Ex Parte Gurtler et al

Board of Patent Appeals and Interferences

Apr 26, 2010

10784018 (B.P.A.I. Apr. 26, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte CHRISTOPH GURTLER, JAN MAZANEK,
JOACHIM PETZOLDT, HEINZ SCHMIDT,
and STEPHAN NOWAK
____________________

Appeal 2009-010133
Application 10/784,018
Technology Center 1700
____________________

Decided: April 26, 2010
____________________

Before MICHAEL P. COLAIANNI, BEVERLY A. FRANKLIN, and
KAREN M. HASTINGS, Administrative Patent Judges.

COLAIANNI, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134 from the
Examiner's final rejection of claims 1, 3, 5 through 8, 14 through 18, 22
through 24, and 29 through 37. We have jurisdiction pursuant to
35 U.S.C. § 6.
We AFFIRM.
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STATEMENT OF THE CASE
The subject matter on appeal is directed to a polyurethane-based one
component baking system. Claim 1 is illustrative:

As evidence of unpatentability of the claimed subject matter, the
Examiner relies upon the following references:
Yagii 5,138,015 Aug. 11, 1992
Watanabe US 2003/0096103 AL May 22, 2003

The Examiner maintains the rejection of claims 1-3, 5-8, 14-18, 22-
24, and 29-37 under 35 U.S.C. § 103(a) as unpatentable over Watanabe and
Yagii.
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Appellants argue the claims as a group. Accordingly, we select claim
1 as representative with the remaining claims standing or falling therewith.
See 37 C.F.R. § 41.37(c)(1)(vii).
ISSUE
Did the Examiner reversibly err in determining that it would have
been obvious to employ Yagii's molybdenum oxide catalyst as Watanabe's
molybdenum oxide catalyst to deblock its diisocyanates during the process
to form polyurethane? We decide this issue in the negative.
FINDINGS OF FACT
1. Appellants do not specifically dispute the Examiner's finding that
Watanabe et al teach a coated metal plate and method for
its production, wherein the coating comprises a one-component
polyurethane based baking system comprising a mixture of
blocked polyisocyanate, polymers having isocyanate-reactive
groups, Molybdenum oxide catalyst, water, and further
additives and auxiliaries, wherein all components are present in
amounts that correspond to the claimed ranges (Abstract,
paragraphs 30, 31, 32, 36, 37, and 53). In particular, the
blocked polyisocyanate consists of hexamethylene and
isophorone diisocyanate, and the isocyanate-reactive polymers
consist of polyesters (Paragraphs 30 and 33).
. . . .
Various methods of mixing are disclosed by Watanabe
et al; the first being catalyst added to blocked polyisocyanate
and isocyanate-reactive polymer mixture prior to being
dispersed in water, and another being blocked polyisocyanate,
isocyanate-reactive polymer and catalyst are added together in
the presence of solvent before dispersion in water (Paragraphs
35-37).
(Compare Ans. 4 and 5 with App. Br. 4-7 and Reply Br. 2-3).
In this regard, Watanabe teaches a cationic electrodeposition paint
comprising polyurethane prepared by, inter alia, blending a base resin,
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which may include a polyurethane resin having, inter alia, a hydroxyl group,
with a curing agent such as a blocked polyisocyanate compound. (See
Watanabe, ¶¶ [0030], [0031], and [0036]). Watanabe teaches that this
blocked polyisocyanate compound may be formed by blocking a
polyisocyanate compound, which may be hexamethylene diisocyanate, with
"known blocking agents of . . . an alcohol base." (Watanabe, ¶¶ [0032]-
[0034]).
Watanabe also teaches that this blocked polyisocyanate compound
may be heated so that the blocking agent is "dissociated to regenerate the
isocyanate groups . . . [so that they can] take part in a cross linking reaction
with a base resin." (Watanabe, ¶ [0032]). In addition, Watanabe teaches
that the cationic electrodeposition paint can be compounded with a "curing
catalyst having a corrosion resistance such as . . . oxides . . . of metals
selected from, for example . . . molybdenum." (Watanabe, ¶ [0037]).
Watanabe also teaches curing "at 100° to 200°C." (Watanabe, ¶ [0038]).
2. Appellants do not specifically dispute the Examiner's finding that
"[t]he blocking . . . chemistry of Watanabe et al [is as follows]:

