Ex Parte Rosthauser

Board of Patent Appeals and Interferences

Dec 3, 2008

10870126 (B.P.A.I. Dec. 3, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte JAMES W. ROSTHAUSER
____________________

Appeal 2009-0201
Application 10/870,126
U.S. Patent Publication 2005/0282989
Technology Center 1700
____________________

Decided: December 3, 2008
____________________

Before: FRED E. McKELVEY, Senior Administrative Patent Judge,
and RICHARD E. SCHAFER and SALLY GARDNER LANE,
Administrative Patent Judges.

McKELVEY, Senior Administrative Patent Judge.

DECISION ON APPEAL

A. Statement of the case 1
Bayer MaterialScience LLC ("Bayer"), the real party in interest, seeks 2
review under 35 U.S.C. § 134(a) of a final rejection (8 August 2006) of: 3
(1) claims 8-15 as being unpatentable under 35 U.S.C. § 112 4
(second paragraph) as being indefinite and 5

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(2) claims 7-17 as being unpatentable under 35 U.S.C. § 103(a) 1
over the prior art. 2
The prior art is: 3
(1) Barron, U.S. Patent 3,821,130; 4
(2) Berthevas, U.S. Patent 4,757,096; 5
(3) Kerman, U.S. Patent 4,800,984; 6
(4) Nafzinger, U.S. Patent 4,904,704; 7
(5) Műller (Muller), U.S. Patent 5,342,881; 8
(6) Simpson, U.S. patent 5,733,945; 9
(7) Londrigan, U.S. Patent 5,789,548; 10
(8) Slack, U.S. Patent 5,837,794; 11
(9) Kazmierski I, U.S. Patent 6,372,810 B2; and 12
(10) Kazmierski II, U.S.6,790,872 B2. 13
All the prior art, except Kazmierski II, is prior art under 35 U.S.C. 14
§ 102(b). 15
Kazmierski II is prior art under 35 U.S.C. § 102(e). Bayer does not 16
argue on appeal that Kazmierski II is not prior art vis-à-vis the claimed 17
invention. 18
We have jurisdiction under 35 U.S.C. § 134(a). 19
B. Findings of fact 20
The following findings of fact are believed to be supported by a 21
preponderance of the evidence. References to the specification are to U.S. 22
Patent Publication 2005/0282989 A1. To the extent that a finding of fact is a 23
conclusion of law, it may be treated as such. Additional findings as 24
necessary may appear in the Discussion portion of the opinion. 25

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The invention 1
Bayer's invention relates to prepolymers of toluene diisocyanate 2
and what Bayer characterizes as an improved process for the production of 3
a polyurethane backing or frothed foams on a substrate. Specification, 4
¶ 0001. 5
The polyurethane backing or frothed foam comprises the reaction 6
product of a polyisocyanate and an isocyanate-reactive component in the 7
presence of a catalyst. Id. 8
The polyisocyanate comprises a prepolymer of toluene diisocyanate 9
which is modified with an epoxide. Id. 10
Various processes for making polyurethane backed carpets and 11
backed substrates are known and described in the art. Specification, ¶ 0006. 12
Suitable isocyanates are said to include di- and poly-methylene 13
poly(phenyl isocyanates), toluene diisocyanates, other aromatic isocyanates, 14
and prepolymers thereof. Id. 15
The process steps vary depending on whether carpet or 16
another substrate is used. Id. 17
Prepolymers of the Bayer invention are said to have improved 18
processing characteristics including improved reactivity of the prepolymer 19
with isocyanate-reactive components, elimination of voids or bubbles in 20
froth foam applied layers and composite structures containing them, and 21
faster curing characteristics such that productivity rates are increased. 22
Additionally according to Bayer, the faster reaction rates may reduce the 23
amount of TDI emissions evolved during the processing of the prepolymers. 24
Specification, ¶ 0008. 25

