Bayer MaterialScience LLC

Patent Trials and Appeals Board

Mar 1, 2021

2020001133 (P.T.A.B. Mar. 1, 2021)

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

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Application 14/108,865

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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).

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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.
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Application 14/108,865

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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
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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,
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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