Ex Parte Rukavina et alDownload PDFPatent Trial and Appeal BoardJun 1, 201511638925 (P.T.A.B. Jun. 1, 2015) Copy Citation 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. 11/638,925 12/14/2006 Thomas G. Rukavina 2083P4 5097 24959 7590 06/01/2015 PPG Industries, Inc. IP Law Group One PPG Place 39th Floor Pittsburgh, PA 15272 EXAMINER LEONARD, MICHAEL L ART UNIT PAPER NUMBER 1763 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 2013-009229 1 Application 11/638,925 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 19 September 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 2013-006445, also decided today. See Appeal Brief, page 2. Appeal 2013-009229 Application 11/638,925 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 2007/0149749 A1 (28 June 2007) The Examiner relies on the following evidence. 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 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). II. Claims on Appeal Claims 1–13, 15–21, and 24–26 are on appeal. Br., page 2; Answer (“Ans.”), pages 3 and 7. III. The Rejections In the Answer, the Examiner has maintained the following rejections: Rejection 1: Claims 1–11, 13, 15–21, and 24–26 (all claims on appeal except claim 12) stand rejected as being unpatentable under 35 U.S.C. § 103 over Ammons ʼ529 and Ammons ʼ070. Ans., page 3. Appeal 2013-009229 Application 11/638,925 3 Rejection 2: Claim 12 stands rejected as being unpatentable under 35 U.S.C. § 103 over Ammons ʼ529 and Ammons ʼ070 and Watanabe. Ans., page 7. IV. Analysis A. Rejection 1 In presenting its appeal as to Rejection 1, Appellant mentions claims 1 and 15. Accordingly, we decide the appeal as to Rejection 1 on the basis of claims 1 and 15. Claims reproduced below are copied from the Claims Appendix of the Appeal Brief. Claim 1 A polyurethane comprising a reaction product of components comprising: (1) a polyurethane prepolymer prepared by reacting components comprising about 1 equivalent of at least one polyisocyanate; and about 0.3 to about 1 equivalents of at least one branched polyol having 4 to 18 carbon atoms and at least 3 hydroxyl groups to form the polyurethane prepolymer; and (2) about 0.01 to about 0.2 equivalents of at least one polycarbonate diol, and wherein, upon mixing the reaction components (1) and (2) are [i] maintained at a temperature of at least about 100ºC for at least about 10 minutes, [ii] degassed, and [iii] reacted at a temperature of at least about 110ºC for at least about 6 hours. Appeal 2013-009229 Application 11/638,925 4 Claim 1 calls for compositions having the following equivalents and Ammons ʼ529 (Examples 5–7) describes compositions having the following equivalents: Table 1 Polyisocyanate Branched Polyol Polycarbonate Diol Claim 1 about 1 ~0.3 – ~1 ~0.01 – ~0.2 Example 5 1.000 0.426 0.187 Example 6 1.000 0.536 0.151 Example 7 1.000 0.6642 0.1096 As readily apparent from Table 1, the prior art equivalents anticipate the claimed equivalents. The alleged difference between the subject matter of claim 1 and the subject matter described in the noted examples of Ammons ʼ529 is a product-by-process limitation describing the manner in which the claimed polyurethane and the polyurethane of Ammons ʼ529 are made. Claim 1 is drawn to a polyurethane (not a method of making a polyurethane). To define non-obvious subject matter of 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 of 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 through the prior art product was made by a difference process); In re Spada, 911 F.2d 705,708–9 (Fed. Cir. 1990). Appeal 2013-009229 Application 11/638,925 5 Appellant’s argument on appeal is that the process limitation in claim 1 (1) is not described by Ammons ʼ529 (Br., pages 7–9) and (2) makes a difference (Br., pages 9–10). In support of its argument, Appellant refers to Example B, stating (Br., page 9): For the purposes of illustration and with reference to the specification, as demonstrated by examples B1 and B2, where the reactants are mixed at 80ºC to 90ºC until the batch appeared clear, the resulting polyurethane was found to have Garner Impact Strength of 62 in-lbs (see Example B2 at paragraphs [00638]–[00639], page 164, lines 12-25); where the same reactants are mixed at a temperature of 110ºC to 120ºC, the resulting polyurethane unexpectedly and desirably had a Gardner Impact Strength of 260 in-lbs (see Example B1 at paragraphs [00636]–[00637] on pages 163, line 33–page 164, line 9). The noted paragraphs of the Specification state: Example B Comparative Non-limiting Example of Processing Temperature of 80°C vs. 110°C [00635] Short chain diols (aliphatic diols having 4 to 8 carbon atoms as discussed above) are typically immiscible in isocyanates due to the polarity difference and surface tension difference between the two materials. It has been found that when the short chain diol and isocyanate are mixed at 80°C or less, they take longer to become a clear solution than at 110°C or higher. Although the solutions may both appear clear, it has been found that there is an inhomogeneity that manifests itself in cured articles as much lower impact strengths than when the solutions are made at or above 110°C. In addition, Appeal 2013-009229 Application 11/638,925 6 when casting or reaction injection molding into a glass mold, any cooling that occurs from pouring and exposure to air, or the mold temperature being below 100°C exacerbates the inhomogeneity problem as further cooling increases the inhomegeneity. If temperatures drop even further, the short chain diol and isocyanate will phase separate and appear as haze. This haze generally will not clear in an oven heated to 120°C to 140°C after pouring into a mold and heating for 24 to 48 