Ahren Olson et al.

Patent Trials and Appeals Board

Jul 23, 2019

14160956 - (D) (P.T.A.B. Jul. 23, 2019)

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.
14/160,956 01/22/2014 Ahren Olson BMS132048 / MD13-09 3703
157 7590 07/23/2019
Covestro LLC
1 Covestro Circle
PITTSBURGH, PA 15205
EXAMINER
WALTERS JR, ROBERT S
ART UNIT PAPER NUMBER
1717
NOTIFICATION DATE DELIVERY MODE
07/23/2019 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):
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 AHREN OLSON and CAITLIN ABRAHAM
____________

Appeal 2018-003072
Application 14/160,956
Technology Center 1700
____________

Before JEFFREY B. ROBERTSON, MERRELL C. CASHION, JR., and
JANE E. INGLESE, Administrative Patent Judges.

INGLESE, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 requests our review under 35 U.S.C. § 134(a) of the
Examiner’s decision to finally reject claims 1–92. We have jurisdiction over
this appeal under 35 U.S.C. § 6(b).
We AFFIRM.
STATEMENT OF THE CASE
Appellant claims a two-component coating composition. Br. 1–2.
Claim 1, the sole pending independent claim, illustrates the subject matter on
appeal, and is reproduced below with language italicized that is of particular

1 Appellant is the Applicant, Bayer MaterialScience LLC. Application Data
Sheet filed January 22, 2014. According to the Appeal Brief, the real party
in interest is Covestro LLC. Appeal Brief filed July 6, 2017 (“Br.”), 1.
2 Claims 10–19 stand withdrawn from consideration. Final Office Action
entered February 13, 2017 (“Office Act.”), 1.
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relevance to the present appeal:
1. A two-component coating composition comprising: an
(1) isocyanate-functional component, and
(2) an isocyanate-reactive component comprising a
hydroxyl-functional acrylic polymer and/or a hydroxyl-
functional polyester,
wherein the isocyanate-functional component comprises:
(a) an aliphatic polyisocyanate containing
allophanate structural units and having the structure

in which:
(i) Q1 and Q2 independently of one another are
each a radical of an aliphatic diisocyanate,
(ii) R1 and R2 independently of one another are
hydrogen or a C1-C4 alkyl radical,
(iii) Y is a radical of a starter molecule with a
functionality of from 2 to 6,
(iv) n is a number from 2 to 6, and
(v) m corresponds to a number of monomer units
such that the number-average molecular weight of a
polyether on which the structure is based is 300 to 20,000
g/mol; and
(b) a cycloaliphatic polyisocyanate comprising an
allophanate group and an isocyanurate trimer group.

Br. 6 (Claims Appendix) (emphasis added and spacing altered relative
to original).
The Examiner maintains the rejection of claims 1–9 under 35 U.S.C. §
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103 as unpatentable over Borgholte3 in view of Best4 and Mager5 in the
Examiner’s Answer entered November 15, 2017.
DISCUSSION
Upon consideration of the evidence relied upon in this appeal and
each of Appellant’s contentions, we affirm the Examiner’s rejection of
claims 1–9 under 35 U.S.C. § 103, for the reasons set forth in the Final
Action, the Answer, and below.
We review appealed rejections for reversible error based on the
arguments and evidence the appellant provides for each issue the appellant
identifies. 37 C.F.R. § 41.37(c)(1)(iv); Ex parte Frye, 94 USPQ2d 1072,
1075 (BPAI 2010) (precedential) (cited with approval in 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, “it has long been the Board’s practice to
require an applicant to identify the alleged error in the examiner’s
rejections.”)).
Appellant argues claims 1–9 together, and, therefore, does not present
arguments directed to the separate patentability of any particular claim. Br.
2–4. We accordingly select claim 1 as representative, and decide the appeal
as to claims 1–9 based on claim 1 alone. 37 C.F.R. § 41.37(c)(1)(iv).
Borgholte discloses a coating composition comprising a hydroxyl-
containing polyacrylate resin (a hydroxyl-functional acrylic polymer) and a
crosslinking agent. Col. 1, ll. 11–37. Borgholte discloses that the
crosslinking agent is preferably an organic polyisocyanate having free

