Andreas Bauer et al.

Patent Trials and Appeals Board

Aug 29, 2019

13129754 - (D) (P.T.A.B. Aug. 29, 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.
13/129,754 05/17/2011 Andreas Bauer WAC-136US 1967
23122 7590 08/29/2019
RATNERPRESTIA
2200 Renaissance Blvd
Suite 350
King of Prussia, PA 19406
EXAMINER
ZHANG, HAI Y
ART UNIT PAPER NUMBER
1717
NOTIFICATION DATE DELIVERY MODE
08/29/2019 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):
PCorrespondence@ratnerprestia.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ANDREAS BAUER and VOLKER STANJEK
__________

Appeal 2018-002244
Application 13/129,754
Technology Center 1700
____________

Before KAREN M. HASTINGS, MICHAEL P. COLAIANNI, and
JANE E. INGLESE, Administrative Patent Judges.

COLAIANNI, Administrative Patent Judge.

DECISION ON APPEAL

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Appellants1 appeal under 35 U.S.C. § 134 the final rejection of claims
1–5, 7, 9, and 12–18. Appellants presented oral argument in this appeal on
August 20, 2019. We have jurisdiction over the appeal pursuant to
35 U.S.C. § 6(b).
We AFFIRM.
The invention is directed to method of sealing a building surface or
roof with a one-component, moisture-curing coating composition which is
isocyanate-free and bitumen-free (claim 1; Spec. 1).
Claim 1 is illustrative of the subject matter on appeal:
1. A method for sealing a building surface or roof, said
method comprising coating a building surface or roof by brush,
roller, or commercial spraying equipment with a one-
component, moisture-curing coating composition (C)
comprising
5% to 25% by weight of one or more silane-terminated
polymers (P) having end groups of the formula (I)
~O-C( =0)-NH-A-Si(OR1)xR23-x (I),
in which
A is a linear or branched alkylene group having 1 to 10
carbon atoms,
R1 is a linear or branched, optionally halogenated alkyl
group having 1 to 10 carbon atoms,
R2 is a linear or branched, optionally halogenated alkyl
group having 1 to 10 carbon atoms, and
x is 1, 2 or 3,
1 % to 80% by weight of one or more fillers (F),
0.1 % to 10% by weight of one or more water scavengers
(W),
0.01 % to 5% by weight of one or more curing catalysts
(K),
0.01 % to 10% by weight of one or more adhesion
promoters (A),

1 Appellants identify “Wacker Chemie AG” as the real party in interest
(App. Br. 2).
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where aminosilanes used as curing catalyst (K) in
amounts of 0.5 to 5% by weight can simultaneously serve as
adhesion promoters (A),
and optionally further substances customary in moisture-
curing coating compositions, the amounts by weight adding up
to 100%,
wherein upon curing, the coated surface is tack-free and
sealed against penetration of water or water vapor.
Appellants appeal the following rejection:
Claims 1–5, 7, 9, and 12–18 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Deike (WO 2007/093382 A1, published Aug. 23, 2007) in
view of Schindler ‘986 (WO 2007/131986 A2, published Nov. 22, 2007, as
translated by Schindler US2009/0131591 A1, published May 21, 2009), and
Schindler ‘923 (US 7,153,923 B2 issued Dec. 26, 2006), as evidenced by
Onuoha (US 2009/0202837 A1, published Aug. 13, 2009) and Burckhardt
(US 2005/0065276 A1, published Mar. 24, 2005).
Appellants’ arguments focus only on the subject matter of claim 1
(App. Br. 3–11). Any claim not argued separately will stand or fall with
claim 1.

