Ex Parte Rye et al

Board of Patent Appeals and Interferences

Jun 12, 2009

11155154 (B.P.A.I. Jun. 12, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte KAREN R. RYE, BRIAN K. REARICK,
MICHAEL L. SPROULE, and DEBORAH E. HAYES
____________

Appeal 2009-002171
Application 11/155,154
Technology Center 1700
____________

Decided:1 June 12, 2009
____________

Before LINDA M. GAUDETTE, KAREN M. HASTINGS, and
JEFFREY B. ROBERTSON, Administrative Patent Judges.

ROBERTSON, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the Decided Date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

Appeal 2009-002171
Application 11/155,154

STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-3, 5, 7-23, 26-32, and 34.2 (App. Br. 1). We have
jurisdiction pursuant to 35 U.S.C. § 6(b).
We REVERSE.
THE INVENTION
Appellants describe a coating composition comprising: a first
component including a first polyester polyol having a hydroxyl number of
from 40 to 60 and a second polyester polyol having a hydroxyl number of
from 90 to 125; and a second component comprising an isocyanate. (Spec.
para. [0007]-[0009]). Claim 1, reproduced below, is representative of the
subject matter on appeal.
1. A coating composition comprising:
a first component comprising: (i) a first polyester polyol
having a first functionality and a hydroxyl number of from 40
to 60 and (ii) a second polyester polyol having a second
functionality and a hydroxyl number of from 90 to 125, wherein
the second functionality is greater than the first functionality;
and
a second component comprising an isocyanate, wherein
the coating has an NCO:OH ratio of 1:1 or greater.

THE REJECTIONS
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Scholl 3,253,600 May 31, 1966
Dexter GB 1 225 259 Mar. 17, 1971

2 Claims 4, 6, 24, 25, and 33 have been canceled. (Appeal Brief filed
January 28, 2008, hereinafter “App. Br.,” 1).
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Baskent 4,380591 Apr. 19, 1983
Van Rooyen WO 02/36699 A1 May 10, 2002
Zhou US 2003/0165676 A1 Sep. 4, 2003

There are four grounds of rejection under 35 U.S.C. § 103(a) for
review on appeal: (1) the Examiner rejected claims 1-3, 5, 7, 10-14, 16-23,
and 28-31 as being unpatentable over Dexter in view of Baskent; (2) the
Examiner rejected claims 8, 15, and 32 as being unpatentable over Dexter
and Baskent in view of Van Rooyen; (3) the Examiner rejected claim 19 as
being unpatentable over Dexter and Baskent in view of Scholl; and (4) the
Examiner rejected claim 34 as being unpatentable over Dexter and Baskent
in view of Zhou.3
The Examiner found that Dexter discloses a coating composition that
comprises a mixture of two polyester polyols and an isocyanate, and an
example including a first polyester that has a hydroxyl number of 43 and a
second polyester that has a hydroxyl number of 165. (Examiner’s Answer
entered February 19, 2008, hereinafter “Ans.,” 4). Thus, the Examiner
found that Dexter fails to disclose a second polyester with a hydroxyl
number between 90 and 125 as required in the claims. (Id.). The Examiner
found that Baskent discloses compositions for polyurethane foams, which
comprise a polyester polyol and an isocyanate. (Id.). The Examiner found
that Baskent discloses that the hydroxyl number of the polyester polyol
effects the flexibility of the final product, where a polyester polyol having a
hydroxyl number between 20-100 yields flexible foams, and a polyester
polyol having a hydroxyl number of 100-200 yields semi-flexible foams.

3 The Examiner withdrew the Double Patenting Rejection over Application
11/172,718 as this Application was abandoned. (See Ans. 3, App. Br. 6).
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(Id.). The Examiner found that Baskent’s teachings regarding the flexibility
of foams are directly related to flexibility of coating products, because the
hydroxyl number of the polyester polyol is a result effective variable. (Id.).
The Examiner concluded that it would have been obvious to include a
polyester polyol with a hydroxyl number of 90-125 in Dexter’s coating in
order to optimize the flexibility of the coating material. (Ans. 5).
Appellants contend that Baskent is directed to formation of
polyurethane foams, not coatings, and Baskent fails to disclose a
combination of polyester polyols, where each polyester polyol has a
different hydroxyl number. (App. Br. 3). Appellants argue that flexibility of
foams is not just a function of hydroxyl content, but depends on other factors
including cell geometry and additive content, as evidenced by the
Declaration of Gregory McCollum filed October 15, 2007 (hereinafter “the
McCollum Declaration”). (App. Br. 3-4). Appellants also contend that the
claimed range of 90-125 bridges two different ranges taught by Baskent, 20-
100 for “flexible foams” and 100-300 for “semi-flexible” foams such that
Baskent “cannot be fairly said to teach Appellants’ range, specifically
chosen for the desirable properties it imparts in combination with the other
polyester polyol, to the coating.” (App. Br. 4).

