Ex Parte Bleys et al

Patent Trial and Appeal Board

Mar 31, 2016

11292398 (P.T.A.B. Mar. 31, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111292,398 12/01/2005
62068 7590 04/04/2016
HUNTSMAN INTERNATIONAL LLC
LEGAL DEPARTMENT
10003 WOODLOCH FOREST DRIVE
THE WOODLANDS, TX 77380
FIRST NAMED INVENTOR
Gerhard Jozef Bleys
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
EU-50915 3323
EXAMINER
SERGENT, RABON A
ART UNIT PAPER NUMBER
1765
NOTIFICATION DATE DELIVERY MODE
04/04/2016 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):
Martha_ Victory@Huntsman.com
USPatents@Huntsman.com
Joanne_Cutlip@Huntsman.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GERHARD JOZEF BLEYS, JAN WILLEM
LEENSLAG, and HANS GODELIEVE GUIDO VERBEKE
Appeal2014-006416
Application 11/292,398
Technology Center 1700
Before ADRIENE LEPIANE HANLON, CATHERINE Q. TIMM, and
JAMES C. HOUSEL, Administrative Patent Judges.
PERCURIAM.
DECISION ON APPEAL 1
STATEMENT OF THE CASE
Appellants2 filed an appeal under 35 U.S.C. § 134 from the
Examiner's decision rejecting3 claims 1, 2, 11, and 13 under 35 U.S.C. §
1 Our decision refers to the Final Office Action mailed Oct. 12, 2012 (Final
Act.), Appellants' Appeal Brief filed Jan. 3, 2013 (Br.), and the Examiner's
Answer mailed May 22, 2013 (Ans.).
2 Appellants identify the real party of interest as Huntsman International
LLC. Appeal Br. 2.
3 Rejections of claims 1, 2, and 11 under 35 U.S.C. § 112, second paragraph,
have been withdrawn by the Examiner. Ans. 2. The Examiner states claim
14 remains rejected under 35 U.S.C. § 112, second paragraph. Ans. 2 and 5.
However, claim 14 was canceled via an amendment dated June 10, 2013.
An Advisory Action dated Sept. 6, 2013 states the amendment canceling
Appeal2014-006416
Application 11/292,398
103(a) over Bleys4 in view of Kondo, 5 Nomura,6 and Hom.7 We have
jurisdiction under 35 U.S.C. §§ 6(b) and 134(a).
We AFFIRM.
The claims on appeal are directed to processes for preparing a solid,
non-blown polyisocyanurate polyurethane material (see, e.g., claims 1 and
13) and polyisocyanurate polyurethane materials made by the processes.
Appellants disclose polyisocyanurate polyurethane materials having a high
modulus, high impact resistance, high temperature and flammability
resistance, a short demold time, and high green strength. Spec. p. 2, 11. 7-9.
The materials are also suitable for reinforcement via fillers and are made
from ingredients that are easily processable. Spec. p. 2, 11. 11-17.
Independent claim 1 is illustrative of the subject matter on appeal.
Claim 1 is reproduced from the Claims Appendix of the Appeal Brief:
1. A process for preparing a solid, non-blown
polyisocyanurate polyurethane material comprising reacting in
the presence of a trimerization catalyst selected from the group
consisting of tertiary amines, triazines, and alkali metal salts of
organic carboxylic acids and in the absence of an internal mold
release agent, a mixture comprising a polyisocyanate and an
isocyanate-reactive composition, wherein the reaction is
conducted at an isocyanate index of 150 to 1500, and
wherein the polyisocyanate consists of a) 80-100% by
weight of a diphenylmethane diisocyanate comprising at least
40% by weight of 4,4'-diphenylmethane diisocyanate and/or a
variant of said diphenylmethane diisocyanate which variant is
claim 14 was entered and the rejections of claim 14 under 35 U.S.C. § 112,
second paragraph, and prior art, were withdrawn.