FINDINGS OF FACT & ANALYSIS
The Examiner’s findings and conclusions regarding Deike, Schindler
‘986, Schindler ‘923, Onuoha, and Burckhardt are located on pages 2 to 4 of
the Final Office Action.
Appellants argue that the Examiner’s alleged similarity between
Deike and Schindler ‘986 would not have led one of ordinary skill in the art
to modify Schindler ‘986 (App. Br. 4). Appellants contend that Deike’s
modified silane (MS) polymer must have a silane group bonded directly to
the terminal end of a polyoxyalkylene, which is a different structure than in
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Schindler ‘986 (App. Br. 4). Appellants argue that one of ordinary skill in
the art would not have determined that Deike’s and Schindler ‘986’s MS
polymers are equivalent unless the chemical structure is the same (App. Br.
4). Appellants contend that modifying Schindler ‘986’s MS polymer to have
a structure as taught by Deike would result in a polymer missing an end
group as recited in claim 1 (App. Br. 4). Based upon this analysis,
Appellants contend that applying the teaching of Deike to Schindler ‘986
would have led away from the method of claim 1 (App. Br. 4). Appellants
contend that Deike’s and Schindler ‘986’s polymers have different
functional end groups such that there would have been no reasonable
expectation that the polymers would behave similarly (App. Br. 4).
Appellants argue that the Specification discloses that comparative
examples 1 to 3 made using MS polymers did not cure adequately and the
surfaces remained tacky, unlike the sealant of inventive examples 1 to 3
which were tack-free (App. Br. 4–5). Appellants contend that Deike
recognizes that MS polymers are generally unsuitable for sealing structures
and instead uses two MS polymers with different viscosities to achieve a
sealing composition (App. Br. 5). Appellants contend that there is no
suggestion that combining two of Schindler ‘986’s polymers having
different viscosities would yield a composition that may be applied by brush,
roller, or commercial spraying equipment (App. Br. 5). Appellants contend
that similarities between Deike and Schindler ‘986 are illusory and would
not have provided motivation for the combination (App. Br. 5).
Regarding Schindler ‘923, Appellants argue that the Schindler ‘923’s
examples use silane terminated polymer blends containing more than 66
wt.% silane modified polymers (App. Br. 10). Appellants contend that
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Schindler ‘923’s higher silane modified content is excluded by the claims
that require at most 25 wt.% silane-terminated polymers (App. Br. 10).
Appellants contend that Schindler ‘923’s high content of silane-terminated
polymers means that Schinder ‘923’s teachings cannot be used to predict the
properties of a material presently claimed (App. Br. 10).
We have fully considered Appellants’ arguments and we are
unpersuaded of reversible error in the Examiner’s rejection. Appellants’
arguments fail to show specific error in the Examiner’s stated rejection.
Particularly, the Examiner finds that Deike fails to teach a composition as
recited in method claim 1 (Final Act. 2). The Examiner relies on Schindler
‘986 to teach the composition recited in claim 1 (Final Act. 2–3). The
Examiner determines that based upon Deike’s and Schindler ‘986’s use of
the composition to coat and seal a building surface, it would have been
obvious to use Schindler ‘986’s coating as the coating in Deike’s method
(Final Act. 4). The Examiner relies on Schindler ‘923 to teach the same
coating composition as Schindler ‘986 (Final Act. 4). Based upon the
identity of the coating, the Examiner finds Schindler ‘986’s coating would
have been tack-free (Final Act. 4).
Appellants’ arguments that the Examiner’s combination of Deike and
Schindler ‘986 would have required using a blend of MS (modified silane)
polymers as taught by Deike does not address the Examiner’s substitution of
Schindler ‘986’s coating/sealant composition for Deike’s coating/sealant
composition. Appellants’ argument that Schindler ‘923 uses amounts of
silane-terminated polymers that are greater than the amounts required by the
claims is not persuasive. Appellants concede that Schindler ‘923 does not
disclose generally the amount of silane-terminated polymers used (App. Br.
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10). Schindler ‘923’s disclosure of a rapid-cure, one-component mixtures
containing alkoxysilane-terminated polymers is not restricted by the
