Ex Parte KAMPF

Patent Trials and Appeals Board

Apr 24, 2019

13740732 - (D) (P.T.A.B. Apr. 24, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/740,732 01/14/2013 Gunnar KAMPF
22850 7590 04/26/2019
OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P.
1940 DUKE STREET
ALEXANDRIA, VA 22314
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.
409241US99 3998
EXAMINER
RIOJA, MELISSA A
ART UNIT PAPER NUMBER
1768
NOTIFICATION DATE DELIVERY MODE
04/26/2019 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):
patentdocket@oblon.com
OBLONPAT@OBLON.COM
iahmadi@oblon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GUNNAR KAMPF
Appeal2017-009338
Application 13/740,732
Technology Center 1700
Before MARK NAGUMO, JEFFREY R. SNAY, and
JENNIFER R. GUPTA, Administrative Patent Judges.
SNAY, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1-18. A hearing was held April 2, 2019. We have
jurisdiction under 35 U.S.C. § 6(b).
We reverse.
1 We cite to the Specification ("Spec.") filed January 14, 2013; Examiner's
Non-Final Office Action ("Non-Final Act.") dated September 30, 2016;
Appellant's Appeal Brief ("App. Br.") filed February 21, 2017; Examiner's
Answer ("Ans.") dated May 11, 2017; and Appellant's Reply Brief ("Reply
Br.") filed June 22, 2017.
2 Appellant identifies BASF SE as the real party in interest. App. Br. 1.
Appeal2017-009338
Application 13/740,732
BACKGROUND
The subject matter on appeal relates to rigid polyurethane or
polyisocyanurate foams. Spec. 1:6-13. Claim 1 is illustrative:
Claim 1: A process for preparing a rigid polyurethane
foam or rigid polyisocyanurate foam comprising:
preparing a mixture comprising:
A) a polyisocyanate,
B) a polyetherester polyol obtained by esterification of
b 1) 10 to 70 mol% of a dicarboxylic acid
composition comprising
b 11) 50 to 100 mol %, based on the
dicarboxylic acid composition, of an aromatic dicarboxylic acid
or derivative thereof,
b12) 0 to 50 mol%, based on the
dicarboxylic acid composition b 1 ), of an aliphatic dicarboxylic
acid or derivative thereof,
b2) 2 to 30 mol% of a fatty acid or fatty acid
derivative,
b3) 20 to 45 mol% of an aliphatic or cycloaliphatic
diol having 2 to 18 carbon atoms or an alkoxylate thereof,
b4) 15 to 35 mol % of a polyether polyol having a
functionality of not less than 2 and a OH number of from 150 to
950 mg KOH/g, prepared by alkoxylation of a polyol having a
functionality of above 2,
all based on the total amount of components b 1) to b4), wherein
said components bl) to b4) sum to 100 mol%,
C) optionally, a polyester polyol different from the
polyetherester B),
D) a polyether polyol,
E) optionally flame retardants,
F) a blowing agent,
G) a catalyst, and
H) optionally an auxiliary or additive,
wherein
a mass ratio of total components B) and optionally C) to
component D) is less than 1.6; and
2
Appeal2017-009338
Application 13/740,732
reacting the mixture prepared to obtain the rigid
polyurethane foam or rigid polyisocyanurate foam.
App. Br. 20-21 (Claims Appendix) ( emphasis added).
Claim 16 recites a rigid polyurethane or polyisocyanurate foam
obtained by the process of claim 1. Remaining independent claim 18 recites
a composition comprising a polyetherester polyol as defined in clause B of
claim 1. Each remaining claim on appeal depends ultimately from claim 1.
REJECTIONS 3, 4
I. Claims 1-7, 9-12, 14--16, and 18 stand rejected under 35 U.S.C.
§ I03(a) as unpatentable over Gehinger5 and Yang. 6
II. Claim 8 stands rejected under 35 U.S.C. § I03(a) as unpatentable over
Gehinger, Yang, and Guttes. 7
III. Claim 17 stands rejected under 35 U.S.C. § I03(a) as unpatentable
over Gehinger, Yang, and Hockemeyer. 8
OPINION
Rejection I
Claim 1 recites, inter alia, reacting a polyisocyanate with a
polyetherester polyol obtained by esterification of "a polyether polyol
3 A provisional double-patenting rejection has been withdrawn. Ans. 12.
4 The Examiner's rejections do not address claim 13.
