Ex Parte Hayes et al

Patent Trial and Appeal Board

Apr 28, 2017

11546882 (P.T.A.B. Apr. 28, 2017)

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.
11/546,882 10/12/2006 John E. Hayes PO8887/MD06-16 4879
157 7590
Covestro LLC
1 Covestro Circle
PITTSBURGH, PA 15205
05/02/2017 EXAMINER
HEINCER, LIAM J
ART UNIT PAPER NUMBER
1767
NOTIFICATION DATE DELIVERY MODE
05/02/2017 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):
veronica.thompson@covestro.com
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 JOHN E. HAYES, ALBERT MAGNOTTA,
and NIGEL BARKSBY
Appeal 2016-001776
Application 11/546,882
Technology Center 1700
Before PETER F. KRATZ, CATHERINE Q. TIMM, and
JEFFREY T. SMITH, Administrative Patent Judges.
KRATZ, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal1 under 35U.S.C. § 134 from the
Examiner’s final rejection of claims 1—5, 7—11, 13, 14, 16—19, and 21—29.2
We have jurisdiction pursuant to 35 U.S.C. § 6.
Appellants’ claimed invention is directed to an immiscible
polyurethane composite formulation (composition) and a process for
1 Appellants identify Bayer MaterialScience LLC as the real party in interest
(App. Br. 2).
2 This is the second appeal involving the subject Application. In the first
appeal (Appeal No. 2011-006400), the Patent Trial and Appeal Board
(PTAB) rendered a Decision (March 05, 2013) affirming the Examiner’s
rejection of the then pending claims on appeal.
Appeal 2016-001776
Application 11/546,882
preparing a fiber reinforced polyurethane composite using such a
formulation via pultrusion. According to Appellants (Spec. 1,11. 13-18):
Pultrusion is a manufacturing process for producing
continuous lengths of fiber reinforced plastic (“FRP”) structural
shapes. Raw materials include a liquid resin mixture
(containing resin, fillers and specialized additives) and
reinforcing fibers. The process involves pulling these raw
materials, rather than pushing as is the case in extrusion,
through a heated steel forming die using a continuous pulling
device.
The polyurethane-forming formulation of the composite includes a
polyisocyanate component and an isocyanate reactive component that are
immiscible. The latter component includes at least two isocyanate reactive
compounds that are immiscible, including a polyol having a number
averaged molecular weight of at least 1500.
Appellants disclose that “[t]he miscibility of [a] isocyanate-reactive
component can be determined by allowing the compounds to rest unmixed
after the component is made and see if the component becomes hazy or
separates into layers” (Spec. 5,11. 12-14). Furthermore, Appellants disclose
that “miscibility of the isocyanate-reactive component with the
polyisocyanate can be determined by mixing the isocyanate-reactive
component with the polyisocyanate component and determining the time for
the mixture to [become] clear” (Spec. 5,11. 14-17).
According to Appellants, they “have found that isocyanate-reactive
mixtures that 1) are hazy or separate on standing; and/or 2) take a long time
to clear process better” (Spec. 5,11. 22-24).
Claims 1, 7, and 14 are illustrative and reproduced below:
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1. A reaction system for the preparation of a fiber reinforced
composite by a pultrusion process comprising:
continuous fiber reinforcing material; and
an immiscible polyurethane-forming formulation which undergoes
essentially no polymerization under injection conditions in the pultrusion
process comprising
a polyisocyanate component containing at least one polyisocyanate,
and an isocyanate-reactive component containing at least two
isocyanate-reactive compounds that are immiscible and that comprises
a polyol having a number averaged molecular weight of at least 1,500,
and wherein the polyisocyanate component and the isocyanate-
reactive component are immiscible.
7. A pultrusion process for preparing a fiber reinforced polyurethane
composite, the process comprising:
continuously pulling a roving or tow of continuous fiber reinforcing
material
successively through an impregnation chamber and a die;
continuously feeding an immiscible polyurethane formulation to the
impregnation chamber, wherein the polyurethane formulation comprises a
polyisocyanate component containing at least one polyisocyanate and an
isocyanate-reactive component containing at least two isocyanate-reactive
compound that are immiscible with each other and that comprises a polyol
having a number averaged molecular weight of at least 1,500, and
wherein the polyisocyanate component and the isocyanate-reactive
component are immiscible;
contacting the fiber reinforcing material with the formulation in the
impregnation chamber such that substantially complete wetting of the
material by the formulation occurs;
directing the fiber reinforcing material through a die heated to reaction
temperature to form a solid composite; and
drawing the composite from the die,
wherein conditions in the impregnation chamber are such that
substantially no polymerization takes place.
