Ex Parte Alanzo et al

Patent Trial and Appeal Board

Aug 18, 2017

12989369 (P.T.A.B. Aug. 18, 2017)

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.
12/989,369 10/22/2010 Vito Alanzo LSP-1042US 8480
87627 7590 08/22/2017
Mossman, Kumar & Tyler PC
P.O. Box 421239
Houston, TX 77242
EXAMINER
NILAND, PATRICK DENNIS
ART UNIT PAPER NUMBER
1762
NOTIFICATION DATE DELIVERY MODE
08/22/2017 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):
docket @ mktlaw .u s .com
tthigpen@mktlaw.us.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte VITO ALANZO, GABRIELE COSTA,
DARIO CONTI, and GIUSEPPE LI BASSI
Appeal 2017-000201
Application 12/989,3 691
Technology Center 1700
Before ROMULO H. DELMENDO, KAREN M. HASTINGS, and
JAMES C. HOUSEL, Administrative Patent Judges.
PER CURIAM.
DECISION ON APPEAL
A. STATEMENT OF THE CASE
Appellants filed an appeal under 35 U.S.C. § 134(a) from the
Examiner’s decision finally rejecting claims 13—33. We have jurisdiction
under 35 U.S.C. § 6(b).2
We AFFIRM.
1 According to Appellants, the real party in interest is Lamberti SpA.
Appeal Br. 3.
2 Our Decision refers to the Appellants’ Specification (Spec.) filed Oct. 22,
2010, Appellants’ Appeal Brief (Appeal Br.) filed Jan. 24, 2014, and the
Examiner’s Answer (Ans.) dated July 11, 2014.
Appeal 2017-000201
Application 12/989,369
The subject matter on appeal relates to methods for preparing an
aqueous dispersion of film-forming cationic polyurethanes, compositions
comprising an aqueous dispersion of film-forming cationic polyurethanes,
and methods for preparing products employing the aqueous dispersion of
film-forming cationic polyurethanes (see, e.g., claims 13, 23, and 33).
Appellants disclose that dispersions of film-forming cationic polyurethanes
would be alternatives to commonly used urea-formaldehyde resins. Spec.
1:28—32. However, it is difficult to attain dispersions having good
dispersibility and stability in water. Id. 2:1—4. Appellants disclose a
dispersion that has improved stability and provides films with increased
transparency and gloss. Id. 2:5—11.
Independent claim 13 is illustrative and is reproduced below from the
Claims Appendix of the Appeal Brief.3 Limitations at issue are italicized.
13. A method for preparing an aqueous dispersion of film-
forming cationic polyurethanes comprising:
A) reacting one or more aliphatic diisocyanates with an
aliphatic tertiary amine having two hydroxyl groups that react
with an -NCO group and a linear polyether or polyester polyol
having a molecular weight of from about 500 to about 5,000, to
obtain a prepolymer having free isocyanate groups;
B) salifying amine groups of the prepolymer with
methanesulfonic acid; and
C) extending the obtained cationic prepolymer with water
or amines.
The claims on appeal stand rejected as follows:4
(1) claims 13—33 under 35U.S.C. § 112, second paragraph, as
3 Appeal Br. 23.
4 The Examiner has withdrawn the rejection of claims 13—33 under 35
U.S.C. § 112, first paragraph, as failing to comply with the enablement
requirement; the rejection of claim 13 and its dependent claims under 35
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Application 12/989,369
indefinite;
(2) claim 33 under 35 U.S.C. § 112, second paragraph, as being
incomplete for omitting essential steps;
(3) claims 13—21, 23—31, and 33 under 35 U.S.C. § 103(a) as
unpatentable over Schwindt* * * * 5 in view of Bechara;6 and
(4) claims 13—33 under 35 U.S.C. § 103(a) as unpatentable over
Scriven7 in view of Bechara and Schwindt.
B. DISCUSSION
Indefiniteness Rejection of Claims 13—33
Claims 13—33 are rejected under 35 U.S.C. § 112, second paragraph,
as indefinite.
The Examiner finds independent claims 13, 23, and 33 do not specify
what type of “molecular weight” is recited and Appellants’ Specification
does not define a basis for “molecular weight.” Ans. 2, 21. The Examiner
finds there are various bases for “molecular weight” and, in view of this, the
scope of the claims is unclear. Id.
Appellants assert:
[it] is well known in the art that the polyether and polyester
polyols referenced in claims 13—33 are typically referred to by
their number average molecular weight (Mn). Unless another
type of molecular weight was reported, one of ordinary skill in
U.S.C. § 112, second paragraph, because the language “an aliphatic tertiary
amine two hydroxyl groups” is indefinite; and the rejection of claims 13—21,
23—31, and 33 under 35 U.S.C. § 102(b) as being anticipated by Schwindt.