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More specifically, the Bayer invention relates to toluene diisocyanate 1
prepolymers, and to a process for the preparation of the toluene diisocyanate 2
prepolymers. Specification, ¶ 0009. 3
The toluene diisocyanate prepolymer compositions of the present 4
invention generally comprise: 5
(A) from 99.99 to 95% by weight, based on 100% of the 6
total weight of (A) and (B), of a prepolymer of toluene 7
diisocyanate made from 8
(1) the 2,4- and 2,6-isomers of toluene 9
diisocyanate and 10
(2) an isocyanate-reactive component, such as a 11
polyether polyol; and 12
(B) from 0.01% to 5.0% by weight, based on 100% of the 13
total weight of (A) and (B), of at least one epoxide. 14
Specification, ¶¶ 0010 through 0016. 15
The important feature is the presence of the epoxide. 16
The Bayer invention also relates to a frothed foam and to a process 17
for preparing a frothed foam. Specification, ¶ 0024. 18
Another aspect of the Bayer invention is directed to a process for the 19
production of a polyurethane backing or a frothed foam backing on a 20
substrate. Specification, ¶ 0039. 21
In the embodiments of forming a polyurethane backing, a frothed 22
foam backing or a blown, cellular urethane foam on a substrate, the substrate 23
is typically fed on a conveyor (which is preferably endless) along a conveyor 24
path from a forward end to a rearward end. Specification, ¶ 0054. 25

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A froth-generator mixer dispenses the reactive mixture onto the 1
substrate. Id. 2
Preferably this reactive mixture is spread into a generally uniform 3
layer on the upper surface. Spreading of the reactive mixture can be by 4
passing the upper surface of the reactive mixture under, for example, a 5
doctor bar, roller or any stationary rod to generate the generally uniform 6
layer on the surface. Alternately, an air knife can be used to spread the 7
reactive mixture into a uniform layer. Optionally, a second conveyor belt, 8
parallel to the first conveyor belt or a roller, feeds a second liner sheet or 9
substrate along the conveyor path so that the second liner sheet is positioned 10
over the layers of foam laminate. As the layers of foam laminate 11
pass along the conveyor path, the reactive mixture of foam forming material 12
is sandwiched between the first and second liners or substrates, and is 13
compressed between the conveyor belts to a selected thickness by means of, 14
for example, a marriage roller. The laminated foam then passes through an 15
oven where it is heated to cure the layer of foam and form the resultant 16
composite structure. Id. 17
Suitable isocyanates for making the prepolymers of the present 18
invention are said to comprise toluene diisocyanates. Specification, ¶ 0055. 19
The toluene diisocyanate typically has an ―NCO (isocyanate) group 20
content from greater than about 48.0% to less than about 48.5%. Id. 21
Suitable toluene diisocyanates of the Bayer invention typically 22
comprise 2,4-toluene diisocyanate, 2,6-toluene diisocyanate and mixtures of 23

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these two isomers. The toluene diisocyanate typically has at least about 60% 1
up to 100% by weight of the 2,4-isomer of toluene diisocyanate, and from 0 2
up to 40% by weight of the 2,6-isomer of toluene diisocyanate. Id. 3
Suitable compounds to be used as isocyanate-reactive compounds 4
which react with the toluene diisocyanate to form the prepolymer include, 5
for example, compounds which typically contain at least about 1.5 6
isocyanate-reactive groups. Specification, ¶ 0058. 7
Examples of suitable compounds to be reacted with TDI to form the 8
prepolymers required by the present invention include compounds such as, 9
polyether polyols and polyester polyols. Preferably the compound is a 10
polyether polyol. Specification, ¶ 0061. 11
Any chemical compound which contains the epoxide (oxirane) 12
functionality is suitable in the preparation of the mixtures of the present 13
invention. Specification, ¶ 0073. 14
Suitable for use are C2―C18 aliphatic epoxides such as ethylene 15
oxide, propylene oxide, 1,2-butene oxide, 2,3-butene oxide 16
(cis and/or trans), isobutylene oxide, 1,2-pentene oxide, 2,3-pentene oxide, 17
cyclopentene oxide, 1,2-hexene oxide, cyclohexene oxide, and the like and 18
mixtures thereof. Specification, ¶ 0076. 19
Also suitable are epoxidized fatty acid triglycerides including 20
epoxidized linseed oil and epoxidized soybean oil, which are said to be 21
preferred. Specification, ¶ 0080. 22
Examples comparing use of prepolymers with and without an epoxide 23
are set out in the specification. ¶¶ 0106 through 0014. 24

