Ex Parte Henke et al

Board of Patent Appeals and Interferences

Jul 31, 2007

10415009 (B.P.A.I. Jul. 31, 2007)

The opinion in support of the decision being entered today is
not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte GUENTER HENKE, KAMIL KALUS,
and ANNABELLE GUILLEUX
____________

Appeal 2007-1692
Application 10/415,009
Technology Center 1700
____________

Decided: July 31, 2007
____________

Before CHARLES F. WARREN, THOMAS A. WALTZ, and
CATHERINE Q. TIMM, Administrative Patent Judges.

TIMM, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 19, 20, 22-26, and 28-38. According to
Appellants, claims 1-18 and 21 have been canceled (Br. 3). The Examiner
has withdrawn the rejection of claim 27 (Answer 2). We have jurisdiction
under 35 U.S.C. § 6(b).
Appeal 2007-1692
Application 10/415,009

We AFFIRM.
I. BACKGROUND
The invention relates to a reactive adhesive with a low content of
polyisocyanate monomer. Claim 19 is illustrative of the subject matter on
appeal:
19. A solventless or solvent-containing, low-monomer, reactive adhesive,
curing in several stages which comprises:

at least one polyurethane prepolymer (A) with a low content of monomeric
polyisocyanate (a) and at least one free functional group capable of reacting
with a compound containing at least one acidic hydrogen atom, and

at least one compound (B) containing a functional group polymerizable by
irradiation, wherein, the reactive adhesive contains less than 0.1% by weight
of monomeric polyisocyanate.

The Examiner relies on the following prior art references to show
unpatentability:
Schnabel US 4,385,171 May 24, 1983
Bolte US 6,482,869 B1 Nov. 19, 2002

The Examiner maintains a rejection of claims 19, 20, 22-26, and 28-
38 under 35 U.S.C. § 103(a) as unpatentable over Bolte in view of
Schnabel.1

1 The Examiner has withdrawn the rejections of claims 19, 20, 22-31, 35,
and 36 under 35 U.S.C. § 102(b) and under 35 U.S.C. § 103(a) over Bolte,
and also withdrawn the rejection of claim 27 under 35 U.S.C. § 103(a) over
Bolte in view of Schnabel.
2
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Application 10/415,009

II. DISCUSSION
A. Issue
In reviewing the rejections, we consider the dispositive issues arising
from the contentions advanced in the Brief filed December 12, 2005, the
Answer filed January 20, 2006, and the Reply Brief filed March 20, 2006.
The dispositive issue arising from the contentions of Appellants and
the Examiner is: Have Appellants overcome the rejection (1) by showing
insufficient evidence of prima facie obviousness on the basis that there is no
reason to combine the teachings of the references or (2) by rebutting the
prima facie case with sufficient evidence of unexpected results? See In re
Kahn, 441 F.3d 977, 985-86, 78 USPQ2d 1329, 1335 (Fed. Cir. 2006) (“On
appeal to the Board, an applicant can overcome a rejection by showing
insufficient evidence of prima facie obviousness or by rebutting the prima
facie case with evidence of secondary indicia of nonobviousness.” (emphasis
omitted)).
B. Facts
The following Findings of Fact (FF) are supported by a preponderance
of the evidence:
1. Bolte describes a multistage-curing reactive adhesive. The
adhesive includes two components A and B (col. 1, ll. 6-9).
Component A, a polyurethane prepolymer, is prepared by
reacting a base polymer (col. 4, ll. 9-14) with a suitable
polyfunctional polyisocyanate (col. 7, ll. 6-49). The list of
suitable polyisocyanates includes diisocyanates (id.). Example
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Application 10/415,009

2 illustrates a component A formulation containing TDI and
MDI diisocyanates (col. 17, l. 62).
2. Bolte is silent with respect to the presence of polyisocyanate
monomers in the polyurethane prepolymer.
3. Schnabel describes a process of removing unreacted
diisocyanate monomer from polyurethane prepolymers (Title)
by co-distilling (col. 3, ll. 26-49). The resulting prepolymer
may be used to form adhesives (col. 3, ll. 49-53).
4. According to Schnabel, unreacted diisocyanate in the
prepolymer reaction product is undesirable because they create
vapors and diisocyanate vapors are believed to be toxic to
humans (col. 1, ll. 14-21)
C. Principles of Law
A claimed invention is unpatentable if the differences between it and
the prior art are such that the subject matter as a whole would have been
obvious at the time the invention was made to a person having ordinary skill
in the pertinent art. 35 U.S.C. § 103(a)(2000); Graham v. John Deere Co.,
383 U.S. 1, 13-14, 148 USPQ 459, 465 (1966). Factors to consider in
determining obviousness include “‘the scope and content of the prior art,’”
“‘the differences between the prior art and the claims at issue,’” and “‘the
level of ordinary skill in the pertinent art.’” Dann v. Johnston, 425 U.S. 219,
226, 189 USPQ 257, 260 (1976) (quoting Graham, 383 U.S. at 17, 148
USPQ at 466). In making the determination of obviousness, evidence
related to secondary indicia of non-obviousness like “commercial success,
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Application 10/415,009