3 US 6,099,912, issued August 8, 2000.
4 US 2011/0054141 A1, published March 3, 2011.
5 US 2005/0222366 A1, published October 6, 2005.
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isocyanate groups attached to aliphatic and/or cycloalophatic structures that
include isocyanurate and/or allophante groups. Col. 8, ll. 30–36; col. 9, ll.
8–11. The Examiner finds that “Borgholte fails to explicitly teach an
embodiment where the isocyanate component comprises a mix of [the
particular] aliphatic polyisocyanate and cycloaliphatic polyisocyanate
components” recited in claim 1, and the Examiner relies on Best and Mager
for suggesting such polyisocyanates. Final Act. 4–5.
Best discloses a coating composition comprising an aliphatic
polyisocyanate functional material and a cycloaliphatic polyisocyanate
functional material, each of which includes at least one isocyanurate and/or
allophante functional group. ¶¶ 5–6, 32. Best discloses that the coating
composition does not exhibit a substantial degree of sag when applied at a
wet film thickness of at least 6 mils, and also does not exhibit a substantial
degree of blistering when cured to a dry film thickness of at least 6 mils.
¶ 6.
The Examiner concludes that it would have been obvious to one of
ordinary skill in the art before the effective filing date of the present
application “to modify Borgholte’s composition by utilizing a mix of
aliphatic and cycloaliphatic polyisocyanates as disclosed by Best” in view of
Best’s disclosure that “compositions comprising the mix of polyisocyanates
provide[] good sag and blistering properties.” Final Act. 5.
Mager discloses a process for producing polyisocyanates including
allophanate structural units having the same structure as the aliphatic
polyisocyanates recited in claim 1. ¶¶ 3, 52–59. Mager discloses including
the polyisocyanates in coating compositions that comprise at least one diol
or polyol. ¶ 22.
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The Examiner concludes that it would have been obvious to one of
ordinary skill in the art before the effective filing date of the present
application “to modify Borgholte’s composition by using an aliphatic
polyisocyanate having the structures as disclosed by Mager” in view of
Mager’s disclosure that “the claimed compounds provide stabilized
polyisocyanates.” Final Act. 5 (citing Mager Abst.).
Appellant argues that Borgholte discloses “that the degree of
blistering with their coating composition was satisfactory under the Volvo
test,” and, therefore, “there appears to be no recognized problem in the art
that cries out for a solution” that would have motivated one of ordinary skill
in the art to improve the coating’s blistering properties by making the
Examiner’s proposed substitution of Best’s mixture of aliphatic and
cycloaliphatic polyisocyanates. Br. 4 (citing Borgholte col. 14, ll. 39–50).
Appellant’s arguments, however, are unpersuasive of reversible error
in the Examiner’s rejection. Best’s disclosure that including aliphatic and
cycloaliphatic polyisocyanates that each comprise at least one isocyanurate
and/or allophante functional group in a coating composition prevents the
composition from exhibiting substantial sag and blistering reasonably would
have led one of ordinary skill in the art to use a combination of such
polyisocyanates as the cross-linking agent in Borgholte’s coating
composition to prevent both sag and blistering. Thus, although Borgholte
may disclose that the coating composition described in the reference exhibits
a satisfactory degree of blistering as Appellant argues, the ordinarily skilled
artisan nonetheless reasonably would have expected that using a
combination of aliphatic and cycloaliphatic polyisocyanates, where each of
the polyisocyanates includes at least one isocyanurate and/or allophante
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functional group as disclosed in Best, as the cross linking agent in
Borgholte’s composition, would successfully prevent the composition from
exhibiting sag.
Appellant also argues that Borgholte teaches using stabilizer
molecules, and “there appears to be no problem or weakness from such use
which might prompt a search by one of ordinary skill in the art for an
alternative” that would have “risk[ed] disturbing the already satisfactory
coating composition of Borgholte” by “substituting the aliphatic
polyisocyanates taught by Mager.” Id.
Regardless of whether Borgholte’s coating composition was
satisfactory as Appellant argues, Mager’s disclosure of particular aliphatic
polyisocyanates containing allophanate structural units useful for inclusion
in coating compositions reasonably would have suggested the suitability of
utilizing such polyisocyanates as the aliphatic polyisocyanate comprising at
least one allophante functional group of Borgholte’s coating composition,
modified as suggested by Best. Sinclair & Carroll Co. v. Interchemical
Corp., 325 U.S. 327, 335 (1945) (“Reading a list and selecting a known
compound to meet known requirements is no more ingenious than selecting
the last piece to put into the last opening in a jig-saw puzzle.”); In re Leshin,
277 F.2d 197, 199 (CCPA 1960) (“Mere selection of known plastics to make
a container-dispenser of a type made of plastics prior to the invention, the
selection of the plastics being on the basis of suitability for the intended use,
would be entirely obvious.”). Consequently, Appellant’s argument is
unpersuasive of reversible error.
We, therefore, sustain the Examiner’s rejection of claims 1–9 under
35 U.S.C. § 103.
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DECISION
We affirm the Examiner’s rejection of claims 1–9 under 35 U.S.C.
§ 103.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED