Ex Parte Sarpeshkar et al

Patent Trial and Appeal Board

May 3, 2016

11260104 (P.T.A.B. May. 3, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
11/260,104 10/27/2005
157 7590 05/05/2016
Covestro LLC
1 Covestro Circle
PITTSBURGH, PA 15205
FIRST NAMED INVENTOR
Ashok M. Sarpeshkar
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
P08610/MD05-32 7075
EXAMINER
SERGENT, RABON A
ART UNIT PAPER NUMBER
1765
NOTIFICATION DATE DELIVERY MODE
05/05/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
veronica. thompson@covestro.com
US-IPR@covestro.com
laura.finnell@covestro.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ASHOK M. SARPESHKAR and
MARYLYN DONALDSON
Appeal2014-009674
Application 11/260, 104
Technology Center 1700
Before TERRY J. OWENS, PETERF. KRATZ, and JEFFREY T. SMITH,
Administrative Patent Judges.
OWENS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 1, 3-8, 10-23, 25-30, and 32--44. We have jurisdiction
under 35 U.S.C. § 6(b).
The Invention
The Appellants claim a polyurethane-urea and a process for making it.
Claims 1 and 15 are illustrative:
1. A polyurethane-urea comprising the reaction product
of:
(A) at least one (cyclo)aliphatic polyisocyanate prepolymer
having an NCO group content of 4 to about 26%, and an
Appeal2014-009674
Application 11/260,104
with
average functionality of 2 to 3, which comprises the
reaction product of:
(1) a ( cyclo )aliphatic polyisocyanate having an NCO
group content of 4% to 50% and a functionality of 2.0,
wherein said ( cyclo )aliphatic polyisocyanate is
selected from the group consisting of 4,4'-
dicyclohexylmethane diisocyanate, 1,6-
hexamethylene diisocyanate, isophorone
diisocyanate, 1,4-cyclohexane diisocyanate, m-
tetramethylxylene diisocyanate and mixtures thereof,
and
(2) at least one organic compound which contains at least
about two hydroxyl groups and has a molecular
weight of 100 to 4,000;
wherein the equivalent ratio of NCO to OH is from 5.0: 1.0 to
20.0:1.0;
(B) an isocyanate-reactive component comprising:
( 1) one or more aromatic diamine compounds containing
two primary aromatic amine groups and having a
molecular weight of 100 to 400,
(2) one or more isocyanate-reactive compounds
containing two secondary amine groups and
having a molecular weight of 100 to 750, wherein the
secondary amine groups are attached to
( cyclo )aliphatic and/ or aromatic groups;
and, optionally,
(3) one or more hydroxyl-functional compounds having a
functionality offrom 2.0 to 3.0 and a molecular
weight of 100 to 4,000;
optionally, in the presence of
(C) one or more catalysts,
wherein the relative quantities of (A) and (B) are such that the
Isocyanate Index is from 95 to 110.
15. The polyurethane-urea of Claim 1, in which (B)(2)
comprises an N-alkyl-substituted aromatic diamine, an N,N'-
dialkyl-substituted aromatic diamine, an N,N'[-]dialkyl-
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Appeal2014-009674
Application 11/260,104
substituted isophorone diamine, an aliphatic secondary diamine,
a polyaspartic ester, or mixtures thereof.
The References
References relied upon by the Examiner
Slagel (Slagel '262)
Markus ch
Luong
Slagel(Slagel '939)
us 3,755,262
US 6,562,932 B 1
US 2004/0105154 Al
US 6,939,939 B2
Aug. 28, 1973
May 13, 2003
June 3, 2004
Sep. 6,2005
Reference relied upon by the Appellants
Wu US 6,964,626 B 1 Nov. 15, 2005
The Rejections
The claims stand rejected under 35 U.S.C. § 103 as follows: claims 1,
3-8, 10-16, 18, 20, 22, 23, 25-30, 32-38, 40, 42, and 44 over Markusch in
view of Slagel '939 and Slagel '262, and claims 15, 17, 19, 21, 37, 39, 41,
and 43 over Markusch in view of Slagel '939, Slagel '262, and Luong.
OPINION
We affirm the rejections.
The Appellants argue the claims in two groups: 1) claims 1, 3-8, 10-
16, 18, 20, 22, 23, 25-30, 32-38, 40, 42, and 44, and 2) claims 15, 17, 19,
21, 37, 39, 41, and 43 (App. Br. 7-26). We therefore limit our discussion to
one claim in each group, i.e., claims 1 and 15. The other claims in each
group stand or fall with the claim we address. See 37 C.F.R.
§ 41.37(c)(l)(iv) (2012). 1
1 We incorporate herein the Examiner's explanation of the rejection and
response to arguments in the Examiner's Answer.
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Appeal2014-009674
Application 11/260,104
Markusch discloses "an optically clear, light stable polyurethane-urea
elastomer" (col. 4, 1. 15) made by reacting
A) a liquid polyisocyanate or polyisocyanate prepolymer
having an NCO group content of about 5 to about 50%, an
average functionality of 2 to 3, a viscosity of less than
5,000 mPa.s at 25Q C., and comprising (1) from 20 to 100% by
weight, based on 100% by weight of A), of a ( cyclo )aliphatic
polyisocyanate having an NCO group content of about 32% to
about 50% by weight and a functionality of about 2,[2J and
(2) from 0 to 80% by weight, based on 100% by weight of A),
of at least one organic compound having at least two hydroxyl
groups, and a molecular weight of from about 62 to about
8,000; with B) an isocyanate-reactive component comprising