(Compare Ans. 7 with App. Br. 4-7 and Reply Br. 2-3).
N
C
O
N
C
O
1 MOL hexamethylene diisocyanate
+ OH
2 MOL Methanol
N
H
O
O
H
N
O
O
1 MOL methanol - blocked hexamethylene diisocyanate
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3. Appellants do not specifically dispute the Examiner's finding that
Yagii et al teach the production of polyurethane, wherein
a urethane intermediate is thermally decomposed into
diisocyanate and methanol, and the diisocyanate is then reacted
with hydroxyl-functional material to produce polyurethane.
The thermal decomposition produces diisocyanate consisting of
isophorone, hexamethylene, xylene, and toluene diisocyanate,
and said decomposition is aided by Molybdenum acetyl-
acetonate and Molybdenum oxide catalysts (Abstract; col. 9
lines 1-22, 31-58). It is noted that the intermediate is the
reaction product of a dialkyl carbonate and diamine; however,
the resulting intermediate structure is identical to that of an
alcohol-blocked diisocyanate. Finally, Yagii et al teach the
thermal decomposition preferably feeds the urethane
composition into catalyst containing solvent (Col 10 lines
49-52).
(Compare Ans. 5 with App. Br. 4-7 and Reply Br. 2-3).
In this regard, Yagii teaches a polyurethane, which is useful as a
coating, formed by the following steps: (1) reacting carbonate and
diamine to yield a urethane; (2) thermally decomposing the urethane into
a diisocyanate; and (3) reacting the diisocyanate with polyol in an acid to
form a polyurethane. (Yagii, col. 1, ll. 5-21). Yagii also teaches that
"[t]he catalyst usable in the thermal decomposition includes . . .
molybdenum trioxide." (Yagii, col. 9, ll. 45-53).
4. Appellants do not specifically dispute the Examiner's finding that
the reaction mechanisms of Yagii's steps (1) and (2), which are
referenced in Factual Finding 3 above, are as follows:
[STEP (1): reacting carbonate and diamine to yield a urethane]

O
O
O
2 MOL dimethyl carbonate
NH2
H2N
1 MOL hexamethylene diamine
+
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[STEP (2): thermally decomposing the urethane into a diisocyanate]
The urethane intermediate consists of 1,6-bis(methoxy-
carbonylamino)hexane, which is then thermally decomposed in the
presence of the relevant catalyst to form the reactive diisocyanate
compounds

This last stage shows that hexamethylene diioscyanate (HDI) and
methanol blocking agent are produced, wherein the HDI is then further
reacted with hydroxyl-functional material to form the final polyurethane.
(Compare Ans. 6-7 with App. Br. 4-7 and Reply Br. 2-3).

5. Appellants do not specifically dispute the Examiner's finding that
N
H
O
O
H
N
O
O
1 MOL 1,6-bis(methoxycarbonylamino)hexane
+ OH
2 MOL Methanol
N
H
O
O
H
N
O
O
1 MOL 1,6-bis(methoxycarbonylamino)hexane
Heat + Catalyst
N
C
O
N
C
O
1 MOL hexamethylene diisocyanate
+ OH
2 MOL Methanol
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both Yagii . . . and Watanabe . . . creat[e] free diisocyanate from
compounds corresponding to the formula:
N
H
O
O
H
N
O
O

(Compare Ans. 8 with App. Br. 4-7 and Reply Br. 2-3).
In this regard, Appellants do not specifically dispute the Examiner's
finding that "the urethane intermediate of Yagii et al: 1,6- is
(methoxycarbonylamino)-hexane is the same as the methanol-blocked
hexamethylene diisocyanate of Watanabe et al." (Compare Ans. 8 with App.
Br. 4-7 and Reply Br. 2-3).