Ans. 20.
5 Schwindt et al., US 5,459,197 A, issued Oct. 17, 1995 (“Schwindt”).
6 Bechara et al., US 5,561,187 A, issued Oct. 1, 1996 (“Bechara”).
7 Scriven et al., US 4,147,679, issued Apr. 3, 1979 (“Scriven”).
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Application 12/989,369
the art would have assumed that the molecular weight was the
number average molecular weight.
Appeal Br. 9.
However, as stated by the Examiner at page 21 of the Examiner’s
Answer, this is mere attorney argument without any supporting evidence
demonstrating it was known in the art that “molecular weight” refers to a
particular basis, such as the number average molecular weight asserted by
Appellants. See In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974)
(“Attorney’s arguments in a brief cannot take the place of evidence.”).
Moreover, Appellants’ statement that “polyether and polyester polyols . . .
are typically referred to by their number average molecular weight (Mn)”
(emphasis added) demonstrates the Examiner’s point that there are different
bases for molecular weight. leva Pharm. USA, Inc. v. Sandoz, Inc., 789
F.3d 1335, 1341 (Fed. Cir. 2015) (claims held indefinite following remand
from the United States Supreme Court where the patent failed to provide
guidance on how molecular weight recited in the claims was to be
measured).
For the reasons discussed above and those set forth in the Examiner’s
Answer, we sustain the Examiner’s indefiniteness rejection of claims 13—33.
Rejection of Claim 33 under § 112, second paragraph
Claim 33 is rejected under 35U.S.C. § 112, second paragraph, as
being incomplete for omitting essential steps. Specifically, the Examiner
finds claim 33 recites steps to prepare the aqueous dispersion of film-
forming cationic polyurethanes but does not recite steps for the preparation
of the claimed cosmetics, leather, textiles, paper, wood, and plastics. Ans. 5.
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Application 12/989,369
Appellants argue that claim 33 recites a “new and unobvious
composition” that “is employed in the production of the claimed articles”
and, because the composition is new and inventive, there is “no requirement
to list those steps [that] are known to those of prior skill in the art.” Appeal
Br. 9.
Appellants’ arguments are unpersuasive. As stated by the Examiner,
claim 33 merely recites “employing” without reciting what steps are
required to prepare the claimed cosmetics, leather, textiles, paper, wood, and
plastics. Ans. 5, 22. Therefore, claim 33 is indefinite because it merely
recites a use without any positive steps for how the aqueous dispersion is
actually used to prepare the claimed products. Ex parte Erlich, 3 USPQ2d
1011, 1986 WL 83564 (BPAI 1986).
For the reasons discussed above and those set forth in the Examiner’s
Answer, we sustain the Examiner’s indefiniteness rejection of claim 33.
Rejections over Schwindt and Bechara and over Scriven, Bechara,
and Schwindt
Claims 13—21, 23—31, and 33 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Schwindt in view of Bechara. Claims 13—33 are rejected
under 35 U.S.C. § 103(a) as unpatentable over Scriven in view of Bechara
and Schwindt. We select claim 13 as representative of the issues on appeal.
In the rejection over Schwindt and Bechara, the Examiner finds
Schwindt discloses an example that reacts the diisocyanate, amine, and
polyester recited in claim 13. Ans. 7. This finding is supported in Schwindt,
Example 2, which mixes 4,4’-diisocyanatodicyclohexylmethane,
poly(neopentyl glycol adipate), and N-methyldiethanolamine. Schwindt
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9:38-41, 11:9—14. Appellants disclose that 4,4’-
diisocyanatodicyclohexylmethane is an aliphatic diisocyanate, that
methyldiethanolamine is an aliphatic amine having two hydroxyl groups,
and a polyadipate from neopentylglycol is a polyol polyester. Spec. 2:31—
34,3:3-7,3:20-21.
The Examiner finds Schwindt discloses using methanesulfonic acid to
neutralize cationic polyurethanes and that chain extension via water would
necessarily occur. Ans. 6. Although Schwindt separately discloses the
various limitations of claim 13, the Examiner finds Schwindt does not
expressly disclose the combination of limitations recited in claim 13,
including the use of methanesulfonic acid with the mixture of components
from Example 2. Id. at 11. However, the Examiner concludes it would have
been obvious to one of ordinary skill in the art to use methanesulfonic acid
with the mixture of Schwindt to provide a more stable dispersion, as taught
byBechara. Id.
