Ex Parte Johnston et al

Patent Trial and Appeal Board

Jul 24, 2018

14631251 (P.T.A.B. Jul. 24, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/631,251 02/25/2015
157 7590 07/26/2018
Covestro LLC
1 Covestro Circle
PITTSBURGH, PA 15205
FIRST NAMED INVENTOR
Jay Johnston
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.
BMS152003 I MD14-22 2951
EXAMINER
MOORE, MARGARET G
ART UNIT PAPER NUMBER
1765
NOTIFICATION DATE DELIVERY MODE
07/26/2018 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 JAY JOHNSTON and A YLA PASQUINI
Appeal 2017-009111
Application 14/631,251
Technology Center 1700
Before CATHERINE Q. TIMM, A VEL YN M. ROSS, and JANEE.
INGLESE, Administrative Patent Judges.
TIMM, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner's decision to reject claims 1, 2, and 5-7 under 35 U.S.C.
§102(a)(l) as anticipated by or, in the alternative, under 35 U.S.C. § 103 as
1 Appellant is the Applicant, Covestro LLC (previously named Bayer
MaterialScience LLC), which, according to the Brief, is the real party in
interest. Br. 3.
Appeal 2017-009111
Application 14/631,251
obvious over Huang, 2 alone or as evidenced by the Derwent abstract3 and
claims 3, 4, and 10-20 under § 103 as obvious over Huang. 4 We have
jurisdiction under 35 U.S.C. § 6(b).
Because Appellant has not identified a reversible error in the
Examiner's rejections, we AFFIRM.
The claims are directed to an alkoxysilane-group modified
polyurethane (see, e.g., claim 1), a moisture curable composition containing
the alkoxysilane-group modified polyurethane (see, e.g., claim 13), and a
cured sealant (see, e.g., claim 19). Claim 1, with the claim limitations most
at issue highlighted, is illustrative:
Claim 1. An alkoxysilane-group modified polyurethane
that is the reaction product of:
(1) a polyoxyalkylene polyol having a molecular weight
of at least 18,000 gram/mole, a polydispersity of less than 1.5
and a content of unsaturated end groups of no more than 0.02
meq/gram polyol, measured according to ASTM D2849-69;
and
(2) a compound of the formula:
ONC-Y-Si-(X)3,
wherein: (i) each X independently represents identical or
different alkoxy radicals, and (ii) Y represents a difunctional
organic radical, and wherein a weight average molar ratio of
isocyanate groups of (2) to hydroxyl groups of (1) used to make
the polyurethane is less than 0.80: 1.
2 Huang et al., US 2007/0100108 Al, published May 3, 2007.
3 Huang et al., Derwent-ACC-No: 2007-445377
4 The Examiner withdrew the rejection over Huang et al, US 2010/0317796
Al. Ans. 5.
2
Appeal 2017-009111
Application 14/631,251
Br. 11 (claims appendix)(emphasis added).
OPINION
Appellant disagrees with the Examiner's finding that Huang '108
teaches or suggests a range of polyol molecular weights (8,000 to 20,000)
overlapping the at least 18,000 grams/mole range recited in independent
claims 1, 13, and 19. Br. 6. Appellant also disagrees with the Examiner's
finding that Huang '108 teaches or suggests using a polyol with a
polydispersity of less than 1.5. Id. But Appellant refers to paragraphs 42
and 58 of Huang '796 to support the argument. Id. The Examiner does not
rely on Huang '796 to reject the claims. The Examiner finds the relevant
teachings in paragraphs 16 and 18 of Huang '108. Ans. 2-3. Appellant has
not identified a reversible error in the Examiner's findings.
CONCLUSION
In summary:
1, 2, and 5- § 102(a)(l) Huang '108,
7 § 103 Derwent
Abstract
3, 4, 10-20 § 103 Ruan '108
Summar
DECISION
The Examiner's decision is affirmed.
3
1, 2, and 5-7
3, 4, 10-20
1-7, 10-20
Appeal 2017-009111
Application 14/631,251
TIME PERIOD FOR RESPONSE
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
4