4 Bleys et al., WO 02/06370 Al, published Jan. 24, 2002.
5 Kondo et al., US 5, 100,926 A, issued Mar. 31, 1992.
6 Nomura et al., US 4,299,924, issued Nov. 10, 1981.
7 Hom et al., US 6,169,124 Bl, issued Jan. 2, 2001.
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Appeal2014-006416
Application 11/292,398
Br. 8.
liquid at 25° C and has an NCO value of at least 20% by weight,
and b) 20-0% by weight of another polyisocyanate, and
wherein the isocyanate-reactive composition consists of i)
80-100% by weight of a polyether polyol having an average
nominal functionality of 2-4, an average equivalent weight of
150-1000, an average molecular weight of 600-4000, and an
oxyethylene (EO) content of 75-100% by weight, and ii) 20-0%
by weight of one or more other isocyanate-reactive compounds
excluding water, the amount of i) and ii) being calculated on the
total amount of i) and ii); and wherein the one or more
isocyanate-reactive compounds does not include an isocyanate
reactive chain extender.
OPINION
The Examiner finds Bleys discloses the production of a non-cellular
polyurethane elastomer by reacting an isocyanate reactant and a polyol
component. Final Act. 3. In particular, Bleys discloses reacting a
polyisocyanate and an isocyanate-reactive composition. Bleys, Abstract.
The polyisocyanate consists of 80-100% by weight of a diphenylmethane
diisocyanate and 0-20% by weight of another polyisocyanate. Id. The
isocyanate-reactive composition consists of (a) 80-100% by weight of a
polyetherpolyol, (b) an isocyanate-reactive chain extender, and (c) 0-20%
by weight of one or more other isocyanate-reactive compounds excluding
water. Id.
The Examiner finds Bleys does not disclose the isocyanate index
recited in claim 1 but finds the use of high isocyanate index ratios and
trimerization catalysts was known, citing Kondo, Nomura, and Hom. Final
Act. 3--4. The Examiner concludes it would have been obvious to modify
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Appeal2014-006416
Application 11/292,398
Bleys in view of Kondo, N onmra, and Hom to use trimerization catalysts
and high isocyanate index ratios to obtain a polyisocyanate based polymer
having the advantages attributable to the presence of isocyanurate groups.
Final Act. 4.
In the Final Office Action, the Examiner further finds the chain
extender in the isocyanate-reactive composition of Bleys is optional because
Bleys discloses the content of polyether polyol can be as high as 100 wt% of
the isocyanate-reactive composition. Final Act. 3.
Appellants contend the disclosure of Bleys does not support the
Examiner's finding that the chain extender is optional. According to
Appellants, this is because Bleys discloses the amount of polyether polyol
(a) and the amount of the other isocyanate-reactive compounds ( c)
calculated based on the total amount of the polyether polyol (a) and the
isocyanate-reactive compounds (c). Br. 4--5. Therefore, according to
Appellants, Bleys does not disclose that the polyether polyol can comprise
100% of the isocyanate-reactive component, only that the polyether polyol
can comprise 100% of the total of the sum of the polyether polyol (a) and the
isocyanate-reactive compound ( c ); the isocyanate-reactive component must
also contain the isocyanate-reactive chain extender (b ). In view of this,
Appellants argue one of ordinary skill in the art would not have modified
Bleys to exclude the chain extender. Br. 5.
Appellants' arguments do not persuade us the Examiner reversibly
erred. In the Answer, the Examiner concedes one cannot deduce the chain
extender is optional in the isocyanate-reactive composition of Bleys solely
based upon the disclosure that the polyether polyol can comprise 100 wt% of
the isocyanate-reactive component. Ans. 5. The Examiner, however,
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Appeal2014-006416
Application 11/292,398
concludes it would have been obvious to omit the chain extender from the
isocyanate-reactive component of Bleys. Ans. 5. According to the
Examiner,
the relationship between the amount of chain extender used and
the hard block content was known at the time of invention.