ISSUE
Have Appellants shown that the Examiner reversibly erred in
determining that it would have been obvious to include a polyester polyol
having a hydroxyl number of from 90-125 in Dexter’s coating
compositions?

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Appeal 2009-002171
Application 11/155,154

FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence.
1. Appellants’ Specification states:
In one embodiment, the second polyester polyol of
the first component has a medium functionality. As used
herein, the term “medium functionality” and like terms
mean that the polyester polyol has a hydroxyl number of
from 90 to 125. In one embodiment, the second
polyester polyol has a hydroxyl number of from 104 to
118. The medium functionality of the second polyester
polyol typically increases the crosslink density of the
coating, resulting in increased coating hardness and
improved chemical resistance. Any polyester polyol
having medium functionality can be used in the present
invention.
(Spec. para. [0009]).

2. Dexter describes coating compositions based on the reaction
product of a diisocyanate with a specific mixture of hydroxyl-
functional polyesters. (Page 1, ll. 11-22).
3. Dexter discloses that the mixture of polyester polyols includes a
“flexible hydroxyl-functional polyester” and a “hard hydroxyl-
functional polyester.” (Page 3, ll. 26-38).
4. Dexter’s Example 1 discloses a mixture of polyesters including a
hard polyester that has a hydroxyl number of 165 plus or minus 10
and a flexible polyester with a hydroxyl number of 43. (Page 5, ll.
56-104).
5. Baskent states:
In producing flexible foams, polyols having relatively low
hydroxyl numbers such as from about 20 to about 100 are
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generally employed. In producing semi-flexible materials, the
hydroxyl number is usually from about 100 to about 300.
(Baskent, text copy, para. (32)).

6. The McCollum Declaration states that the flexibility of foams is
not simply a function of the hydroxyl content of the polyester in
the composition but is a function of several factors including
polymer composition, cell geometry, and additive content.
(McCollum Declaration, para. 4).

PRINCIPLES OF LAW
“‘[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness.’” KSR Int’l. Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)
(quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).

ANALYSIS
Based on the record before us, the Examiner has not provided
sufficient articulated reasoning to support the position that the hydroxyl
group content required for certain foam flexibilities is directly related to the
flexibility of coating products. Specifically, Appellants have provided
evidence that other properties besides the hydroxyl group content of
polyester impact the flexibility of foams such as those disclosed in Baskent.
(FF 6). Thus, given the differences between coatings and foams, the
Examiner has failed to provide sufficient rationale that the hydroxyl group
contents of the polyesters and resultant degree of crosslinking would
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Application 11/155,154

necessarily impact the flexibility of foams and coatings in the same manner.
(See Ans. 4). Accordingly, we agree with Appellants that one of ordinary
skill in the art would not have looked to the hydroxyl contents of the
polyester used in the production of polyurethane foams disclosed by Baskent
in order to modify the hydroxyl group contents of the polyesters in Dexter’s
coating compositions.
Moreover, the Examiner has not adequately explained why one of
ordinary skill in the art would have selected the hydroxyl number range of
90-125 recited in claim 1, which bridges two ranges disclosed by Baskent, a
hydroxyl number range of 20-100 for “flexible foams” and a hydroxyl
number range of 100-300 for “semi-flexible” foams. (See FF 5). In
addition, there is insufficient evidence on the record to determine whether
Baskent’s hydroxyl number ranges refer to the total hydroxyl number for the
polyester polyol component or to the hydroxyl number of individual
polyester polyols present in the polyester polyol component.
Therefore, we agree with Appellants, that Baskent fails to provide the
suggestion to optimize the flexibility of Dexter’s “hard” polyester from 165
to within the range recited by Appellants in claim 1.

CONCLUSION
Appellants have demonstrated that the Examiner reversibly erred in
determining that it would have been obvious to include a polyester polyol
having a hydroxyl number of from 90-125 in Dexter’s coating compositions.

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Appeal 2009-002171
Application 11/155,154

ORDER
We reverse the Examiner’s decision rejecting claims 1-3, 5, 7, 10-14,
16-23, and 28-31 under 35 U.S.C. § 103(a) as being unpatentable over
Dexter in view of Baskent.
We reverse the Examiner’s decision rejecting claims 8, 15, and 32
under 35 U.S.C. § 103(a) as being unpatentable over Dexter and Baskent in
view of Van Rooyen.
We reverse the Examiner’s decision rejecting claim 19 under 35
U.S.C. § 103(a) as being unpatentable over Dexter and Baskent in view of
Scholl.
We reverse the Examiner’s decision rejecting claim 34 under 35
U.S.C. § 103(a) as being unpatentable over Dexter and Baskent in view of
Zhou.
REVERSED

tc

PPG INDUSTRIES, INC.
INTELLECTUAL PROPERTY DEPARTMENT
ONE PPG PLACE
PITTSBURGH, PA 15272

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