6. Appellants do not specifically dispute the Examiner's reason to
combine Watanabe and Yagii. (Compare Ans. 5 with App. Br. 4-7 and
Reply Br. 2-3). In this regard, Appellants do not specifically dispute
the Examiner's determination that "it would have been obvious to
utilize . . . the Molybdenum oxide catalysts of Yagii et al [to] facilitate
de-blocking the same diisocyanates as Watanabe et al, which would
thereby facilitate the curing process of Watanabe et al." Id.

PRINCIPLES OF LAW
“Many of appellant’s arguments fail from the outset because . . .
they are not based on limitations appearing in the claims. . . .” In re Self,
671 F.2d 1344, 1348 (CCPA 1982).
“[A]nalysis [of whether the subject matter of a claim would have been
obvious] need not seek out precise teachings directed to the specific subject
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matter of the challenged claim, for a court can take account of the inferences
and creative steps that a person of ordinary skill in the art would employ.”
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
When assessing whether a claimed invention would have been
obvious, a court must ask “whether the improvement is more than the
predictable use of prior art elements according to their established
functions.” KSR, 550 U.S. at 417.
A slight overlap between the prior art and claimed ranges establishes a
prima facie case of obviousness. In re Peterson, 315 F.3d 1325, 1329 (Fed.
Cir. 2003).
"[O]ne cannot show non-obviousness by attacking references
individually where . . . the rejections are based on combinations of
references." In re Keller, 642 F.2d 413, 425-26 (CCPA 1981).

ANALYSIS AND CONCLUSION
Appellants argue that

Yagii et al teaches a large number of catalysts which are
suitable for use in converting the disclosed diisocyanates to
polyurethanes. However, not a single molybdenum or
tungsten compound is taught to be suitable for this conversion.
This "omission" of tungsten and molybdenum compounds is
particularly significant in view of Yagii et al's teaching that
molybdenum and tungsten compounds were suitable catalysts
for the decomposition of polyurethanes. One skilled in the art
reading the teachings of Yagii et al at the time Appellants made
their invention would not therefore consider it obvious to use or
even obvious to try molybdenum and/or tungsten compounds as
a catalyst in the polyurethane-forming reaction mixture.

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(App. Br. 6). In addition, Appellants argue that

Yagii et al does not teach or suggest that use of a
molybdenum and/or tungsten compound in polyurethane-based
one-component baking system would make it possible to cure
that baking system at temperatures of from 90 to 160°C.
The teachings of Yagii et al do not therefore "supply" the
teachings "missing" from the teachings of Watanabe et al with
respect to the molybdenum and/or tungsten compounds
required for Appellants' claimed invention.

(App. Br. 6).
Appellants’ arguments are unpersuasive of reversible error because
Appellants do not specifically dispute the Examiner's findings regarding
Watanabe or Yagii or the Examiner's reason for combining Watanabe and
Yagii, which is to “utilize . . . the Molybdenum oxide catalysts of Yagii et al
[to] facilitate de-blocking the same diisocyanates as Watanabe et al, which
would thereby facilitate the curing process of Watanabe et al." (FF 1-6).
Watanabe teaches polyurethane coatings formed by dissociating a
blocked diisocyanate compound via heat and a molybdenum oxide catalyst
and then cross linking this isocyanate compound with a base resin. (See FF
1). In this regard, Appellants do not specifically dispute the Examiner's
finding that Watanabe's blocked diisocyanate compound has the following
structure:
N
H
O
O
H
N
O
O

