Ex parte Wamprecht et al.

Board of Patent Appeals and Interferences

Oct 24, 2001

08583167 (B.P.A.I. Oct. 24, 2001)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
Paper No. 16
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte CHRISTIAN WAMPRECHT
and MICHAEL SONNTAG
____________
Appeal No. 1998-3113
Application No. 08/583,167
____________
ON BRIEF
____________
Before OWENS, LIEBERMAN, and TIMM, Administrative Patent
Judges.
OWENS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the examiner’s final rejection of
claims 1-3. Claims 4 and 5, which are the only other claims
remaining in the application, stand withdrawn from
consideration by the examiner as being directed toward a
nonelected invention.
Appeal No. 1998-3113
Application No. 08/583,167
2
THE INVENTION
The claimed invention is directed toward a specified
polyester polyol composition. Claim 1 is illustrative:
1. A polyester polyol having a hydroxyl number of 60 to
400, which is the esterification product of
a) an alcohol component comprising
a1) one or more aliphatic or cycloaliphatic
alcohols having at least 3 hydroxyl groups and 3 to
8 carbon atoms,
a2) optionally one or more aliphatic or
cycloaliphatic alcohols having 2 hydroxyl groups and 2 to
18 carbon atoms and
a3) optionally one or more aliphatic or
cycloaliphatic, saturated or unsaturated alcohols having
one hydroxyl group and 1 to 18 carbon atoms,
with
b) a carboxylic acid component comprising
b1) itaconic acid, maleic acid, their anhydrides
and/or fumaric acid,
b2) optionally one or more aliphatic or
cycloaliphatic, saturated or unsaturated
dicarboxylic acids having at least 2 carbon atoms
and/or their anhydrides other than those set forth
under b1) and
b3) optionally one or more aliphatic or
cycloaliphatic, saturated or unsaturated
monocarboxylic acids having 1 to 18 carbon atoms
and/or their anhydrides,
provided that component a3) is used in an amount of at least
10 mole%, based on the total moles of component a), or
component b3) is used in an amount of at least 10 mole %,
based on the total moles of component b).
THE REFERENCES
Appeal No. 1998-3113
Application No. 08/583,167
3
Nodelman et al. (Nodelman) 4,859,791 Aug. 22,
1989
Wamprecht et al. (Wamprecht) 2,138,310 Jun. 21,
1995
(Canadian patent application)
THE REJECTION
Claims 1-3 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Wamprecht in view of Nodelman.
OPINION
We affirm the aforementioned rejection. Because our
rationale differs significantly from that of the examiner, we
denominate the affirmance as involving a new ground of
rejection under 37 CFR § 1.196(b).
The appellants state that the claims stand or fall
together (brief, page 2). We therefore limit our discussion
to one claim, i.e., claim 1, which is the sole independent
claim. See In re Ochiai, 71 F.3d 1565, 1566 n.2, 37 USPQ2d
1127, 1129 n.2 (Fed. Cir. 1995); 37 CFR § 1.192(c)(7)(1995).
Nodelman discloses a polyester polyol which has a
hydroxyl number of about 200 to 350 and is the esterification
product of 1) an alcohol component which has a functionality
of at least 3 and which can have a number of carbon atoms
Appeal No. 1998-3113
Application No. 08/583,167
4
within the 3 to 8 range, and 2) a carboxylic acid component
including, in an amount which should be at least about 50 wt%,
an aromatic or a cycloaliphatic carboxylic acid, and
optionally including acyclic carboxylic acids and anhydrides
which can be maleic acid, maleic anhydride or fumaric acid
(col. 2, lines 16-24 and 40-49; col. 2, line 60 - col. 3, line
3). The functionality can be controlled by a including in the
composition a monoalcohol or a monofunctional acid (col. 2,
lines 57-59; col. 3, lines 4-6 and 29-33). The teaching that
“[b]y varying the amounts and functionalities of the
individual components, polyester polyols with virtually any
theoretical average functionality may be obtained” (col. 3,
lines 33-36) would have fairly suggested, to one of ordinary
skill in the art, including in the composition any amount of
monoalcohol or monofunctional acid needed to obtain the
desired functionality, such as amounts of at least 10 mole%.
Nodelman’s disclosure of polyol A, wherein the monofunctional
acid (2-ethylhexanoic acid) is present in an amount of 11.8
mole% of the acid and anhydride components, further would have
fairly suggested, to one of ordinary skill in the art,
Appeal No. 1998-3113
Application No. 08/583,167
A discussion of Wamprecht is not necessary to our1
decision.
5
including in the composition an amount of monofunctional acid
which is greater than 10 mole%.
Accordingly, we conclude that the composition recited in
the appellants’ claim 1 would have been prima facie obvious to
one of ordinary skill in the art at the time of the
appellants’ invention over Nodelman.1
The appellants argue that one of ordinary skill in the
art would not have used the teachings of Nodelman to modify
Wamprecht’s composition (brief, pages 3-4; reply brief, page
2). This argument is not persuasive because, as discussed
above, the claimed invention would have been fairly suggested
to one of ordinary skill in the art by Nodelman.
For the above reasons, we conclude that the claimed
invention would have been obvious to one of ordinary skill in
the art within the meaning of 35 U.S.C. § 103. Hence, we
affirm the examiner’s rejection. Because our rationale
differs substantially from that advanced by the examiner, we
denominate the affirmance as involving a new ground of
rejection under
Appeal No. 1998-3113
Application No. 08/583,167
6
37 CFR § 1.196(b).
DECISION
The rejection of claims 1-3 under 35 U.S.C. § 103 over
Wamprecht in view of Nodelman is affirmed. This affirmance is
denominated as involving a new ground of rejection under 37
CFR § 1.196(b).
This decision contains a new ground of rejection pursuant
to 37 CFR § 1.196(b) (amended effective Dec. 1, 1997, by final
rule notice, 62 Fed. Reg. 53,131, 53,197 (Oct. 10, 1997), 1203
Off. Gaz. Pat. & Trademark Office 63, 122 (Oct. 21, 1997)).
37 CFR
§ 1.196(b) provides, "[a] new ground of rejection shall not be
considered final for purposes of judicial review."
37 CFR § 1.196(b) also provides that the appellant,
WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new
ground of rejection to avoid termination of proceedings (37
CFR § 1.197(c) as to the rejected claims:
(1) Submit an appropriate amendment of the
claims so rejected or a showing of facts relating to
the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the
application will be remanded to the examiner . . . .
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Application No. 08/583,167
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(2) Request that the application be reheard
under § 1.197(b) by the Board of Patent Appeals and
Interferences upon the same record . . . .
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Application No. 08/583,167
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No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED, 37 CFR § 1.196(b)
TERRY J. OWENS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
PAUL LIEBERMAN ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
CATHERINE TIMM )
Administrative Patent Judge )
TJO/sld
Appeal No. 1998-3113
Application No. 08/583,167
9
PATENT DEPARTMENT
BAYER CORPORATION
100 BAYER ROAD
PITTSBURGH, PA 15205-9741
SHEREECE DAVIS
Appeal No. 1998-3113
Application No. 08/583,167
APJ OWENS
APJ
APJ KEYBOARD()
DECISION:
Prepared: August 15, 2002