Ex Parte Spyrou et alDownload PDFBoard of Patent Appeals and InterferencesAug 11, 200910958357 (B.P.A.I. Aug. 11, 2009) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte EMMANOUIL SPYROU, HOLGER LOESCH and DIRK HOPPE ____________ Appeal 2009-002535 Application 10/958,357 Technology Center 1700 ____________ Decided: August 11, 2009 ____________ Before BRADLEY R. GARRIS, ADRIENE LEPIANE HANLON, and CHARLES F. WARREN, Administrative Patent Judges. GARRIS, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134 from the Examiner’s decision rejecting claims 1-10, 15-22, 28, and 30. We have jurisdiction under 35 U.S.C. § 6. We REVERSE. Appeal 2009-002535 Application 10/958,357 Statement of the Case Appellants claim a curable polyurethane composition (claim 1) as well as a process and products involving such a composition (claims 22, 28, 30). The composition comprises a curing agent which contains uretdione groups and a catalyst such as tetrabutylammonium benzoate. The composition optionally includes a hydroxyl-containing polymer which, if present, is in a proportion such that there is more than one uretdione group for each hydroxyl group. Representative independent claim 1 reads as follows: 2 Appeal 2009-002535 Application 10/958,357 3 Appeal 2009-002535 Application 10/958,357 4 Appeal 2009-002535 Application 10/958,357 The references set forth below are relied upon by the Examiner as evidence of obviousness (Ans. 3): Tang 4,503,226 Mar. 05, 1985 Wamprecht 5,728,789 Mar. 17, 1998 Meier-Westhues 5,786,419 Jul. 28, 1998 The Examiner rejects all appealed claims under 35 U.S.C. § 103(a) as being unpatentable over Meier-Westhues in view of Wamprecht and Tang.1 The Examiner concludes that it would have been obvious for one having ordinary skill in the art to have employed the equivalent tetrabutylammonium benzoate catalyst of Tang . . . as the quaternary ammonium catalyst of Wamprecht . . . employed as a catalyst in the preparations of Meier-Westhues . . . for the purpose of enhancing stoving times and temperatures in the preparations of Meier-Westhues . . . in order to arrive at the products and processes of appellants’ claims with the expectation of success in the absence of a showing of new or unexpected results. (Ans. 5). Issues Have Appellants shown error in the Examiner’s implicit finding that the composition of Meier-Westhues contains more than one uretdione group for each hydroxyl group as required by claim 1? 1 The Examiner has withdrawn the final rejections based on anticipation and obviousness-type double patenting (Ans. 3). 5 Appeal 2009-002535 Application 10/958,357 Have Appellants shown error in the Examiner’s conclusion that it would have been obvious to provide the composition of Meier-Westhues with tetrabutylammonium benzoate catalyst as required by claim 1 in view of Wamprecht and Tang? Findings of Fact Meier-Westhues discloses a powder coating polyurethane composition comprising a hydroxyl group-containing component A and an addition polymerization component B which contains uretdione groups and optionally free isocyanate groups as well as additional components C and D (col. 3, ll. 32-55). Components A and B are present in amounts such that 0.6 to 1.4 isocyanate groups of component B are present for each hydroxyl group of component A (col. 3, ll. 56-60). The isocyanate groups of component B constitute the sum of the free isocyanate groups and the isocyanate groups present in dimeric form as uretdione groups (col. 5, ll. 11-14). The composition of Meier-Westhues optionally includes a catalyst such as a diazabicyclo-based catalyst (para. bridging cols. 6-7). Wamprecht discloses powder coating compositions containing copolymers having hydroxyl and carboxylic acid anhydride groups (col. 1, ll. 60-67). The compositions may include catalysts which accelerate the cross-linking reaction between hydroxyl and carboxylic acid anhydride groups to thereby reduce the stoving time and/or the stoving temperature (col. 5, ll. 3-7). These catalysts include diazabicyclo-based catalysts of the type disclosed by Meier-Westhues (Wamprecht, col. 5, ll. 8-12; cf., Meier- Westhues, col. 7, ll. 2-4). 