(FF 2 and 5). Watanabe, however, is silent regarding the molybdenum's
oxidation state of its molybdenum oxide catalyst.
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Yagii teaches a polyurethane coating formed by, inter alia,
decomposing a urethane compound into a diisocyanate via heat and a
molybdenum trioxide catalyst, which is known to have an oxidation state of
+6. (FF 3).
In addition, Appellants do not specifically dispute the Examiner's
finding that Yagii's urethane compound is the same as Watanabe's blocked
diisocyanate, which has the following structure:
N
H
O
O
H
N
O
O

(FF 3-5).
Thus, we agree with the Examiner that "it would have been obvious to
utilize . . . the Molybdenum oxide catalysts of Yagii et al [to] facilitate de-
blocking the same diisocyanates as Watanabe et al, which would thereby
facilitate the curing process of Watanabe et al." and form polyurethane. (FF
6).
Moreover, this modification would have been merely the predictable
use of a prior art element according to its established function. Specifically,
it would have been obvious to employ Yagii's molybdenum trioxide catalyst
catalyst as Watanabe's molybdenum oxide catalyst because such is nothing
more than the predictable use of a prior art element (i.e., molybdenum
trioxide catalyst) according to its established function (i.e., facilitates
decomposing a urethane compound having the structure:
N
H
O
O
H
N
O
O
into a diisocyanate). KSR, 550 U.S. at 417.
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With respect to Appellants' argument that Yagii does not teach curing
at "temperatures of from 90 to 160°C," we note that this feature is not
claimed. Thus, Appellants' argument directed to this unclaimed feature is
unpersuasive of reversible error. See In re Self, 671 F.2d at 1348.
Moreover, we note that contrary to Appellants' argument, Watanabe
teaches curing "at 100° to 200°C," which overlaps Appellants' unclaimed
temperature of 90 to 160°C, and thus establishes a prima facie case of
obviousness. See Peterson, 315 F.3d at 1329; see also FF 1.
Appellants also argue that "[t]here is no teaching in Watanabe et al of
any catalyst within the scope of Appellants' claimed invention." (App. Br.
5). In addition, Appellants argue that
Yagii et al does not teach or suggest anything with respect to
one component baked coating systems. In fact, the teaching for
which Yagii et al is cited is directed to the production of an
isocyanate, i.e., a process for producing a starting material for
the blocked polyisocyanates employed in the coating systems of
Applicants' invention - not the coating system of Applicants'
claims.

(App. Br. 5). Appellants also argue that "Yagii et al teaches that catalysts
such as those required by Appellants' claims are suitable for breaking down
a polyurethane rather than forming a polyurethane. Appellants are,
however, claiming systems which form a polyurethane." (App. Br. 5).
These arguments by Appellants, however, are directed against the
individual teachings of Watanabe and Yagii and fail to address and thus fail
to show error in the Examiner’s determination that the teachings of
Watanabe and Yagii, as a whole, would have suggested the claimed
invention.
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As explained by the Examiner, Yagii and Watanabe teach that the
decomposition of the blocked diisocyanate is but one step in the process of
forming polyurethane. (See FF 1, 3, and 4). The Examiner explains that the
reactive diisocyanate, which is formed by deblocking the blocked
diisocyanate in the presence of a catalyst (e.g., molybdenum oxide) and heat,
reacts with hydroxyl compounds to form polyurethane. (See FF 4).
Therefore, the use of Yagii’s molybdenum oxide catalyst (e.g., molybdenum
trioxide) as part of Watanabe’s process to form a polyurethane would have
been obvious.
Thus, it follows that the Examiner did not reversibly err in
determining that it would have been obvious to employ Yagii's molybdenum
oxide catalyst, which may be molybdenum trioxide having a molybdenum
oxidation state of +6, as Watanabe's molybdenum oxide catalyst.

ORDER
In summary, the rejection is sustained.
Accordingly, the Examiner's decision is affirmed.

TIME PERIOD
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)(2009).

AFFIRMED

cam
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