Ex Parte Schönberger et al

Patent Trial and Appeal Board

Jun 7, 2016

13003205 (P.T.A.B. Jun. 7, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/003,205 02/17/2011
123223 7590 06/09/2016
Drinker Biddle & Reath LLP (WM)
222 Delaware A venue, Ste. 1410
Wilmington, DE 19801-1621
FIRST NAMED INVENTOR
Jan Schonberger
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.
074033-0357-US-287303 7090
EXAMINER
COONEY, JOHN M
ART UNIT PAPER NUMBER
1765
NOTIFICATION DATE DELIVERY MODE
06/09/2016 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):
IPDocketWM@dbr.com
penelope.mongelluzzo@dbr.com
DBRIPDocket@dbr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAN SCHONBERGER, BURKHARD KOHLER, PETER HAAS,
and MEIKE NIESTEN
Appeal2015-000759
Application 13/003,205
Technology Center 1700
Before GEORGE C. BEST, N. WHITNEY WILSON, and
JEFFREY R. SNAY, Administrative Patent Judges.
WILSON, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
November 19, 2013 decision rejecting claims 13-21, 23, 25, and 31-33.
("Office Act."). We have jurisdiction over the appeal under 35 U.S.C.
§ 6(b ).
We affirm.
1 Appellants identify the Real Party in Interest as Bayer MaterialScience AG
(Appeal Br. 2).
Appeal2015-000759
Application 13/003,205
CLAHvIED SUBJECT ivIATTER
Appellants' invention is directed to a method for preparing a
hydrophilic aliphatic polyurethane foam (Abstract). The process includes
providing, curing, and foaming a particular composition (id.). Details of the
claimed method are set forth in independent claim 13, which is
representative of the claims on appeal and is reproduced below from the
Claims Appendix of the Appeal Brief:
13. A process for preparing a hydrophilic aliphatic
polyurethane foam which comprises providing, curing, and
foaming a composition comprising:
A) an isocyanate-functional prepolymer having a weight
fraction of low molecular weight aliphatic diisocyanates
having a molar mass of 140 to 278 g/mol of below 1.0% by
weight based on the prepolymer, obtained by reaction of
Al) a low molecular weight aliphatic diisocyanate
having a molar mass of 140 to 278 g/mol with
A2) a di- to hexafunctional polyalkylene oxide having
an OH number of 22.5 to 112 mg KOH/g and an
ethylene oxide content of 50 to 100 mol% based
on the total amount of oxyalkylene groups,
B) optionally a heterocyclic 4-ring or 6-ring oligomer of low
molecular weight aliphatic diisocyanates having a molar
mass of 140 to 278 g/mol,
C) water,
D) optionally a catalyst,
E) a Cs-C22 monocarboxylic acid or its ammonium or alkali
metal salt or a C12-C44 dicarboxylic acid or its ammonium
or alkali metal salt,
F) optionally a surfactant, and
G) optionally a mono- or polyhydric alcohol,
wherein said hydrophilic aliphatic polyurethane foam has a
saline absorbance determined according to DIN EN 13726-1
Part 3 .2 of from 800 to 2000% mass of imbibed liquid based on
mass of dry foam; and/ or
wherein said hydrophilic aliphatic polyurethane foam has a
water-extractable fraction of 2% or less by weight.
2
Appeal2015-000759
Application 13/003,205
REJECTION
Claims 13-21, 23, 25, and 31-33 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Sessions, 2 in view Kollbach, 3 Braatz, 4 and Diblitz. 5
DISCUSSION
Details of the rejections on appeal are set forth in the Office Action at
pages 2-7. In general, the Examiner finds that Sessions discloses the same
general process as set forth in claim 13, but does not specifically disclose the
claimed absorbance range or the claimed amount of water extractables of/in
the final polyurethane foam (Office Act. 3--4). The Examiner further finds
that Sessions also fails to specifically disclose (1) the low monomer contents
prescribed for the prepolymers; (2) the specific polyols included in the
claimed aliphatic isocyanate functional prepolymers A2); and (3) the
carboxylate compounds E) (Office Act. 5---6). For the missing disclosures in
Sessions, the Examiner relies on disclosures in Kollbach, Braatz, and
Diblitz.
