2020001380 (P.T.A.B. Dec. 17, 2020)

Christophe Steinbrecher et al.

Patent Trials and Appeals BoardDec 17, 2020

2020001380 (P.T.A.B. Dec. 17, 2020)

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. 14/427,585 03/11/2015 Christophe Steinbrecher 12-23-EP02.US 1668 33249 7590 12/17/2020 Hexion Inc. 12650 Directors Drive, Suite 100 Stafford, TX 77477 EXAMINER NILAND, PATRICK DENNIS ART UNIT PAPER NUMBER 1762 NOTIFICATION DATE DELIVERY MODE 12/17/2020 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): lisa.jones@hexion.com tammy.hodges@hexion.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte CHRISTOPHE STEINBRECHER, DENIS HEYMANS, BEDRI ERDEM, MIKE O'SHAUGNESSY, and JEFF BLAISDELL Appeal 2020-001380 Application 14/427,585 Technology Center 1700 Before TERRY J. OWENS, JOHN A. EVANS, and BRIAN D. RANGE, Administrative Patent Judges. OWENS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), The Appellant1 appeals from the Examiner’s decision to reject claims 1–20. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. The Appellant identifies the real party in interest as Hexion Inc. (Appeal Br. 3). Appeal 2020-001380 Application 14/427,585 2 CLAIMED SUBJECT MATTER The claims are directed to a polyurethane aqueous dispersion. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A polyurethane aqueous dispersion composition derived from a reaction mixture comprising: a hydroxyl terminal oligomer made from a tertiary alkyl glycidyl ester and carboxylic diacids and anhydride, wherein the carboxylic di-acids and the anhydride are not derived from unsaturated fatty acids, a poly-isocyanate, a water dispersing component, and a polyfunctional amine chain extender component, wherein the oligomer is characterized in that the molecular weight is between 600 and 5000 and wherein the dispersion is free of meth(acrylic) derivatives. REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Ambrose US 5,095,069 Mar. 10, 1992 Swarup US 6,087,444 July 11, 2000 Hassel US 6,248,839 B1 Sept. 4, 2001 Ingrisch US 6,566,438 B1 May 20, 2003 Ramesh US 2004/0171748 A1 Sept. 2, 2004 Killilea US 2005/0192400 A1 Sept. 1, 2005 Lubnin US 2013/0316098 A1 Nov. 28, 2013 Odian Principles of Polymerization, 3rd ed 1991 Research Disclosure Glicidyl Ester Based Telechelic Polyesters May 2006 REJECTIONS Claims 1–20 stand rejected as follows: 1) under 35 U.S.C. § 103(a) over Research Disclosure in view of Swarup, Odian, Ingrisch, Killilea, Appeal 2020-001380 Application 14/427,585 3 Ambrose, and Hassel; and 2) under 35 U.S.C. § 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the applicant regards as the invention. OPINION Rejection under 35 U.S.C. § 112, second paragraph “[T]he indefiniteness inquiry asks whether the claims ‘circumscribe a particular area with a reasonable degree of precision and particularity.’” Marley Mouldings Ltd. v. Mikron Industries Inc., 417 F.3d 1356, 1359 (Fed. Cir. 2005) (quoting In re Moore, 439 F.2d 1232, 1235 (CCPA 1971)). The Examiner concludes that the Appellant’s claims are indefinite because the Appellant does not specify the type of average for the oligomer molecular weight, i.e., number average, weight average, z average, viscosity average, or some other type of average (Non-Final Rej. 2–3; Ans. 11–37). The Examiner relies upon Ramesh (¶ 42) for evidence of use of both number average and weight average molecular weights for polyester polyols (Ans. 18). The Examiner illustrates that polyester diol number average and weight average molecular weights can differ significantly within the Appellant’s molecular weight range (Ans. 20–21). The Appellant argues that those of ordinary skill in the art know the meaning of “molecular weight” and that the Specification and claims use the term “molecular weight,” not “average molecular weight,” so further description of the molecular weight is not required. The Appellant also argues that molecular weight information is available in common literature sources, the Specification provides examples of polyols made from glicidyl ester monomers that indicate to one of ordinary skill in the art what types of glycidyl esters and polyols are used in the invention, and one of ordinary Appeal 2020-001380 Application 14/427,585 4 skill in the art would be able to understand the results of molecular weight computerized testing equipment (Appeal Br. 10–12). The relevant issue is not whether those of ordinary skill in the art know the meaning of “molecular weight” or would have understood what types of polyols are used in the Appellant’s claimed dispersion. The relevant issue is whether the Appellant’s claims including the term “molecular weight,” without an indication of the type of average molecular weight, circumscribe a particular area with a reasonable degree of precision and particularity. The Appellant provides no evidence that their oligomer molecular weights are not averages or that their oligomer chains all have the same degree of polymerization such that all types of average molecular weight are the same. The Appellant argues that one of ordinary skill in the art would