Ex Parte Rukavina et al

Patent Trial and Appeal Board

Jun 1, 2015

11638876 (P.T.A.B. Jun. 1, 2015)

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.
11/638,876 12/14/2006 Thomas G. Rukavina 2083P1 5050
24959 7590 06/01/2015
PPG Industries, Inc.
IP Law Group
One PPG Place
39th Floor
Pittsburgh, PA 15272
EXAMINER
SERGENT, RABON A
ART UNIT PAPER NUMBER
1765
MAIL DATE DELIVERY MODE
06/01/2015 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 PPG INDUSTRIES OHIO, INC.
____________________

Appeal 2013-006445
1

Application 11/638,876
Technology Center 1700
____________________

Before FRED E. McKELVEY, ROMULO H. DELMENDO, and
MARK NAGUMO, Administrative Patent Judges.

McKELVEY, Administrative Patent Judge.

DECISION ON APPEAL
37 C.F.R. § 41.50

I. Statement of the Case
PPG Industries Ohio, Inc. (“Appellant”), the real party in interest (Appeal
Brief (“Br.”), page 2), seeks review under 35 U.S.C. § 134(a) of a final rejection
dated 25 April 2012.
The named inventors are: Thomas G. Rukavina and Robert Hunia.
We have jurisdiction under 35 U.S.C. § 134(a).
The application on appeal was filed in the USPTO on 14 December 2006.

1
The subject matter involved in this appeal is related to an application involved in
Appeal 2013-009229, also decided today. See 37 C.F.R. § 41.8(a)(2) with respect
to a need for updating a related cases statement after an appeal brief is filed.

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2

Appellant claims priority of various applications, the earliest of which was
filed on 1 September 2004.
The application on appeal has been published as U.S. Patent Application
Publication 2010/0124649 A1 (20 May 2010).
The Examiner relies on the following evidence.

Chang et al.
“Chang”
U.S. Patent 3,764,457 9 Oct. 1973
Ammons
“Ammons ʼ529”
U.S. Patent 4,101,529 18 July 1978
Ammons
“Ammons ʼ070”
U.S. Patent 4,103,070

25 July 1978

Watanabe et al.
“Watanabe”
U.S. Patent 4,632,877 30 Dec. 1986
Bravet et al.
“Bravet”
U.S. Patent 4,652,494

24 Mar. 1987

Chang, Ammons ʼ529, and Ammons ʼ070 are assigned to PPG Indus. Inc.
Appellant does not contest the prior art status of the Examiner’s evidence, all
of which is prior art under 35 U.S.C. § 102(b).
Appellant relies on the following evidence.
Rukavina
Declaration
Declaration under 37 C.F.R. § 1.132 of
Thomas Rukavina
Dated:
29 Oct. 2010

We mention the following additional evidence in this opinion.
Wagner U.S. Patent 3,124,605 10 Mar. 1964
Kennedy U.S. Patent 5,459,220 17 Oct. 1995

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Swiderski et al.
“Swiderski”
Synthesis and Properties of Urethane
Acrylate Oligomers: Direct versus
Reverse Addition, 43 IND. ENG. CHEM.
RES., 6281–6284

2004

ASTM Gardner
Impact Test
“ASTM”

ASTM Designation D 5420-04, Standard
Test Method for Impact Resistance of Flat,
Rigid Plastic Specimen by Means of a
Striker Impacted by a Falling Weight
(Gardner Impact)

1 Feb. 2004

II. Claims on Appeal
Claims 1–15,
2
17, 19–23, and 26–37 are on appeal. Br., pages 2 and 25–33.
III. The Rejections
In the Answer, the Examiner has maintained the following rejections:
Rejection 1:
Claims 1–4, 7–15, 19–23, and 26–37 stand rejected as being unpatentable
under 35 U.S.C. § 103 over Ammons ʼ529 in view of Ammons ʼ070 or Chang.
Answer (“Ans.”), page 3.
Rejection 2:
Claims 5 and 6 stand rejected under 35 U.S.C. § 103 as being unpatentable
over Ammons ʼ529 in view of Ammons ʼ070 or Chang ʼ457 further in view of
Bravet ʼ494. Ans., pages 4–5.

