Ex parte WEN et al.

Board of Patent Appeals and Interferences

Jul 30, 1998

08533640 (B.P.A.I. Jul. 30, 1998)

Application for patent filed September 25, 1995.1
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1) was not written
for publication in a law journal and (2) is not binding precedent of the Board.
Paper No. 19
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte WEI-JIAN WEN, BRIAN J.
BRIDDELL and KATHLEEN L. LAMB
_____________
Appeal No. 97-3608
Application 08/533,6401
______________
ON BRIEF
_______________
Before RONALD H. SMITH, WARREN and OWENS, Administrative Patent
Judges.
RONALD H. SMITH, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 1 and
3-12. Claim 2 was cancelled in the amendment filed November 14,
1996.
The subject matter relates to a 100% solids polyurethane
adhesive composition for bonding roofing materials. Claim 1 is
Appeal No. 97-3608
Application 08/533,640
2
illustrative of the appealed claims and reads as follows:
1. A 100% solids polyurethane adhesive composition for
bonding roofing materials comprising:
a) a first component selected from the group consisting of:
monomeric diisocyanates selected from the group consisting of
toluene diisocyanate, methylene diphenyl diisocyanate, hexamethyl
diisocyanate, isophorone diisocyanate, and hydrogenated methylene
diphenyl diisocyanate; polymeric methylene diphenyl isocyanates
formed by the reaction of one of said monomeric diisocyanates; or
a prepolymer formed by the reaction of one of said monomeric
diisocyanates or polymeric isocyanates with a polyol selected
from the group consisting of polyether and polyester polyols;
b) a second component comprising from about 50 to 60% by
weight of a polyether polyol, from about 1 to 5% by weight of a
reinforcing diol, from about 5 to 15% by weight of a hydroxyl-
terminated homopolymer of polybutadiene, and a tackifier; wherein
the ratio of isocyanate groups in said first component to the
ratio of hydroxyl groups in said second component is from about
0.5:1 to 1.5:1, and wherein said adhesive composition provides a
water-tight seal upon bonding to roofing materials.
The references relied on by the examiner are:
Harada 4,607,439 Aug. 26, 1986
Gilch et al. (Gilch) 4,661,542 Apr. 28, 1987
Bandlish 4,847,319 Jul. 11, 1989
Claims 1 and 3-12 stand rejected under 35 USC § 103 as
unpatentable over Harada in view of Gilch and Bandlish. We have
carefully considered the entire record, including the appellants'
position as set forth in the briefs and the examiner's position
as set forth in the answer, and we have decided that we will not
Appeal No. 97-3608
Application 08/533,640
3
sustain the rejection.
Harada, the primary reference relied on by the examiner,
teaches the preparation of a laminated fabric sheet having
excellent air permeability, which is prepared using a rubber
composition which includes as a main ingredient a liquid diene
polymer (col. 2, lines 4-16). Harada discloses that the use of
the liquid diene polymer as a main ingredient is extremely
effective for forming air passages in the rubber composition
(column 4, line 58 to column 5, line 5). As pointed out by
appellants, there is no teaching or suggestion in Harada, nor in
the secondary references, of the claimed composition which
comprises only 5 to 15% of the polybutadiene homopolymer in part
(b), the second component of the claimed composition. In
examples 1 and 2, Harada discloses 48% and 29% of diene polymer
by weight, and Harada teaches the use of the diene polymer as a
main ingredient required to form the desired air passages in his
rubber composition.
The examiner asserts that it would have been "obvious to
arrive at the stoichiometry" because it's obvious to adjust
amounts to vary properties. However, the examiner's assertions
Appeal No. 97-3608
Application 08/533,640
4
are not sufficient to satisfy the examiner's burden of providing
the requisite factual basis and establishing the requisite
motivation to support the obviousness conclusion. The
modification of the Harada disclosure proposed by the examiner is
contrary to the express teaching of Harada that the diene polymer
must be present as a main ingredient and would render the
composition useless for its intended purpose of producing an air
permeable laminated sheet. If a proposed modification would
render the prior art invention being modified unsatisfactory for
its intended purpose, then there is no suggestion or motivation
to make the proposed modification. In re Gordon, 733 F.2d 900,
902, 221 USPQ 1125, 1127 (Fed. Cir. 1984).
Nor do the references relied on by the examiner disclose or
suggest a polymeric roofing membrane sealed to a roof-deck with
the adhesive composition of claim 12 to provide a water-tight
seal. We also agree with appellants that none of the references
teach or suggest the claimed ratio of isocyanate groups to
hydroxyl groups for the reasons pointed out by appellants on page
11 of the brief and page 2 of the reply brief.
Appeal No. 97-3608
Application 08/533,640
5
The decision of the examiner is reversed.
REVERSED
)
RONALD H. SMITH )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
CHARLES F. WARREN )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
TERRY J. OWENS )
Administrative Patent Judge )
Appeal No. 97-3608
Application 08/533,640
6
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