Ex Parte Subramanian et al

Patent Trial and Appeal Board

Jul 28, 2017

13176871 (P.T.A.B. Jul. 28, 2017)

United States Patent and Trademark Office
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.
13/176,871 07/06/2011 Ramesh Subramanian BMSl 12014/MDl 1-11 5359
157 7590
Covestro LLC
1 Covestro Circle
PITTSBURGH, PA 15205
EXAMINER
SANDERSON, LEE E
ART UNIT PAPER NUMBER
1782
NOTIFICATION DATE DELIVERY MODE
08/01/2017 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):
veronica.thompson@covestro.com
US-IPR@covestro.com
laura.finnell @ covestro. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RAMESH SUBRAMANIAN, RAYMOND STEWART,
ABDULLAH EKIN, WILLIAM CORSO, LARRY SMEDLEY, and
TORSTEN POHL1
Appeal 2016-005845
Application 13/176,871
Technology Center 1700
Before TERRY J. OWENS, MONTE T. SQUIRE, and JANE E. INGLESE,
Administrative Patent Judges.
SQUIRE, Administrative Patent Judge.
DECISION ON APPEAL2
Appellants appeal the Examiner’s decision finally rejecting claims 1—
19, which constitute all the claims pending in this application. 35 U.S.C.
§ 134(a). We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellants identify Covestro LLC as the real party in interest. App. Br. 1.
2 In our Decision, we refer to the Specification filed July, 6, 2011 (“Spec.”);
the Final Office Action dated June 18, 2015 (“Final Act.”); the Appeal Brief
dated November 3, 2015 (“App. Br.”); and the Examiner’s Answer to the
Appeal Brief dated March 11, 2016 (“Ans.”).
Appeal 2016-005845
Application 13/176,871
The Claimed Invention
Appellants’ disclosure relates to aqueous polyurethane coating
compositions. Abstract; Spec. 1. Independent claim 1 is illustrative of the
claimed subject matter on appeal and is reproduced below from the Claims
Appendix to the Appeal Brief (App. Br. 14) (key disputed claim language
italicized and bolded):
1. An aqueous polyurethane coating composition
comprising:
(a) an aqueous dispersion of a hydroxy-functional
polyurethane resin comprising a reaction product of:
(Al) 20% to 60% by weight of a
polyisocyanate comprising 50 to 100 weight
percent of an aliphatic diisocyanate;
(A2) 20% to 60% by weight of a polyether
polyol having an OH number of 25 to 350 mg
KOH/g solids;
(A3) 2% to 12% by weight of an isocyanate-
reactive component comprising an ionic group or
potentially ionic group;
(A4) 0% to 12'% by weight of a nonionic
hydrophilic component;
(A5) 0% to 15% by weight of a polyhydric
alcohol having a molecular weight of 62 to 250;
(A6) 0% to 15'% by weight of a
(cyclo)aliphatic polyamine;
(A7) 0% to 30% by weight of a
(cyclo)aliphatic polyamine/polyol; and
(A8) 0% to 15% by weight of one or more
stabilizing components that are monofimctional or
di-functional for purposes of an isocyanate
addition reaction and have 1 to 2 hydrazide groups,
wherein the weight percentages of (Al) to
(A8) add up to 100 percent;
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Application 13/176,871
(b) a water-dilutable aminoplast resin; and
(c) a water-dilutable polycarbonate-polyurethane
resin,
wherein the polycarbonate-polyurethane resin is
non-functional, and wherein at least one of (a) and (c) is
not derived from 1,4-butanediol.
The References
The Examiner relies on the following prior art references as evidence
in rejecting the claims on appeal:
Lehman Edward Hoag,
(hereinafter “Lehman”)
US 3,182,839 May 11, 1965
Roesler et al.,
(hereinafter “Roesler”)
US 2002/0119329 Al Aug. 29, 2002
Rische et al.,
(hereinafter “Rische”)
US 7,276,554 B2 Oct. 2, 2007
Blum et al.,
(hereinafter “Blum”)
US 2009/0264577 Al Oct. 22, 2009
Mihail Ionescu, Chemistry and Technology of Polyols for Polyurethanes, Rapra
Technology Limited (2005) (hereinafter “Ionescu”).
Cymel® Amino Resin Crosslinkers for the Coating Industry, Cymel Industries
(2008) (hereinafter “Cymel Industries”).
Bayhydrol® XP2637 Polyurethane Dispersion, Bayer Material Science,
(January 2010) (hereinafter “Bayhydrol”).
