Ex Parte Slack

Board of Patent Appeals and Interferences

Mar 10, 2010

10706713 (B.P.A.I. Mar. 10, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte WILLIAM E. SLACK
____________

Appeal 2009-003557
Application 10/706,713
Technology Center 1700
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Decided: March 10, 2010
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Before BRADLEY R. GARRIS, PETER F. KRATZ, and
MARK NAGUMO, Administrative Patent Judges.

GARRIS, Administrative Patent Judge.

DECISION ON APPEAL

Appellant appeals under 35 U.S.C. § 134 from the Examiner's
decision rejecting claims 1-18. We have jurisdiction under 35 U.S.C. § 6.
We AFFIRM for the reasons expressed in the Answer and below.

STATEMENT OF THE CASE
Appellant claims a stable liquid, allophanate-modified, partially
trimerized diphenylmethane diisocyanate (claim 1) and a process for the
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preparation thereof (claim 10). This partially trimerized diphenylmethane
diisocyanate is defined as comprising the reaction product of certain
ingredients including:
a)(1) a diphenylmethane diisocyanate comprising:
(i) from 10 to 40% by weight of 2,4'-diphenylmethane
diisocyanate,
(ii) from 0 to 6% by weight of 2,2'-diphenylmethane
diisocyanate, and
(iii) from 54 to 90% by weight of 4,4'-diphenylmethane
diisocyanate, wherein the %'s by weight of a)(1)(i), a)(1)(ii) and a)(1)(iii)
total 100% by weight of a)(1).
(claim 1).

Representative claims 1 and 3 read as follows:
1. A stable liquid, allophanate-modified, partially trimerized
diphenylmethane diisocyanate having an NCO group content of from 15
to 30% by weight and comprising the reaction product of:
a)(1) a diphenylmethane diisocyanate comprising:
(i) from 10 to 40% by weight of 2,4'-diphenylmethane diisocyanate,

(ii) from 0 to 6% by weight of 2,2'-diphenylmethane diisocyanate,
and

(iii) from 54 to 90% by weight of 4,4'-diphenylmethane diisocyanate,
wherein the %'s by weight of a)(1)(i), a)(1)(ii) and a)(1)(iii) total 100% by
weight of a)(1);

and

b) an organic compound containing at least one hydroxyl group, in the
presence of a catalytic amount of
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c) at least one catalyst selected from the group consisting of (1) one or more
trimer catalysts, (2) one or more allophanate catalysts, (3) an allophanate-
trimer catalyst system and (4) mixtures thereof, with the proviso that when
said catalyst c) (2) is present, then catalyst c) (1) and/or catalyst system c)(3)
is also present;

wherein component b) is present in a quantity such that there are from about
0.01 to about 0.25 equivalent hydroxyl groups per equivalent of isocyanate
of the MDI present, at least about 50% of the urethane groups are converted
to allophanate groups by c) said catalyst or catalyst system, and a catalyst
stopper is added once the desired NCO group content is attained.

3. The stable liquid, allophanate-modified, partially trimerized
diphenylmethane diisocyanate of Claim 1, wherein a)(1) said diphenyl-
methane diisocyanate comprises (i) from 20 to 35% by weight of the 2,4'-
isomer, (ii) from 0 to 2% by weight of the 2,2'-isomer, and (iii) from 63 to
80% by weight of the 4,4'-isomer, with the %'s by weight of a)(1)(i), a)(1)(ii)
and a)(1)(iii) totaling 100% by weight of a)(1).

The references set forth below are relied upon by the Examiner as
evidence of obviousness:
Scholl 5,124,370 Jun. 23, 1992
Slack ('272) 5,663,272 Sep. 2, 1997
Rosthauser 5,783,652 Jul. 21, 1998
Slack ('609) 5,955,609 Sep. 21, 1999
Slack ('308) 6,127,308 Oct. 3, 2000
Markusch 6,482,913 B1 Nov. 19, 2002
Slack ('339) 6,887,300 B2 May 3, 2005
Slack ('746) 6,991,746 B2) Jan. 31, 2006