hours. Higher variations in impact strength also have been observed as the processing temperatures drop below 100°C. Above 110°C, 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 110°C. The examples below illustrate the temperature effect. Example B1 [00636] The following components 20.1 grams of 1,5 pentanediol, 7.5 grams of trimethylolpropane and 72.45 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 (266 Pa)) to remove bubbles. The batch was mixed for 10 to 20 minutes after reaching 110°C to 120°C. [00637] The batch was cast into a heated glass mold that was 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 then removed from the glass mold and cut into 2" x 2" x 1/8" (5.1 cm x 5.1 cm x 0.3 cm) samples for Gardner Impact testing. The initial Gardner impact strength averaged 260 in-lbs (30 J). Appeal 2013-009229 Application 11/638,925 7 Example B2 [00638] The following components 20.1 grams of 1,5 pentanediol, 7.5 grams of trimethylolpropane and 72.45 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 80°C to 90°C while mixing and applying vacuum (2 mm mercury (266 Pa)) to remove bubbles. The batch was mixed for 1 to 2 hours after reaching 80°C to 90°C until the batch appeared clear. [00639] 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 1/8" (5.1 cm x 5.1 cm x 0.3 cm) samples for Gardner Impact testing. The initial Gardner impact strength averaged 62 in-lbs (7 J). In our decision in Appeal 2013-006445 we explain why we do not credit the evidence set out in Example B. In addition to our discussion in Appeal 2013-006445, claim 1 calls for the use of at least one polycarbonate diol. Examples B1 and B2 do not describe the use of any polycarbonate diol. Ans., page 10 (“the examples [relied upon] fail to teach the polycarbonate diol limitation.”). Accordingly, we fail to appreciate why the evidence relied upon by Appellant in prosecuting this appeal supports the argument that any difference exits. Aside from the absence of a polycarbonate diol in the Example B1 and B2 comparisons, we would decline to give much, if any, weight to the comparisons absent a Gardner Impact strength limitation in claim 1. Appeal 2013-009229 Application 11/638,925 8 In its Reply Brief, in an apparent response to the Examiner’s observation concerning no polycarbonate diol in Examples B1 and B2, Appellant states: The discussion of Examples B1 and B2 . . . [in] the Appeal Brief is presented in part for purposes of illustrating that the disclosure of Ammons ʼ529 would not likely or reasonably motivate [i.e., give a reason for,] a skilled artisan to arrive at the invention of Appellant’s presented appealed claims. Reply Brief, page 5. We fail to see how examples that do not include a polycarbonate diol can support a finding that Ammons ʼ529 Examples 5–7 fail to anticipate or render obvious the subject matter of claim 1 requiring a polycarbonate diol. Rejection 1 of claim 1, and claims dependent thereon, is affirmed. Claim 15 A polyurethane comprising a reaction product of components consisting of: (e) about 1 equivalent of 4,4'-methylene-bis-(cyclohexyl isocyanate); (f) about 0.3 equivalents of trimethylol[ ]propane; (g) about 0.5 to about 0.55 equivalents of butanediol or pentanediol; and (h) about 0.15 to about 0.2 equivalents of polyhexylene carbonate diol [, and] wherein, upon mixing, the reaction components are [i] maintained at a reaction temperature of at least about 100ºC for at least about 10 minutes, [ii] degassed, and [iii] reacted at a temperature of at least about 110ºC for at least about 6 hours. Appeal 2013-009229 Application 11/638,925 9 Claim 15 calls for compositions having the following equivalents and Ammons ʼ529 describes compositions having the equivalents shown in Table 2 (prior art equivalents in bold fall indisputably within the scope of claim 15): Table 2 4,4'-methylene bis- (cyclohexyl isocyanate) Trimethylol- propane Butanediol or Pentanediol Polyhexylene carbonate diol 2 Claim 15 ~1 ~0.3 ~0.5 – ~0.55 ~0.15 – ~0.2 Example 4 1.000 0.245 0.510 0.245 Example 5 1.000 0.426 0.387 0.187 Example 6 1.000 0.536 0.313 0.151 Example 7 1.000 0.6642 0.2262 0.1096 In presenting the appeal, Appellant does not argue that differences in equivalents represent a patentable distinction. Nor does Appellant argue that polyhexylene carbonate diol vis-à-vis a cycloaliphatic carbonate diol represents a patentable distinction (Ammons ʼ529, col. 3:10–17 describes both linear alkylene groups and linear cycloaliphatic groups). The sole argument presented on appeal as to claim 15 is the same as the argument presented with respect to claim 1. Rejection 1 of claim 15 is affirmed. B. Rejection 2 2 The polycarbonate diol of Examples 4–7 is poly(cyclohexanedimethylene carbonate). See Table II, footnote 1. Appeal 2013-009229 Application 11/638,925 10 Claim 12 stands rejected as being unpatentable under 35 U.S.C. § 103 over Ammons ʼ529 and Ammons ʼ070 and Watanabe. Ans., page 7. We affirm for the reasons given by the Examiner. Ans., pages 7–8. In its Appeal Brief, Appellant maintains that “Yet, those referenced sections of Watanabe do not discuss improvement in mechanical strength, which would appear more likely to result from the hard substrate layer, as would be recognized by a skilled artisan.” Br. 11–12. Appellant does not point to any evidence to support its “more likely” argument of counsel. Likewise, claim 12 does not contain any “mechanical strength” limitation. V. Decision Upon consideration of the appeal, and for the reasons given herein, it is ORDERED that the decision of the Examiner rejecting all the claims on appeal over the prior art is affirmed. 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 bar Copy with citationCopy as parenthetical citation