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Example 1 describes a prepolymer with an epoxide based on linseed 1
oil. Specification, ¶ 0111. 2
Example 2 describes a prepolymer without an epoxide. Specification, 3
¶ 0112. 4
The specification has the following to say about Examples 3 and 4 5
(¶ 0113): 6
Example 3 and Example 4 7
The prepolymers of Example 1 and 2 were separately combined 8
with a proprietary blend comprising one or more polyols, one or more 9
catalysts, one or more surfactants, and water in an Oakes foamer in 10
which air was injected to prepare the frothed foams used in Examples 11
3 and 4, respectively. In Examples 3 and 4, a composite was formed 12
from each of the resulting frothed foams. The foams were 13
(separately) deposited continuously onto a sound absorbing layer of 14
barium sulfate filled polyurethane elastomer that was moving on an 15
endless conveyer belt. Directly after each of the foams were 16
deposited, a layer of aluminum foil was placed onto the uncured mass 17
and pressed into it by use of a marriage roller. The marriage roller 18
also determined the thickness of the composite layer formed. Each of 19
the fresh composites were then transported through an oven set at 250 20
ºF. that was 120 feet long, at a speed of 50 feet/minute. The resulting 21
froth foam layer in each Example had a density of 1.5 pounds per 22
cubic foot and was ½ inch thick. The foam in Example 4, based on 23
the prepolymer from Example 2, had some large voids and slits 24

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directly below the aluminum foil layer. The foam in Example 3, 1
based on the prepolymer from Example 1, was free of these defects. 2
3
The precise nature of the "proprietary blend" comprising one or more 4
polyols, one or more catalysts, one or more surfactants, and water is not 5
described in the specification. We therefore do not know what polyols, 6
catalysts, and/or surfactants were present in the blend. 7
Bayer has this to say about Examples 5 and 6. Specification, 8
¶ 0114. 9
Example 5 and Example 6 10
The prepolymers of Example 1 and 2 were separately combined 11
with a proprietary blend comprising one or more polyols, one or more 12
catalysts, one or more surfactants, and water in an Oakes foamer in 13
which air was injected to prepare the frothed foams used in Examples 14
5 and 6, respectively. The process used for preparing the composites 15
was as described above in Examples 3 and 4. Each of the fresh 16
composites were then transported through an oven set at 250 ºF that 17
was 120 feet long, at a speed of 75 feet/minute. The resulting froth 18
foam layer in each Example had a density of 1.5 pounds per cubic foot 19
and was ½ inch thick. At this speed, the frothed foam in Example 5, 20
based on the prepolymer from Example 1, remained defect free. The 21
foam in Example 6, based on the prepolymer from Example 2, had 22
defects (i.e. large voids and slits directly below the aluminum foil 23
layer). In fact, the number of defects in Example 6 was larger than the 24

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number of defects in Example 4. Examples 4 and 6 were identical 1
except for the speed at which they passed through the oven. 2
Claims on appeal 3
Claim 7, which we reproduce from the claim appendix of the Appeal 4
Brief, reads: 5
A process for the production of a polyurethane backing or a 6
frothed foam backing on a substrate, comprising: 7
8
(I) mixing 9
10
(i) a prepolymer of toluene diisocyanate which comprises: 11
12
(A) from 95 to 99.99% by weight, based on 100% by 13
weight of the total weight of (A) and (b), of a prepolymer of 14
toluene diisocyanate having an NCO group content of from 15
about 2 to about 40% by weight and which comprises the 16
reaction product of: 17
18
(1) toluene diisocyanate having from about 60 to 19
about 100% by weight of the 2,4-isomer and from about 20
0 to about 40% by weight of the 2,6-isomer, with the %'s 21
by weight of the 2,4-isomer and the s,6-isomer totaling 22
100% by weight of the toluene diisocyanate, 23
24
and 25
26
(2) an isocyanate-reactive component having a 27
functionality of from about 1.5 to about 8 and an OH 28
number of from about 14 to about 1870; 29
30
and 31
32