exemplified embodiments (col. 2, ll. 16–22; col. 3, ll. 52–55). In other
words, Schindler ‘923 includes embodiments broader than those
exemplified. Schindler ‘923 does not limit the amount of silane-terminated
polymers or otherwise exclude the amount of silane-terminated polymers
recited in claim 1 that may be used in the composition (claim 1).
Regarding Onuoha and Burckhardt, Appellants argue that their
disclosures about skinning time and the surface being tack-free in
polyurethane-based sealant systems are not germane to the disclosure of
Deike’s or Schindler ‘986’s silane-based sealing system (App. Br. 8–9). The
Examiner finds that Onuoha and Burckhardt are not required for the
rejection (Ans. 5). We agree with the Examiner and view Onuoha and
Burckhardt as unnecessary in our assessment of the rejection.
Appellants contend that neither Deike nor Schindler ‘986 teaches that
the surface obtained is tack-free (App. Br. 5–7). Appellants contend that the
phrase “skinning time” does not necessarily mean that the surface of the
sealants are tack-free (App. Br. 5–7). Appellants argue that the Declaration
of Dr. Volker Stanjek dated October 20, 2014 establishes that Deike’s
sealant is not “tack-free” when cured (App. Br. 6).
Appellants’ evidence in the Stanjek Declaration shows that Deike’s
sealant forms a skin and the material may continue to grab a person’s finger
or pencil tip when touched (Stanjek Dec. ¶¶ 10–15). The Stanjek
Declaration states that the skinned surface of the sealant sticks to a pencil tip
and after removing the pencil, the surface contracted back to form a smooth
surface (Stanjek Dec. ¶¶ 14–15). The Stanjek Declaration does not address
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whether Schindler ‘986’s silane-terminated polymer sealant exhibits a tack-
free surface. Rather, Appellants surmise that since Deike and Schindler
‘986’s compositions are moisture-curable sealants, they must have similar
properties, which would have included forming a tacky surface as in Deike
(App. Br. 6). Deike uses a mixture of silane-terminated polyoxyalkylenes of
different viscosities, which Appellants acknowledge (Deike 6, ll. 23–25;
App. Br. 5). The Examiner proposes, however, to use Schindler ‘986’s
single-component silane-terminated sealant for Deike’s two-component
system (Final Act. 3–4). Schindler ‘986 teaches that either single or two-
component sealant system may be used (Schindler ‘986 as translated by
Schindler ‘591 ¶ 22). In other words, Appellants’ evidence from the Stanjek
Declaration regarding Deike’s two-component system does not appear to be
relevant regarding Schindler ‘986’s single-component embodiment. Even
though Deike and Schindler ‘986 may have the same hydrolytic curing
mechanism, that does not mean that they will necessarily end with the same
product, especially given the difference in starting material.
In the Reply Brief, Appellants contend, for the first time, that
Schindler ‘986’s sealant differs from Schindler ‘923’s sealant because
Schindler ‘986 includes an aminoalkylalkoxysilane and an
epoxyalkylalkoxysilane in addition to the silane-terminated polymers (Reply
Br. 4). Contrary to Appellants’ argument, we find that Schindler ‘923 may
also include an aminoalkylalkoxysilane as a catalyst and an
epoxyalkylalkoxysilane (Schindler ‘923; col. 5, ll. 46–54, col. 3, ll. 54–60).
Our finding comports with the Examiner’s finding that the sealants in
Schindler ‘986 and Schindler ‘923 are the same single-component, moisture-
curing composition (Ans. 5–6). Although Appellants contend that Schindler
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‘986 is not limited to a methylene group between the functional group X and
the silane moiety, Schindler ‘986 does not exclude the methylene group in
that location either (Schindler ‘986 as translated by Schindler ‘591 ¶¶ 10 to
17).
Appellants allege that it was unexpected that a tack-free surface would
have been achieved using a silane-terminated polymer amount of between 5
to 25 wt.% as recited in claim 1 (App. Br. 10). Appellants do not direct us to
any evidence that establishes unexpected results as compared to the closest
prior art (i.e., Schindler ‘986 or Schindler ‘923). The Stanjek Declaration
only addresses the claimed invention relative to the teaching of Deike.
On this record, the preponderance of the evidence favors the
Examiner’s obviousness conclusion. We affirm the Examiner’s 35 U.S.C.
§ 103(a) rejection of record.

DECISION
The Examiner’s decision is 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)(1)(iv).

ORDER
AFFIRMED