( 1) at least one organic compound containing at least two
aromatic amine groups, and having a molecular weight of 100
to 1,000 and (2) at least one organic compound having at least
two hydroxyl groups and a molecular weight of about 62 to
6,000; in the presence of C) at least one organometallic catalyst.
[col. 4, 11. 18-3 5]
Suitable components B)(l) "include aromatic diamine chain extenders
having a molecular weight of from 100 to 1,000. The preferred amine chain
extenders contain exclusively aromatically bound primary or secondary
(preferably primary) amino groups, and preferably also contain alkyl
substituents" (col. 8, 11. 1-7).
2 "Suitable ( cyclo )aliphatic polyisocyanates are selected from the group
consisting of 4,4'-dicyclohexylmethane diisocyanate (rMDI), 1,6-
hexamethylene diisocyanate (HDI), isophorone diisocyanate (IPDI), 1,4-
cyclohexane diisocyanate (CHDI), m-tetramethylxylene diisocyanate
(m-TMXDI), and mixtures thereof' (col. 5, 11. 28-34).
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Appeal2014-009674
Application 11/260,104
Luong discloses a polyurea which can be made using "low viscosity,
secondary amines, such as polyaspartic esters with reactivity substantially
lower than primary amines" (i-f 35).
The Appellants assert that no prima facie case of obviousness has
been established because none of Markusch, Slagel '939 and Slagel '262
discloses the relative reactivity of primary and secondary amines, Luong
indicates that secondary amines are less reactive than primary amines, and
Wu indicates that the use of secondary amines causes decreased Shore A
hardness (App. Br. 7-11).
The Appellants have not established that even if combining
Markusch's secondary amines (or Luong's polyaspartic esters) with primary
amines (col. 8, 11. 1-7) reduces the reactivity and the polyurethane-urea's
Shore A hardness, the reductions are sufficient that one of ordinary skill in
the art would have had no apparent reason to make the elastomer. See KSR
Int'! Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (Establishing a prima
facie case of obviousness of an invention comprising a combination of
known elements requires "an apparent reason to combine the known
elements in the fashion claimed"). The Appellants have not established that
one of ordinary skill in the art would have considered only a polyurethane-
urea having the best combination of reactivity and Shore A hardness to be
useful, and have not explained why, if that is so, such a person would not
have arrived at the Appellants' combination of reactivity and Shore A
hardness through no more than routine optimization of Markusch's
polyurethane-urea. See In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir.
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Application 11/260,104
1990); In re Kulling, 897 F.2d 1147, 1149 (Fed. Cir. 1990); In re Aller, 220
F.2d 454, 456 (CCPA 1955); In re Sebek, 465 F.2d 904, 907 (CCPA 1972).
The Appellants assert that a comparison of the Appellants'
Specification's Examples indicates that the claimed polyurethane-urea has
an unexpected difference in properties compared to Markusch' s
polyurethane-urea (App. Br. 11-26).
It is not enough for the Appellants to show that the results for the
Appellants' invention and the comparative examples differ. The difference
must be shown to be an unexpected difference. See In re Freeman, 4 7 4 F .2d
1318, 1324 (CCPA 1973); In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972).
The Appellants have not provided evidence that any difference pointed out
by the Appellants would have been unexpected by one of ordinary skill in
the art. The Appellants have provided mere attorney argument to that effect
(App. Br. 12, 16), and arguments of counsel cannot take the place of
evidence. See In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984); In re
Payne, 606 F.2d 303, 315 (CCPA 1979); In re Greenfield, 571F.2d1185,
1189 (CCPA 1978); In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974).
Moreover, the Appellants have not established that the relied-upon
evidence is commensurate in scope with the claims. See In re Grasselli, 713
F.2d 731, 743 (Fed. Cir. 1983); In re Clemens, 622 F.2d 1029, 1035 (CCPA
1980). The Appellants point out that they rely upon eleven examples
(App. Br. 20; Reply Br. 10-12), but the Appellants have not established that
those examples are representative of the broad component compositions and
amounts recited in their claims.
Thus, we are not persuaded of reversible error in the rejections.
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Appeal2014-009674
Application 11/260,104
DECISION/ORDER
The rejections under 35 U.S.C. § 103 of claims 1, 3-8, 10-16, 18, 20,
22, 23, 25-30, 32-38, 40, 42, and 44 over Markusch in view of Slagel '939
and Slagel '262, and claims 15, 17, 19, 21, 37, 39, 41, and 43 over Markusch
in view of Slagel '939, Slagel '262, and Luong are affirmed.
It is ordered that the Examiner's decision 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).
AFFIRMED
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