Ex Parte Ludewig et al

Patent Trial and Appeal Board

Jun 12, 2014

11243126 (P.T.A.B. Jun. 12, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/243,126 10/04/2005 Michael Ludewig 15778*147 (BMS 04 1 081) 6231
23416 7590 06/13/2014
NOVAK DRUCE CONNOLLY BOVE + QUIGG LLP
(DE OFFICE)
1875 EYE STREET, N.W.
SUITE 1100
WASHINGTON, DC 20006
EXAMINER
SERGENT, RABON A
ART UNIT PAPER NUMBER
1765
MAIL DATE DELIVERY MODE
06/13/2014 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MICHAEL LUDEWIG and
JAN WEIKARD
____________

Appeal 2012-012288
Application 11/243,126
Technology Center 1700
____________

Before EDWARD C. KIMLIN, PETER F. KRATZ, and
BEVERLY A. FRANKLIN, Administrative Patent Judges.

KIMLIN, Administrative Patent Judge.

DECISION ON APPEAL

This is an appeal from the final rejection of claims 1-11. We have
jurisdiction under 35 U.S.C. § 6(b). Claims 1 and 11 are illustrative:
1. Process for preparing radiation-curing allophanates having residual
monomer contents of less than 0-.5% by weight and an NCO content of less
than 1% by weight, wherein
A) compounds containing isocyanate groups,
B) hydroxy-functional compounds which contain at least one group
selected from vinyl ethers, acrylates and methacrylates which react, with
polymerization, with ethylenically unsaturated compounds on exposure to
actinic radiation and
C) optionally further compounds containing NCO-reactive groups
D) optionally in the presence of a catalyst
are used to form NCO-group-containing urethanes having radiation-
curing groups, which are subsequently reacted, without further addition of
compounds containing isocyanate groups, in the presence
E) of an allophanatization catalyst,
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the ratio of NCO groups of the compounds from A) to the OH groups
of the compounds from B) and, where used, C) being 1.45 : 1.0 to 1.1 : 1.0.

11. Process for preparing radiation-curing allophanates having
residual monomer contents of less than 0.5% by weight and an NCO content
of less than 1% by weight, wherein
A) compounds containing isocyanate groups,
B) hydroxy-functional compounds which contain at least one group
selected from vinyl ethers, acrylates and methacrylates which react, with
polymerization, with ethylenically unsaturated compounds on exposure to
actinic radiation and
C) optionally further compounds containing NCO-reactive groups
D) optionally in the presence of a catalyst
are used to form NCO-group-containing urethanes having radiation-
curing groups, which are subsequently reacted, without further addition of
compounds containing isocyanate groups, in the presence
E) of an allophanatization catalyst,
the ratio of NCO groups of the compounds from A) to the OH groups
of the compounds from B) and, where used, C) being 1.45 : 1.0 to 1.1 : 1.0,
and
wherein no distillation is needed subsequent to the reaction to obtain
the residual monomer contents of less than 0.5% by weight and an NCO
content of less than 1% by weight.