The Examiner rejects claims 1-18 under 35 U.S.C. § 103(a) as being
unpatentable over Slack '609 or Slack '308 in view of Scholl and further in
view of Slack '272 or Slack '399 or Slack '746 or Rosthauser or Markusch.
The Examiner concedes that each of Slack '609 and Slack '308 fails to
disclose the diphenylmethane diisocyanate (MDI) isomer mixture defined by
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representative claims 1 and 3 but concludes that it would have been obvious
for one with ordinary skill in this art to react such isomer mixtures according
to the teachings of Slack '609 or '308 in view of Scholl's use of such
mixtures to produce stable liquid polyisocyanate mixtures of the
diphenylmethane series (MDI) and further in view of the respective
teachings in the remaining applied references (Ans. 3-5).
We will adopt as our own the findings of fact, conclusions of law, and
rebuttals to argument expressed by the Examiner in the Answer (Ans. 3-9).
We add the following comments for emphasis.
As an initial matter, we agree with the Examiner that Appellant has
misinterpreted representative claims 1 and 3 as excluding polymeric MDI
(App. Br. 8) and have misinterpreted Scholl's disclosure of MDI isomers
ranges (App. Br. 7) for the reasons fully explained in the Answer (Ans. 6-7).
In response, Appellant states that "Appellants [sic] simply has a different
interpretation of the claims and of the Scholl . . . reference than the
construction offered by the Examiner" (Reply Br. 4). However, on the
record before us, the Examiner's interpretation is reasonable and does not
become unreasonable simply because Appellant might have some support
for the different interpretation of the claims and the Scholl reference. See
In re Morris, 127 F.3d 1048, 1055-56 (Fed. Cir. 1997).
Appellant argues that replacing the MDI isomer mixture of Slack '609
or '308 with the MDI isomer mixtures exemplified by Scholl would not
result in the claimed invention (App. Br. 8-9). This argument is
unpersuasive for two independent reasons. First, the argument is based on
Appellant's above-noted misinterpretations of the claims and the Scholl
reference. Second, the argument is implicitly premised on an incorrect test
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for obviousness which requires Scholl's exemplified isomer mixtures to be
bodily incorporated into the reaction scheme of Slack '609 or '308. The
legally correct test for obviousness is what the combined teachings of the
applied references would have suggested to those of ordinary skill in the art.
In re Keller, 642 F.2d 413, 425 (CCPA 1981). For the reasons detailed by
the Examiner, the combined teachings of the applied references would have
suggested replacing the MDI isomer mixtures of Slack '609 or '308 with the
broadly defined MDI isomer mixtures taught by Scholl to yield stable liquid
polyisocyanate mixtures of the diphenylmethane series.
In this latter regard, Appellant further argues that an artisan could not
reasonably expect success in combining the applied reference teachings as
proposed by the Examiner because Examples 18 and 19 of the Specification
"clearly illustrate that stable liquid, partially trimerized products can not be
prepared from 100% monomeric MDI compositions as described by the
Scholl . . . reference" (App. Br. 10; see also Reply Br. 6-11).
We disagree with Appellant's contention that Examples 18 and 19
"clearly illustrate that stable liquid, partially trimerized products can not be
prepared from 100% monomeric MDI compositions as described by the
Scholl . . . reference" (App. Br. 10). This contention is directly contrary to
Scholl's express teaching that the disclosed MDI isomer mixtures "provide
polyisocyanate mixtures of the diphenyl methane series (MDI) which would
be stable in storage and liquid" (col. 1, ll. 54-56). Because the Scholl
reference is a US patent, it is presumptively valid by statute. See 35 U.S.C.
§ 282 (2007); see also, Amgen Inc. v. Hoechst Marion Roussel, Inc., 314
F.3d 1313, 1355 (Fed. Cir. 2003) (relying on precedent as well as § 282, the
court held that " a presumption arises that both the claimed and unclaimed
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disclosures in a prior art patent are enabled."). This presumption of validity
is not overcome by Examples 18 and 19 of Appellant's Specification. At
most, these examples merely show that it is possible to utilize Scholl's MDI
isomer mixtures without obtaining the stable liquid results taught by Scholl.
Such a showing is inadequate to overcome the strong presumption that the
teachings of Scholl would enable an artisan to obtain the stable liquid results
expressly taught by Scholl. See In re Weber, 405 F.2d 1403, 1407 (CCPA
1969) ("We do not think that appellants' mere showing that it is possible to
operate within Mautner's disclosure without obtaining his results is sufficient
to overcome the strong presumption that the process of a patent if used by
one skilled in the art will produce the results alleged by the patentee.").
Finally, Appellant argues that the MDI isomer mixture defined by
claim 3 would not have been obvious to one of ordinary skill in the art upon
reading the applied references (App. Br. 15-17). Appellant's rationale in
support of this argument corresponds to the rationale previously discussed
above and is unpersuasive for the reasons expressed above and in the
Answer.
In light of the foregoing, Appellant has failed to reveal harmful error
in the Examiner's § 103 rejection of representative claims 1 and 3. We
sustain, therefore, the rejection of these claims and of the other claims on
appeal.
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
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