Ex Parte Stewart et alDownload PDFPatent Trial and Appeal BoardSep 26, 201713390559 (P.T.A.B. Sep. 26, 2017) Copy Citation United States Patent and Trademark Office 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 13/390,559 03/28/2012 Raymond Stewart BMS092018/MD08-34 5497 157 7590 Covestro LLC 1 Covestro Circle PITTSBURGH, PA 15205 09/28/2017 EXAMINER SANDERSON, LEE E ART UNIT PAPER NUMBER 1782 NOTIFICATION DATE DELIVERY MODE 09/28/2017 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): veronica.thompson@covestro.com US-IPR@covestro.com laura.finnell @ covestro. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte RAYMOND STEWART, SCOTT A. GRACE, DENNIS POSTUPACK, LOUIS MATTOS JR., RAMESH SUBRAMANIAN, ABDULLAH EKIN, STERLING L. STEWARD, and CHRISTOPHER R. MUBARAK Appeal 2017-000838 Application 13/390,559 Technology Center 1700 Before TERRY J. OWENS, JULIA HEANEY, and MICHAEL G. McMANUS, Administrative Patent Judges. McMANUS, Administrative Patent Judge. DECISION ON APPEAL The Examiner finally rejected claims 1—7, 10—21, and 24 of Application 13/390,559 under 35 U.S.C. § 103(a) as obvious. Final Act. (April 24, 2015) 5—12. Appellants1 seek reversal of these rejections pursuant to 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6. For the reasons set forth below, we AFFIRM. 1 Covestro LLC is identified as the real party in interest. Appeal Br. 1. Appeal 2017-000838 Application 13/390,559 BACKGROUND The present application generally relates to aqueous polyurethane coating compositions and particularly to their use for coating glass substrates. Spec. 1. Claim 1 is representative of the pending claims and is reproduced below: 1. An aqueous polyurethane coating composition comprising: 1) 60.1 to 75.1 wt.%, based on solid polymer of the reaction product of: a) 15 to 85 wt.%, based on a) and b), of a polyol component, which is soluble or dispersible in water and is the reaction product of a polyisocyanate component containing 50 to 100 wt.% of an aliphatic diisocyanate, a polyol component containing one or more polyether polyols and having an OH number of 25 to 350 mg KOH/g solids and an isocyanate-reactive component containing at least one group capable of salt formation; and b) 15 to 85 wt.%, based on a) and b), of polyisocyanate component, which is soluble or dispersible in water, has blocked isocyanate groups and is the reaction product of one or more polyisocyanates having an isocyanurate group content of 0 to 30 wt. %, a reversible, monofunctional blocking agent for isocyanate groups, a nonionic hydrophilic component and a stabilizing component which has 1 to 2 hydrazide groups and a molecular weight of 74 to 300 g/mol; and 2) 24.9 to 39.9 wt.% based on solid polymer of an aqueous polyurethane dispersion prepared from at least one polycarbonate polyol, wherein the total wt. % of components 1) and 2) add up to 100% based on solid polymer of components 1) and 2) and 2 Appeal 2017-000838 Application 13/390,559 wherein independently the total of components a) and b) is 100 wt.% and wherein the equivalent ratio of blocked isocyanate groups of component b) to hydroxyl groups of component a) is at between 1:1 and 10:1. Appeal Br. 17 (Claims App.). REJECTIONS On appeal, the Examiner maintains the following rejections:2 1. Claims 1, 2, 7, 10-18, and 24 are rejected under 35 U.S.C. § 103(a) as obvious over Wilmes et al. (US 5,852,106, iss. Dec. 22, 1998) (hereinafter “Wilmesâ€) in view of the product datasheet for Bayhydrol XP2637 (hereinafter “Bayhydrol XP2637â€). Answer 2—6. 2. Claims 3—5 and 21 are rejected under 35 U.S.C. § 103(a) as obvious over Wilmes in view of Bayhydrol XP2637 and further in view of Roesler et al. (US 2002/0119329 Al, pub. Aug. 29, 2002) (hereinafter "Roesler"). Id. at 6—7. 3. Claim 6 is rejected under 35 U.S.C. § 103(a) as obvious over Wilmes in view of Bayhydrol XP2637 and further in view of the product datasheet for Bayhydrol A2542 (hereinafter “Bayhydrol A2542â€). Id. at 7-8. 4. Claims 19 and 20 are rejected under 35 U.S.C. § 103(a) as obvious over Wilmes in view of Bayhydrol XP2637 and further in view of Hsieh (US 5,466,727, iss. Nov. 14, 1995) (hereinafter “Hsiehâ€). Id. at 8—9. 