also reports haze data when HQEE is used 22
alone. See id. (Example 8 reporting a haze value of 11—which is slightly higher 23
than applicant’s claimed “less than 10%”). While Example 8 is not part of the 24
cited prior art, assuming it was, there is nothing in the art called to our attention 25
Appeal 2012-000441
Application 12/358,356

11
which would teach how to lower the 11% haze value of applicant’s Example 8 to 1
something “less than 10%.” 2
Frisch indicates that when 1,4-butanediol is substituted for a hydroquinone, 3
an “adhesive coating or film becomes turbid . . . .” Col. 4:7-10. We assume that a 4
“turbid” material is not a “transparent” or “low haze” material. Arguably there is a 5
tension between the transparency discussions of Bugmann and Frisch. However, 6
the Frisch discussion is consistent with, albeit not compelled by, data set out in 7
applicant’s Example 2 (Specification, page 10). 8
Sonnenschein describes transparent polyurethanes made from diols other 9
than 1,4-butanediol. In Example 11 (page 6), Sonnenschein describes an 10
experiment using (1) a combination of ethylene glycol (EG) and HQEE as a chain-11
extender, (2) a polyol and (3) MDI (an aromatic diisocyante which is different 12
from HDI called for by Claim 1). The chain extender falls within the scope of 13
applicant’s Claim 1 element (b). However, the Sonnenschein haze value is said to 14
be 67%. Apart from its Example 11, Sonnenschein otherwise does not explicitly 15
discuss the use of HQEE. 16
Farah describes the use of 1,4-butanediol as one element of a three-element 17
chain-extender combination. Page 8:19 to page 9:27. When 1,4-butanediol is used 18
alone, a haze value (using ASTM D-1003-95) of 36% is reported. Page 13, 19
Comp A. Haze values within applicant’s “less than 10” are reported in 20
Compositions D (9.8%) and E (9.4%) and Example 1 (3.6%). However, the haze 21
values are not based on a polyurethane made with HDI (applicant’s element (a)) 22
and HQEE (applicant’s element (b1)). Rather the reported values were achieved 23
by a polyurethane created by reacting MDI with a combination of 1,4-butanediol 24
with CHDM (1,4-cyclohexane-dimethanol) or a mixture of CHDM and PDO 25
(1,3-propanediol). 26
Appeal 2012-000441
Application 12/358,356

12
Based on the evidence before us, we find that one skilled in the art would 1
not be able to readily predict haze values based on elements and proportions of 2
elements used to make polyurethanes. Too many variables are involved. 3
The comparisons between Examples 12 and 14-16 and Example 17 4
(Specification,. page 10) merit some discussion because they are side-by-side 5
comparisons of the use of HQEE in combination with PDO, EG (ethylene glycol), 6
NPG (neopentyl glycol), and 1,2-PDO (1,2-propanediol)—each of which is within 7
the scope of Claim 1 and are said to result in a polyurethane having a haze value of 8
less than 10%—and BDO (1,4-butanediol—which is not within the scope of 9
Claim 1 but is discussed extensively in the prior art and is said to result in a 10
polyurethane with a haze value of 15%. Given our finding of unpredictability in 11
this art, we are unable to discern a basis for expecting a change from BDO to any 12
of the diols that fall within the scope of claim 1 in combination with HQEE to 13
create a polyurethane with a haze value within the recited range. 14
Point (3) 15
Applicant has argued that the data on page 10 of the Specification rebuts any 16
prima facie case the Examiner may have made. Brief, pages 3-4; Reply Brief, 17
pages 4-5. In this case, at the outset we have considered all the evidence in 18
reaching our decision without engaging in prima facie obviousness followed by 19
rebuttal steps. See In re Piasecki, 745 F.2d 1468, 1472 (Fed. Cir. 1984) (all of the 20
evidence must be considered in resolving obviousness); In re Rinehart, 531 F.2d 21
1048, 1052 (CCPA 1976) (facts established by any rebuttal evidence must be 22
evaluated along with the facts on which any prima facie case is based). 23
The Examiner found that the “rebuttal” evidence on page 10 of the 24
Specification is not commensurate in scope with the breadth of the claims. Unlike 25
many cases which come before this Board, the advance in the art which applicant 26
Appeal 2012-000441
Application 12/358,356

13
claims to have made is set out in Claim 1 itself, viz., a “haze value of less than 1
10%.” When the advance is set out in a claim, a need for evidence commensurate 2
in scope with the breadth of the claim takes on a different connotation. Why? 3
Because when the advance itself is set forth as a limitation in the claim, an 4
applicant’s rebuttal then needs to focus on showing that the prior art does not 5
achieve the advance with the recited combination of elements. Any combination 6
of elements otherwise falling within the scope of Claim 1 that does not achieve a 7
haze value of less than 10% is not within the scope of Claim 1. Thus, applicant 8
here was not under a burden of establishing that all combinations within the scope 9
of Claim 1 achieve low haze—the combinations within the scope of Claim 1 10
necessary have to achieve that value. Had the haze limitation not been present in 11
Claim 1, the Examiner would have had a point and we would have viewed the 12
“rebuttal” evidence differently. 13
Applicant also maintains that the Claim 1 compositions have “good 14
processability.” In reaching our decision, we have not considered processability 15
because (1) it is not recited in Claim 1 and (2) on this record we do not have a good 16
basis for comparing “good” vis-à-vis “poor” processability as set out in Table 1 on 17
page 10 of the Specification. 18
Additional comment 19
We express our appreciation for the thorough manner in which the 20
Examiner’s Answer addresses the issues on appeal. 21
Decision 22
Upon consideration of the appeal, and solely for the reasons given herein, it 23
is 24
ORDERED that the decision of the Examiner rejecting claims 1-13 25
under § 103(a) over the prior art of record is reversed. 26
Appeal 2012-000441
Application 12/358,356

14
FURTHER ORDERED that no time period for taking any 1
subsequent action in connection with this appeal may be extended under 37 CFR 2
§ 1.136(a)(1)(iv). 3
REVERSED 4
5
bar 6