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(B) from about 0.01 to about 5.0% by weight, based on 1
100% of the total weight of (A) and (B) of an epoxide having 2
an epoxide equivalent weight of from about 44 to about 400; 3
with 4
5
(ii) an isocyanate-reacting blend in the presence of a catalyst to 6
form a reaction mixture; 7
8
(II) mechanically frothing the reaction mixture while introducing air 9
or an inert gas; 10
11
(III) applying the frothed reaction mixture to a substrate; 12
13
and 14
15
(IV) curing the frothed reaction mixture on the substrate to form a 16
laminate. 17
Examiner's Rejections 18
Claims 8-15 are rejected as being unpatentable under 35 U.S.C. § 112, 19
second paragraph, based on indefiniteness. The Examiner concluded that 20
the language "relatively uniform thickness," which appears in claims 8 and 21
9, is too "subjective" to be definite. 22
Claim 7, 9 and 16-17 stand rejected as being unpatentable under 23
35 U.S.C. § 103 over: 24
(1) Barron or (2) Kazmierski I or (3) Kwasniewski II 25
"each in view of" 26
(a) Nafzinger or (b) Muller or (c) Slack. 27
Claims 8 and 10-15 stand rejected under 35 U.S.C. § 103 over the 28
prior art applied against claim 7 29
"further in view of" 30

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(i) Kerman or (ii) Londrigan or (iii) Simpson or (iv) Berthevas. 1
Prior art 2
(1) Barron 3
As Bayer notes in its Appeal Brief (page 9), air frothed polyurethane 4
flexible foams and a process for their preparation is disclosed by Barron, a 5
patent mentioned in Bayer's Specification at ¶ 0098. 6
The significant difference between Barron and the Bayer invention is 7
that Barron does not describe the use the combination of a prepolymer and 8
an epoxide. 9
(2) The Kazmierski patents 10
The Kazmierski, like Barron, describe flexible foams and a process 11
for their preparation. The foams are said to be useful in making carpet 12
underlay. 13
As in the case of Barron, the significant difference between claim 7 14
and the Kazmierski patents is that the Kazmierski patents do not describe 15
the use of a combination of a prepolymer and an epoxide. 16
(3) Nafzinger and Slack 17
These two patents describe, in one fashion or another, the use of an 18
epoxide in polyurethanes. 19
We find it unnecessary to discuss Nafzinger and Slack, because we 20
view the Muller patent as sufficient to dispose of the rejection. In essence, 21
Nafzinger and Slack are at best cumulative to Muller. 22
(4) Muller 23
Muller relates to a process for the standardization and stabilization of 24
organic polyisocyanates, to the polyisocyanates obtained by this process and 25

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to the use of those stable polyisocyanates to produce polyisocyanate addition 1
products. Col. 1:8-12. 2
According to Muller, the nature and amount of impurities in 3
polyisocyanates are determined by the method by which they are produced. 4
The impurities cause fluctuations in the activity of the polyisocyanate and 5
thereby affect the products made with the polyisocyanate. Reproducible and 6
commercial application of impurity-containing polyisocyanates is therefore 7
difficult. Col. 1:13-19. 8
An object of the Muller invention was to provide what is referred to as 9
a technically simple process for the purification of organic polyisocyanates 10
which is safe, not technically demanding and which does not require 11
additives that affect the stability of the polyisocyanate. Col. 1:56-61. 12
Muller's object is said to be accomplished by mixing (a) an organic 13
polyisocyanate with (b) 0.01-10 wt % epoxide represented by a specified 14
formula and (c) 0.01-1 wt % silylated acid and/or 0.01-1 wt % alkylated acid 15
at a temperature of from about 20 º to about 150 ºC. 16
The Muller invention provides polyisocyanates which are useful as 17
materials in the production of polyurethane plastics, including production of 18
polyurethane foams. Col 3:33-39. 19
Starting materials for the process of the Muller invention include any 20
of the known organic polyisocyanates. Col. 3:16-17 and 40-42. 21
Specific examples of suitable polyisocyanates include, inter alia, 22
aromatic diisocyanates such as 2,4- and/or 2,6-diisocyanatotoluene (TDI) 23
[also referred to as toluene diisocyanate]. Col. 3:28-29. 24