Appellants have argued the claims in 2 groups: ( 1) claims 13-21, 23,
25, and 31; and (2) claims 32 and 33. We will, therefore, focus our analysis
on a single claim from each group-claim 13 and claim 32.
Claims 13--21, 23, 25, and 31. Appellants contend that (a) it would
not have been obvious to modify the foams of Sessions to have the claimed
absorbency and (b) the Examiner has not set forth sufficient reason or
rationale to combine Sessions with Kollbach, Braatz, and Diblitz to arrive at
the claimed invention (Br. 6-7).
2 Sessions, WO 03/097727 Al, published November 27, 2003.
3 Kollbach et al., U.S. Patent Pub. 2005/0020706 Al, published January 27, 2005.
4 Braatz et al., U.S. Patent No. 4,940,737, issued July 10, 1990.
5 Diblitz et al., U.S. Patent No. 5,807,958, issued September 15, 1998.
3
Appeal2015-000759
Application 13/003,205
Having reviewed the arguments set forth in the Appeal Brief and the
Reply Brief, we affirm the rejection, essentially for the reasons set forth in
the Office Action and the Answer. We add the following for emphasis.
Concerning the arguments regarding the absorbency of the claimed
foam, as explained by the Examiner, Sessions discloses that a hydrophilic
agent may be included so as to provide a foam capable of absorbing at least
about 3 times its weight in external liquid (Sessions i-f 34). 6 "[A]t least about
3 times" its weight in liquid would encompass the claimed range of
absorbance from 800 to 2000%. The Examiner finds that Examples 1-8 of
Sessions show that its foams retained water from 5.3 to 7.1 times their
weight in liquid while using low amounts of hydrophilic agents (relative to
the amounts of such agents which Sessions discloses may be used) (Office
Act. 3). Therefore, as determined by the Examiner, it would have been
obvious to use the hydrophilic agents disclosed in Sessions in the highest
amounts provided for by Sessions to achieve high absorbencies, as recited in
the claims.
The Examiner further finds that Sessions differs from the claims
because it does not "particularly require the low monomer contents
prescribed by applicants' claims for its prepolymers" (Office Act. 5).
However, the Examiner finds that Kollbach teaches such prepolymers and
indicates that they are useful for avoiding toxicity. Therefore, according to
the Examiner it would have been obvious to use the prepolymers of
6 Additionally, Sessions discloses that the hydrophilic agents used in its
compositions have can absorb from 50 to 150 times or more of their weight
in fluid (Sessions i-f 34). This would have suggested to person of skill in the
art that the overall absorbency of the composition could encompass the
claimed range.
4
Appeal2015-000759
Application 13/003,205
Kollbach in the Sessions process to limit tox1c1ty (id.). Appellants contend
that "the Examiner is asserting that the skilled artisan would find it obvious
to substitute the prepolymers of Sessions for that of Kollbach merely
because it is disclosed in the art" (Br. 8).
To make out a prima facie case of obviousness, there must be some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness. In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006).
In this instance, the Examiner has provided reasoning with rationale
underpinning as to why a person would have made the necessary
combination of Sessions and Kollbach (achieving less deleterious and toxic
reaction and product effects in the preparations of Sessions).
The Examiner also finds that Sessions does not specifically identify
the make-up of the polyols included in its aliphatic isocyanate functional
prepolymers (i.e., the component identified as A2) in claim 13) (Office Act.
5). However, the Examiner finds that Braatz discloses ranges of operational
functionalities, molecular weights, and ethylene oxide contents values useful
in the production of prepolymers useful the forming hydrophilic polymers
and foams (id.). The Examiner determines that it would have been obvious
to use Braatz's polyols in the process of Sessions and "to have operated
within the ranges of functionalities, molecular weights, and ethylene oxide
content values provided for by [Braatz] in the preparations of Sessions for
the purpose of forming acceptably developed hydrophilic products" (Office
Act. 5---6). In essence, the Examiner determines that finding the optimal or
workable ranges for these properties would have involved only routine skill
in the art (Office Act. 6).
