Bayer MaterialScience LLCDownload PDFPatent Trials and Appeals BoardMar 1, 20212020001133 (P.T.A.B. Mar. 1, 2021) 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. 14/108,865 12/17/2013 Karl W. Haider 2013P30276US 9578 157 7590 03/01/2021 Covestro LLC 1 Covestro Circle PITTSBURGH, PA 15205 EXAMINER LEONARD, MICHAEL L ART UNIT PAPER NUMBER 1763 NOTIFICATION DATE DELIVERY MODE 03/01/2021 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): 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 KARL W. HAIDER, JULIE OPERCHAL, RICHARD R. ROESLER, RICK STARCHER, and STEPHANIE STRAZISAR Appeal 2020-001133 Application 14/108,865 Technology Center 1700 Before ADRIENE LEPIANE HANLON, MICHAEL P. COLAIANNI, and LILAN REN, Administrative Patent Judges. REN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1–14. See Final Act. 2. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as “Covestro LLC”. Appeal Br. 2. The Appeal Brief is not paginated and we therefore supply our own. Appeal 2020-001133 Application 14/108,865 2 CLAIMED SUBJECT MATTER Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A polyurethane/polyurea material that comprises the reaction product of: (A) a (cyclo)aliphatic polyisocyanate or (cyclo)aliphatic polyisocyanate prepolymer having an NCO group content of about 4 to 60%, and an average functionality of 1.8 to 6, wherein said prepolymer comprises the reaction product of a (cyclo)aliphatic isocyanate and a polyol having a molecular weight of less than 1000; with (B) an isocyanate-reactive component comprising at least one aromatic diamine compound which contains from 1 to 8 thiomethyl groups, and has a molecular weight of from 150 to 1000; in the presence of (C) one or more catalysts selected from the group consisting of tin (II) catalysts, bismuth (III) catalysts and mixtures thereof; wherein the relative quantities of (A) and (B) are such that the Isocyanate Index is from about 70 to about 130. REFERENCE The prior art relied upon by the Examiner is: Name Reference Date Markusch US 6,562,932 B1 May 13, 2003 REJECTION Claims Rejected 35 U.S.C. § Reference(s)/Basis 1–14 103 Markusch Appeal 2020-001133 Application 14/108,865 3 OPINION Claim 12 Appellant does not dispute the Examiner’s finding of Markusch’s teachings but argues solely that “the Markusch et al. reference does not provide a logical basis for one skilled in the art to reasonably conclude or expect [the recited product] would be expected to exhibit a significantly decreased gel time.” Appeal Br. 9. Appellant states that “Example XIX of the Markusch et al. reference is believed to be the closest prior art to the instant claims” and argues that the prior art example “took a very long time to gel and to cure.” Id. at 10. Appellant’s argument is unpersuasive because Appellant has not identified evidence of record that establishes the unexpected nature of the differences (if any) between the claimed invention and the prior art. Appellant does not specify the “very long time” it takes for the prior art product to gel and only argues that the prior art product “took over 5 days to cure at 50°C.” Appeal Br. 10–13. As the Examiner points out, and Appellant acknowledges, cure time and gel time are two separate and distinct properties. Ans. 4–5; see Reply Br. 2 (stating that Appellant’s position “does not rely on a comparison of gel times to cure times” but when “compared to the other Examples of the Markusch et al. reference, Example XIX was much slower to cure.”). 2 Appellant argues for the patentability of claims 1–12 as a group with claim 1 being the representative claim. See Appeal Br. 9–15. These claims stand or fall together. See id.; see also 37 C.F.R. § 41.37(c)(1)(iv). Appeal 2020-001133 Application 14/108,865 4 With regard to Table A which compares gel time for comparative examples 5 and 6 with inventive examples 11 and 13–16 and Table B which compares a different subset of the examples (comparative examples 3, 5, and 8 and inventive examples 10 and 12)3, Appellant acknowledges that the data is not based on Example XIX of Markusch which is the closest prior art according to Appellant. See Appeal Br. 11 (“Dibutyltin dilaurate is similar to dimethyltin dilaurate which was used as the tin(IV) catalyst in Example XIX of the Markusch et al. reference.”). The record is therefore devoid of evidence