2
We note that dependent claim 10 depends from claim 10. In the event of
further prosecution, Appellant may wish to correct the reference to claim 10 in
dependent claim 10—which probably should be claim 9.

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Rejection 3:
Claim 17 stands rejected under 35 U.S.C. § 103 as being unpatentable over
Ammons ʼ529 in view of Ammons ʼ070 or Chang ʼ457 further in view of
Watanabe ʼ877. Ans., page 5.
IV. Analysis
A. Rejection 1
1. Claims Involved
Claims 1–4, 7–15, 19–23, and 26–37 stand rejected as being unpatentable
under 35 U.S.C. § 103 over Ammons ʼ529 in view of Ammons ʼ070 or Chang.
In presenting the appeal as to Rejection 1, Appellant mentions claims 1, 26,
and 35, but does not separately argue the patentability of claims 2–4, 7–15, 19–23,
27–34, 36, or 37 apart from claim 1. Accordingly, except as may be discussed
below, we decide Rejection 1 on the basis of independent claims 1, 26, and 35.
Claims reproduced below are copied from the Claim Appendix of the
Appeal Brief.
Claim 1
Independent claim 1 reads (matter in brackets and some indentation
added):
A polyurethane comprising a reaction product of
components comprising:

(a) about 1 equivalent of at least one polyisocyanate;

(b) about 0.05 to about 0.9 equivalents of at least one
branched polyol having 3 to 18 carbon atoms and at least
3 hydroxyl groups; and

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(c) about 0.1 to about 0.95 equivalents of sorbitol,
mannitol, and/or at least one diol having 2 to 18 carbon atoms;

wherein

[1] the reaction product components comprise [i] less than
about 5 weight percent of polyester polyol, polycarbonate
polyol or polyether polyol and [ii] less than about 2 weight
percent of amine curing agent on a basis of total weight of the
components, and,

[2] upon mixing, the reaction components are maintained at a
reaction temperature of at least 110 ºC for at least about
10 minutes, degassed, and reacted at a temperature of at least
about 100 ºC for at least about 6 hours.

Claim 27
Dependent claim 27 reads:
An article comprising the polyurethane of claim 1.
Claim 28
Dependent claim 28 reads:
The article according to claim 27, wherein the article has a
Gardner Impact strength of at least about 65 in-lb (7.3 Joules)
according to ASTM-D 5420-04.

Claim 26
Independent claim 26 reads (matter in brackets and some indentation
added):
A polyurethane comprising a reaction product of
components consisting of:

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(a) about 1 equivalent of 4,4'-methylene-bis(cyclohexyl
isocyanate);

(b) about 0.3 to about 0.5 equivalents of
trimethylolpropane; and

(c) about 0.3 to about 0.7 equivalents of
1,10[-]dodecanediol, 1,4-butanediol or 1,5-pentanediol

wherein, upon mixing, the reaction components are
maintained at a reaction temperature of at least 110ºC for at
least about 10 minutes, degassed, and reacted at a temperature
of at least about 100ºC for at least about 6 hours.

Claim 35
Independent claim 35 reads (matter in brackets and some indentation
added):
An article comprising a polyurethane comprising a
reaction product of components comprising:

(a) about 1 equivalent of at least one polyisocyanate;

(b) about 0.1 to about 0.9 equivalents of at least one
branched polyol having 3 to 18 carbon atoms and at least 3
hydroxyl groups; and

(c) about 0.1 to about 0.9 equivalents of sorbitol,
mannitol, and/or at least one diol having 2 to 18 carbon atoms,

wherein the reaction product components comprise less
than about 5 weight percent of polyester polyol, polycarbonate
polyol or polyether polyol, [and] less than about 2 weight

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percent of amine curing agent on a basis of total weight of the
components, and,

wherein the article has a Gardner Impact strength of at
least about 200 in-lb (23 Joules) according to ASTM-D
5420-04 and

wherein, upon mixing, the reaction components are
maintained at a reaction temperature of at least 110ºC for at
least about 10 minutes, degassed, and reacted at a temperature
of at least about 100ºC for at least about 6 hours.

