PATENT OWNER
`
`PATENT OWNER
`EXHIBIT 2028
`
`EXHIBIT 2028
`
`
`
`PATENT OWNER
`EXHIBIT 2028
`
`EXHIBIT 2028
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`
`
`UNITED STA (cid:9)1ES PA (cid:9) PENT 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. (cid:9)
`
`11/638,876
`
`FILING DATE
`
`12/14/2006
`
`FIRST NAMED INVENTOR (cid:9)
`
`I ATTORNEY DOCKET NO. I CONFIRMATION NO.
`
`Thomas G. Rukavina
`
`2083P1
`
`5050
`
`06/01/2015
`
`7590
`24959 (cid:9)
`PPG Industries, Inc.
`IP Law Group
`One PPG Place
`39th Floor
`Pittsburgh, PA 15272
`
`EXAMINER
`
`SERGENT, RABON A
`
`ART UNIT
`
`PAPER NUMBER
`
`1765
`
`MAIL DATE
`
`DELIVERY MODE
`
`06/01/2015
`
`PAPER
`
`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.
`
`PTOL-90A (Rev. 04/07)
`
`(cid:9)
`(cid:9)
`(cid:9)
`(cid:9)
`(cid:9)
`(cid:9)
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`Ex parte PPG INDUSTRIES OHIO, INC.
`
`Appeal 2013-0064451
`Application 11/638,876
`Technology Center 1700
`
`Before FRED E. McKELVEY, ROMULO H. DELMENDO, and
`MARK NAGUMO, Administrative Patent Judges.
`
`McKELVEY, Administrative Patent Judge.
`
`DECISION ON APPEAL
`37 C.F.R. §41.50
`
`I. Statement of the Case
`
`PPG Industries Ohio, Inc. ("Appellant"), the real party in interest (Appeal
`
`Brief ("Br."), page 2), seeks review under 35 U.S.C. § 134(a) of a final rejection
`
`dated 25 April 2012.
`
`The named inventors are: Thomas G. Rukavina and Robert Hunia.
`
`We have jurisdiction under 35 U.S.C. § 134(a).
`
`The application on appeal was filed in the USPTO on 14 December 2006.
`
`1 The subject matter involved in this appeal is related to an application involved in
`Appeal 2013-009229, also decided today. See 37 C.F.R. § 41.8(a)(2) with respect
`to a need for updating a related cases statement after an appeal brief is filed.
`
`
`
`Appeal 2013-006445
`Application 11/638,876
`
`Appellant claims priority of various applications, the earliest of which was
`
`filed on 1 September 2004.
`
`The application on appeal has been published as U.S. Patent Application
`
`Publication 2010/0124649 Al (20 May 2010).
`
`The Examiner relies on the following evidence.
`
`Chang et al.
`"Chang"
`Ammons
`"Ammons '529"
`Ammons
`"Ammons '070"
`Watanabe et al.
`"Watanabe"
`Bravet et al.
`"Bravet"
`
`U.S. Patent 3,764,457
`
`9 Oct. 1973
`
`U.S. Patent 4,101,529
`
`18 July 1978
`
`U.S. Patent 4,103,070
`
`25 July 1978
`
`U.S. Patent 4,632,877
`
`30 Dec. 1986
`
`U.S. Patent 4,652,494
`
`24 Mar. 1987
`
`Chang, Ammons '529, and Ammons '070 are assigned to PPG Indus. Inc.
`
`Appellant does not contest the prior art status of the Examiner's evidence, all
`
`of which is prior art under 35 U.S.C. § 102(b).
`
`Appellant relies on the following evidence.
`
`Rukavina
`Declaration
`
`Declaration under 37 C.F.R. § 1.132 of
`Thomas Rukavina
`
`Dated:
`29 Oct. 2010
`
`We mention the following additional evidence in this opinion.
`
`Wagner
`Kennedy
`
`U.S. Patent 3,124,605
`U.S. Patent 5,459,220
`
`10 Mar. 1964
`17 Oct. 1995
`
`2
`
`
`
`Appeal 2013-006445
`Application 11/638,876
`
`Swiderski et al.
`"Swiderski"
`
`ASTM Gardner
`Impact Test
`"ASTM"
`
`Synthesis and Properties of Urethane
`Acrylate Oligomers: Direct versus
`Reverse Addition, 43 IND. ENG. CHEM.