The Examiner relies upon the following reference as evidence of
obviousness:
Bruchmann et al. (Bruchmann) US 6,617,413 B1 Sep. 9, 2003
Appellants' claimed invention is directed to a process for preparing
radiation-curing allophanates having residual monomer contents of less than
0.5% by weight and an NCO content of less than 1% by weight. The
allophanates are prepared by reacting compounds containing isocyanate
groups (A), and hydroxy-functional compounds of the recited group (B), in
the presence of an allophanatization catalyst. The ratio of NCO groups of
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the (A) compounds to the (OH) groups of the (B) compounds is 1.45 : 1.0 to
1.1 : 1.0.
Appealed claim 11 stands rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
Claims 1, 2, and 4-10 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Bruchmann.
We have thoroughly reviewed each of Appellants' arguments for
patentability. However, we are in complete agreement with the Examiner
that the claimed subject matter would have been obvious to one of ordinary
skill in the art within the meaning of § 103 in view of the applied prior art.
Accordingly, we will sustain the Examiner's § 103 rejection for the reasons
set forth in the Answer, which we incorporate herein. However, we will not
sustain the Examiner's rejection under § 112, first paragraph.
We consider first the Examiner's rejection of claim 11 under § 112,
first paragraph, written description requirement. We do not subscribe to the
Examiner's reasoning that claim 11 must recite that the operation, which
excludes a distillation step, is conducted below 100°C. We agree with
Appellants that the Specification reasonably conveys to one of ordinarily
skill in the art that it is an object of the present invention to conduct the
process at a moderate temperature of below 100°C, and without a distillation
step, but that the temperature goal is not required to perform the process
without a distillation step. In addition, it is not a requirement that a claim
recite all the steps disclosed in the Specification in order to meet the written
description requirement. The breadth of a claim, however, may give rise to
a rejection under the enablement provision of § 112, first paragraph.
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We also do not agree with the Examiner that the Specification does
not provide descriptive support for the claim recitation "NCO content of less
than 1% by weight." Appellants’ Specification expressly discloses that “[t]he
invention provides a process for preparing radiation-curing allophanates
having residual monomer contents of less than 0.5% by weight and an NCO
content of less than 1% by weight”(p.3, ls. 26-28).
We now turn to the § 103 rejection over Bruchmann. There is no
dispute that Bruchmann, like Appellants, discloses the preparation of
radiation curable allophanates by reacting polyisocyanates with alcohols
having ethylenically unsaturated groups in the presence of an
allophanatization catalyst. The principal argument advanced by Appellants
is that Bruchmann does not teach the claimed ratio of NCO groups to OH
groups, namely 1.45 : 1.0 to 1.1 : 1.0. Appellants urge that "Bruchmann
unambiguously states that the amounts of the starting compounds are chosen
so that the isocyanate groups are in excess" (Br. 7, 3rd para.). However, this
argument is not germane to the claimed subject matter which also specifies
an excess of isocyanate groups ranging from 1.1 to 1.45 : 1.0. Also, as
explained by the Examiner, Bruchmann expressly discloses that the
NCO/OH ratio may be 1:1 to 30:1, preferably from 1.5:1 to 20:1 (col. 6, l.
30). Manifestly, Bruchmann discloses ratios that fall within the claimed
ranges, and further discloses a preferable value, 1.5:1, that is virtually
identical to the claimed ratio of 1.45:1.0. Accordingly, based on the
Bruchmann disclosure, we agree with the Examiner that one of ordinary skill
in the art would have found it obvious to perform the claimed process at
NCO/OH ratios within the claimed range. It is of no moment that the
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Becker et al. publication cited by Appellants teaches the use of ratios greater
than the claimed range.
Appellants also contend that "[o]ne of ordinary skill in the art would
not have been motivated to disregard Bruchmann's teaching to reduce the
remaining amounts of unreacted polyisocyanate taught by distillation" (Br.
8, last para.) However, as pointed out by the Examiner, the appealed claims
rejected under § 103 do not require the absence of distillation.
Appellants also submit that the Specification examples demonstrate
that "utilizing the claimed group ratio leads to the unexpected viscosity
results of the present invention" (Br. 10, first para.). However, Appellants
have not addressed, let alone refuted, the Examiner's critical analysis which
finds that the data is not commensurate in scope with the degree of
protection sought by the appealed claims, and that Appellants have not
demonstrated that the results are truly unexpected in view of Bruchmann's
disclosure at column 6, lines 14-16, that compositions employing the
allophanate products customarily have viscosities of less than 50,000 mPas
(23°C) (see Ans. 9-10). It is well settled that the burden of proving
unexpected results rests on the party asserting them, and it is our judgment
that Appellants have not carried their burden in the face of the Examiner's
criticisms.
Appellants also maintain that Bruchmann does not disclose or suggest
an NCO content of less than 1% by weight. However, as noted by the
Examiner, the reference specifically teaches that the isocyanate groups
content of the resulting composition may be 0.1% (col. 5, ll. 64 et seq.), and
that "after the end of the reaction, remaining amounts of unreacted
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polyisocyanate are distilled off under reduced pressure to a level of less than
0.5%" (col. 6, ll. 65-67).
As a final point, we note that Appellants have not contested the
Examiner's provisional obviousness-type double patenting rejection of
claims 1-11 in view of claims 1-12 of U.S. Application No. 12/704,749 (see
Br. 6, last para.).
In conclusion, based on the foregoing, the Examiner's decision
rejecting the appealed claims is affirmed.
The decision of the Examiner 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)(1)(iv).

AFFIRMED

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