Ex Parte Verborgt et alDownload PDFPatent Trial and Appeal BoardJan 10, 201411229432 (P.T.A.B. Jan. 10, 2014) 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. 11/229,432 09/15/2005 Jozef Verborgt 97081-US1 3789 26384 7590 01/13/2014 NAVAL RESEARCH LABORATORY ASSOCIATE COUNSEL (PATENTS) CODE 1008.2 4555 OVERLOOK AVENUE, S.W. WASHINGTON, DC 20375-5320 EXAMINER SERGENT, RABON A ART UNIT PAPER NUMBER 1765 MAIL DATE DELIVERY MODE 01/13/2014 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte JOZEF VERBORGT and ARTHUR WEBB ____________ Appeal 2013-009904 Application 11/229,432 Technology Center 1700 ____________ Before CHUNG K. PAK, ROMULO H. DELMENDO, and BEVERLY A. FRANKLIN, Administrative Patent Judges. DELMENDO, Administrative Patent Judge DECISION ON APPEAL The Appellants1 seek our review of a final rejection of claims 1, 3, 4, 6, 7, 9-18, 26-31, and 33. We have jurisdiction under 35 U.S.C. §§ 6(b) and 134(a). We affirm for the reasons given by the Examiner. Examiner’s Answer entered June 21, 2013 (“Ans.”). 1 The Appellants identify the real party in interest as the United States of America, as represented by the Secretary of the Navy. Appeal Brief filed June 3, 2013 (“App. Br.”) 2. Appeal 2013-009904 Application 11/229,432 2 BACKGROUND The invention relates to polyenureas and methods of making them. Specification (“Spec.”) ¶ 1. According to the Appellants, “[u]se of these enureas can result in coatings that possess manageable formulation characteristics and can be easily formulated into totally solvent free coatings capable of being sprayed using conventional and plural component spray application equipment.” Id. at ¶ 12. Representative claim 1 is reproduced below: 1. A method of making a polymer wherein the polymer is made by performing a reaction in a mixture comprising: 1) an imine selected from polyaldimines, hydroxyaldimines, polyketimines, and hydroxyketimines; 2) a polyisocyanate; and 3) a hydroxyl compound, if the imine is not a hydroxyimine; wherein the hydroxyl compound is an alcohol, a glycol, or a polyol; wherein the polymer comprises urea linkages formed from the imine and polyisocyanate; wherein the polymer comprises urethane linkages formed from the hydroxyl group of the hydroxyimine or the hydroxyl compound and the polyisocyanate; wherein the reaction is performed in the absence of solvent; wherein the reaction forms a crosslinked coating; and wherein the molar ratio of urea linkages to urethane linkages is at least 2: 1. App. Br. 8 (Claims App’x; emphasis added). Appeal 2013-009904 Application 11/229,432 3 The Examiner rejected the claims as follows: I. Claims 1, 3, 4, 6, 7, 9-18, 26, 28, 29, 31, and 33 under 35 U.S.C. § 102(b) as anticipated by Jacobs;2 and II. Claims 27 and 30 under 35 U.S.C. § 103(a) as unpatentable over Jacobs. I. With respect to Rejection I, the Appellants argue the claims together. App. Br. 4-6. Therefore, we confine our discussion to claim 1, which we select as representative pursuant to 37 C.F.R. § 41.37(c)(1)(vii). Claims 3, 4, 6, 7, 9-18, 26, 28, 29, 31, and 33 stand or fall with claim 1. The Appellants do not dispute the Examiner’s findings that Jacobs describes, within the meaning of 35 U.S.C. § 102(b), the same imine, polyisocyanate, hydroxyl compound, and molar ratio of urea linkages to urethane linkages recited in claim 1. App. Br. 4-6. Rather, the Appellants contend that Jacobs does not describe: (1) a “crosslinked coating” as recited in claim 1; and (2) “a solid coating with no solvent of other liquids present in the coating.” Id. at 5-6. Neither of the Appellants’ arguments is persuasive to justify a reversal of the Examiner’s rejections. In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (explaining that even if the examiner had failed to make a prima facie case, the Board would not have erred in framing the issue as one of 2 U.S. Patent No. 5,569,706 (issued Oct. 29, 1996). Appeal 2013-009904 Application 11/229,432 4 reversible error because it has long been the Board’s practice to require an appellant to identify the alleged error in the examiner’s rejections). Regarding the first argument, the Examiner correctly construed claim 1 to read on any degree of crosslinking. Ans. 6. Given the lack of any dispute in terms of the identities in the reactants, the reaction schemes, and the molar ratios of urea to urethane linkages between the subject matter of claim 1 and Jacobs’s disclosure, it would reasonably appear that the prior art reaction would inherently or necessarily result in some crosslinking. The Appellants offer no persuasive evidence (e.g., comparative experiments) to show the contrary. In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990) (“[W]e think that it was reasonable for the PTO to infer that the polymerization by both Smith and Spada of identical monomers, employing the same or similar polymerization techniques, would produce polymers having the identical composition.”). Regarding the second argument, claim 1 merely recites that “the reaction is performed in the absence of solvent.” Thus, we agree with the Examiner’s conclusion that the claims fail to “mandate the argued solid state or the exclusion of other liquids or reactants” in the final coating. Ans. 7. In addition, the Examiner correctly found that Jacobs does not require the use of a solvent, although it “may be” used. Col. 8, ll. 31-33. Moreover, the current Specification reveals that the term “solvent,” as used in the context of the invention, refers to “any volatile material.” Spec. ¶ 13. Therefore, the Appeal 2013-009904 Application 11/229,432 5 claim language “the reaction is performed in the absence of solvent” fails to exclude water as described in column 2, lines 5-8 of Jacobs. For these reasons, we uphold Rejection I. II. The Appellants rely on the same arguments offered against Rejection I. Therefore, we also affirm Rejection II for the same reasons. SUMMARY Rejections I and II 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 tc Copy with citationCopy as parenthetical citation