`RES., 6281-6284
`ASTM Designation D 5420-04, Standard
`Test Method for Impact Resistance of Flat,
`Rigid Plastic Specimen by Means of a
`Striker Impacted by a Falling Weight
`(Gardner Impact)
`
`2004
`
`1 Feb. 2004
`
`II. Claims on Appeal
`Claims 1-15,2 17, 19-23, and 26-37 are on appeal. Br., pages 2 and 25-33.
`III. The Rejections
`In the Answer, the Examiner has maintained the following rejections:
`Rejection 1:
`
`Claims 1-4, 7-15, 19-23, and 26-37 stand rejected as being unpatentable
`under 35 U.S.C. § 103 over Ammons '529 in view of Ammons '070 or Chang.
`Answer ("Ans."), page 3.
`Rejection 2:
`Claims 5 and 6 stand rejected under 35 U.S.C. § 103 as being unpatentable
`over Ammons '529 in view of Ammons '070 or Chang '457 further in view of
`Bravet '494. Ans., pages 4-5.
`
`2 We note that dependent claim 10 depends from claim 10. In the event of
`further prosecution, Appellant may wish to correct the reference to claim 10 in
`dependent claim 10 (cid:9) which probably should be claim 9.
`
`3
`
`
`
`Appeal 2013-006445
`Application 11/638,876
`
`Rejection 3:
`Claim 17 stands rejected under 35 U.S.C. § 103 as being unpatentable over
`Ammons '529 in view of Ammons '070 or Chang '457 further in view of
`Watanabe '877. Ans., page 5.
`
`IV. Analysis
`A. Rejection 1
`1. Claims Involved
`Claims 1-4, 7-15, 19-23, and 26-37 stand rejected as being unpatentable
`under 35 U.S.C. § 103 over Ammons '529 in view of Ammons '070 or Chang.
`In presenting the appeal as to Rejection 1, Appellant mentions claims 1, 26,
`and 35, but does not separately argue the patentability of claims 2-4, 7-15, 19-23,
`27-34, 36, or 37 apart from claim 1. Accordingly, except as may be discussed
`below, we decide Rejection 1 on the basis of independent claims 1, 26, and 35.
`Claims reproduced below are copied from the Claim Appendix of the
`Appeal Brief.
`
`Claim 1
`Independent claim 1 reads (matter in brackets and some indentation
`added):
`
`A polyurethane comprising a reaction product of
`components comprising:
`
`(a) about 1 equivalent of at least one polyisocyanate;
`
`(b) about 0.05 to about 0.9 equivalents of at least one
`branched polyol having 3 to 18 carbon atoms and at least
`3 hydroxyl groups; and
`
`4
`
`
`
`Appeal 2013-006445
`Application 11/638,876
`
`(c) about 0.1 to about 0.95 equivalents of sorbitol,
`mannitol, and/or at least one diol having 2 to 18 carbon atoms;
`
`wherein
`
`[1] the reaction product components comprise [i] less than
`about 5 weight percent of polyester polyol, polycarbonate
`polyol or polyether polyol and [ii] less than about 2 weight
`percent of amine curing agent on a basis of total weight of the
`components, and,
`
`[2] upon mixing, the reaction components are maintained at a
`reaction temperature of at least 110 9C for at least about
`10 minutes, degassed, and reacted at a temperature of at least
`about 100 9C for at least about 6 hours.
`
`Dependent claim 27 reads:
`
`Claim 27
`
`An article comprising the polyurethane of claim 1.
`
`Dependent claim 28 reads:
`
`Claim 28
`
`The article according to claim 27, wherein the article has a
`Gardner Impact strength of at least about 65 in-lb (7.3 Joules)
`according to ASTM-D 5420-04.
`
`Independent claim 26 reads (matter in brackets and some indentation
`
`Claim 26
`
`added):
`
`A polyurethane comprising a reaction product of
`components consisting of:
`
`5
`
`
`
`Appeal 2013-006445
`Application 11/638,876
`
`(a) about 1 equivalent of 4,4'-methylene-bis(cyclohexyl
`isocyanate);
`
`about 0.3 to about 0.5 equivalents of
`(b)
`trimethylolpropane; and
`
`about 0.3 to about 0.7 equivalents of
`(c)
`1,10[-]dodecanediol, 1,4-butanediol or 1,5-pentanediol
`
`wherein, upon mixing, the reaction components are
`maintained at a reaction temperature of at least 110°C for at
`least about 10 minutes, degassed, and reacted at a temperature
`of at least about 100°C for at least about 6 hours.