understand that number average molecular weight is used for polymers and resins and that the 600–5,000 molecular weight range in the claims is sufficiently low that any difference between number average and weight average is too small to cause the claims to fail to particularly point out and distinctly claim the subject matter which the applicant regards as the invention (Appeal Br. 10, 13). Those arguments are not well taken because the Appellant provides no supporting evidence. Arguments of counsel cannot take the place of evidence. See In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984). Rejection under 35 U.S.C. § 103(a) The Appellant argues claims 1–20 as a group (Appeal Br. 15–23). We therefore limit our discussion to the sole independent claim, i.e., claim 1. See 37 C.F.R. § 41.37 (c)(1)(iv) (2013). Appeal 2020-001380 Application 14/427,585 5 In some instances it may be impossible to determine whether claimed subject matter is anticipated by or would have been obvious over references because the claims are so indefinite that considerable speculation and assumptions would be required regarding the meaning of terms employed in the claims with respect to the scope of the claims. See In re Steele, 305 F.2d 859, 862 (CCPA 1962). In other instances, however, it is possible to make a reasonable, conditional interpretation of claims adequate for the purpose of resolving patentability issues to avoid piecemeal appellate review. In the interest of administrative and judicial economy, this course is appropriate wherever reasonably possible. See Ex parte Saceman, 27 USPQ2d 1472, 1474 (Bd. Pat. App. & Int. 1993); Ex parte Ionescu, 222 USPQ 537, 540 (Bd. App. 1984). In the present case, we consider such a reasonable, conditional interpretation to be possible. This interpretation is that “molecular weight” in the Appellant’s claims is the number average molecular weight. Research Disclosure discloses a glicidyl ester-based hydroxyl terminated telechelic polyester (which corresponds to the Appellant’s hydroxyl terminal oligomer) made from a tertiary alkyl glicidyl ester, carboxylic di-acids and anhydride, where the carboxylic di-acids and anhydride are not derived from unsaturated fatty acids (pp. 1, 2). The polyester can have a molecular weight below 2,300 or above 3,000, and is “very suitable to make polyurethane dispersions according to the teaching of US patent 6,087,444” (p. 2), which is the Swarup reference.2 2 The Appellant does not raise any issue regarding the definiteness or enablement of Research Disclosure’s term “molecular weight.” Hence, such an issue is not before us on appeal. See 37 C.F.R. § 41.37(c)(1)(iv) (2013) Appeal 2020-001380 Application 14/427,585 6 Swarup makes a polyurethane prepolymer by mixing a polyhydroxy compound (which Research Disclosure indicates (p. 2) can be the disclosed glicidyl ester-based hydroxyl terminated telechelic polyester) with a polyisocyanate and a water dispersing component comprising isocyanate- reactive compounds containing salt-forming groups, neutralizing the polyurethane prepolymer, dispersing the neutralized polyurethane prepolymer in water, and chain extending the dispersed neutralized polyurethane prepolymer to form a polyurethane aqueous prepolymer dispersion (Abstract; col. 2, ll. 28–38; col. 3, ll. 8–16 ; col. 5, l. 28 – col. 6, l. 23; col. 7, ll. 8–23). The Appellant argues that Swarup’s polyurethane aqueous prepolymer dispersion is an intermediate product for forming a urethane/acrylic polymer which the Appellant’s claim 1 excludes by its “free of meth(acrylic) derivatives” limitation (Appeal Br. 16–18). Swarup’s polyurethane prepolymer can be reacted with an acrylic monomer to form a polyurethane/acrylic polymer (col. 2, ll. 20–21, 49–52; Examples 4–11, 13). When the polyurethane prepolymer is not reacted with an acrylic monomer, however, it is free of meth(acrylic) derivatives, and as pointed out above is used to form a polyurethane aqueous dispersion that includes compositions within the scope of the Appellant’s claim 1.3 (“Except as provided for in §§ 41.41, 41.47 and 41.52, any arguments or authorities not included in the appeal brief will be refused consideration by the Board for purposes of the present appeal.”). 3 The Appellant argues that when the acrylate monomers from Swarup’s Example 7 were omitted “a clean polyurethane was not obtained” (i.e., the prepolymer solidified due to high viscosity; July 12, 2017 Declaration under 37 C.F.R. § 1.132) (Appeal Br. 18). That argument is irrelevant because Appeal 2020-001380 Application 14/427,585 7 Thus, we are not persuaded of reversible error in the Examiner’s rejections. CONCLUSION The Examiner’s rejections are affirmed. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–20 103(a) Research Disclosure, Swarup, Odian, Ingrisch, Killilea, Ambrose, Hassel 1–20 1–20 112, ¶ 2 Indefiniteness 1–20 Overall Outcome 1–20 TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED Swarup’s polyurethane aqueous prepolymer dispersion (col. 2, ll. 42–49) is not made by omitting the acrylic monomers from Example 7.