2 In the Final Rejection (April 24, 2015) claims 1—7 and 10—21 were rejected on the ground of nonstatutory double patenting over claims 1, 8, and 9 of co-pending Application No. 12/542,843. Final Act. 2-4. This rejection was withdrawn in view of the abandonment of that application. 3 Appeal 2017-000838 Application 13/390,559 DISCUSSION Rejection 1. The Examiner rejected claims 1, 2, 7, 10-18, and 24 as obvious over Wilmes in view of Bayhydrol XP2637. Answer 2—6. Appellants argue that the Examiner failed to make a prima facie case of unpatentability and that, even if such case were made, it would be rebutted by their showing of the criticality of the claimed ranges. Prima Facie Case of Unpatentability The Examiner finds that Wilmes teaches components la (polyol component) and lb (polyisocyanate) of claim 1 but not component 2 (aqueous polyurethane dispersion). Answer 2—3 5—7. The Examiner further finds that Bayhydrol XP2367 teaches component 2. Id. at 3^41 8. The Examiner additionally finds that there is reason to combine the teachings of Wilmes and Bayhydrol XP2367 as follows: It would have been obvious to one of ordinary skill in the art at the time the invention was made to have modified the polyurethane coating composition of Wilmes by incorporating the polycarbonate-polyurethane dispersion taught by Bayhydrol XP2637 in order to impart flexibility and hydrolytic stability to the coating produced from the composition. While modified Wilmes is silent regarding the amount of the aqueous aliphatic polycarbonate-polyurethane dispersion added to the composition, Bayhydrol XP2637 teaches that the addition of the aliphatic polycarbonate-polyurethane dispersion to polyurethane composition increases the flexibility of the final product. Therefore, it would have been obvious to one of ordinary skill to have varied the amount of Bayhydrol XP2637 added to the composition through routine experimentation in order to achieve the desired degree of flexibility and hydrolytic stability. Id. at 4 19. Specifically, the Examiner relies upon the following statements in Bayhydrol XP2637: 4 Appeal 2017-000838 Application 13/390,559 Bayhydrol XP 2637 exhibits a combination of flexibility, good water and solvent resistance, outstanding hydrolytic stability and may be blended with other polyurethane dispersion to achieve intermediate properties. As with any product, use of Bayhydrol XP 2637 in a given application must be tested (including but not limited to field testing) in advance by the user to determine suitability. Bayhydrol XP2637 at 1 (emphasis added). Appellants argue that the cited references lack a teaching as to the relative amounts of components 1 and 2 to employ in the composition, and therefore the Examiner has failed to make a prima facie case of unpatentability. Appeal Br. 8. Appellants further argue that the “general conditions of the claim are [not] disclosed in the prior art such that an optimal or workable range could have been discovered by ‘routine experimentation.’†Id. (emphasis omitted). “[I]t is not inventive to discover the optimum or workable ranges by routine experimentation.†In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (quoting In reAller, 220 F.2d 454, 456 (CCPA 1955)); see also In re Kulling, 897 F.2d 1147, 1149 (Fed. Cir. 1990) (finding no clear error in Board’s conclusion that the amount of eluent to be used in a washing sequence was a matter of routine optimization known in the pertinent prior art and therefore obvious). Here, Bayhydrol XP2637 explicitly teaches that it “may be blended with other polyurethane dispersion [sic] to achieve intermediate properties.†Bayhydrol XP2637 at 1. It further teaches that “[a]s with any product, use of Bayhydrol XP 2637 in a given application must be tested (including but not limited to field testing) in advance by the user to determine suitability.†This is a direct teaching that persons of skill in the art should test and 5 Appeal 2017-000838 Application 13/390,559 optimize Bayhydrol XP2637 for their given application. Accordingly, we find that Appellants have not demonstrated that the general conditions of the claim are not disclosed by the prior art and have not demonstrated error in the Examiner’s finding that it would have been prima facie obvious to optimize the relative amounts of Bayhydrol XP2637 and the formulation of Wilmes by routine experimentation. Rebuttal of Prima Facie Case Appellants additionally argue that the prima facie case, if established, is rebutted by evidence of criticality of the claimed ranges of components. Appeal Br. 9—11. Appellants assert that “[t]here is no teaching or suggestion in the combination of Wilmes and Bayhydrol® XP2637 to lead one of ordinary skill in the art to expect that results reflecting this desired combination of properties . . . would have been achieved by using the combination of claimed components 1) and 2) in the claimed amounts.