`
`Independent claim 35 reads (matter in brackets and some indentation
`
`Claim 35
`
`added):
`
`An article comprising a polyurethane comprising a
`reaction product of components comprising:
`
`(a) about 1 equivalent of at least one polyisocyanate;
`
`(b) about 0.1 to about 0.9 equivalents of at least one
`branched polyol having 3 to 18 carbon atoms and at least 3
`hydroxyl groups; and
`
`(c) about 0.1 to about 0.9 equivalents of sorbitol,
`mannitol, and/or at least one diol having 2 to 18 carbon atoms,
`
`wherein the reaction product components comprise less
`than about 5 weight percent of polyester polyol, polycarbonate
`polyol or polyether polyol, [and] less than about 2 weight
`
`6
`
`
`
`Appeal 2013-006445
`Application 11/638,876
`
`percent of amine curing agent on a basis of total weight of the
`components, and,
`
`wherein the article has a Gardner Impact strength of at
`least about 200 in-lb (23 Joules) according to ASTM-D
`5420-04 and
`
`wherein, upon mixing, the reaction components are
`maintained at a reaction temperature of at least 110°C for at
`least about 10 minutes, degassed, and reacted at a temperature
`of at least about 100°C for at least about 6 hours.
`
`2. Analysis (cid:9) Claim 1
`
`Example 1 of Ammons '529 (Table 1 in col. 9) describes a
`
`polyurethane formulation comprising the reaction product of:
`
`Component
`1,4-butanediol
`Trimethylolpropane
`HYLENE W
`4,4'-methylene-bis-
`(cyclohexyl
`isocyanate)
`(col. 8:58-60)
`
`Equivalents
`0.900
`0.100
`
`Weight Ratio
`23.02
`2.54
`
`1.00
`
`74.44
`
`An article made from the reaction product is described in Table 2 as having
`
`a Gardner Impact of 69 in/lbs.
`
`According to Ammons '529, the reaction product was made as follows.
`
`A series of polyurethanes were prepared with
`4,4'-methylene-bis-(cyclohexyl isocyanate) (HYLENE W),
`1,4-butanediol and trimethylolpropane. The procedure for
`preparing these polyurethanes was as follows:
`
`7
`
`
`
`Appeal 2013-006445
`Application 11/638,876
`
`HYLENE W was charged to a reaction kettle at room
`temperature which is equipped with a magnetic stirrer and
`heating mantle, and fitted to pull vacuum and break vacuum
`with a dry nitrogen source. A vacuum (i.e., 2 mm of Hg
`pressure) was pulled and broken with dry nitrogen to impose a
`nitrogen atmosphere in the reaction kettle.
`
`While stirring at 180° F. (82° C), a solution of
`trimethylolpropane in 1,4-butanediol heated to 185° F. (85° C.)
`under house vacuum was added slowly to the reaction kettle.
`The heat is turned off and stirring is continued until a clear
`mixture is obtained and then for another five minutes. If
`necessary, the kettle is removed from the heating mantle so that
`the temperature does not exceed 190° F. (88° C.).
`
`The reaction mixture is degassed for 10 minutes and then
`cast into casting cells which are preheated to 290° F. (143° C.).
`The cast formulation is then cured for 48 hours at an oven
`temperature of 290° F. (143° C.).
`
`Col. 8:58—col. 9:12.
`
`Example 13 of Ammons '529 appears to describe a polyurethane within the
`
`scope of dependent claim 28, which depends from claim 27, which in turn depends
`
`from independent claim 1. Example 1 describes the use of
`
`(1) 0.100 equivalents of trimethylolpropane (within the range of
`
`element (b) of claim 1);
`
`(2) 0.900 equivalents of 1,4-butanediol (within the range of
`
`element (c) of claim 1;
`
`3 Examples 1-3 are described in both the present and past tenses. Although it
`may not make any difference, we assume for the purpose of deciding this appeal
`that the examples are real as opposed to prophetic.
`
`8
`
`
`
`Appeal 2013-006445
`Application 11/638,876
`
`(3) 1.00 equivalents of HYLENE W (within the range of element (a)
`
`of claim 1; and
`
`(4) a Gardner Impact of 69 (within the range of dependent claim 28).
`
`The only apparent difference between the language of claim 1 and Examples
`
`1-3 is the 110°C for 10 minutes after mixing. Assuming that the method for
`
`making the polyurethane as set out in claim 1 differs from that described by
`
`Ammons '529, it is not apparent how the polyurethane described by Ammons '529
`
`differs from the polyurethane of claim 1.