14. In a process for preparing a fiber reinforced polyurethane
composite by pultrusion, the improvement comprising including a phase
separated polyurethane formulation composed of at least one isocyanate
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which is immiscible with an isocyanate-reactive component that includes at
least two polyols which polyols are immiscible with each other which
undergoes essentially no polymerization under injection conditions in the
pultrusion process, and
wherein the isocyanate-reactive component comprises a polyol having
a number averaged molecular weight of at least 1,500.
The Examiner relies on the following prior art references as evidence
in rejecting the appealed claims:
Ishida US 5,294,461 Mar. 15, 1994
Joshietal. US 2004/0106726 A1 June 3, 2004
(“Joshi”)
Brown et al. US 2007/0113983 A1 May 24, 2007
(“Brown”)
The Examiner maintains the following grounds of rejection:
1. Claims 1—5 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Joshi or, in the alternative, under 35 U.S.C. § 103(a) as being
unpatentable over Joshi with or without Brown.
2. Claims 1—5, 7—11, 13, 14, 16—19, and 21—29 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Joshi in view of Ishida or, in
the alternative, over Joshi in view of Brown and Ishida.3
We affirm the stated anticipation and obviousness rejections based on
the fact findings made by the Examiner and for substantially the reasons as
set forth by the Examiner (Ans. 2—16; Final Act. 2—11). We offer the
following for emphasis.
Rejections 1
3 We list the Examiner’s three separately discussed rejections as one because
each rejection relies on the same evidentiary basis. Appellants list the
Examiner’s three rejections as Rejections B and C (App. Br. 7).
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Concerning the Examiner’s anticipation rejection of claims 1—5 over
Joshi and the Examiner’s obviousness rejection of claims 1—5 over Joshi in
view of Brown, Appellants argue the rejected claims together as a group
with respect to each of these stated rejections. We select claim 1 as
representative. We affirm the stated rejections. Our reasoning follows.
Appellants argue that the teachings of Joshi fall short of establishing
anticipation of the claim 1 subject matter because Joshi teaches that
homogeneity of the polyurethane forming system is “highly desirable” and
Joshi does not disclose the formation of separated solids prior to entering the
first curing zone of the pultrusion setup (App. Br. 8—10; Joshi, col. 19,11. 8—
11). Thus, Appellants contend that the teachings of Joshi, including
Example 3, do not teach all of the features necessary to establish
“immiscibility” of the polyurethane-forming formulation, as required by
Appellants’ claim 1 (App. Br. 9).
However, Appellants disclose that “miscibility of the isocyanate-
reactive component with the polyisocyanate can be determined by mixing
the isocyanate-reactive component with the polyisocyanate component and
determining the time for the mixture to [become] clear” (Spec. 5,11. 14—17).
According to Appellants, they “have found that isocyanate-reactive
mixtures that 1) are hazy or separate on standing; and/or 2) take a long time
to clear process better” (Spec. 5,11. 22-24). Appellants do not disclose an
upper limit for the amount of time that they consider to be too “long time” a
time for the mixture to clear.
The Examiner finds that Joshi discloses “a reaction system for the
preparation of a fiber reinforced composite by a pultrusion process
comprising a continuous fiber reinforcing material (10084) and a
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polyurethane forming formulation” wherein the formulation includes
“a polyisocyanate reactive component containing at least polyisocyanate
(10065) and a isocyanate reactive component containing at least two
isocyanate reactive compounds, one of which has a number average
molecular weight of greater than 1,500 (10043)” (Ans. 3). While the
Examiner recognizes that “Joshi et al desires the reaction mixture to cure
homogenously,” the Examiner finds that Joshi’s “curing conditions are at
high temperature (175 °C) with mixing (10099-0116)” and Appellants’
“specification teaches the [claimed] immiscibility [] being measured at room
temperature without mixing (5:12-23)” (Ans. 4). Thus, while the Examiner
finds that Joshi does not teach a formulation where the “isocyanate reactive
compounds are [explicitly described as] immiscible” under the curing
conditions of Joshi (Ans. 3), the Examiner ultimately finds that “the teaching
of Joshi et al. regarding homogenous cure does not establish that the
components [of Joshi] are [not] immiscible under the conditions prescribed
by [Appellants’ claims and] the original specification” (Ans. 4).