Appellants contend Schwindt’s process uses polyisocyanates with
hydroxyl groups while claim 13 requires “a linear isocyanate terminated
prepolymer having salified tertiary amine groups and devoid of hydroxyl
groups.” Appeal Br. 12, 17. Appellants further assert “the stoichiometry of
Schwindt results in a product having a specified hydroxyl number, while the
prepolymer A) of our application has free isocyanate groups, i.e. no —OH
groups are present (because they would react with the —NCO).” Id. at 12.
These arguments are unpersuasive. As stated by the Examiner at
pages 24 and 25 of the Examiner’s Answer, claim 13 does not exclude the
presence of hydroxyl groups on the aliphatic diisocyanates or on the
resulting polyurethane, and does not require a linear prepolymer or a
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particular stoichiometry that provides a patentable distinction from the
disclosure of Schwindt.
While the Examiner withdrew the portions of the obviousness
rejection with regard to Schwindt’s polyisocyanate (b), the Examiner
maintains the rejection based on Schwindt’s Example 2 that reacts a
diisocyanate, an amine, and a polyol as recited in claim 13. Ans. 23, 25. As
discussed above, the disclosure of Schwindt supports the Examiner’s finding
that Example 2 reacts an aliphatic diisocyanate, an aliphatic tertiary amine
having two hydroxyl groups, and a linear polyester polyol, as recited in
claim 13. Appellants have not responded to the Examiner’s findings from
the Examiner’s Answer and have not otherwise identified a reversible error
in the Examiner’s findings.
Appellants argue Bechara’s “polyurethanes do not contain tertiary
amine salified with a protic acid, but rather it contains quaternary
ammonium salts.” Appeal Br. 17. The Examiner finds Bechara discloses
the use of methanesulfonic acid to salify quartemary ammonium salts. Ans.
27. In addition, the Examiner finds that there is no evidence in the record
that the methanesulfonic acid of Bechara would not function when used with
the mixture of Schwindt, in particular that the difference between hydrogen
as an ammonium forming moiety and a hydroxyl group would have
dissuaded one of ordinary skill in the art from using methanesulfonic acid in
Schwindt’s dispersion. Id. at 27—28. Appellants have not responded to these
findings.
Appellants further assert the acids of Bechara’s Table 2 do not include
methanesulfonic acid and Bechara is directed to using strong acids to
provide dispersions, not methanesulfonic acid. Appeal Br. 17—18. This
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Application 12/989,369
argument is also unpersuasive. As discussed by the Examiner at pages 29-
30 of the Examiner’s Answer, Table 2 of Bechara demonstrates inferior
results when weak acids are used and thus provides comparative results to
the inventive embodiments of Bechara. See Bechara 8:1—9. Specifically,
Bechara discloses the use of strong acids, preferably those having a pKa < 3,
for the inventive embodiments. Id. Bechara discloses that methanesulfonic
acid has a pKa of about 3 or less. Id. 3:10-15.
In the rejection over Scriven, Bechara, and Schwindt, the Examiner
finds Scriven discloses the use of an aliphatic diisocyanate, an aliphatic
tertiary amine having two hydroxyl groups, and a linear polyester polyol for
an aqueous polyurethane dispersion and chain extension of the polyurethane.
Ans. 14—15. The Examiner further finds the organic acids disclosed by
Scriven encompass methanesulfonic acid. Id. at 15.
The Examiner finds Scriven does not disclose the combination of
components and the use of methanesulfonic acid as recited in claim 13. Id.
at 16. However, the Examiner concludes it would have been obvious to
react the diisocyanate, amine, and polyol disclosed by Scriven and to use
methanesulfonic acid to provide a more stable dispersion, as disclosed by
Bechara. Id.
Besides those arguments discussed above, Appellants contend that
because “Scriven also does not use/disclose methane sulfonic acid, [it] is
clear that there is no combination of the Examiner’s references that renders
the present claims obvious.” Appeal Br. 18. This argument is not
persuasive because the Examiner finds Bechara discloses the use of
methanesulfonic acid and provides a rationale for modifying Scriven (i.e., to
provide a more stable dispersion). As a result, Appellants have not
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identified a reversible error in the Examiner’s § 103 rejection over Scriven,
Bechara, and Schwindt.
Appellants do not argue dependent claims 14—22 and 24—32
separately from claims 13 and 23. Appeal Br. 10—18. For the reasons
discussed above and those set forth in the Examiner’s Answer, we sustain
the Examiner’s § 103 rejection of claims 13—21, 23—31, and 33 over
Schwindt in view of Bechara and the Examiner’s § 103 rejection of claims
13—33 over Scriven, Bechara, and Schwindt.
C. DECISION
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).
AFFIRMED
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