`
`Claim 1 is drawn to a polyurethane (not a method of making a
`
`polyurethane). To define non-obvious subject matter over a prior art polyurethane
`
`there must be some patentable difference. In re Thorpe, 777 F.2d 695, 697 (Fed.
`
`Cir. 1985) (the patentability of a product does not depend on its method
`
`production (cid:9)
`
`if the product in a product-by-process claim is the same as or obvious
`
`from a product of the prior art, the claim is unpatentable even though the prior
`
`product was made by a different process); In re Spada, 911 F.2d 705, 708-9 (Fed.
`
`Cir. 1990) (where claimed composition and prior art composition appear to be the
`
`same, PTO may require applicant to prove there is a difference).
`
`Ammons '529 appears to anticipate claim 1. Anticipation is the epitome of
`
`obviousness. In re Pearson, 494 F.2d 1399, 1402 (CCPA 1974); In re May, 574
`
`F.2d 1082, 1089 (CCPA 1978).
`
`The rejection of claim 1, and claims dependent thereon, is affirmed.
`
`3. Analysis (cid:9) Claim 26
`
`Example 2 of Ammons '529 (Table 1 in col. 9) describes a
`
`polyurethane formulation comprising the reaction product of:
`
`9
`
`
`
`Appeal 2013-006445
`Application 11/638,876
`
`Component
`1,4-butanediol
`Trimethylolpropane
`HYLENE W
`4,4'-methylene-bis-
`(cyclohexyl
`isocyanate)
`(col. 8:58-60)
`
`Equivalents
`0.700
`0.300
`
`Weight Ratio
`17.84
`7.98
`
`1.00
`
`74.18
`
`An article made from the reaction product is described as having a Gardner
`
`Impact of 65 in-lbs.
`
`On the basis of (1) data in the Specification, i.e., Example B (comparatives),
`
`including Examples B1 through B4 (TT 635 through 643, pages 163-165) and (2) a
`
`Declaration of inventor Rukavina dated 29 October 2010 (see the Evidence
`
`Appendix to the Appeal Brief), Appellant maintains that the products described by
`
`Ammons '529 and that claimed are different. Br., page 8 (last paragraph) through
`
`page 12, first paragraph.
`
`As applied to claim 26, the most relevant comparison is that shown in
`
`Examples B3 and B4,4 reproduced as follows:
`
`Example B3
`
`[00640] The following components 17.9 grams of 1,4[-]butanediol,
`7.4 grams of trimethylolpropane and 74.47 grams of DESMODUR W
`containing 20% trans-trans isomer of 4,4'-methylene-bis-(cyclohexyl
`isocyanate) were charged into a glass kettle fitted with a thermometer
`and overhead stirrer. The charge was brought up to a temperature of
`110°C to 120°C while mixing and applying vacuum (2 mm mercury
`
`4 Examples B1 and B2 describe the use of 1,5-pentanediol, a diol not described in
`Example 2 of Ammons '529.
`
`10
`
`
`
`Appeal 2013-006445
`Application 11/638,876
`
`(266 Pa)) to remove bubbles. The batch was mixed for 10 to 20
`minutes after reaching 110°C to 120°C.
`
`[00641] The batch was cast into a heated glass mold that has been
`preheated in an oven at 140°C. The polymer was cured for 48 hours
`at 140°C without catalyst. After curing, the mold was removed from
`the oven and allowed to cool to room temperature. The plastic sheet
`was removed from the glass mold and cut into 2" x 2" x 'A" (5.1 cm x
`5.1 cm x 0.3 cm) samples for Gardner Impact testing. The initial
`Gardner impact strength averaged 180 in-lbs (21 J).
`
`Example B4
`
`[00642] The following components 17.9 grams of 1,4 butanediol,
`7.4 grams of trimethylolpropane and 74.47 grams of DESMODUR W
`containing 20% trans-trans isomer of 4,4'-methylene-bis-(cyclohexyl
`isocyanate) were charged into a glass kettle fitted with a thermometer
`and overhead stirrer. The charge was brought up to a temperature of
`80°C to 90°C while mixing and applying vacuum (2 mm mercury
`(266 Pa)) to remove bubbles. The batch was mixed for 1 hour to
`2 hours after reaching 80°C to 90°C until clear.
`
`[00643] The batch was cast into a heated glass mold that has been
`preheated in an oven at 140°C. The polymer was cured for 48 hours
`at 140°C without catalyst. After curing, the mold was removed from
`the oven and allowed to cool to room temperature. The plastic sheet
`was removed from the glass mold and cut into 2" x 2" x 'A" (5.1 cm x
`5.1 cm x 0.3 cm) samples for Gardner Impact testing. The initial
`Gardner impact strength averaged 10-15 in-lbs (1 J-1.5 J).
