11260104 (B.P.A.I. Aug. 10, 2012)

Ex Parte Sarpeshkar et al

Board of Patent Appeals and InterferencesAug 10, 2012

11260104 (B.P.A.I. Aug. 10, 2012)

UNITED STA 1ES p A 1ENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 11/260,104 10/27/2005 157 7590 08/14/2012 BA YER MATERIAL SCIENCE LLC 100 BA YER ROAD PITTSBURGH, PA 15205 FIRST NAMED INVENTOR Ashok M. Sarpeshkar UNITED STA TES 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. P08610/MD05-32 7075 EXAMINER SERGENT, RABON A ART UNIT PAPER NUMBER 1765 NOTIFICATION DATE DELIVERY MODE 08/14/2012 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): bmspatents@bayer.com donna.veatch@bayer.com veronica. thompson@bayer.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES Ex parte ASHOK M. SARPESHKAR and MARYLN DONALDSON Appeal 2011-002012 Application 11/260, 104 Technology Center 1700 Before EDWARD C. KIMLIN, TERRY J. OWENS, and JEFFREY T. SMITH, Administrative Patent Judges. KIMLIN, Administrative Patent Judge. DECISION ON APPEAL This is an appeal from the final rejection of claims 1-44. We have jurisdiction under 35 U.S.C. Â§ 6(b). Claim 1 is illustrative: 1. A polyurethane-urea comprising the reaction product of: (A) at least one ( cyclo )aliphatic polyisocyanate or ( cyclo )aliphatic polyisocyanate prepolymer having an NCO group content of about 4 to about 50%, and an average functionality of about 2 to about 3; Appeal 2011-002012 Application 11/260, 104 with (B) an isocyanate-reactive component comprising: ( 1) one or more aromatic diamine compounds containing two primary aromatic amine groups and having a molecular weight of about 100 to about 1,000, (2) one of more isocyanate-reactive compounds containing two secondary amine groups and having a molecular weight of about 100 to about 7 50, wherein the secondary amine groups are attached to ( cyclo )aliphatic and/or aromatic groups; and, optionally, (3) one or more hydroxyl-functional compounds having a functionality of from about 2.0 to about 3.0 and a molecular weight of about 100 to about 4,000; optionally, in the presence of (C) one or more catalysts, wherein the relative quantities of (A) and (B) are such that the Isocyanate Index is from about 95 to about 110. The Examiner relies upon the following references in the rejection of the appealed claims (Ans. 3): Slagel '262 Markusch Luong Slagel '939 Wu 3,755,262 6,562,932 B 1 2004/0105154 Al 6,939,939 B2 WO 96/02584 Al Aug. 28, 1973 May 13, 2003 Jun.03,2004 Sep.06,2005 Feb.01, 1996 Appealed claims 1, 5-9, 11, 12, 14-17, 22, 23, 27-31, 33, 34, 36-39 and 44 stand rejected under 35 U.S.C. Â§ 112, second paragraph. Claims 1, 2, 5-7, 9, 11, 12, 14-16, 18, 20, 22-24, 27-29, 31, 33, 34, 36-38, 40, 42 and 44 2 Appeal 2011-002012 Application 11/260, 104 stand rejected under 35 U.S.C. Â§ 102(b) as being anticipated by Wu. The appealed claims stand rejected under 35 U.S.C. Â§ 103(a) as follows: (a) claims 15, 17, 19, 21, 37, 39, 41 and 43 over Wu in view of Long, (b)claims 1-16, 18, 20, 22-38, 40, 42 and 44 over Markusch in view of Slagel '939 and Slagel '262, and (c) claims 15, 17, 19, 21, 37, 39, 41 and 43 over Markusch in view of Slagel '939, Slagel '262, and Luong. We have thoroughly reviewed each of Appellants' arguments for patentability as well as the Specification evidence relied upon in support thereof. However, we find that the Examiner's rejections underÂ§ 112, Â§ 102, and Â§ 103 are well founded. Accordingly, we will sustain the Examiner's rejections for the reasons set forth in the Answer, which we incorporate herein, and we add the following for emphasis only. We consider first the Examiner's rejection underÂ§ 112, second paragraph. We agree with the Examiner that since the rejected claims do not require the use of hydroxyl functional reactants, the recitation "polyurethane-urea" is a misnomer and, therefore, the scope of the claims is unclear because it is unclear if pure polyurea lacking urethane groups meets the claims. Appellants acknowledge that the term "polyurethane-urea" as used in the present claims is not technically accurate since a hydroxyl functional reactant is necessary to form a polyurethane group, and the claims do not require such a hydroxyl functional reactant. We find no merit in Appellants' argument that other U.S. Patents also use the same inaccurate terminology to describe a polyurea. We note that Appellants have had 3 Appeal 2011-002012 Application 11/260, 104 ample opportunity to amend the claims to reflect the proper nomenclature for the claimed polymer. Turning to the Â§ 102 over Wu, we concur with the Examiner that the reference