Ex Parte Rische et al

Patent Trial and Appeal Board

Apr 23, 2014

11034112 (P.T.A.B. Apr. 23, 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.
11/034,112 01/12/2005 Thorsten Rische PO8327/LeA36,953 6718
23416 7590 04/23/2014
NOVAK DRUCE CONNOLLY BOVE + QUIGG LLP
P O BOX 2207
WILMINGTON, DE 19899-2207
EXAMINER
GRESO, AARON J
ART UNIT PAPER NUMBER
1726
MAIL DATE DELIVERY MODE
04/23/2014 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 THORSTEN RISCHE,
THOMAS FELLER,
and JURGEN MEIXNER
____________

Appeal 2012-011041
Application 11/034,112
Technology Center 1700
____________

Before EDWARD C. KIMLIN, BRADLEY R. GARRIS, and
TERRY J. OWENS, Administrative Patent Judges.

KIMLIN, Administrative Patent Judge.

DECISION ON APPEAL

This is an appeal from the final rejection of claims 1-3 and 5-19. We
have jurisdiction under 35 U.S.C. § 6(b). A copy of illustrative Claim 1 is
appended to this decision.
The Examiner relies upon the following references in the rejection of
the appealed claims:
Ishiyama U.S. 5,700,867 Dec. 23, 1997
Blum U.S. 5,922,806 Jul. 13, 1999

Appeal 2012-011041
Application 11/034,112

2
Appellants' claimed invention is directed to size compositions
comprising one or more polyurethane-polyurea dispersions (PU dispersions).
The PU dispersions are prepared by a process that comprises, inter alia,
preparing an NCO-containing polyurethane prepolymer and reacting the free
NCO groups of the prepolymer with a hydrazine chain-extender. The total
amount of the chain extender is such that an arithmetic degree of chain
extension of 101% to 150% is attained. Appellants' Specification explains
that the language "degree of chain extension" represents "the equivalent ratio
of NCO-reactive groups of the compounds used for chain extension" to free
NCO groups of the prepolymer (Spec. 17:11-17).
Appealed claims 1-3, 5, 6, 10-12, and 16 stand rejected under
35 U.S.C. § 102(b) as being anticipated by Ishiyama. Claim 1-3 and 5-19
stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Blum in
view of Ishiyama.1
Appellants do not present arguments for any particular claim on
appeal, nor offer a separate, substantive argument against the § 103
rejection.
We have thoroughly reviewed the respective positions advanced by
Appellants and the Examiner. In so doing, we agree with the Examiner that
the claimed subject matter would have been obvious to one of ordinary skill
in the art within the meaning of § 103 in view of the applied prior art. We
agree with Appellants, however, that the claimed subject matter is not
described by Ishiyama within the meaning of § 102.

1 The Examiner repeats the § 103 rejection of claims 7-9, 13-15, and 17-19 in
a separate rejection.
Appeal 2012-011041
Application 11/034,112

3
We consider first the § 102 rejection over Ishiyama. We agree with
Appellants that the claimed degree of chain extension is defined as the
equivalent ratio of NCO-reactive groups, not moles of the hydrazine
compound comprising two reactive groups, to the free NCO groups of the
NCO polymer. As explained by Appellants, the compound hydrazine has
two NH2 reactive groups and, therefore, the equivalent ratio of the hydrazine
group disclosed by Ishiyama, 1.04 to about 1.7/about 1, corresponds to an
arithmetic degree of chain extension of about 208% to 340%, which ratio is
considerably greater than the claimed range. In other words, the amounts of
polyhydrazine compound disclosed by Ishiyama must be doubled to obtain
the number of reactive groups made available for reaction with the free NCO
groups. Consequently, Ishiyama does not describe the claimed degree of
chain extension as the term is defined in the present Specification.
The Examiner's § 103 rejection of all the appealed claims is another
matter. We concur with the Examiner that it would have been a matter of
obviousness for one of ordinary skill in the art to modify the degree of chain
extension disclosed by Ishiyama in order to effect a change in the properties
of the resultant PU dispersion. Appellants attach no criticality to the degree
of chain extension which may be between 40%-200%, and the disclosed
preference of between 101%-150% would seem to allay any suggestion of
criticality. In addition, we note that Appellants present no argument in
rebuttal to the Examiner's legal conclusion of the obviousness of modifying
the polyurethane dispersion of Blum, which is used as a sizing agent, by
reacting the free NCO groups with hydrazine groups to effect a chain
extension.
Appeal 2012-011041
Application 11/034,112

4
As a final point, we note that Appellants base no argument upon
objective evidence of nonobviousness, such as unexpected results.
In conclusion, based on the foregoing, we will sustain the Examiner's
§ 103 rejection of the appealed claims but not the § 102 rejection.
Accordingly, the Examiner decision rejecting the appealed claims is
affirmed.
The decision of the Examiner 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)(1)(iv).
AFFIRMED

cam
Appeal 2012-011041
Application 11/034,112

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CLAIM APPENDIX

Appeal 2012-011041
Application 11/034,112

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