`
`The Examiner declined to give controlling weight to Examples B3 and B4.
`
`The Examiner found that the results reported in those examples "are not
`
`considered to be unexpected." Ans., page 7.
`
`We do not reach the Examiner's finding.
`
`11
`
`
`
`Appeal 2013-006445
`Application 11/638,876
`
`Instead, we decline to credit the Examples B3 and B4 evidence on other
`
`grounds.
`
`Precedent teaches that a negative result of prior art compositions obtained by
`
`a party having an interest can raise credibility doubts as to the result reported. See
`
`In re Reid, 179 F.2d 998, 1002 (CCPA 1950) ("in no way reflecting on the good
`
`faith of the makers of the affidavits . . . the failures of experimenters who have no
`
`interest in succeeding should not be accorded great weight") and In re Michalek,
`
`162 F.2d 229, 232 (CCPA 1947) (same), and compare In re Carroll, 601 F.2d
`
`1184, 1886 (CCPA 1979) ("[u]nlike the usual expert opinion, prepared either by
`
`the applicant himself, or on his behalf after the controversy has arisen, Dr.
`
`Merkal's opinion was formulated prior to the making of the claimed invention. It
`
`was therefore completely untainted by either hindsight or bias.").
`
`Example B4 reports an initial Gardner Impact of 10-15 in-lbs. Spec. 11643.
`
`On the other hand, Ammons '529 reports a Gardner Impact of 65 in-lbs. Table 1,
`
`Example 2. Because of the difference in Gardner Impact data, the Example B4
`
`results will not be credited as showing a prior art result and confirms the truism
`
`of Reid and Michalek. Unexplained on the record is why Ammons '529 reports a
`
`Gardner Impact of 65 in-lbs while Example B4 reports a value of only 10-15
`
`in-lbs. Example B4 is not deemed to be representative of the prior art.
`
`We also note that like claim 1, claim 26 does not contain a Gardner Impact
`
`limitation.
`
`The rejection of claim 26 is affirmed.
`
`12
`
`
`
`Appeal 2013-006445
`Application 11/638,876
`
`4. Claim 35
`
`In presenting the appeal, Appellant argues that when temperatures "[a]bove
`
`110°C, the initial Gardner Impact strengths for polymers of this invention are
`
`higher initially, and show less variation in impact strengths from batch to batch
`
`when processed above 1109C." Br., page 9 (italics added).
`
`The argument is not relevant as to claim 1 (no Gardner Impact strength
`
`limitation) and claim 28 (Gardner Impact strength of at least about 65 in-lbs, met
`
`by the Gardner Impact strength of 69 in-lbs described by Ammons '529).
`
`However, the argument is relevant to claim 35.
`
`Claim 35 calls for an article having "a Gardner Impact strength of at least
`
`about 200 in-lb (23 Joules) according to ASTM-D 5420-04."
`
`Nothing in the record has been called to our attention indicating where the
`
`prior art describes a Gardner Impact strength of at least about 200 in-lbs. Nor has
`
`the Examiner addressed the Gardner Impact strength limitation of claim 35 (cid:9)
`
`a
`
`strength considerably higher than any strength described in the prior art before us.
`
`On the record before us, we have no basis for finding that a Gardner Impact
`
`strength (regardless of when measured time-wise after an article is made) of at
`
`least above 200 in-lbs would have been predictable.5
`
`Accordingly, we will reverse the prior art rejection of claim 35.
`
`However, in the context of this case and on the record before us, we hold
`
`that the limitation "Gardner Impact strength" as set out in both claims 28 and 35 is
`
`indefinite. Eliminating indefiniteness during prosecution is desirable. In re Zletz,
`
`5 The Rukavina Declaration seems to focus on a process supposedly leading to a
`higher initial hardness, but does not discuss long-term hardening
`
`13
`
`
`
`Appeal 2013-006445
`Application 11/638,876
`
`893 F.2d 319, 322 (Fed. Cir. 1989) (an essential purpose of patent examination is
`
`to fashion claims that are precise, clear, correct, and unambiguous; only in this way
`
`can uncertainties of claim scope by removed, as much as possible, during the
`
`administrative process).
`
`A review of the Specification will confirm that Gardner Impact strengths are
`
`reported when measured at five different times as a function of time after an article
`
`is described as having been made. The following table identifies representative
`
`paragraphs of the Specification where Gardner Impact strength is reported based
`
`on times after an article is described as having been made.