long felt but unresolved needs, failure of others, etc.” is also relevant.
Graham, 383 U.S. at 17-18, 148 USPQ at 467.
One of the ways in which a claim’s subject matter can be proved
obvious is by establishing that there existed at the time of invention a known
problem for which there was an obvious solution encompassed by the
claims. KSR Int’l v. Teleflex Inc., 127 S. Ct. 1727, 1742, 82 USPQ2d 1385,
1397 (2007).
D. Analysis
In the current case, Schnabel provides evidence that there was a
known problem, i.e., the presence of toxic unreacted diisocyanate, in
prepolymers formed from diisocyanates (FF 4). Schnabel describes a
solution to this problem: A distillation method of removing the toxic
diisocyanate monomers. This evidence of a known problem and its solution
is sufficient to support a prima facie case of obviousness. KSR, 127 S. Ct. at
1742, 82 USPQ2d at 1397.
Appellants contend that there is no incentive to combine the teachings
of Schnabel with the teachings of Bolte because the Schnabel patent issued
years before the Bolte patent (Br. 7). According to Appellants one of
ordinary skill in the art would have discussed the teachings of Schnabel in
the Bolte application if it had been obvious (id.).
We are not persuaded by this argument because it assumes that a later
application must necessarily include everything known to those of ordinary
skill in the art. This is not the case. “[A] prior art reference must be
‘considered together with the knowledge of one of ordinary skill in the
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pertinent art.’” In re Paulsen, 30 F.3d 1475, 1480, 31 USPQ2d 1671, 1675
(Fed. Cir. 1994).
Appellants’ argument also fails to take into account the interrelated
teachings of the prior art references and the effects of the demands on those
formulating polyurethane-based adhesives to reduce the toxic monomer
concentration. In finding that there was a reason to combine, the Examiner
properly took into account those interrelated teachings and the background
knowledge possessed by those of ordinary skill in the art as evidenced by the
references. See KSR, 127 S.Ct. 1727, 1740-41, 82 USPQ2d 1385, 1396
(2007) (“Often, it will be necessary for a court to look to interrelated
teachings of multiple patents; the effects of demands known to the design
community or present in the marketplace; and the background knowledge
possessed by a person having ordinary skill in the art, all in order to
determine whether there was an apparent reason to combine the known
elements in the fashion claimed by the patent at issue.”).
With respect to claims 22, 24, and 36, Appellants contend that the
combination of Bolte and Schnabel do not contain a teaching or suggestion
of what is claimed (Br. 7-8). However, Appellants do not address the actual
rejection made by the Examiner. The contentions are not sufficiently
specific to allow us to review the rejection of these claims.
In the Reply Brief and for the first time on appeal, Appellants attempt to
rebut the rejection with an allegation of unexpected results. Appellants
allege that the examples beginning at page 46 of the Specification clearly
show the unexpected advantage of their adhesives over the prior art
adhesives, i.e., adhesives containing substantial amounts of monomer.
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According to Appellants, their adhesives are migration-free after only one
day while the monomer-containing prior art adhesives, in most cases, took
about 14 days to become migration free. Appellants allege that this effect on
migration is advantageous and was unknown and unexpected at the time the
invention was made. (Reply Br. 1).
Once a prima facie case of obviousness is established, the burden of
coming forward with evidence and argument in rebuttal is shifted to the
appellant. See In re Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788
(Fed. Cir. 1984). “In order for a showing of ‘unexpected results’ to be
probative evidence of non-obviousness, it falls upon the applicant to at least
establish: (1) that there actually is a difference between the results obtained
through the claimed invention and those of the prior art, … and (2) that the
difference actually obtained would not have been expected by one skilled in
the art at the time of invention.” In re Freeman, 474 F.2d 1318, 1324, 177
USPQ 139, 143 (CCPA 1973) (citations omitted).
Looking to the portion of the Specification cited by Appellants, we
find no convincing evidence that the alleged difference in migration would
have been unexpected to one of ordinary skill in the art. Appellants point to
no statement in the Specification in which the results are referred to as
unexpected. Nor do Appellants state how the data starting at page 46 of the
Specification supports such a conclusion. Nor is it enough that Appellants
allege the result is unexpected in the Reply Brief. “[I]t is well settled that
unexpected results must be established by factual evidence.” In re Geisler,
116 F.3d 1465, 1470, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997); see also
In re Lindner, 457 F.2d 506, 508, 173 USPQ 356, 358 (CCPA 1972) (“mere
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lawyers' arguments unsupported by factual evidence are insufficient to
establish unexpected results”).
Moreover, Appellants must adequately explain what facts or data
support their showing of unexpected results. Appellants’ vague and general
statements as to what the examples show along with the assertion that the
results are superior amount essentially to mere pleading. A mere pleading
unsupported by proof or showing of facts is inadequate. In re Borkowski,
505 F.2d 713, 718, 184 USPQ 29, 33 (CCPA 1974).
We will not attempt to independently determine the comparisons on
which Appellants rely upon or the significance thereof. Cf. In re Baxter
Travenol Labs., 952 F.2d 388, 391, 21 USPQ2d 1281, 1285 (Fed. Cir. 1991)
(“It is not the function of this court to examine the claims in greater detail
than argued by an appellant, looking for nonobvious distinctions over the
prior art.”).

III. CONCLUSION
We conclude that Appellants have not overcome the rejection either
(1) by showing insufficient evidence of prima facie obviousness or (2) by
rebutting the prima facie case with sufficient evidence of unexpected results.

IV. DECISION
The decision of the Examiner rejecting claims 19, 20, 22-26, and 28-
38 under 35 U.S.C. § 103(a) is affirmed.

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Application 10/415,009

V. TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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HENKEL CORPORATION
THE TRIAD, SUITE 200
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