of any unexpected gel time when compared to the closest prior art. See In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991) (“[W]hen unexpected results are used as evidence of nonobviousness, the results must be shown to be unexpected compared with the closest prior art.”). Appellant’s argument that the data in Tables A and B shows unexpected gel time is unpersuasive also because Appellant does not address the Examiner’s finding that the data is not commensurate in scope with the claim language. For example, the Examiner finds that the data in Table A “is based solely on the examples using four tin (II) catalyst and one bismuth catalyst” which is not commensurate in scope with the recited “'one or more catalysts selected from the group consisting of tin (II) catalysts, bismuth (III) catalysts and mixtures thereof.” Final Act. 5. Appellant disagrees with the Examiner but acknowledges that the data “illustrate[s] the improvement 3 The Specification provides data for comparative examples 1-9 and inventive examples 10-16. Spec. pg. 13. Appellant does not explain why a subset of the data (such as comparative examples 1, 2, 4, and others) are left out in Tables A and B in the Appeal Brief. Appeal 2020-001133 Application 14/108,865 5 when using either a tin(II) catalyst or a bismuth(III) catalyst” without explaining why the data does not use recited “mixtures thereof” catalyst. Appeal Br. 14–15. Table B uses the same examples and is therefore incommensurate in scope with claim 1 for the same reason. Moreover, the claim language encompasses other tin (II) catalysts and bismuth (III) catalyst which are not included in the limited data in Tables A and B. To that end, there is no evidence establishing that the catalysts used in the examples in Tables A and B are representative of the activity of the broad genus of catalysts encompassed by the claim. We further note that the data in both tables is incommensurate in scope with the claim in various aspects. For example, claim 1 does not require any particular amount of the recited catalyst and Appellant does not explain why the data presented which uses 0.5 grams of the catalyst (Spec. ¶ 55) applies to the entire scope of the claim. See In re Harris, 409 F.3d 1339, 1344 (Fed. Cir. 2005) (holding that the extent of the showing relied upon by Appellants also must reasonably support the entire scope of the claims at issue). Moreover, the Examiner finds that the results are not unexpectedly superior. Final Act. 5. For example, Table A shows that a 16% decrease in gel time between comparative example 5 and inventive example 16. Appeal Br. 12. Table B shows a 14% decrease of gel time between comparative example 5 and inventive example 12. Id. at 13. “[I]t is not enough to show that results are obtained which differ from those obtained in the prior art: that difference must be shown to be an unexpected difference.” In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972). Superiority alone is not sufficient to show that the result is unexpected. Pfizer, Inc. v. Apotex, Inc., 480 F.3d Appeal 2020-001133 Application 14/108,865 6 1348, 1371 (Fed. Cir. 2007) (“[A]ny superior property must be unexpected to be considered as evidence of non-obviousness.”). Moreover, what would have been expected also is not explicitly conveyed by the Specification. See Pfizer, 480 F.3d at 1369 (holding that a proper evaluation of a showing of unexpected results considers what properties were expected). Appellant does not address these findings. Appeal Br. 10–14. No reversible error has therefore been identified. Claims 13 & 14 Dependent claims 13 and 14 both additionally recite “wherein said polyisocyanate prepolymer comprises the reaction product of a (cyclo)aliphatic polyisocyanate and a polyester polyol.” Claims Appendix. Appellant’s arguments with regard to the rejection of claims 13 and 14 mirror those for claim 1. Compare Appeal Br. 9–15, with id. at 15–20. These arguments do not demonstrate reversible error for the same reason as stated supra. CONCLUSION The Examiner’s rejection is affirmed. More specifically, Appeal 2020-001133 Application 14/108,865 7 DECISION SUMMARY Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–14 103 Markusch 1–14 TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED Copy with citationCopy as parenthetical citation