The Rejections
On appeal, the Examiner maintains the following rejections:
1. Claims 1—4, 6—13, and 16—18 are rejected under pre-AIA
35 U.S.C. § 103(a) as being unpatentable over Blum in view of Bayhydrol
(“Rejection 1”). Final Act. 2—3; Ans. 3.
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2. Claim 5 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Blum and Bayhydrol as applied to claims 1 and 4 above,
and further in view of Rische (“Rejection 2”). Final Act. 6; Ans. 6.
3. Claims 14 and 15 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Blum and Bayhydrol as applied to claim 1 above,
and further in view of Roesler (“Rejection 3”). Final Act. 7; Ans. 7.
4. Claim 19 is rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Blum and Bayhydrol as applied to claim 1 above, and
further in view of Lehman (“Rejection 4”). Final Act. 9; Ans. 8.
OPINION
Having considered the respective positions advanced by the Examiner
and Appellants in light of this appeal record, we affirm the Examiner’s
rejections for the reasons set forth in the Answer to the Appeal Brief and
Final Office Action, which we adopt as our own. We highlight and address
specific findings and arguments below for emphasis.
Rejection 1
Appellants argue claims 1—4, 6—13, and 16—18 as a group. We select
claim 1 as representative and the remaining claims subject to this rejection
stand or fall with claim 1. 37 C.F.R. § 41.37(c)(l)(iv).
The Examiner determines that the combination of Blum and
Bayhydrol suggests an aqueous polyurethane coating composition satisfying
all of the limitations of claim 1 and would have rendered claim 1 obvious.
Ans. 3^4.
The Examiner finds that Blum discloses the majority of the limitations
of claim 1, but that the reference is silent regarding the incorporation of a
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non-functional polycarbonate-polyurethane. Ans. 3^4 (citing Blum || 13—
20, 51-69, 73, 87, 88, 96, 104, 106, 110-115, 140, 141). The Examiner,
however, relies on Bayhydrol for disclosing this limitation. Id. at 4. In
particular, the Examiner finds that Bayhydrol discloses a commercially
available, aqueous aliphatic polycarbonate-polyurethane dispersion that is
suitable for blending with other polyurethane coating dispersions in order to
impart flexibility, solvent resistance and hydrolytic stability to the
polyurethane coating. Id. at 4 (citing Bayhydrol p. 1).
Based on the above findings the Examiner concludes that it would
have been obvious to one of ordinary skill in the art at the time the invention
was made to have incorporated Bayhydrol XP2637 polycarbonate-
polyurethane dispersion into the aqueous polyurethane coating composition
of Blum in order to impart flexibility and hydrolytic stability to the coating
produced from the composition. Ans. 4.
Appellants argue that the Examiner’s rejection should be reversed
because Blum does not teach or suggest an “aqueous dispersion of a
hydroxy-functional polyurethane resin,” as required by claim 1. App. Br. 7—
8. In particular, Appellants argue that Blum is directed to and requires
aqueous polyurethane solutions and a person of ordinary skill in the art
would have had no motivation to modify Blum to arrive at the claimed
coating composition. Id. at 8. Appellants further argue that Blum teaches
away from the use of dispersions and “any modification of Blum, which
requires an aqueous dispersion of a hydroxy-functional polyurethane resin
would be improper” because it would render the prior art unsatisfactory for
its intended purpose or change the principle of operation. Id. at 7—9 (citing
Blum 119-12, 133).
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Appellants also argue that the Examiner has failed to provide “clear
articulated reasoning with rational underpinning” as to why the claimed
invention would have been obvious over the cited references, and the
Bayhydrol reference fails to overcome the deficiencies of Blum. App. Br. 8,
9.
We do not find Appellants’ arguments persuasive of reversible error
in the Examiner’s rejection. On the record before us, we find that a
preponderance of the evidence and sound technical reasoning support the
Examiner’s analysis and determination (Ans. 3—4, 9—11) that the
combination of Blum and Bayhydrol suggests all of the limitations of claim
1, including an “aqueous dispersion of a hydroxy-functional polyurethane
resin,” and would have rendered the claim obvious. Blum H 13—20, 51—69,
73, 87, 88,96, 104, 106, 110-115, 140, 141, 159-163; Bayhydrol p. 1.
As the Examiner finds (Ans. 3), Blum teaches an aqueous
polyurethane glass coating composition comprising a water soluble hydroxy-
functional polyurethane, and discloses that the hydroxy-functional
polyurethane may be present in the coating composition as discrete, opaque,
observable particles having a size of just less than 200 nm. Blum H 13—20,
140, 141. As the Examiner further finds (Ans. 9, 10), Blum also explicitly
teaches that the coating composition may comprise components which are
dispersions, and the coating composition may itself be a dispersion. Blum
11 16, 20, 159-163. Thus, one of ordinary skill in the art would have
understood Blum’s disclosure regarding the presence of opaque, discrete
polyurethane particles as being characteristic of a dispersion. Id. 1140.