Also, the Examiner makes additional determinations concerning the
correspondence of the formulations described by Joshi and those disclosed
by Appellants, including formulations without a chain extender or
crosslinking agent, such as provided for by Joshi in Example 13 (Ans. 3).
Thus, the Examiner has furnished a foundation for the Examiner’s additional
finding that Joshi teaches a polyurethane forming formulation comprising
“all the features that lead to immiscibility” as measured by Appellants’
immiscibility test, including components similar to those taught by
Appellants in the subject Specification for their formulation, such that “the
polyurethane forming formulation [taught by Joshi] would inherently be
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Application 11/546,882
immiscible” as required by representative claim 1 and Appellants’ disclosed
room temperature immiscibility test (Ans. 3-4).
Consequently, we concur with the Examiner that Appellants’
argument with respect to Joshi’s Example 3 formulation and the presence of
a low molecular weight chain extender therein is not persuasive of harmful
error in the Examiner’s anticipation rejection premised on a reasonable
expectation of immiscibility for pultrusion formulations of Joshi that the
Examiner finds to substantially correspond to those disclosed by Appellants
and that do not include the optional chain extender, such as the applied
Example 13 formulation of Joshi (Ans. 13-14; App. Br. 8-9).
Moreover, Appellants argue that the claimed polyurethane-forming
formulation does not significantly polymerize prior to undergoing curing in
the pultrusion line curing zone whereas the formulation of Joshi cures
homogenously prior to entering the first curing zone (App. Br. 10; Joshi, col.
19,11. 8-11).
The latter argument is not persuasive of reversible error in the
Examiner’s anticipation rejection of representative claim 1 because
representative claim 1 is drawn to a pultrusion reaction system composition
and the pultrusion reaction “injection conditions” and timing of the
polymerization are process conditions and intended use limitations that are
not limiting as to the claimed pultrusion reaction system composition (see
Ans. 14). In addition and as determined by the Examiner, “Joshi et al.
teaches a substantially similar reaction system, and teaches that the
polymerization can be controlled by reducing the temperature”; thus, “the
system of Joshi et al. would be capable of undergoing essentially no
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polymerization under [certain] injection conditions” (Ans. 14—15; Joshi
191).
Furthermore, Appellants have not proffered an upper limit for the
amount of polymerization reaction that the claim term “essentially no
polymerization under injection conditions” encompass. Appellants state that
“[t]he conditions in the injection die are such that little, or more preferably
no polymerization of the immiscible polyurethane formulation will occur”
(Spec. 8,11. 26-28). Consequently, the qualifiers “essentially” seems to be
measured by the term “little,” leaving the claims open to a broadest
reasonable construction when read in light of the subject Specification that
would permit some polymerization in the injection die.
In light of the above and for reasons set forth by the Examiner,
Appellants’ arguments fail to show reversible error in the Examiner’s
anticipation rejection of representative claim 1 over Joshi.
Correspondingly, Appellants’ argument against the Examiner’s
anticipation rejection of claim 1 over Joshi exposes no reversible error in the
Examiner’s alternative obviousness rejection of claim 1 over Joshi with or
without Brown. In this regard, there is no deficiency in the Examiner’s
application of Joshi to representative claim 1 that needs curing by Brown.
Consequently, Appellants’ argument that “Brown does nothing to overcome
the foregoing deficiencies of Joshi” is unavailing (App. Br. 10).
Moreover, even if the teachings Joshi alone were considered,
arguendo, to lack an implicit teaching of a pultrusion formulation that
includes immiscible components, Brown augments the teachings of Joshi by
expressly teaching the use of a pultrusion formulation with an isocyanate
component and a polyol component that are immiscible under conditions
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prior to encountering the heat of the curing die and beginning to react
(Brown 149).
As articulated by the Examiner under the obviousness alternative of
the expressed rejection, an ordinarily skilled artisan would have been led to
have used an immiscible formulation in Joshi, as an option, given the
additional teachings of Brown and incentivized by the higher degree of
impregnation and short gelled state curing time taught by Brown (Ans. 3^4;
Brown 149).
In light of the Examiner’s findings and determinations, Appellants’
lack of motivation contention leveled at the Examiner’s proposed combined
teachings of Joshi and Brown under the Examiner’s 35 U.S.C. § 103(a)
alternative of Rejection 1 (App. Br. 10) carries no persuasive weight (Ans.