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The polyisocyanate can also be used in chemically modified form. 1
Suitable urethanized [which means a material with a urethane group] starting 2
compounds include the reaction products of a polyisocyanate 3
or polyisocyanate mixture with insufficient amounts of polyhydric 4
alcohol (polypropylene glycols of a maximum molecular weight of 700) 5
formed while maintaining an NCO/OH equivalent ratio of 10:1 to 10:3. 6
Col. 4:8-18. The starting compound will have isocyanate groups (―NCO 7
groups) because the equivalents of isocyanate far exceed the ―OH 8
equivalents of the glycols (―OH groups on the glycol react with ―NCO 9
groups to form an urethane group, ―NHCOO― hence Muller's use of the 10
term "urethanized"). 11
Examples of epoxide compounds include ethylene oxide, propylene 12
oxide, and butylene oxide. Col. 5:25-28. 13
Epoxidation products of multiply unsaturated compounds (such as 14
vegetable oils and their conversion products) may also be used as the 15
epoxide component in the Muller invention. Col. 6:11-12 and 24-25. 16
The stabilizer compounds employed in the present invention, in 17
addition to an epoxide, include a silylated acid, such as silylated sulfonic 18
acids, e.g., as trifluoromethanesulfonic acid trimethylsilyl ester. 19
Col. 6:64-66. 20
According to Muller, and based on data set out in the Muller 21
examples, the polyisocyanates containing a combination of an epoxide and a 22
silylated sulfonic acid are said to be stable on storage. The significance of 23
stability is that the isocyanate is more reactive after having been stored. See 24
generally col. 8:54-68. 25

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C. Discussion 1
Examiner’s § 103 rejection of claims 7, 9 and 16-17 2
Claims 7, 9 and 16-17 stand rejected over the prior art. 3
Bayer does not single out claims 9 and 16-17 for separate 4
consideration. 5
Accordingly, we will consider the patentability of claim 7, with claims 6
9 and 16-17 standing or falling with claim 7. 7
Bayer and the Examiner seem to treat the point of novelty of the 8
invention of claim 7 as being the inclusion of an epoxide. We believe Bayer 9
and the Examiner are correct, so we will do likewise. 10
The issue becomes whether one skilled in the art would have found it 11
obvious to use a combination of a prepolymer and an epoxide in the 12
processes of Barron and the Kazmierski processes? 13
Muller reveals that an epoxide can be added to a polyisocyanate and 14
that the combination of an epoxide and a polyisocyanate renders the 15
polyisocyanate more stable. Col. 1:8-12. The result is shown in Table I 16
(cols. 9 and 10): better stability on storage (col. 8:68) which results in 17
increased reactivity (col. 8:63-64) when the isocyanate is used after storage. 18
The polyisocyanate can be "2,4- and/or 2,6-diisocyanatotoluene" with 19
"diisocyanatotoluene" being is another way of saying toluene diisocyanate 20
(or TDI). Col. 3:48-49. The polyisocyanate can also be a modified 21
polyisocyanate made by reacting an excess of polyisocyanate with a 22
polyether. Col. 4:12-18. The modified polyisocyanate is what Bayer refers 23
to as a prepolymer. 24

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One skilled in the art seeking to achieve increased reactivity of a 1
prepolymer made a diisocyanate which had been stored for some time would 2
have had a reason for using the Muller combination of a prepolymer and an 3
epoxide in making the products described by Barron and the Kazmierski 4
patents: increased reactivity of the isocyanate. 5
Bayer has not shown that the Examiner erred in determining that the 6
Bayer invention involves, in essence, the use of a known material (the 7
Muller combination of a prepolymer and an epoxide) in a known process 8
(the processes of Barron and the Kazmierski patents) to obtain a predictable 9
result (polyurethane backings or frothed foam backings on a substrate). Use 10
of the known Muller combination for intended purpose counsels against 11
non-obviousness. KSR Int'l Co. v. Teleflex, Inc., 127 S. Ct. 1727, 1739 12
(2007). See also (1) Anderson's-Black Rock, Inc. v .Pavement Salvage Co., 13
396 U.S. 57, 59-62 (1969), and (2) Agrizap, Inc. v. Woodstream Corp., 520 14
F.3d 1337, 1343 (Fed. Cir. 2008). 15
Bayer may be contending that the "result" is not predictable. Appeal 16
Brief, page 16. Specifically, Bayer alleges that the use of a combination of a 17
prepolymer and an epoxide vis-à-vis use of just a prepolymer minimizes 18
"defects including large voids and slits." Id., five lines from the bottom. 19
Data from Examples 3 and 5 vis-à-vis Examples 4 and 6 is said to provide 20
factual support for the unpredictability upon which Bayer relies. We are not 21
entirely sure, but it appears Bayer may have backed off of its 22
unpredictability argument when it says in its Reply Brief that "it is not 23
necessary for … [Bayer] to demonstrate unexpected results." Reply Brief, 24
page 7. 25