5
Appeal2015-000759
Application 13/003,205
Appellants argue that Sessions does not specifically identify any
polyols in its prepolymers, and does not suggest using a polyol to create a
modified prepolymer to impart hydrophilicity in lieu of the hydrophilic
agents it describes (Br. 8-9). This argument is not persuasive. As found by
the Examiner, Braatz discloses ranges of the claimed variables which are
useful in creating prepolymers used to form hydrophilic polymers and foams
to achieve acceptable hydrophilicity (Ans. 13). Moreover, Sessions
discloses the use of isocyanate prepolymers with at least 40% by weight
ethylene oxide (Sessions i-f 27). Therefore, as noted by the Examiner, it
would have been obvious to provide polyols with the claimed functionalities,
molecular weights and ethylene oxide contents to develop hydrophilic
products (Ans. 13).
The Examiner also finds that Sessions does not specifically recite the
carboxylate compounds of claim 1 (element E)) (Office Act. 6). The
Examiner finds that the claimed carboxylate compounds are disclosed by
Diblitz, which states that they are useful for influencing cell structure in
developing foams (id., citing Diblitz, Abstract, 1:56-3: 18). The Examiner
concludes that it would have been obvious to use the Diblitz carboxylate
compounds in the process of Sessions to influence cell structure
development (Office Act. 6-7).
Appellants argue that Diblitz teaches that its carboxylates improve the
tensile strength of its foams, while the claimed process favorably influences
volume shrinkage (Br. 9). Therefore, according to Appellants, there would
have been no reason for a person of skill in the art to use Diblitz's
carboxylates for an entirely different purpose (id.). This argument is not
persuasive, as the Examiner has provided a reason why a person of skill in
6
Appeal2015-000759
Application 13/003,205
the art would have used the Diblitz carboxylates in the Sessions process.
That it is a different reason than Appellants articulate in their Specification
is not dispositive of the issue of obviousness. In making determinations of
obviousness, we must not limit our analysis only to the problem Appellant
was trying to solve. KSR Int'! Co. v. Teleflex, Inc., 550 U.S. 398, 420
(2007).
Appellants also contend that a person of skill in the art would have
had no motivation to combine the teachings of Sessions and Diblitz because
Sessions states that its foams are capable of foaming "in the absence of a
catalyst" (Br. 9, citing Sessions i-f 24 ). Therefore, according to Appellants, a
person of skill in art would not have used Diblitz's carboxylates (i.e.,
catalysts) in the Sessions process (Br. 9--10). However, as explained by the
Examiner, while Sessions indicates a preference for avoiding unnecessary
catalysts (to improve safety when used in a human body), it does not exclude
using catalysts. Therefore, a person of skill in the art seeking to improve the
cell structure of a foam would look to the disclosures of Diblitz.
Claims 32 and 33. Appellants do not offer separate arguments for
both claims 32 and 33. Accordingly, we will focus on claim 32 only. Claim
32 differs from claim 13 in that it requires both the absorbance and the
extractable limitations of claim 13, not one or the other or both, as recited in
claim 13. The Examiner finds that the absorbency limitation is met as
discussed above. With regards to the extractable limitation, the Examiner
finds that Sessions discloses that extractable adjuvants are optional
components and that, therefore, it would have been obvious not to include
them, thereby meeting the limitation of less than 2 % by weight of
extractables (Office Act. 4).
7
Appeal2015-000759
Application 13/003,205
Appellants argue that the hydrophilic foam compos1t10ns of Sessions
"are far removed from the presently claimed process" and that "[t ]here is
nothing in Sessions to suggest that the presently claimed foam would be
effective as hydrophilic polyurethane foam having low extractables, no
volume shrinkage 7 after foaming and high saline absorption as required" by
claim 32 (Br. 11-12, underlining omitted). Appellants essentially contend
that the rejection is based on hindsight (Br. 12).
Appellants' arguments are not persuasive. As discussed above,
Sessions fairly suggests both the absorbency and extractable limitations.
Appellants have not persuasive explained why the absorbency limitation is
not suggested, and make no arguments regarding the extractable limitation
(see Br. 7). Accordingly, we determine that Appellants have not
demonstrated reversible error in the rejection of claims 32 and 33.
CONCLUSION
We AFFIRM the rejection of claims 13-21, 23, 25, and 31-33 under
35 U.S.C. § 103(a) as being unpatentable over Sessions, in view Kollbach,
Braatz, and Diblitz.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
7 We note that the claims do not recite volume shrinkage of the foams.
8