Ex Parte Spyrou et al

Board of Patent Appeals and Interferences

Jan 9, 2009

10836407 (B.P.A.I. Jan. 9, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte EMMANOUIL SPYROU,
HOLGER LOESCH, and
ANDREAS WENNING
____________

Appeal 2008-5263
Application 10/836,407
Technology Center 1700
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Decided: January 8, 2009
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Before BRADLEY R. GARRIS, ADRIENE LEPIANE HANLON, and
CHARLES F. WARREN, Administrative Patent Judges.

GARRIS, Administrative Patent Judge.

DECISION ON APPEAL

Appellants appeal under 35 U.S.C. § 134 from the Examiner's
decision rejecting claims 1-15 and 18-37. We have jurisdiction under
35 U.S.C. § 6.
We REVERSE the Examiner's decision.

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Application 10/836,407

STATEMENT OF THE CASE

Appellants claim a polyurethane powder coating composition (claim
1) as well as a process for preparing such a composition (claim 14) wherein
the composition comprises a uretdione powder coating hardener, a polymer
containing a hydroxyl group, and a catalyst defined by a certain formula
which has particular anions including a carboxylate anion.
Representative independent claim 1, as presented in the claims
Appendix of Appellants' corrected Appeal Brief (Br. filed Dec. 14, 2007),
reads as follows:
1. A highly reactive polyurethane powder coating composition,
comprising:

A) at least one uretdione powder coating hardener, based on aliphatic,
(cyclo)aliphatic or cycloaliphatic polyisocyanates and compounds
containing hydroxyl groups, said hardener having a melting point of 40 to
130°C, a free NCO content of less than 5% by weight and a uretdione
content of 6-18% by weight,

B) at least one polymer containing a hydroxyl group with a melting
point of 40 to 130°C and an OH value between 20 and 200 mg KOH/g,

C) 0.001-3% by weight, based on a total weight of components A)
and B), of at least one catalyst having the formula [NR1R2R3R4]+ [R5COO]-,

wherein R1 – R4 simultaneously or independent of each other are
alkyl, aryl, aralkyl, heteroaryl, alkoxyalkyl radicals, optionally linear or
branched, unbridged or bridged with other R1 – R4 radicals, with the
formation of cycles, bicycles or tricycles and wherein the bridging atoms, in
addition to carbon, are optionally heteroatoms, with 1-18 carbon atoms and
wherein every R1 – R4 radicals also has at least one group selected from the
group consisting of alcohol, amino, ester, keto, thio, urethane, urea,
allophanate groups, double bonds, triple bonds, and halogen atoms, and

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R5 is an alkyl, aryl, aralkyl, heteroalkyl, alkoxyalkyl radical, linear or
branches with 1-18 carbon atoms and optionally having one or more alcohol,
amino, ester keto, thio, urethane, urea, allophanate groups, double bonds,
triple bonds or halogen atoms;

wherein components A) and B) are in a such ratio so that there is 0.3
to 1 uretdione group of component A) for each hydroxyl group of
component B).

The sole rejection remaining in this appeal is set forth below.1

The Examiner rejects all appealed claims as being unpatentable under
the judicially created doctrine of obviousness-type double patenting over
claims 1-32 of Spyrou (US 6,914,115 B2 filed July 5, 2005) in view of
Matsunaga (US 5,854,350 filed December 29, 1998). The Examiner finds
that Spyrou claims a polyurethane powder coating composition of the type
defined by claim 1 except that patentee's catalyst comprises hydroxide-based
anions rather than Appellants' claimed carboxylate anions (Ans. 4-5). The
Examiner also finds that Matsunaga teaches "a polyurethane coating
composition comprising the reaction product of uretdione and polyester
polyol in the presence of a quaternary ammonium salt catalyst, wherein the
anion of the ammonium salt anion is hydroxide or carboxylate based, and the
carboxylate being preferred" (Ans. 5). Based on these findings, the
Examiner concludes that "[i]t would have been obvious to one of ordinary
skill in the art at the time of invention to utilize a carboxylate based anions