2. Analysis—Claim 1
Example 1 of Ammons ʼ529 (Table 1 in col. 9) describes a
polyurethane formulation comprising the reaction product of:
Component Equivalents Weight Ratio
1,4-butanediol 0.900 23.02
Trimethylolpropane 0.100 2.54
HYLENE W
4,4'-methylene-bis-
(cyclohexyl
isocyanate)
(col. 8:58–60)

1.00

74.44

An article made from the reaction product is described in Table 2 as having
a Gardner Impact of 69 in/lbs.
According to Ammons ʼ529, the reaction product was made as follows.
A series of polyurethanes were prepared with
4,4'-methylene-bis-(cyclohexyl isocyanate) (HYLENE W),
1,4-butanediol and trimethylolpropane. The procedure for
preparing these polyurethanes was as follows:

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HYLENE W was charged to a reaction kettle at room
temperature which is equipped with a magnetic stirrer and
heating mantle, and fitted to pull vacuum and break vacuum
with a dry nitrogen source. A vacuum (i.e., 2 mm of Hg
pressure) was pulled and broken with dry nitrogen to impose a
nitrogen atmosphere in the reaction kettle.

While stirring at 180º F. (82º C), a solution of
trimethylolpropane in 1,4-butanediol heated to 185º F. (85º C.)
under house vacuum was added slowly to the reaction kettle.
The heat is turned off and stirring is continued until a clear
mixture is obtained and then for another five minutes. If
necessary, the kettle is removed from the heating mantle so that
the temperature does not exceed 190º F. (88º C.).

The reaction mixture is degassed for 10 minutes and then
cast into casting cells which are preheated to 290º F. (143º C.).
The cast formulation is then cured for 48 hours at an oven
temperature of 290º F. (143º C.).

Col. 8:58–col. 9:12.
Example 1
3
of Ammons ʼ529 appears to describe a polyurethane within the
scope of dependent claim 28, which depends from claim 27, which in turn depends
from independent claim 1. Example 1 describes the use of
(1) 0.100 equivalents of trimethylolpropane (within the range of
element (b) of claim 1);
(2) 0.900 equivalents of 1,4-butanediol (within the range of
element (c) of claim 1;

3
Examples 1–3 are described in both the present and past tenses. Although it
may not make any difference, we assume for the purpose of deciding this appeal
that the examples are real as opposed to prophetic.

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(3) 1.00 equivalents of HYLENE W (within the range of element (a)
of claim 1; and
(4) a Gardner Impact of 69 (within the range of dependent claim 28).
The only apparent difference between the language of claim 1 and Examples
1–3 is the 110°C for 10 minutes after mixing. Assuming that the method for
making the polyurethane as set out in claim 1 differs from that described by
Ammons ʼ529, it is not apparent how the polyurethane described by Ammons ʼ529
differs from the polyurethane of claim 1.
Claim 1 is drawn to a polyurethane (not a method of making a
polyurethane). To define non-obvious subject matter over a prior art polyurethane
there must be some patentable difference. In re Thorpe, 777 F.2d 695, 697 (Fed.
Cir. 1985) (the patentability of a product does not depend on its method
production—if the product in a product-by-process claim is the same as or obvious
from a product of the prior art, the claim is unpatentable even though the prior
product was made by a different process); In re Spada, 911 F.2d 705, 708–9 (Fed.
Cir. 1990) (where claimed composition and prior art composition appear to be the
same, PTO may require applicant to prove there is a difference).
Ammons ʼ529 appears to anticipate claim 1. Anticipation is the epitome of
obviousness. In re Pearson, 494 F.2d 1399, 1402 (CCPA 1974); In re May, 574
F.2d 1082, 1089 (CCPA 1978).
The rejection of claim 1, and claims dependent thereon, is affirmed.
3. Analysis—Claim 26
Example 2 of Ammons ʼ529 (Table 1 in col. 9) describes a
polyurethane formulation comprising the reaction product of:

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Component Equivalents Weight Ratio
1,4-butanediol 0.700 17.84
Trimethylolpropane 0.300 7.98
HYLENE W
4,4'-methylene-bis-
(cyclohexyl
isocyanate)
(col. 8:58–60)

