13376807 (P.T.A.B. Jun. 29, 2018)

Ex Parte Dörr et al

Patent Trial and Appeal BoardJun 29, 2018

13376807 (P.T.A.B. Jun. 29, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/376,807 12/30/2011 123223 7590 07/03/2018 Drinker Biddle & Reath LLP (WM) 222 Delaware A venue, Ste. 1410 Wilmington, DE 19801-1621 FIRST NAMED INVENTOR Sebastian Dorr 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 074023-0707-US-545542 9919 EXAMINER TATESURE, VINCENT ART UNIT PAPER NUMBER 1786 NOTIFICATION DATE DELIVERY MODE 07 /03/2018 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): IPDocketWM@dbr.com penelope.mongelluzzo@dbr.com DBRIPDocket@dbr.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte SEBASTIAN DORR, HANS GEORG GRABLOWITZ, THOMAS FELLER, and THOMAS MICHAELIS Appeal2017-000830 Application 13/376,807 Technology Center 1700 Before ADRIENE LEPIANE HANLON, DONNA M. PRAISS, and N. WHITNEY WILSON, Administrative Patent Judges. WILSON, Administrative Patent Judge. DECISION ON APPEAL Appellants 1 appeal under 35 U.S.C. Â§ 134(a) from the Examiner's June 4, 2015 decision finally rejecting claims 1-6, 9-12, and 14--22. We have jurisdiction over the appeal under 35 U.S.C. Â§ 6(b ). An oral hearing was held on June 26, 2018. A transcript of that hearing will be made part of the record. We REVERSE. 1 Appellants identify the real party in interest as Bayer MaterialScience AG (Br. 3.). Appeal2017-000830 Application 13/376,807 CLAIMED SUBJECT MATTER Appellants' disclosure is directed to aqueous polyurethane dispersions produced using at least two poly(tetramethylene glycol) polyether polyols with different average molar masses and at least two different polyisocyanate components. Details of the claimed invention are set forth in independent claim 1, which is reproduced below from the Claims Appendix of the Appeal Brief: 1. An aqueous polyurethane dispersion comprising polyurethanes obtainable from Al) at least two organic di- or polyisocyanates that are different from one another, A2) at least two poly(tetramethylene glycol) polyether diols A2a) and A2b) that are different from one another, each with the structure (HO-(CH2-CH2-CH2-CH2-0)x-H), wherein the relevant diol precursors are present with number-average molecular weights Mn of 400 to 8000 g/mol and the diol with the lower molar mass A2a) has a number average molecular weight Mn which is 10 to 80% of the number-average molecular weight Mn of the diol with the higher molar mass A2b ), A3) optionally hydroxy-functional compounds with molecular weights of 62 to 399 g/mol, and A4) optionally non-ionic hydrophilising agents, and one or more amino-functional compounds B), wherein, based on the total mass of the polyurethane, less than 10 wt.% of diol precursors with number-average molecular weights Mn of 400 to 8000 g/mol are contained which do not correspond to A2). 2 Appeal2017-000830 Application 13/376,807 REJECTIONS 1. Claims 1, 3---6, 9, 10, 12, and 14--22 are rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Rische2 in view of Schutze. 3 3. Claims 2 and 11 are rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Rische and Schutze, and further in view of Matsumoto. 4 DISCUSSION We decide this appeal based on limitations found in claim 1 and common to each of the claims. Accordingly, we focus our discussion on the obviousness rejection of claim 1 over Rische in view of Schutze. The Examiner finds that Rische discloses an aqueous polyurethane dispersion for use as a coating composition comprising polyurethane which is obtainable from (Al) polyisocyanates (corresponding to claimed element Al), (A2) polytetramethylene glycol polyether diols with molecular weights between 600 and 3000 g/mol (corresponding to claimed element A2), and an amino-functional compound (corresponding to claimed component B) (Final Act. 2, citing Rische, Abstract, i-fi-f 15, 16, 18, 19, 32, and 40). The Examiner further finds that Rische teaches the dispersion's ability to be used as a coating composition on a fiber based substrate, and the polyisocyanates may be a mixture of polyisocyanates "such as that comprising hexamethylene diisocyanate and isophorone diisocyanate (id., citing Rische, i-fi-130, 31, 73, and 73). 2 Rische et al., US 2006/0128885 Al, published June 15, 2006. 3 Schutze et al., US 2003/0105219 Al, published June 5, 2003. 4 Matsumoto, US 5,916,965, issued June 29, 1999. 