fairly describes the claimed subject matter within the meaning of Â§ 102 notwithstanding, as urged by Appellants, that the reference does not exemplify the claimed polymer which is a reaction product of a ( cyclo )aliphatic polyisocyanate and a blend of compounds containing two primary aromatic amine groups and two secondary amine groups. As set forth by the Examiner, Wu expressly discloses in the Abstract that polyisocyanate prepolymers may be reacted with mixtures of aromatic primary diamine chain extenders and aromatic secondary diamine chain extenders, and Examples 13-15 of Wu use such a blend of chain extenders. Although these Examples use a para-phenylene diisocyanate, we agree with the Examiner that one of ordinary skill in the art, considering the reference as a whole, would have understood that such a blend was suitable for reacting with ( cyclo )aliphatic polyisocyanates as well. Appellants also contend that Wu's Example 9, which has an NCO group content of 3.80%, does not meet the claimed amount of 4%. However, as explained by the Examiner, the claims recite "about" 4% which encompasses Wu's 3.80%. It is well settled that the term "about" allows for variance from the recited value. In re De Vaney, 185 F.2d 679, 741 (CCPA 1951 ). Likewise, regarding separately argued claims 20 and 42, the recited ratio ofNCO:OH is about 2.25:1.0. The calculated ratio of Wu's Example 9, 2.2: 1 meets the claimed ratio of about 2.25: 1.0. Concerning theÂ§ 103 rejection over Wu in view of Luong, we agree with the Examiner that it would have been obvious for one of ordinary skill 4 Appeal 2011-002012 Application 11/260, 104 in the art to use the polyaspartic esters of Luong as the secondary amine chain extenders of Wu to impart low viscosity properties and enhance processing. As pointed out by the Examiner, Appellants have provided no objective evidence that the aspartic esters of Luong would react more slowly than the specifically disclosed aromatic secondary amines of Wu. We also find no error in the Examiner'sÂ§ 103 rejection over Markusch in view of Slagel '939 and Slagel '262. Although Markusch is silent regarding the presently claimed NCO/OH ratios, the Slagel patents evidence that it was known in the art to employ such ratios to obtain the low viscosity prepolymers desired by Markusch. It is of no moment that, as pointed out by Appellants, Slagel '939 discloses only primary diamines and Slagel '262 does not utilize amines. The Examiner cites Markusch for teaching the use of both primary and secondary amine chain extenders. We observe that Appellants acknowledge that Markusch teaches the claimed secondary amines (see App. Br. 24, first para.). Appellants cite Example 14 of the present Specification as evidence of unexpected results. Example 14, which uses a blend of primary and secondary amines, yields a demold time of only 2 hours compared to the 16 hours of Example 15 which uses only a primary amine. However, we fully concur with the Examiner that the showing is hardly commensurate in scope with the degree of protection sought by the appealed claims. Example 14 of the Specification is limited to a specific blend of amines, whereas the appealed claims broadly embrace blends of 1 or more aromatic diamine compounds containing two primary aromatic amine groups having a molecular weight of about 100 to about 1,000, and 1 or more isocyanate- reactive compounds containing two secondary amine groups having a 5 Appeal 2011-002012 Application 11/260, 104 molecular weight of about 100 to about 7 50, with the secondary amine groups attached to ( cyclo )aliphatic and/ or aromatic groups. In addition, the claims broadly encompass ( cyclo )aliphatic polyisocyanates and ( cyclo )aliphatic polyisocyanate prepolymers having an NCO group content of about 4 to about 50% and an average functionality of about 2 to about 3. Manifestly, the limited showing in the Specification does not provide the requisite evidence that all or even most of the polymers encompassed by the appealed claims yield the demold time of Example 14. Moreover, Appellants have not established that the exemplified results would have been considered truly unexpected by one of ordinary skill in the art. Appellants have proffered no factual support for the proposition that one would expect that a slower gel reaction time for a composition would also have a longer demold time. In conclusion, based on the foregoing and the reasons well stated by the Examiner, the Examiner's decision rejecting 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. Â§ 1.136(a)(l )(iv). AFFIRMED ssl 6