1.00

74.18

An article made from the reaction product is described as having a Gardner
Impact of 65 in-lbs.
On the basis of (1) data in the Specification, i.e., Example B (comparatives),
including Examples B1 through B4 (¶¶ 635 through 643, pages 163–165) and (2) a
Declaration of inventor Rukavina dated 29 October 2010 (see the Evidence
Appendix to the Appeal Brief), Appellant maintains that the products described by
Ammons ʼ529 and that claimed are different. Br., page 8 (last paragraph) through
page 12, first paragraph.
As applied to claim 26, the most relevant comparison is that shown in
Examples B3 and B4,
4
reproduced as follows:
Example B3

[00640] The following components 17.9 grams of 1,4[-]butanediol,
7.4 grams of trimethylolpropane and 74.47 grams of DESMODUR W
containing 20% trans-trans isomer of 4,4'-methylene-bis-(cyclohexyl
isocyanate) were charged into a glass kettle fitted with a thermometer
and overhead stirrer. The charge was brought up to a temperature of
110°C to 120°C while mixing and applying vacuum (2 mm mercury

4
Examples B1 and B2 describe the use of 1,5-pentanediol, a diol not described in
Example 2 of Ammons ʼ529.

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(266 Pa)) to remove bubbles. The batch was mixed for 10 to 20
minutes after reaching 110°C to 120°C.

[00641] The batch was cast into a heated glass mold that has been
preheated in an oven at 140°C. The polymer was cured for 48 hours
at 140°C without catalyst. After curing, the mold was removed from
the oven and allowed to cool to room temperature. The plastic sheet
was removed from the glass mold and cut into 2" x 2" x ⅛" (5.1 cm x
5.1 cm x 0.3 cm) samples for Gardner Impact testing. The initial
Gardner impact strength averaged 180 in-lbs (21 J).

Example B4

[00642] The following components 17.9 grams of 1,4 butanediol,
7.4 grams of trimethylolpropane and 74.47 grams of DESMODUR W
containing 20% trans-trans isomer of 4,4'-methylene-bis-(cyclohexyl
isocyanate) were charged into a glass kettle fitted with a thermometer
and overhead stirrer. The charge was brought up to a temperature of
80ºC to 90°C while mixing and applying vacuum (2 mm mercury
(266 Pa)) to remove bubbles. The batch was mixed for 1 hour to
2 hours after reaching 80ºC to 90°C until clear.

[00643] The batch was cast into a heated glass mold that has been
preheated in an oven at 140°C. The polymer was cured for 48 hours
at 140°C without catalyst. After curing, the mold was removed from
the oven and allowed to cool to room temperature. The plastic sheet
was removed from the glass mold and cut into 2" x 2" x ⅛" (5.1 cm x
5.1 cm x 0.3 cm) samples for Gardner Impact testing. The initial
Gardner impact strength averaged 10–15 in-lbs (1 J–1.5 J).

The Examiner declined to give controlling weight to Examples B3 and B4.
The Examiner found that the results reported in those examples “are not
considered to be unexpected.” Ans., page 7.
We do not reach the Examiner’s finding.

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Instead, we decline to credit the Examples B3 and B4 evidence on other
grounds.
Precedent teaches that a negative result of prior art compositions obtained by
a party having an interest can raise credibility doubts as to the result reported. See
In re Reid, 179 F.2d 998, 1002 (CCPA 1950) (“in no way reflecting on the good
faith of the makers of the affidavits . . . the failures of experimenters who have no
interest in succeeding should not be accorded great weight”) and In re Michalek,
162 F.2d 229, 232 (CCPA 1947) (same), and compare In re Carroll, 601 F.2d
1184, 1886 (CCPA 1979) (“[u]nlike the usual expert opinion, prepared either by
the applicant himself, or on his behalf after the controversy has arisen, Dr.
Merkal’s opinion was formulated prior to the making of the claimed invention. It
was therefore completely untainted by either hindsight or bias.”).
Example B4 reports an initial Gardner Impact of 10–15 in-lbs. Spec. ¶ 643.
On the other hand, Ammons ʼ529 reports a Gardner Impact of 65 in-lbs. Table 1,
Example 2. Because of the difference in Gardner Impact data, the Example B4
results will not be credited as showing a prior art result and confirms the truism
of Reid and Michalek. Unexplained on the record is why Ammons ’529 reports a
Gardner Impact of 65 in-lbs while Example B4 reports a value of only 10–15
in-lbs. Example B4 is not deemed to be representative of the prior art.
We also note that like claim 1, claim 26 does not contain a Gardner Impact
limitation.
The rejection of claim 26 is affirmed.

