Ex Parte Richter et al

Board of Patent Appeals and Interferences

Mar 23, 2011

11333575 (B.P.A.I. Mar. 23, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
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.
11/333,575 01/17/2006 Frank Richter PO8614/BMS041115 4302
23416 7590 03/23/2011
CONNOLLY BOVE LODGE & HUTZ, LLP
P O BOX 2207
WILMINGTON, DE 19899
EXAMINER
SERGENT, RABON A
ART UNIT PAPER NUMBER
1765
MAIL DATE DELIVERY MODE
03/23/2011 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
________________

Ex parte FRANK RICHTER, HANS-JOSEF LAAS,
REINHARD HALPAAP, and ANDREAS HECKING
________________

Appeal 2010-003156
Application 11/333,575
Technology Center 1700
________________

Before BRADLEY R. GARRIS, CHUNG K. PAK, and
BEVERLY A. FRANKLIN, Administrative Patent Judges.

GARRIS, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the "MAIL DATE"
(paper delivery mode) or the "NOTIFICATION DATE" (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

Appeal 2010-003156
Application 11/333,575

2
Appellants appeal under 35 U.S.C. § 134 from the Examiner's
rejection of claims 1-11 under 35 U.S.C. § 103(a) as unpatentable over Laas
(US 2002/0028930 A1 published Mar. 7, 2002) in view of van Leeuwen
(US 3,496,234 issued Feb. 17, 1970). We have jurisdiction under 35 U.S.C.
§ 6.
We REVERSE.

Appellants claim a process for preparing polyisocyanates containing
uretdione groups in which polyisocyanates are oligomerized in the presence
of a catalyst system comprising phosphines and organic nitriles or mixtures
of organic nitriles with organic carbonates (claim 1). Appellants also claim
polyisocyanate mixtures obtained from such a process (claim 10) and
polyurethane polymers and coatings obtained using these polyisocyanate
mixtures (claim 11).2
Representative claim 1 reads as follows:
1. Process for preparing polyisocyanates containing
uretdione groups, in which polyisocyanates are oligomerized in
the presence of a catalyst system comprising A) phosphines and
B) organic nitriles or mixtures of organic nitriles and organic
carbonates.
The Examiner finds that Laas' process for preparing polyisocyanates
containing uretdione groups includes the use of certain solvents but not
nitrile solvents as required by claim 1 (Ans. 3-4). The Examiner also finds

2 In the record of this appeal, the Examiner does not separately address
product claims 10 and 11. Therefore, the Examiner implicitly relies solely
on the rejection of process claim 1 as the basis for rejecting these product
claims.
Appeal 2010-003156
Application 11/333,575

3
that van Leeuwen discloses a phosphine reaction system which uses
acetonitrile solvent (id.). Based on these findings, the Examiner concludes
that, "since one would have reasonably expected [van Leeuwen's] nitrile
solvents to be suitable solvents for the system of [Laas], . . . it would have
been obvious to employ such a solvent within the process of Laas" (id.).
Appellants correctly point out that "Laas is directed to a process for
preparing uretdione polyisocyanates, while van Leeuwen is directed to a
process for preparing quaternary phosphonium compounds from trialkyl or
triaryl phosphines" (Br. para. bridging 3-4). Appellants argue that
[t]he skilled artisan would not simply conclude based on the
presence of 'phosphines' in both processes (as a catalyst in one
and as a reactant in the other) that just because a particular
solvent is amenable for use in preparing quaternary
phosphonium compounds it would also necessarily be amenable
for use in preparing uretdione polyisocyanates.
(Id.).
Appellants' argument is persuasive.
The Examiner responds to this argument as follows:
[T]he prior art is sufficient to establish that there was a
reasonable expectation that solvents within van Leeuwen that
are inert to isocyanate groups would function as solvents within
Laas []. As aforementioned, the sole criteria for solvent
suitability disclosed by Laas . . . is inertness to isocyanate
groups, and one of ordinary skill in the art would have been
able to readily determine if any of the solvents of van Leeuwen
were therefore unsuitable, since inertness with respect to
isocyanate groups was well understood in the art at the time of
invention.
[Ans. para. bridging 4-5]
Appeal 2010-003156
Application 11/333,575

4
The deficiency of the Examiner's above rationale is the unsupported
assumption that an artisan, for no apparent reason, would have selected the
nitrile solvents of van Leeuwen for use in the process of Laas and then
would have verified whether the nitrile solvents were suitable for this use by
determining if they were inert to isocyanate groups as required by Laas (see
para. [0017]). This assumption begs the dispositive issue raised by the
Examiner's obviousness conclusion, namely, whether an artisan would have
had an apparent reason (i.e., based on a reasonable expectation of success) to
select van Leeuwen's nitrile solvents for use in Laas. See KSR Int’l. Co. v.
Teleflex Inc., 550 U.S. 398, 417-18 (2007) (the obviousness inquiry requires
assessing the prior art "in order to determine whether there was an apparent
reason to combine the known elements in the fashion claimed"). On this
record, the Examiner has not established an apparent reason (i.e., based on a
reasonable expectation of success) for using the nitrile solvents of van
Leeuwen in the process of Laas.
Under these circumstances, we cannot sustain the § 103 rejection of
all appealed claims as unpatentable over Laas in view of van Leeuwen.

The decision of the Examiner is reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1).

REVERSED
bar

Appeal 2010-003156
Application 11/333,575

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WILMINGTON, DE 19899