6 Appeal 2009-002535 Application 10/958,357 Tang discloses trimerizing organic polyisocyanates to form isocyanurate structures by employing as the isocyanurate group formation catalyst a combination of a quaternary ammonium carboxylic acid salt and a carboxylic acid halide or anhydride (col. 1, ll. 40-46). The quaternary ammonium carboxylic acid salt catalyst may be a tetrabutylammonium benzoate (col. 3, ll. 22-30). Principles of Law All words in a claim must be considered in judging the patentability of that claim against the prior art. In re Wilson, 424 F.2d 1382, 1385 (CCPA 1970). Rejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness. In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) cited with approval in KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 417-18 (2007). Analysis Appellants argue that Meier-Westhues fails to disclose there is more than one uretdione group of component B for each hydroxyl group of component A and therefore fails to disclose the proportion required by the last clause of claim 1 (App. Br. 14). In support of this argument, Appellants point out that Meier-Westhues discloses 0.6 to 1.4 isocyanate groups of component B are present for each hydroxyl group of component A and explain that, “[s]ince a uretdione corresponds to 2 NCO groups, this leads to a uretdione to OH ratio of 0.3-0.1: 1, or outside the scope of the present claims” (Reply Br. 2). 7 Appeal 2009-002535 Application 10/958,357 Significantly, the Examiner’s Answer contains no response at all to the above-noted argument. Moreover, Appellants’ unchallenged explanation of the uretdione to hydroxyl ratio disclosed by Meier-Westhues compels a determination that this ratio is outside the corresponding ratio required by claim 1. As stated earlier, all words in a claim must be considered in judging the patentability of the claim against the prior art. In the record of this appeal, the Examiner has failed to expressly consider the claim 1 limitation “wherein components A), and, when present, C) are present in a proportion, such that for each hydroxyl and/or amine group of component C), there is more than 1 uretdione group of component A)”. At most, the Examiner has implicitly considered this claim limitation and found it to be satisfied by Meier-Westhues. However, for the reasons set forth above, Appellants have shown that such an implicit finding is erroneous. Appellants also argue that the applied prior art contains no teaching or suggestion to provide the composition of Meier-Westhues with the tetrabutylammonium benzoate catalyst of Tang (App. Br. 14). According to Appellants, the Examiner’s contrary view is “merely conclusionary” (id.). As support for their argument, Appellants emphasize that the catalytic reactions of Wamprecht (i.e., cross-linking between hydroxyl and carboxylic acid anhydride groups) and Tang (i.e., trimerization of organic polyisocyanates to form isocyanurate structures) are not relevant to polyurethane compositions containing uretdione groups as disclosed by Meier-Westhues and defined by claim 1 (App. Br. 13-14; Reply Br. 3-4). In response to Appellants’ argument, the Examiner urges that the proposed combination of prior art teachings is supported by the fact that the 8 Appeal 2009-002535 Application 10/958,357 compositions of both Meier-Westhues and Wamprecht are used in the powdered coating technology (Ans. 6-8). By itself, this fact is inadequate to reasonably support the Examiner’s obviousness conclusion. An artisan would have provided the compositions of Meier-Westhues with a catalyst based upon the reaction to be catalyzed. In the record of this appeal, the Examiner has advanced no articulated reasoning with rational underpinning to support a conclusion that the tetrabutylammonium benzoate of Tang would be reasonably expected to catalyze the reactions desired in the compositions of Meier-Westhues. Conclusions of Law Appellants have shown error in the Examiner’s implicit finding that the composition of Meier-Westhues contains more than one uretdione group for each hydroxyl group as required by claim 1. Appellants have shown error in the Examiner’s conclusion that it would have been obvious to provide the composition of Meier-Westhues with tetrabutylammonium benzoate catalyst as required by claim 1 in view of Wamprecht and Tang. It follows that we cannot sustain the Examiner’s § 103 rejection of all appealed claims as being unpatentable over Meier-Westhues in view of Wamprecht and Tang. Order The decision of the Examiner is reversed. REVERSED 9 Appeal 2009-002535 Application 10/958,357 ssl OBLON, SPIVAK, MCCLELLAND, MAIER & NEUSTADT, P.C. 1940 DUKE STREET ALEXANDRIA, VA 22314 10 Copy with citationCopy as parenthetical citation