5 WO 2010/043624 A2, published April 22, 2010. We adopt the approach
taken by both the Examiner and Appellant in citing to U.S. 2011/0201716
Al, published August 18, 2011, as an English language equivalent to
Gehinger.
6 US 5,436,314, issued July 25, 1995.
7 US 2005/0004403 Al, published January 6, 2005.
8 US 2008/0053032 Al, published March 6, 2008.
3
Appeal2017-009338
Application 13/740,732
having a functionality of not less than 2 and a OH number of from 150 to
950 mg KOH/g." (Emphasis added). To meet that recitation, the Examiner
finds that Gehinger discloses a process for producing rigid polyurethane
foam that includes use of a polyol obtained by esterification of "a higher
functional polyol prepared by alkoxylation of glycerol, trimethylolpropane,
or pentaerythritol." Non-Final Act. 3. Acknowledging that Gehinger is
silent regarding the OH number of the higher functional polyol reactant, the
Examiner finds that Yang discloses a method of making polyesters from
higher functional polyethers and, based on the Examiner's calculation, Yang
implicitly identifies polyols having OH numbers in the range of 4 to 1795.2
mgKOH/g. Id. at 4. The Examiner concludes that, in light of Yang's
disclosure, one of ordinary skill in the art would have found it obvious to
provide Gehinger's polyol reactant with an OH number within the range of 4
to 1795.2 mgKOH/g, which the Examiner determines would have
encompassed the recited range. Id. at 5.
Appellant argues that the Examiner's obviousness determination was
harmfully erroneous because the Examiner does not explain, absent
hindsight, how Yang would have provided guidance or motivation to select
any range of OH number for the polyol reactant in Gehinger. See App. Br.
7; Reply Br. 2. We agree.
Gehinger's disclosure concerns certain polyester polyols and their use
in producing polyurethane foams. Gehinger ,r 1. Particularly, as Appellant
points out (Reply Br. 1-2), Gehinger discloses polyester polyols that are
formed by a polycondensation reaction of polycarboxylic acids and
polyhydric alcohols. Gehinger ,r 36. Yang, on the other hand, discloses a
process for making polyetheresters from polyethers "by randomly inserting a
4
Appeal2017-009338
Application 13/740,732
carboxylic acid, especially a dicarboxylic acid, into the polyether backbone."
Yang 1 :8-11. Yang states that polyether polyols are preferred, typically
having average hydroxyl functionalities from about 2 to about 8, and number
average molecular weights from about 250 to about 25,000. Id. at 3:7-18.
The Examiner does not point to evidence that OH number would have
been viewed as a result-effective variable in either Gehinger' s condensation
reaction scheme or Yang's random insertion reaction process. Neither
Gehinger nor Yang appears to discuss OH number of the disclosed polyol
reactants. Moreover, to the extent that one of ordinary skill could glean an
implicit teaching of OH numbers from Yang's discussion of hydroxyl
functionality and average molecular weight of preferred polyether
components, the Examiner does not adequately explain why one of ordinary
skill would apply those implicit OH numbers to Gehinger's polyester polyol
reactant.
For the foregoing reasons and those presented by Appellant in the
Appeal Brief and Reply Brief, we are persuaded that a preponderance of the
evidence does not support the Examiner's finding that a skilled artisan
would have had a reason to choose a polyol having an OH number within
the claimed range for use in Gehinger's reaction scheme. Accordingly, we
do not sustain Rejection I.
Rejections II and III
The Examiner does not rely on the remaining prior art of record to
cure the deficiency in the obviousness rejection of claim 1 identified above.
Therefore, Rejections II and III also are not sustained.
5
Appeal2017-009338
Application 13/740,732
DECISION
The Examiner's decision rejecting claims 1-18 is reversed.
REVERSED
6