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In any event, to the extent that unpredictability is still a viable issue on 1
appeal, the Examiner was not impressed with the Bayer example data and 2
declined to give it much weight. Among other reasons, the Examiner notes 3
that the data is "not commensurate in scope with the claims, in terms of 4
component species or quantities." Examiner's Answer, page 9. 5
Consistent with the Examiner's finding, Example 3 refers to a 6
proprietary blend comprising one or more polyols, one or more catalysts, 7
and one or more surfactants. Specification, ¶ 0013. No prior art reference is 8
needed to establish that one skilled in the art would have known that the 9
properties of foams are a function, not only of the isocyanate, but also the 10
polyol, catalyst and surfactant. But, the significant point is that Bayer fails 11
to tell us the nature of the polyols, the catalyst and the surfactant. So we do 12
not know precisely what was tested. What we do know is that the only 13
epoxide said to have been "tested" is based on linseed oil. Whether other 14
epoxides would be equally viable is an open question. See, e.g., Example 1b 15
of Muller—mixture of MDI (diphenylmethane diisocyanate) and an epoxide 16
is described as not stable on storage. To the extent that the only difference 17
between the Example 3 test and the Example 4 test is the presence of an 18
epoxide, the evidence supports the Examiner's determination that the data is 19
not commensurate in scope with the breadth of the claims. In its Reply 20
Brief, Bayer does not appear to seriously challenge the Examiner's 21
commensurate in scope analysis. 22
While we do not find it necessary in reaching our decision, 23
additionally we point out that in the event of future prosecution , Bayer may 24
wish to consider the following. The Specification does not describe the 25

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length of time Isocyanate A used in Example 1 and Example 2 was "stored" 1
after being made and prior to being used. If Isocyanate A used in Example 2 2
was stored longer than the combination of the Isocyanate A and epoxide 3
used in the Example 1, there may be a plausible explanation for the voids 4
found in the products of Example 4 vis-à-vis those not found in Example 3. 5
Depending on the storage times, Muller counsels that a longer stored 6
isocyanate may be less reactive which might lead to voids in any resulting 7
foam due to a failure of the isocyanate to "fully" react with any polyol. 8
Thus, there may be a storage variable relevant to the comparison proffered in 9
Examples 3 and 4 which have yet to be considered. We make no findings 10
with respect to, and have not relied on, the points made in this paragraph is 11
reaching our decision. 12
Bayer makes a point of saying that Muller requires both an epoxide 13
and a silylating agent and that the Muller invention will not work unless the 14
silylating agent is present along with the epoxide. See Muller, Examples 1, 15
1a and 1b. Col. 8. Bayer maintains that its invention does not require a 16
silylating agent. Hence, Bayer reasons that it cannot be obvious to use the 17
Muller combination in the Barron or Kazmierski processes. Appeal Brief, 18
page 15. 19
As noted by the Examiner, Bayer has failed to come to grips with the 20
"comprising" language of its claims. See Ex parte Davis, 80 USPQ 448, 450 21
(Bd. App. 1948), which defines "comprising" and which has been followed 22
in the Patent Office, the USPTO, the CCPA and the Federal Circuit since 23
1948. "Comprising" permits the presence of additional materials. 24
Examiner's Answer, pages 8-9. Nothing in claim 7 precludes the presence of 25

