Ex Parte Spyrou et al

Board of Patent Appeals and Interferences

Aug 11, 2009

10958357 (B.P.A.I. Aug. 11, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte EMMANOUIL SPYROU,
HOLGER LOESCH and DIRK HOPPE
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Appeal 2009-002535
Application 10/958,357
Technology Center 1700
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Decided: August 11, 2009
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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.
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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:

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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).
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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).
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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).
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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
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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

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OBLON, SPIVAK, MCCLELLAND, MAIER & NEUSTADT, P.C.
1940 DUKE STREET
ALEXANDRIA, VA 22314
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