3 Appeal2017-000830 Application 13/376,807 The Examiner also finds that Rische is silent with regards to the specific types of tetramethylene glycol polyether diols used in its dispersion (Final Act. 3). The Examiner relies on Schutze, finding that it discloses an aqueous polyurethane dispersion for use as a coating composition, comprising polyurethane which is obtainable from two different organic isocyanates, an amino functional compound, and two different polytetramethylene glycol polyether diols with molecular weights between 600 and 3000 g/mol (id., citing Schutze, Abstract, i-fi-1 83 and 99). The Examiner determines that it would have been obvious "to form the polyurethane dispersion of Rische, wherein the tetramethylene glycol polyether diols comprise the tetra methylene glycol polyether diols such as the ones taught by Schutze, motivated by the expectation of successfully practicing the invention of the prior art combination with tetra methylene glycol polyether diols known in the art as being predictably suitable for similar aqueous polyurethane dispersions" (Final Act. 3). "In rejecting claims under 35 U.S.C. Â§ 103, the examiner bears the initial burden of presenting a prima facie case of obviousness." In re Rijckaert, 9 F.3d 1531, 1532 (Fed. Cir. 1993) (citing In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992)). "A primafacie case of obviousness is established when the teachings from the prior art itself would appear to have suggested the claimed subject matter to a person of ordinary skill in the art." In re Bell, 991 F.2d 781, 783 (Fed. Cir. 1993) (quoting In re Rinehart, 531 F.2d 1048, 1051(CCPA1976)). In this instance, as noted by Appellants (Br. 13), Schutze discloses polyurethane dispersions containing a mixture of polycarbonate polyol and polytetramethylene glycol polyol (Schutze, Abstract, i-fi-f 13-15). Schutze 4 Appeal2017-000830 Application 13/376,807 requires a minimum of 11 % by weight of polycarbonate polyol. 5 Schutze further teaches that when its composition does not include the polycarbonate polyol, the resulting polyurethane does not have sufficient long-term stability (Schutze i-f 124, Table 1, Comparative examples 7 and 8). Accordingly, as argued by Appellants, if a person of skill in the art were to look to Schutze for teachings on the polytetramethylene glycol polyols to use in Rische's composition, that person would have been led to include at least 11 wt% of a polycarbonate polyol in the composition. Such a composition would have been outside the scope of the present claim 1, which recites that the maximum amount of diol precursors with number- average molecular weights Mn of 400 to 8000 g/mol contained in the composition which are not poly(tetramethylene glycol) polyether diols is 10%. The Examiner finds that the reason a person of skill in the art would have selected the poly(tetramethylene glycol) polyether diol combination disclosed in Schutze for use in Rische' s composition is that Rische is silent with respect to details about what poly(tetramethylene glycol) polyether diols could be used in its compositions, and Schutze discloses "conventional" prior art materials which may be used (Ans. 4). However, if a person of skill in the art were to have looked to Schutze for which poly(tetramethylene glycol) polyether diols to use in Rische's composition, that person would have found that the required combination of 5 Schutze recites that its composition contains from 55%-87% by weight of a mixture of a polycarbonate polyols and a polytetramethylene glycol polyol (Schutze, i-f 15), and later states that the polycarbonate polyol makes up at least 20 wt% of that mixture (id., i-f 23). Thus, according to Schutze, the minimum amount polycarbonate present in the composition is 11 wt %. 5 Appeal2017-000830 Application 13/376,807 poly(tetramethylene glycol) polyether diols in Schutze should be accompanied by at least 11 wt% of a polycarbonate diol, which would generate a composition outside the scope of claim 1. This analysis is not an attack on the references individually. Rather, it is a reasoned review of what a person of skill in the art would have gleaned from the cited art, without the benefit of Appellants' disclosure. In order to properly reject the claims underÂ§ 103(a), the Examiner must show that each and every limitation of the claim is described or suggested by the prior art or would have been obvious based on the knowledge of those of ordinary skill in the art or the inferences and creative steps a person of ordinary skill in the art would have employed. KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 417-18 (2007); In re Fine, 837 F.2d 1071, 1074 (Fed. Cir. 1988). In this instance, the preponderance of the evidence does not support the Examiner's finding that the claim limitation "based on the total mass of the polyurethane, less than 10 wt.% of diol precursors with number-average molecular weights Mn of 400 to 8000 g/mol are contained which do not correspond to A2" would have been obvious in view of the cited art. Accordingly, based on the evidence of record, we determine that a preponderance of the evidence does not support the obviousness rejection of claim 1 over Rische in view of Schutze. The Examiner does not rely on Matsumoto to cure the deficiency in the rejection of claim 1. Therefore, we reverse the rejection, and also the rejection of the remaining claims, each of which depends from claim 1. 6 Appeal2017-000830 Application 13/376,807 CONCLUSION We REVERSE the rejection of claims 1, 3---6, 9, 10, 12, and 14--22 under 35 U.S.C. Â§ 103(a) as unpatentable over Rische in view of Schutze. We REVERSE the rejection of claims 2 and 11 under 35 U.S.C. Â§ 103(a) as unpatentable over Rische and Schutze, and further in view of Matsumoto. REVERSED 7