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4. Claim 35
In presenting the appeal, Appellant argues that when temperatures “[a]bove
110ºC, the initial Gardner Impact strengths for polymers of this invention are
higher initially, and show less variation in impact strengths from batch to batch
when processed above 110ºC.” Br., page 9 (italics added).
The argument is not relevant as to claim 1 (no Gardner Impact strength
limitation) and claim 28 (Gardner Impact strength of at least about 65 in-lbs, met
by the Gardner Impact strength of 69 in-lbs described by Ammons ʼ529).
However, the argument is relevant to claim 35.
Claim 35 calls for an article having “a Gardner Impact strength of at least
about 200 in-lb (23 Joules) according to ASTM-D 5420-04.”
Nothing in the record has been called to our attention indicating where the
prior art describes a Gardner Impact strength of at least about 200 in-lbs. Nor has
the Examiner addressed the Gardner Impact strength limitation of claim 35—a
strength considerably higher than any strength described in the prior art before us.
On the record before us, we have no basis for finding that a Gardner Impact
strength (regardless of when measured time-wise after an article is made) of at
least above 200 in-lbs would have been predictable.
5

Accordingly, we will reverse the prior art rejection of claim 35.
However, in the context of this case and on the record before us, we hold
that the limitation “Gardner Impact strength” as set out in both claims 28 and 35 is
indefinite. Eliminating indefiniteness during prosecution is desirable. In re Zletz,

5
The Rukavina Declaration seems to focus on a process supposedly leading to a
higher initial hardness, but does not discuss long-term hardening.

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893 F.2d 319, 322 (Fed. Cir. 1989) (an essential purpose of patent examination is
to fashion claims that are precise, clear, correct, and unambiguous; only in this way
can uncertainties of claim scope by removed, as much as possible, during the
administrative process).
A review of the Specification will confirm that Gardner Impact strengths are
reported when measured at five different times as a function of time after an article
is described as having been made. The following table identifies representative
paragraphs of the Specification where Gardner Impact strength is reported based
on times after an article is described as having been made.
Gardner
Impact
strength
Initial
Gardner
Impact
strength
Aged
Gardner
Impact
strength
Mean
Gardner
Impact
strength
Average
Gardner
Impact
strength
0009 0637 0079 Fig. 15 0694 0765
0410 0639 0415 Fig. 14 0667 0766
0414 0641 0416 Fig. 15 0679
0697 0643 0681
0707 0813 0699
0709 0703
0721 0717

The ASTM test used to determine Gardner Impact strength is set out in the
Specification. See ¶¶ 428, 601, and 804. We acknowledge with appreciation
Appellant having made the ASTM test of record. Often we are not given access to
copies of ASTM tests. Our study of the ASTM test does not indicate when a
Gardner Impact test is to be made as a function of time after a product is made.

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Rather, the ASTM test sets out how the test is to be run apart from the time when
an article was made.
Reports of various Gardner Impact strengths said to have been measured at
different times after an article is made and the absence of a specific time of
measurement in claim 35 (as well as claim 28) raises issues similar to those raised
with respect to molecular weight in Nautilus, Inc. v. Biosig Instruments, Inc.,
134 S. Ct. 2120 (2014). The claim fails to set out when Gardner Impact strength is
to be measured vis-à-vis the time an article is made.
Moreover, in the event of further prosecution, the precise meaning of the
term “initial” may need to be clarified.
In the event indefiniteness is overcome in future prosecution, nothing in this
opinion should be viewed as precluding the Examiner from again making a § 103
rejection of claim 35 based on additional prior art. We have not undertaken a
study to determine whether a Gardner Impact strength of at least 200 in-lbs is
known in the prior art.
We recognize that our reversal of the prior art rejection of claim 35 and our
new rejection of claims 28 and 35 may be viewed as possibly inconsistent with
applicable precedent. Generally, the subject matter of a claim having an indefinite
limitation does not become obvious or non-obvious due to an indefinite limitation.
In re Wilson, 424 F.2d 1382, 1385 (CCPA 1970) (if a word in a claim has no
meaning, the claimed subject matter does not become obvious—the claim becomes
indefinite); In re Steele, 305 F.2d 859, 863 (CCPA 1962). No prior art called to
our attention describes a Gardner Impact strength of at least about 200 in-lbs
regardless of when measured time-wise. Nevertheless, one skilled in the art would