The Examiner also provides a reasonable basis and identifies a
preponderance of the evidence in the record to evince why one of ordinary
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skill would have combined the teachings of the references to arrive at
Appellants’ claimed invention. Ans. 4 (explaining that one of ordinary skill
would have had reason to incorporate the Bayhydrol XP2637 polyurethane
dispersion into Blum’s polyurethane coating composition in order to impart
flexibility and hydrolytic stability to the coating); Bayhydrol p. 1. See also
KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 420 (2007) (explaining that any
need or problem known in the art can provide a reason for combining the
elements in the manner claimed).
Appellants fail to direct us to sufficient evidence or provide an
adequate technical explanation to establish why the Examiner’s articulated
reasoning for combining the teachings of the prior art to arrive at the claimed
invention lacks a rational underpinning or is otherwise based on some other
reversible error.
Appellants’ argument that Blum teaches away from the use of
dispersions (App. Br. 7—8) is not persuasive of reversible error because
Appellants do not identify sufficient evidence to support it, and we will not
read into the reference a teaching away where no such language exists. Cf.
DyStar Textilfarben GmbHv. C.H. Patrick Co., 464 F.3d 1356, 1364 (Fed.
Cir. 2006). See In re Fulton, 391 F.3d 1195, 1201 (finding that there is no
teaching away where the prior art’s disclosure “does not criticize, discredit,
or otherwise discourage the solution claimed”).
Although some of the portions of Blum Appellants identify discuss
that Blum’s coating composition may provide certain improvements or
advantages over prior aqueous polyurethane dispersions (Blum || 9-12), as
the Examiner finds (Ans. 11), in other portions the reference discloses that
hydroxy-functional polyurethane dispersions were well-known in the art to
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be useful in forming polyurethane coating compositions. See, e.g., Blum 13
(disclosing that “Aqueous binders based on polyurethane dispersions are
well-established prior art”), 19 (disclosing that “the prior art concerning
aqueous polyurethane dispersions is very extensive”); see also In re Mercier,
515 F.2d 1161, 1165 (CCPA 1975) (explaining that “all of the relevant
teachings of the cited references must be considered in determining what
they fairly teach to one having ordinary skill in the art”).
Appellants’ assertion that the Examiner’s proposed modification
would render Blum unsatisfactory for its intended purpose (App. Br. 8) is
not persuasive of reversible error because it is conclusory and Appellants do
not provide an adequate technical explanation or direct us to sufficient
evidence in the record to support it. Attorney argument is not evidence. In
re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984).
Moreover, as the Examiner finds (Ans. 11), because Blum explicitly
teaches that dispersions can be part of the disclosed coating composition
(Blum H 20, 140, 159—163), the Examiner’s modification of Blum with
Bayhydrol would not render the composition unsatisfactory for its intended
use.
Accordingly, we affirm the Examiner’s rejection of claims 1—4, 6—13,
and 16—18 under 35 U.S.C. § 103(a) as obvious over the combination of
Blum and Bayhydrol.
Rejections 2, 3, and 4
Appellants do not present any additional substantive arguments in
response to the Examiner’s Rejections 2, 3, and 4, stated above.
Rather, Appellants rely on the same arguments presented above in
response to the Examiner’s Rejection 1 regarding the combination of Blum
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and Bayhydrol. See App. Br. 10 (“Rische fails to remedy the shortcomings
of [Blum and Bayhydrol] to lead one of ordinary skill in the art to the
instantly claimed invention.”) (Rejection 2); App. Br. 11 (“Roesler fails to
remedy the defects” of [Blum and Bayhydrol] to lead one of ordinary skill in
the art to the instantly claimed invention.”) (Rejection 3); App. Br. 13
(“Lehman fails to cure the weaknesses of [Blum and Bayhydrol] to lead one
of ordinary skill in the art to the instantly claimed invention.”) (Rejection
4).
Accordingly, based on the findings and technical reasoning provided
by the Examiner and for the same reasons discussed above for affirming
Rejection 1, we affirm the Examiner’s Rejections 2, 3, and 4.
DECISION/ORDER
The Examiner’s rejections of claims 1—19 are affirmed.
It is ordered that the Examiner’s decision 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).
AFFIRMED
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