JENNINGER, Berthold et al.

Patent Trials and Appeals Board

Aug 4, 2021

2020005060 (P.T.A.B. Aug. 4, 2021)

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.
13/812,853 02/22/2016 Joachim Wagner 074023-0709-US-545563 1038
123223 7590 08/04/2021
Faegre Drinker Biddle & Reath LLP (WM)
Attn: Intellectual Property Group
One Logan Square, Suite 2000
Philadelphia, PA 19103-6996
EXAMINER
ROSENAU, DEREK JOHN
ART UNIT PAPER NUMBER
2837
NOTIFICATION DATE DELIVERY MODE
08/04/2021 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):
DBRIPDocket@faegredrinker.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JOACHIM WAGNER,
WERNER JENNINGER, and SEBASTIAN DOERR1
____________

Appeal 2020-005060
Application 13/812,853
Technology Center 2800
____________

Before CATHERINE Q. TIMM, CHRISTOPHER C. KENNEDY, and
BRIAN D. RANGE, Administrative Patent Judges.

KENNEDY, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1–6, 9, and 10. We have jurisdiction under
35 U.S.C. § 6(b). We AFFIRM.
BACKGROUND
The subject matter on appeal relates to dielectric elastomers,
comprising particular polyurethane polymers, that are part of an
electromechanical converter. E.g., Spec. 1:3–5; Claim 1. Claim 1 is

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. The Appellant identifies the real party in interest as
Covestro Deutschland AG. Appeal Br. 1.
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reproduced below from the Claims Appendix of the Revised Appeal Brief
dated August 6, 2019:
1. An electromechanical converter, including a dielectric elastomer
which is in contact with a first electrode and a second electrode,
in which the dielectric elastomer includes a polyurethane
polymer, characterised in that the polyurethane polymer can be
obtained by reacting
A) trifunctional polyisocyanate having a biuret and/or
isocyanurate structure with
B) a compound having at least two isocyanate-reactive groups,
in which the compound having at least two isocyanate-reactive
groups B) includes polyester and/or polycarbonate units, and
in which the molar ratios of isocyanate groups in A) to
isocyanate-reactive groups in B) are from 0.8 : 1 .0 to 1.3 : 1.0.
ANALYSIS
Claims 1–6, 9, and 10 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Kurita (US 5,977,685, issued Nov. 2, 1999) and Holzer
(US 5,277,944, issued Jan. 11, 1994). The Appellant argues the claims as a
group. We select claim 1 as representative, and the remaining claims will
stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv). We affirm the
rejection for reasons set forth below, in the Final Action dated
February 6, 2019, and in the Examiner’s Answer.
The Examiner finds, and the Appellant does not dispute, that Kurita
teaches each element of claim 1 except that Kurita does not disclose the
molar ratio of isocyanate groups to isocyanate-reactive groups in Kurita’s
composition. Final Act. 2. The Examiner finds that Holzer discloses a
similar polyurethane and that Holzer discloses a molar ratio of isocyanate
groups to isocyanate-reactive groups that renders obvious the molar ratio
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Application 13/812,853

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recited by claim 1. Id. The Examiner finds that it would have been obvious
to use Holzer’s molar ratio in the composition of Kurita “for the benefit of
improving the impact resistance of” Kurita’s composition. Id. at 3 (citing
Holzer at Abstr.).
The Appellant first argues that Holzer is not concerned with impact
resistance. Appeal Br. 10. That argument is not persuasive in view of
Holzer’s express statement that Holzer concerns “[a] process for the
manufacture of a plate, sheet or film made of an impact-resistant polymer.”
Holzer at Abstr (emphasis added). In the Examiner’s Answer, the Examiner
explains that Holzer “is directed to a two component material, which
includes an impact-resistant first reaction mixture. . . . The portions cited
and relied upon in the final office action was the first reaction mixture,
which is described as having impact resistant properties.” Ans. 3 (internal
citations omitted). The Appellant does not file a Reply Brief to contest the
Examiner’s additional discussion in the Answer. On this record, the
Appellant’s argument concerning impact resistance fails to identify
reversible error in the Examiner’s rejection.
The Appellant also argues that “explicit support for any purported
motivation [to combine] is required,” and that the Examiner has not
established that impact resistance would have been desirable in the
composition of Kurita. Appeal Br. 10.
In the Answer, the Examiner responds that “the benefits of impact
resistance are self-explanatory,” and the Examiner additionally finds that,
because “impact resistance results in improved durability and reduced
susceptibility to damage,” it would improve the composition and device of
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Application 13/812,853

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Kurita by yielding “a device that remains operable for a longer period of
time.” Ans. 3–4.
As noted above, the Appellant does not file a Reply Brief to contest
that reasoning, and we discern no reason to reject it. We agree with the
Examiner that improved durability and longevity would be desirable in
devices such as the polyurethane elastomer actuator of Kurita. See Kurita at
Abstr. Additionally, we note that the Examiner’s proposed combination is
simply the use of a known suitable molar ratio (that of Holzer) for
polyurethane compositions in a similar polyurethane composition for which
a molar ratio is not explicitly disclosed (that of Kurita). The use of known
elements according to their established functions typically does not result in
nonobvious subject matter. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
416–21 (2007) (“The combination of familiar elements according to known
methods is likely to be obvious when it does no more than yield predictable
results.”). The Appellant does not allege that criticality or unexpected
results support a conclusion of nonobviousness in this case.
We affirm the rejection.
CONCLUSION
In summary:
Claims
Rejected
35
U.S.C. § Reference(s)/Basis Affirmed Reversed
1–6, 9, 10 103(a) Kurita, Holzer 1–6, 9, 10
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