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not know whether claims 28 and 35 are infringed because those claims fail to state
when strength is measured time wise and strength appears to be a function, inter
alia, of the time after an article is made. Clarification in each of claims 28 and 35
as to when strength is measured would overcome our concern and eliminate
possible indefinite issues post-issuance of a patent.
B. Rejection 2
Claims 5 and 6 stand rejected under 35 U.S.C. § 103 as being unpatentable
over Ammons ʼ529 in view of Ammons ʼ070 or Chang ʼ457 further in view of
Bravet ʼ494. Ans., pages 4–5.
Claim 2 reads:
The polyurethane according to claim 1 [reproduced above],
wherein the polyisocyanate is selected from the group
consisting of diisocyanates, triisocyanates, dimers, trimers and
mixtures thereof.

Claim 5 reads:
The polyurethane according to claim 2, wherein the
polyisocyanate is a trimer of hexamethylene diisocyanate.

The separate patentability of claim 6 has not been argued apart from claim 5.
Accordingly, we decide Rejection 2 on the basis of claim 5.
Ammons ’529 has been discussed above in connection with Rejection 1.
Claim 5 differs from Ammons ʼ529 in that Ammons ʼ529 does not describe
the use of trimers and/or dimers of hexamethylene diisocyanates. Ans., page 5.

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To overcome the difference, the Examiner turned to Bravet describing the
well-known use of isocyanurates and biurets (trimers)
6
for making polyurethane
elastomers. Col. 6:28–34.
Appellant’s attack on the use of Bravet repeats the arguments with respect to
claim 1 and Rejection 1. In addition, Bravet is said not to cure the deficiencies of
Ammons ʼ529 because it describes the use of trimers and dimers in combination
with a polyether or polyester. Br., page 17. Appellant’s argument overlooks the
reason why the Examiner cited Bravet—to show that Appellant’s isocyanate trimer
and dimers are known to be used to make polyurethane elastomers. Ans., page 8.

6
The idealized structure for the biuret of hexamethylene diisocyanate is:

The idealized structure of the isocyanurate of hexamethylene diisocyanate is:

See Kennedy, col. 4:3–25 and Wagner, claims 3 and 5.

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Appellant is using a known isocyanate trimer (Bravet) for its intended
purpose (Ammons ʼ529).
7

Rejection 2 is affirmed.
C. Rejection 3
Claim 17 stands rejected under 35 U.S.C. § 103 as being unpatentable over
Ammons ʼ529 in view of Ammons ʼ070 or Chang ʼ457 further in view of
Watanabe ʼ877. Ans., page 5.
Claim 17 reads:
The polyurethane according to claim 1 [reproduced above],
wherein the reaction product components further comprise one
or more . . . hydroxy functional acrylates, hydroxy functional
methacrylates . . . and mixtures thereof.

Claim 17 differs from Ammons ʼ529 in that Ammons ʼ529 does not
describe the use of hydroxy functional acrylates or hydroxy functional
methacrylates as a reaction component. Ans., page 5.
To overcome the difference, the Examiner turned to Watanabe. Ans.,
pages 5–6.
With reference to Figures 1A and 1B, reproduced below, Watanabe
teaches the following.

7
We have not overlooked that portion of Ammons ʼ529 indicating that use of
“linear aliphatic polyisocyanates [are said to] have poorer heat distortion
temperatures than products of the present invention” which use “cycloaliphatic
polyisocyanates.” Col. 2:13–16. Appellant does not rely on this portion of
Ammons ʼ529 in presenting its appeal. Nor could it, given that claims 1, 2, and 5
do not claim any particular degree of heat distortion.