†Appeal Br. 10. In general, an applicant may overcome a prima facie case of obviousness by establishing “that the [claimed] range is critical, generally by showing that the claimed range achieves unexpected results relative to the prior art range.†In re Geisler, 116 F.3d 1465, 1469—70 (Fed. Cir. 1997). “Although it is well settled that comparative test data showing an unexpected result will rebut a prima facie case of obviousness, the comparative testing must be between the claimed invention and the closest prior art.†In re Fenn, 639 F.2d 762, 765 (CCPA 1981) (emphasis added). Moreover, “[i]t is well settled that unexpected results must be established by factual evidence. 6 Appeal 2017-000838 Application 13/390,559 Mere argument or conclusory statements in the specification does not suffice.†In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984) (quoted with approval in In re Soni, 54 F.3d 746, 750 (Fed. Cir. 1995)). The Examiner finds that Bayhydrol XP2637 teaches that the incorporation of the disclosed aqueous aliphatic polycarbonate-polyurethane dispersion imparts flexibility, solvent resistance and hydrolytic stability to polyurethane coatings. Answer 136. In view of such teachings, the Examiner finds that the increase in flexibility and caustic resistance described in the Specification upon the addition of increasing amounts of claimed component (2) would have been expected by one of ordinary skill in the art. Id. Moreover, Appellants have not established that the cited results would have been surprising to one of ordinary skill in the art. Appellants cite to certain test results for compositions within the scope of the claim that they regard as having a desirable combination of properties. Appeal Br. 9—10. They further state that there is no teaching or suggestion in the cited references to lead one of ordinary skill in the art to expect the results obtained. Id. at 10. This, however, is not supported by factual evidence; rather, it is the sort of attorney argument upon which the De Blauwe case cautions us not to rely. Finally, Appellants have not cited to evidence showing that the results they claim would have been unexpected by one of skill in the art are commensurate with the scope of the claims at issue. Accordingly, Appellants have failed to rebut the prima facie case of obviousness. 7 Appeal 2017-000838 Application 13/390,559 Rejection 2. The Examiner rejected claims 3—5 and 21 as obvious over Wilmes in view of Bayhydrol XP2637 and further in view of Roesler. Answer 6—7. Appellants allege error on the same bases as with regard to Rejection 1. Appeal Br. 11—12. As the arguments presented in regard to the first rejection have not been found persuasive, we affirm the rejection of claims 3—5 and 21 for the reasons set forth above. Rejection 3. The Examiner rejected claim 6 as obvious over Wilmes in view of Bayhydrol XP2637 and further in view of Bayhydrol A2542. Answer 7—8. Appellants allege error on the same bases as with regard to Rejection 1. Appeal Br. 12—13. As the arguments presented in regard to the first rejection have not been found persuasive, we affirm the rejection of claim 6 for the reasons set forth above. Rejection 4. The Examiner rejected claims 19 and 20 as obvious over Wilmes in view of Bayhydrol XP2637 and further in view of Hsieh. Answer 8—9. Appellants allege error on the same bases as with regard to Rejection 1. Appeal Br. 13—15. As the arguments presented in regard to the first rejection have not been found persuasive, we affirm the rejection of claims 19 and 20 for the reasons set forth above. CONCLUSION The rejections of claims 1—7, 10-21, and 24 as obvious are 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). AFFIRMED 8 Copy with citationCopy as parenthetical citation