Ex Parte Gestermann et al

Patent Trial and Appeal Board

Sep 19, 2018

11709411 (P.T.A.B. Sep. 19, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
11/709,411 02/22/2007
157 7590 09/21/2018
Covestro LLC
1 Covestro Circle
PITTSBURGH, PA 15205
FIRST NAMED INVENTOR
Eva Gestermann
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.
P08897/BMS061006 3565
EXAMINER
LEONARD, MICHAEL L
ART UNIT PAPER NUMBER
1763
NOTIFICATION DATE DELIVERY MODE
09/21/2018 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):
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 EV A GESTERMANN, WOLFGANG BRAUER, HANS-GEORG
WUSSOW, HENRICUS PEERLINGS, and GOVERT WOESTE
Appeal2017-011550
Application 11/709,411
Technology Center 1700
Before JEFFREY T. SMITH, MARK NAGUMO, and
WESLEY B. DERRICK, Administrative Patent Judges.
SMITH, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134 from the August 3, 2016,
Final Rejection of claims 1-12. We have jurisdiction under 35 U.S.C. § 6.
We affirm.
Appeal 2017-011550
Application 11/709,411
Appellants' appealed invention relates to melt-processable wax
containing polyurethanes with low migration tendency. Claim 1 is
reproduced from the Brief (Claims App'x) below:
1. A melt-processable polyurethane produced from:
A) one or more organic diisocyanates,
B) one or more linear hydroxyl-terminated polyols with
weight-average molecular weights of 500 to 5000,
C) one or more diol chain extenders and optionally
diamine chain extenders with molecular weights of 60 to 490,
in the presence of
D) optionally catalysts
with the addition of
E) optional auxiliary substances and additives selected
from the group consisting of fatty acid esters, metal soaps of
fatty acid esters, fatty acid amides, silicone compounds;
antiblocking agents; inhibitors; stabilizers against hydrolysis,
light, heat and discoloration; flame retardants; dyes; pigments;
inorganic or organic fillers; and reinforcing agents,
in amounts such that the molar ratio of NCO groups in A)
to isocyanate-reactive groups in B) and C) is from 0.9: 1 to
1.2: 1,
containing from 0.02 to 2 wt.%, based on total weight of
melt processable polyurethane, of
F) a mixture of reaction products of
a) ethylenediamine with industrial stearic acid, and
b) ethylenediamine with 12-hydroxystearic acid
and/or
c) ethylenediamine with 12-hydroxystearic acid and
industrial stearic acid.
2
Appeal 2017-011550
Application 11/709,411
The Examiner maintains the following grounds of rejection from the
Final Rejection: 1
I. Claims 1-7 and 9-12 are unpatentable under 35 U.S.C.
§ I03(a) as obvious over Kaufuold '762 (US 6,355,762 Bl;
issued Mar. 12, 2002) ("Kaufuold '762") in view of Kawanishi2
(JP 63235381; published Sept. 30, 1988).
II. Claim 8 is unpatentable under 35 U.S.C. § I03(a) as
obvious over Kaufuold '762, Kawanishi, and Heinrichs (US
2006/0041101 Al; published Feb. 23, 2006).
OPINION3
The dispositive issue on appeal for each rejection is: Did the
Examiner err in determining that one skilled in the art would have found it
obvious to form the melt-processable polyurethanes (TPU) of Kaufuold '762
to include a lubricant containing the reaction product specified by
component F)?4
We affirm the appealed rejections for the reasons presented by the
Examiner in the Final Action and the Answer. We add the following.
1 The Examiner has withdrawn the rejection of claims 1-7 are under
35 U.S.C. § 112, second paragraph.
2 The Examiner relies on the English language machine translation for this
document located in the present record.
3 Appellants have not presented specific arguments addressing each of the
rejected claims and the separate rejection of claim 8. We select independent
claim 1 as representative of the subject matter on appeal and will limit our
discussion thereto.
4 We address the appealed rejections together. Appellants have not disputed
that Kaufuold '762 describes a melt-processable polyurethane comprising
the components specified by elements A-E of claim 1. In response to the
appealed rejections, Appellants argue Kawanishi would not have suggested
the reaction product specified by component F.
3