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a silylating agent along with the prepolymer and the epoxide. Accordingly, 1
the fact the Muller does not achieve storage with MDI and an epoxide 2
without a silylating agent (Example 1b) does help Bayer's case given the 3
breadth of its claims. 4
The decision of the Examiner rejecting claims 7, 9 and 16-17 under 5
35 U.S.C. § 103 is affirmed. 6
Examiner's rejection of claims 8 and 10-15 7
In rejecting claims 8 and 10-15, the Examiner additionally relied on 8
(1) Berthevas, (2) Kerman (3) Londrigan, and (4) Simpson. 9
The Appeal Brief does not clearly articulate what additional argument 10
Bayer relies in support of its appeal of these claims. Rather, Bayer in effect 11
seems to be saying that claims 8 and 10-15 stand or fall with claim 7. In this 12
respect, we note that the Examiner is under the same impression [bold added 13
by the Examiner]: 14
The position is taken [by the Examiner] that … [Bayer's] 15
arguments with respect to previously argued references have 16
been addressed above by responding to … [Bayer's] arguments 17
with respect to Issue II. 18
Examiner's Answer, pages 9-10. Issue II deals with the Examiner's rejection 19
under 35 U.S.C. § 103 of claims 7, 9 and 16-17. 20
In the Appeal Brief, Bayer notes with respect to the four additional 21
references that "none of the cited references clearly suggest key component 22
(i.e. the prepolymer of toluene diisocyanate with epoxide) which is essential 23
to … [Bayer's] claim. Appeal Brief, page 18. 24

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We are told that "[t]he Kerman reference is also silent with regard to 1
this specific blend of epoxide and toluene diisocyanate prepolymer." Appeal 2
Brief, page 18. Bayer states what the Examiner found Kerman to describe. 3
But, the argument is that "even if one assumes that this [what the Examiner 4
said about Kerman] is correct, any of the possible combination of the 5
Kerman reference with the primary and secondary references do not render 6
the present claimed invention obvious for the reasons as discussed above 7
with regard to Claims 7, 9, 16 and 17." Appeal Brief, page 19. 8
According to Bayer, the "Londrigan … reference also fails to provide 9
any insight into the presently required TDI prepolymer which additionally 10
comprises epoxide." Appeal Brief, page 20. 11
The Simpson reference is also said to fail "to describe the presently 12
required isocyanate component (i.e. a prepolymer of TID which is blended 13
with an epoxide) as do the primary and secondary references." Appeal 14
Brief, page 21. 15
The Berthevas reference is said to fail "to describe or disclose a 16
critical component of the present claimed invention", i.e., the epoxide. 17
Appeal Brief, page 22. 18
While the Appeal Brief sets out what Bayer believes each of the four 19
references describe, apart from the absence of a description of the use of an 20
epoxide, Bayer does not cogently argue why the claims are separately 21
patentable. 22
The Examiner's view that claims 8 and 10-15 have not been separately 23
argued, apart from claim 7, is confirmed by Bayer's observation in its Reply 24
Brief to the effect that Bayer "maintains that the various combinations of 25

Appeal 2009-0201
Application 10/870,126

20
cited references does not fairly suggest the presently claimed invention to 1
one of ordinary skill in the art." Reply Brief, page 7. The point made in the 2
Reply Brief is that is would not have been obvious to use a combination of a 3
prepolymer and an epoxide. It is the same point made in the Appeal Brief. 4
The Examiner's rejection under 35 U.S.C. § 103 of claims 8 and 10-15 5
is affirmed. 6
Examiner’s § 112 rejection 7
Since we have affirmed rejections under 35 U.S.C. § 103 of all claims, 8
we do not find it necessary to reach the Examiner's rejection under 35 U.S.C. 9
§ 112. 10
Bayer's other arguments 11
We have considered Bayer's remaining arguments and find none that 12
warrant reversal of the Examiner’s rejection under 35 U.S.C. § 103. Cf. 13
Hartman v. Nicholson, 483 F.3d 1311, 1315 (Fed. Cir. 2007). 14
D. Decision 15
Bayer has not sustained its burden on appeal of showing that the 16
Examiner erred in rejecting the claims on appeal as being unpatentable under 17
35 U.S.C. § 103 over the prior art. 18
On the record before us, Bayer is not entitled to a patent containing 19
claims 7-17. 20

Appeal 2009-0201
Application 10/870,126

21
Upon consideration of the appeal, and for the reasons given herein, 1
it is 2
ORDERED that the decision of the Examiner rejecting 3
claims 7-17 over the prior art is affirmed. 4
FURTHER ORDERED that we do not reach or decide the 5
Examiner's rejection of claims 8-15 as being unpatentable under 35 U.S.C. 6
§ 112 based on alleged indefiniteness. 7
FURTHER ORDERED that no time period for taking any 8
subsequent action in connection with this appeal may be extended under 9
37 C.F.R. § 1.136(a)(1)(iv) (2008). 10

AFFIRMED

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