Ex Parte Mager et al

Board of Patent Appeals and Interferences

Feb 4, 2009

11087249 (B.P.A.I. Feb. 4, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MICHAEL MAGER, JOACHIM SIMON,
and MALTE HOMANN
____________

Appeal 2009-0299
Application 11/087,249
Technology Center 1700
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Decided:1 February 4, 2009
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Before JEFFREY T. SMITH, KAREN M. HASTINGS, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

HASTINGS, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1-4, 6-11, and 13-20. We have jurisdiction under
35 U.S.C. § 6(b).

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
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Application 11/087,249

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We AFFIRM.
STATEMENT OF THE CASE
The invention relates to a process for preparing polyisocyanate
prepolymers using a zinc (II) compound as a catalyst, and compositions
including polyisocyanate prepolymers.
Claim 1 is illustrative of the subject matter on appeal:
1. A process for preparing polyisocyanate prepolymers containing
allophanate structural units, comprising reacting:
a) one or more aliphatic and/or cycloaliphatic polyisocyanates with
b) one or more polyhydroxy compounds to give an NCO-functional
polyurethane prepolymer, whose resultant urethane groups are fully or partly
allophanatized; reacting the prepolymer with
c) polyisocyanates, which may be different from those of a), and using
d) zinc(ll) compounds as catalysts, wherein said zinc catalysts are
zinc(ll) alkanoates derived from 2-ethylhexanoic acid and/or linear, aliphatic
C4 to C30 carboxylic acids.

The Examiner relies on the following prior art reference to show
unpatentability:
Kerrigan GB 994,890 June 10, 1965
(hereinafter GB 890)

The Examiner has rejected claims 1-4, 6-11, and 13-20 under 35
U.S.C. § 102(b) as being anticipated by GB 890.
Appellants state that claims 2-4, 6-11, and 13-20 stand or fall with
claim 1 (Br. 2). Thus, we limit our discussion to representative claim 1.
ISSUE
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The sole issue on appeal is whether Appellants have shown that the
Examiner reversibly erred in rejecting the claims as anticipated by GB 890;
specifically, whether GB 890 clearly lists “zinc octoate” as a catalyst (App.
Br. 5).
We agree with the Examiner that GB 890 clearly names zinc octoate.
PRINCIPLES OF LAW
To reject an application under § 102(b), the Examiner has the burden
of identifying a single prior art reference describing each and every element,
either expressly or inherently, of the claimed invention. Verdegaal Bros.
Inc. v. Union Oil Co. of California, 814 F. 2d 628, 631 (Fed. Cir. 1987).
It is well settled that if a reference does not disclose a specific
embodiment which satisfies all of the claim limitations, the reference will
nonetheless describe the claimed invention within the meaning of § 102(b) if
it “clearly and unequivocally … [directs] those skilled in the art to [the
claimed invention] without any need for picking, choosing, and combining
various disclosures not directly related to each other by the teachings of the
cited reference.” In re Arkley, 455 F.2d 586, 587 (CCPA 1972).
Whether a reference provides clear and unequivocal direction to the
claimed invention is determined on the total circumstances with respect to
the disclosure of the reference. See In re Petering, 301 F.2d 676, 682 (CCPA
1962) (“It is our opinion that one skilled in this art would, on reading the
[prior art] patent, at once envisage each member of this limited class . . .”).
Such direction is also provided to one of ordinary skill in the art when the
claimed component is specifically named in a list of suitable components,
without the necessity for judicious selection from various disclosures
thereof. See In re Sivaramakrishnan, 673 F.2d 1383, 1384 (CCPA 1982)
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Application 11/087,249

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(the Court found a description sufficient to satisfy § 102(b) when a claimed
salt compound was specifically named as a suitable salt amongst a list of
many suitable salts for a polycarbonate resin).
ANALYSIS and FACTUAL FINDINGS
Appellants do not dispute the Examiner’s findings that GB 890
describes a process for preparing polyisocyanate prepolymers as claimed,
except that Appellants contend that GB 890 does not describe the use of the
claimed zinc catalyst in a manner sufficient to satisfy the requirements of 35
U.S.C. § 102(b) by clearly naming, or listing, zinc octoate (Br. 5, 6).
There is no dispute that the claimed generic group of zinc (II)
compounds as catalysts encompasses the species of zinc octoate (Br. 4-6).
GB 890 describes as suitable catalysts for use therein “organic acid metal
salts such as zinc . . . naphthates or octoates” (GB 809, p. 2, ll. 73-78;
emphasis provided). Contrary to Appellants’ contentions, one of ordinary
skill in the art would have, on reading the GB 890 disclosure, immediately
interpreted the cited passage as listing, naming, and describing each member
of this limited class including zinc octoate.
Thus, this reference disclosure is sufficient to put the public in
possession of the invention as claimed. See In re Petering, 301 F.2d at 681-
82; In re Arkley, 455 F.2d at 587; In re Schaumann, 572 F.2d 312, 315-17
(CCPA 1978).
Furthermore, as pointed out by the Examiner, GB 890 describes the
use of zinc naphthate as the catalyst in Example 5. One of ordinary skill in
the art would have no difficulty in understanding or following GB 890’s
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teachings concerning the use of a zinc salts including zinc octoate as a
catalyst in preparing the prepolymers2.
Thus, we agree with the Examiner that GB 890 anticipates claim 1.
CONCLUSION
Appellants have not shown that the Examiner reversibly erred in
rejecting the claims as anticipated by GB 890.
ORDER
The Examiner’s rejection of claims 1-4, 6-11, and 13-20 under 35
U.S.C. § 102(b) as being unpatentable over GB 890 is affirmed.
The Examiner’s decision is affirmed.
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

2 That GB 890 may not have actually reduced the use of zinc octoate to
practice (i.e., exemplified its use in the patent) has no bearing on whether the
catalyst is described “in a printed publication” under § 102(b). See In re
Sivaramakrishnan, 673 F.2d at 1384-85.

Appeal 2009-0299
Application 11/087,249

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Sld

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