15).
As for Appellants’ contention that the subject Specification Examples
demonstrate surprising/unexpected results for the claimed pultrusion
formulation as compared to miscible formulations, we observe that the
reported lighter color for Examples 2 through 8 as compared to comparative
Example 1 of Table 1 of the subject Specification does not present sufficient
data to demonstrate a nexus between lighter color products and relative
miscibility of the pultrusion formulations based on time to clear (Spec. 5,11.
5-11, 17-19 (Table 1)). In this regard, we further observe that representative
claim 1 is not limited to a pultrusion formulation that includes the specific
components tested in Examples 2 through 8, as reported in Table 1.
It follows that we sustain Rejections 1.
Rejections 2
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Concerning the Examiner’s obviousness rejection of claims 1—5, 7—
11, 13, 14, 16-19, and 21-29 under 35 U.S.C. § 103(a) as being
unpatentable over Joshi in view of Ishida or, in the alternative, over Joshi in
view of Brown and Ishida, Appellants argue the rejected claims 1—5, 21—23
together as a group (Group I) and rejected claims 7—11, 13, 14, 16—19, and
24—29 together as another group (Group II) with respect to each of these
stated rejections. We select claim 1 and claim 7 as the representative claims
for the respective groups of claims. We consider any separately addressed
claims separately to the extent additional substantive argument is presented
in the Appeal Brief.4 We affirm the stated rejection for substantially the
reasons set forth by the Examiner in the Answer. We offer the following for
emphasis.
Group I
Appellants traverse the Examiner’s obviousness Rejections 2 of
representative claim 1 for substantially the reasons Appellants presented in
contesting the Examiner’s Rejections 1 (App. Br. 11). For reasons discussed
above and by the Examiner in the Answer, such argument is not persuasive
of reversible error by the Examiner in maintaining Rejections 2. Because we
determined that there is no deficiency in the Examiner’s anticipation
rejection of claim 1 over Joshi or in the Examiner’s obviousness rejection of
4 Appellants identify claims 21, 22, 24, 25, 27, and 28 as being separately
argued in the Reply Brief (p. 1). However, only dependent claims 21 and 22
are identified for separate additional argument in the Appeal Brief (App. Br.
12). Appellants have not shown good cause for why the new separate
additional arguments were not presented in the Appeal Brief. Thus, we do
not consider them. 37 C.F.R. §§ 41.37(c)(l)(iv) and 41.41 (2015).
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claim 1 over Joshi taken with Brown, Appellants’ contention that Ishida
does not cure the deficiencies therein is unavailing.
Moreover and to the extent that Appellants argue that Ishida’s
teachings are contrary to Joshi’s teachings leaving one of ordinary skill in
the art with no motivation to modify Joshi with Ishida with or without
Brown in maintaining the rejection of representative claim 1, such argument
is unpersuasive at the outset (App. Br. 11—12). This is because Ishida is not
necessary to the obviousness rejection, as discussed above.
In addition and for reasons expressed by the Examiner, we do not find
Appellants’ lack of motivation argument persuasive (Ans. 15—16).
Concerning Appellants’ remarks with respect to Example 3 of Joshi
and dependent claims 21 and 22 (App. Br. 12), Appellants do not articulate
why the Examiner’s reliance on Example 13 of Joshi together with the other
disclosures of Joshi teaching the use of polyols having a molecular weight
within the range claimed (at least 1500), taken with or without the additional
teachings of Ishida and/or Brown and Ishida, would fail to suggest the
subject matter of the these dependent claims (Ans. 6—7; Joshi 143).
Consequently, this argument has no merit in identifying reversible error in
the Examiner’s obviousness rejection of claim 21 and/or claim 22.
Group II
Concerning representative method claim 7, Appellants apply the same
arguments advanced above (App. Br. 12—13), which we determined to be
unpersuasive for the relevant reasons as addressed above as they apply,
mutatis mutandis, to representative claim 7 and for the reasons set forth by
the Examiner (Ans. 8—16).
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Consequently for the fact findings, reasons, and rebuttal set forth in
the Examiner’s Answer, we are not persuaded of substantive error in the
Examiner’s obviousness rejections (Rejections 2) by the arguments
presented by Appellants in the Appeal Brief.
It follows that we shall sustain the Examiner’s Rejections 2.
ORDER
The Examiner’s decision to reject the appealed claims 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).
AFFIRMED
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