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Figs. 1A and 1B depict a polyurethane type resin sheet.
FIGS. 1A and 1B are the schematic cross-sectional views
showing one example of the polyurethane type resin sheet
having the continuous layer, in which FIG. 1A is a cross-
section of a single sheet, one side of which has been reformed.
Such surface reformation can be realized by, for example,
impregnating a polymerizable compound into one side (2) of a
polyurethane type thermoplastic resin sheet (1), and then
subjecting the impregnated polymerizable compound [e.g.,
acrylic acid and its esters and methacrylic acid and its esters
(col. 8:50–51)] to polymerization. The other side (3) is not
reformed. Since the impregnated polymerizable compound
penetrates into the polyurethane type thermoplastic resin sheet
(1) to a certain depth from the surface (2) on one side, there can
be formed a reformed polyurethane type thermoplastic resin
layer of a certain thickness including the surface (2). This
reformed polyurethane type thermoplastic resin layer is
continuous with a non-reformed polyurethane type
thermoplastic resin layer. The polyurethane type resin sheet
shown in FIG. 1A will hereinafter be referred to as “sheet X”.
FIG. 1B is a schematic cross-section showing another example
of the polyurethane type resin sheet having a continuous layer.
This sheet is obtained by laminating the sheet X (4) and a
polyurethane type thermoplastic resin sheet (5). This
polyurethane type resin sheet can also be manufactured by
laminating, in advance, two sheets of polyurethane type
thermoplastic resin sheets, and then reforming one side thereof.
It should be understood, however, that distinction between
“continuation” and “non-continuation” is made in relation to

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the reformed layer and the non-reformed layer, hence the sheet
shown in FIG. 1B is a kind of the polyurethane type resin sheet
having the continuous layer.

Watanabe, col. 5:9–41.
Appellant maintains that Watanabe does not describe mixing the
polymerizable compound as a component to make the polyurethane. Br., page 22.
The Examiner agrees, but held that it would have been obvious to
incorporate the polymerization compound into the reaction mixture. Ans., page 6.
In other words, the Examiner found that incorporating the polymerizable
compound into the reaction mixture would have been an obvious way of
accomplishing the objective of Watanabe—providing unsaturated groups that are
incorporated as side chains to the polyurethane, which can later be cross-linked.
We agree with the Examiner’s analysis, but also refer to Swiderski
describing a sequential method of making a urethane-acrylate oligomer by mixing
an isocyanate (“D”) with a polyol (“P”) to make what Swiderski refers to as
“DPD” followed by addition of an acrylate (“A”) to make what Swiderski refers to
as “ADPDA. Page 6281, col. 1. Swiderski confirms that the acrylate or
methacylate may be added to a mixture prior to molding an article.

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Application 11/638,876

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We also agree with the Examiner that Appellant has not addressed the
Examiner’s precise rationale for relying on Watanabe. Ans., page 9.
8

Rejection 3 is affirmed.
V. Decision
Upon consideration of the appeal, and for the reasons given herein, it is
ORDERED that Rejection 1 of claims 1–4, 7–15, 19–23, 26–34, 36,
and 37 is affirmed.
FURTHER ORDERED that Rejection 1 of claim 35 is reversed.
FURTHER ORDERED that Rejection 2 of claims 5 and 6 is affirmed.
FURTHER ORDERED that Rejection 3 of claim 17 is affirmed.
FURTHER ORDERED that claims 28 and 35 are newly rejected
under 35 U.S.C. § 112 as being indefinite.
FURTHER ORDERED that because our affirmance rationale differs
somewhat from that of the Examiner and because we rely on prior art not relied
upon by the Examiner, our affirmance of the prior art rejections is designated as a
new rejection. 37 C.F.R. § 41.50(b).
FURTHER ORDERED that our decision is not a final agency action.

8
Appellant attempts in the Reply Brief to answer the Examiner’s rationale. Reply
Brief, page 9. However, the Examiner’s rationale in the Answer, was previously
made in the Final Rejection at pages 7–8. The argument presented in the Reply
Brief should have been presented in the Brief so that it might have been addressed
by the Examiner in the Answer. We decline to consider in the first instance the
new argument raised in the Reply Brief.

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FURTHER ORDERED that within two (2) months from the date of
our decision, appellant may further prosecute the application on appeal by
exercising on of the two following options:
Option 1: Request that prosecution be reopened by submitting
an amendment or evidence or both. 37 C.F.R. § 41.50(b)(1).
Option 2: Request rehearing on the record presently before the
Board. 37 C.F.R. § 41.50(b)(2).
FURTHER ORDERED that 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-IN-PART
(New Rejection under 37 C.F.R. § 41.50(b))

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