This position is supported by the disclosure within page 5, line
29 through page 6, line 4 of [Bleys], wherein the disclosed
calculation makes clear that a decrease in isocyanate-reactive
materials having a molecular weight of at most 1,000 (the
skilled artisan would understand this language to pertain to
chain extenders) decreases hard block ratio or content.
Furthermore, the reference discloses within the abstract; page 9,
lines 3-5; and page 15, lines 25 and 26 that the amount of chain
extender used is such that the hard block ratio (content) is less
than 0.5 and preferably less than 0.45. Since the reference is
concerned with reducing hard block content and since the
reference has established that hard block content can be reduced
by decreasing the amount of chain extender, the position is
taken that the skilled artisan would have been motivated to
delete chain extenders to further reduce the hard block content.
Furthermore, given the language \'l1ithin the reference that the
amount of chain extender used is such that the hard block ratio
is reduced or limited, as opposed to increased, and the lack of
any definitive disclosure requiring that a minimal amount of
chain extender be used, it is by no means clear that the chain
extender is a mandated component. Also, it is noted that it has
been held that omission of an element and its function is
obvious if the function of the element is not desired. See MPEP
2144.04(II)(A). In the instant case, the skilled artisan would
have appreciated that the use of the extender would not have
been required, since its function in increasing hard block
content would not have been desired where a minimal hard
block content was desired and since the reference provides a
teaching to reduce hard block content.
Ans. 3--4.
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Appeal2014-006416
Application 11/292,398
The disclosure of Bleys supports the Examiner's findings and
demonstrates one of ordinary skill in the art would have had a reason to
modify Bleys, as concluded by the Examiner. Bleys discloses a hard block
ratio, which includes isocyanate-reactive materials having a molecular
weight of at most 1000 (chain extenders) in its numerator. Bleys p. 5, 1. 29
top. 6, 1. 4. Bleys also discloses the chain extender is used in an amount so
the hard block ratio is less than 0.50, preferably less than 0.45. Bleys,
Abstract and p. 3, 11. 3-5. Given that reducing the chain extender amount
would be in keeping with minimizing the hard block ratio and there is no
definitive disclosure in Bleys that chain extenders are required, the
Examiner's finding of a reason to omit the chain extender is reasonable.
Appellants have not responded to the findings or conclusion the
Examiner sets forth in the Answer.
A preponderance of the evidence supports the determination of the
Examiner regarding the obviousness of omitting chain extender.
Appellants further assert there would have been a lack of reason to
modify Bleys in view of Kondo, Nomura, and Hom because Bleys does not
disclose or suggest the use of a trimerization catalyst and Bleys discloses
using an isocyanate index of 85 to 120, not 150 to 1500, as recited in claim
1. Br. 6.
Appellants' arguments are unpersuasive. First, we note Bleys
discloses the use of catalysts that include alkali metal or alkaline earth metal
carboxylate salts. Bleys p. 12, 11. 1-5. Appellants disclose a trimerization
catalyst can be, for example, an alkali metal salt of organic carboxylic acid.
Spec. p. 9, 11. 16-17. Thus, Bleys' catalysts appear to be the same or similar
to the trimerization catalysts contemplated by Appellants. Moreover, the
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Appeal2014-006416
Application 11/292,398
references cited by the Examiner provide a reason to modify Bleys to use a
higher isocyanate index. Nomura, for example, teaches the isocyanate index
is a result-effective variable by disclosing higher isocyanate indexes increase
heat stability and rigidity while decreasing impact resistance. Nomura col.
6, 11. 46-48. Therefore, the record supports the Examiner's findings and the
conclusion that it would have been obvious to modify Bleys to use a higher
isocyanate index, as recited in claim 1.
Claims 2, 11, and 13 have not been argued separately and therefore
fall with claim 1.
For the reasons discussed above and those set forth in the Examiner's
Answer, we sustain the Examiner's§ 103 rejection of claims 1, 2, 11, and 13
under 35 U.S.C. § 103(a) as being unpatentable over Bleys in view of
Kondo, Nomura, and Hom.
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)(l).
AFFIRMED
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