Appeal 2017-011550
Application 11/709,411
This is the third time rejected claims based on this application have
come before us for adjudication. We incorporate the findings and
discussions presented in our prior decision on appeal for Application
11/709,411, Appeal 2010-011231, mailed July 27, 2011, and Appeal 2013-
001535, mailed December 2, 2015 ("Prior Decisions").
The Examiner finds Kaufhold '762 discloses melt-processable
polyurethane that contains fatty acid amide lubricant, but fails to teach
lubricant based on 12-hydroxystearic acid. (Final Act. 3.) The Examiner
finds Kawanishi discloses additives for polyurethane coatings prepared from
ethylene diamine, stearic acid, and 12-hydroxystearic acid. (Id.) The
Examiner determines it would have been obvious to include the 12-
hydroxystearic acid based lubricant in the TPU compositions disclosed by
Kaufhold '762. (Id.).
Appellants argue there is no teaching, suggestion or motivation to
combine the fatty acid amides of Kawanishi with the melt processable
polyurethanes of Kaufhold '7 62, to arrive at the present invention. (App. Br.
4---6.) Appellants argue Kawanishi does not teach or suggest using the fatty
acid amides as a wax and does not disclose using the fatty acid amides in
conjunction with a melt-processable polyurethane elastomer, but rather with
paints and coatings. (Id. at 4.)
The issue of the obviousness of including the reaction product of an
alkylene diamine ( ethylenediamine) with a linear fatty acid in conjunction
with melt processable polyurethane elastomers has been previously
addressed in this record in the Prior Decisions. As determined in the Prior
4
Appeal 2017-011550
Application 11/709,411
Decisions, the prior art cited throughout the prosecution of this Application
establishes the suitability of formulating melt processable polyurethane
compositions that comprise mixtures of fatty acid based amide wax/lubricant
components. Appellants have not come forward with a preponderance of the
evidence to rebuts these determinations in the record. The disclosure by
Kawanishi that ethylenediamine with 12-hydroxystearic acid is useful as a
lappet inhibitor (anti-sagging agent) in polyurethane coatings would not
detract from the knowledge of persons of ordinary skill in the art that
mixtures of fatty acid based amides are suitable for melt-processable
polyurethane compositions. 5 Knowledge generally available to one skilled
in the art can provide the motivation to combine the relevant teachings.
Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281,297
n.24 (Fed. Cir. 1985). The motivation to combine the relevant teachings of
references may come from knowledge of those skilled in the art that certain
references, or disclosures in the references, are known to be of special
interest or importance in the particular field. Pro-Mold and Tool Co. v.
Great Lakes Plastics, Inc., 75 F.3d 1568, 1573 (Fed. Cir. 1996). As such, a
person of ordinary skill in the art would have reasonably expected that
mixtures of fatty acid based amides such as described by Kawanishi would
have been suitable for utilization in melt processable polyurethane
compositions such as described by Kaufuold '762. "For obviousness under
§ 103, all that is required is a reasonable expectation of success." In re
0 'Farrell, 853 F.2d 894, 904 (Fed. Cir. 1988).
5 Moreover, when addressing dependent claim 8, the Examiner identified
Heinrichs as describing commercially available ethylene diamine, stearic
acid, and 12-hydroxystearic acid wax compositions. (Final Act. 4.)
5
Appeal 2017-011550
Application 11/709,411
Finally, Appellants have not directed us to evidence that establishes
ethylene diamine, stearic acid, and 12-hydroxystearic acid wax lubricant
compositions provides unexpected results when utilized in melt-processable
polyurethane compositions.
Accordingly, we sustain the Examiner's rejections under 35 U.S.C.
§ 103(a) for the reasons given by the Examiner and presented above.
DECISION
The Examiner's 35 U.S.C. § 103 (a) prior art rejections are affirmed.
TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(l).
AFFIRMED
6