1 The Examiner's Answer lists a provisional rejection based on obviousness-
type double patenting over the claims of Application 11/115,163 (Ans. 4).
The electronic file record for this '163 application shows that it is now
abandoned. Accordingly, we dismiss the appeal as to the provisional
obviousness-type double patenting rejection based on the claims of the '163
application.
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[sic] in the quaternary ammonium salt catalyst of Spyrou . . . as taught by
Matsunaga . . . based on the motivation that carboxylate based anions are
preferred to hydroxide in analogous applications" (id.).
Appellants do not agree with the Examiner's position that the
respective catalysts claimed by Spyrou and disclosed by Matsunaga function
in "analogous applications" (Ans. 5). According to Appellants, "the catalyst
[of Spyrou] is intended to cleave the uretdione groups, while . . . the catalyst
[of Matsunaga] is intended to split off the blocking agents" (Br. 6).
Additionally, Appellants argue that Spyrou's "composition is always
essentially free of blocking agents, while [Matsunaga's] composition always
contains blocking agents" (id.). The Appellants conclude that, "given this
knowledge in the art, it would not have been obvious to equate [Spyrou's]
catalysts intended for cleaving uretdione groups, with [Matsunaga's]
catalysts intended for splitting off the blocking agents" (Br. 7).

ISSUE
Have Appellants established that the Examiner erred in concluding it
would have been prima facie obvious for one with ordinary skill in this art to
replace the hydroxide anion of Spyrou's claimed catalyst with the
carboxylate anion of Matsunaga's disclosed catalyst based upon a reasonable
expectation that the so-modified catalyst would successfully perform the
Spyrou catalyst function of cleaving uretdione groups?

FINDINGS OF FACT
On this record, there is no dispute that the catalyst of Spyrou's claimed
composition includes hydroxide rather than Appellants' claimed carboxylate
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as an anion (Patent claim 1) and that patentee's claimed catalyst performs the
function of cleaving uretdione groups (col. 2, ll. 31-37).
Additionally, there is no dispute that the anions of Matsunaga's
catalyst include hydroxide as well as carboxylate groups or that these
catalysts function to lower the disassociation temperature of blocked
polyisocyanate compounds (Abstract, col. 1, ll. 11-20 and 39-61). Indeed,
the Examiner expressly acknowledges that "Matsunaga et al. teach the
presence of external blocking agents, and the relied upon catalyst
composition facilitates the cleavage of said blocking agents" (Ans. 6).

PRINCIPLES OF LAW
To establish obviousness, there must be "an apparent reason to
combine the known elements [of the prior art] in the fashion claimed by the
patent [or application] at issue." KSR Int'l Co. v. Teleflex Inc., 127 S. Ct.
1727, 1741 (2007).
Moreover, to establish obviousness, there must be a reasonable
expectation that the modification in question would be successful. Pfizer,
Inc. v. Apotex, Inc., 480 F.3d 1348, 1364 (Fed. Cir. 2007) ("the expectation
of success need only be reasonable, not absolute").
ANALYSIS
As indicated above, the hydroxide anion containing catalyst of Spyrou
functions to cleave uretdione groups whereas the carboxylate ion containing
catalyst of Matsunaga functions to lower disassociation temperature of a
blocked polyisocyanate compound or, as phrased by the Examiner,
"facilitates the cleavage of said blocking agents" (Ans. 6). Nevertheless, the
Examiner maintains an obviousness conclusion on the grounds that, "[w]hile
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the [E]xaminer's motivation used to combine references may not be the same
as [A]pplicants, i.e., the cleavage of uretdione groups, it is important to note
that the reason or motivation to modify the reference may often suggest what
the inventor has done, but for a different purpose or to solve a different
problem" (Ans. 7). In this latter regard, the Examiner "maintains that it
would have been obvious to include the catalyst of Matsunaga . . . based on
the motivation that it improves the properties of the resulting coating" (id.).
The Examiner's rationale is misplaced, for it begs the issue of
whether Spyrou's claimed catalyst, when modified to contain a carboxylate
rather than hydroxide anion, would reasonably be expected to cleave
uretdione groups as required by patentee. Certainly, the Matsunaga patent
provides no such expectation since, as admitted by the Examiner, the
catalyst thereof performs a different function. Furthermore, the Examiner's
emphasized fact that Matsunaga's catalyst improves coating properties
simply is not germane to the pivotal issue of whether the catalyst resulting
from the proposed modification would be reasonably expected to cleave
uretdione groups as desired by Spyrou.
CONCLUSION OF LAW
The Appellants have established that the Examiner has erred in
concluding it would have been prima facie obvious for an artisan to replace
the hydroxide anion of Spyrou's claimed catalyst with the carboxylate anion
of Matsunaga's catalyst based upon a reasonable expectation that Spyrou's
so-modified catalyst would successfully perform the desired function of
cleaving uretdione groups.

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ORDER
The decision of the Examiner is reversed.

REVERSED

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OBLON SPIVAK MCCLELAND
MAIER & NEUSTADT, PC
1940 DUKE STREET
ALEXANDRIA, VA 22314
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