`
`Gardner
`Impact
`strength
`
`0009
`0410
`0414
`0697
`0707
`0709
`0721
`
`Aged
`Gardner
`Impact
`strength
`0079 Fig. 15
`0415 Fig. 14
`0416 Fig. 15
`
`Initial
`Gardner
`Impact
`strength
`0637
`0639
`0641
`0643
`0813
`
`Mean
`Gardner
`Impact
`strength
`0694
`0667
`0679
`0681
`0699
`0703
`0717
`
`Average
`Gardner
`Impact
`strength
`0765
`0766
`
`The ASTM test used to determine Gardner Impact strength is set out in the
`
`Specification. See TT 428, 601, and 804. We acknowledge with appreciation
`
`Appellant having made the ASTM test of record. Often we are not given access to
`
`copies of ASTM tests. Our study of the ASTM test does not indicate when a
`
`Gardner Impact test is to be made as a function of time after a product is made.
`
`14
`
`
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`Appeal 2013-006445
`Application 11/638,876
`
`Rather, the ASTM test sets out how the test is to be run apart from the time when
`
`an article was made.
`
`Reports of various Gardner Impact strengths said to have been measured at
`
`different times after an article is made and the absence of a specific time of
`
`measurement in claim 35 (as well as claim 28) raises issues similar to those raised
`
`with respect to molecular weight in Nautilus, Inc. v. Biosig Instruments, Inc.,
`
`134 S. Ct. 2120 (2014). The claim fails to set out when Gardner Impact strength is
`
`to be measured vis-à-vis the time an article is made.
`
`Moreover, in the event of further prosecution, the precise meaning of the
`
`term "initial" may need to be clarified.
`
`In the event indefiniteness is overcome in future prosecution, nothing in this
`
`opinion should be viewed as precluding the Examiner from again making a § 103
`
`rejection of claim 35 based on additional prior art. We have not undertaken a
`
`study to determine whether a Gardner Impact strength of at least 200 in-lbs is
`
`known in the prior art.
`
`We recognize that our reversal of the prior art rejection of claim 35 and our
`
`new rejection of claims 28 and 35 may be viewed as possibly inconsistent with
`
`applicable precedent. Generally, the subject matter of a claim having an indefinite
`
`limitation does not become obvious or non-obvious due to an indefinite limitation.
`
`In re Wilson, 424 F.2d 1382, 1385 (CCPA 1970) (if a word in a claim has no
`
`meaning, the claimed subject matter does not become obvious (cid:9)
`
`the claim becomes
`
`indefinite); In re Steele, 305 F.2d 859, 863 (CCPA 1962). No prior art called to
`
`our attention describes a Gardner Impact strength of at least about 200 in-lbs
`
`regardless of when measured time-wise. Nevertheless, one skilled in the art would
`
`15
`
`
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`Appeal 2013-006445
`Application 11/638,876
`
`not know whether claims 28 and 35 are infringed because those claims fail to state
`
`when strength is measured time wise and strength appears to be a function, inter
`
`alia, of the time after an article is made. Clarification in each of claims 28 and 35
`
`as to when strength is measured would overcome our concern and eliminate
`
`possible indefinite issues post-issuance of a patent.
`
`B. Rejection 2
`
`Claims 5 and 6 stand rejected under 35 U.S.C. § 103 as being unpatentable
`
`over Ammons '529 in view of Ammons '070 or Chang '457 further in view of
`
`Bravet '494. Ans., pages 4-5.
`
`Claim 2 reads:
`
`The polyurethane according to claim 1 [reproduced above],
`wherein the polyisocyanate is selected from the group
`consisting of diisocyanates, triisocyanates, dimers, trimers and
`mixtures thereof
`
`Claim 5 reads:
`
`The polyurethane according to claim 2, wherein the
`polyisocyanate is a trimer of hexamethylene diisocyanate.
`
`The separate patentability of claim 6 has not been argued apart from claim 5.
`
`Accordingly, we decide Rejection 2 on the basis of claim 5.
`
`Ammons '529 has been discussed above in connection with Rejection 1.
`
`Claim 5 differs from Ammons '529 in that Ammons '529 does not describe
`
`the use of trimers and/or dimers of hexamethylene diisocyanates. Ans., page 5.
`
`16
`
`
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`Appeal 2013-006445
`Application 11/638,876
`
`To overcome the difference, the Examiner turned to Bravet describing the
`
`well-known use of isocyanurates and biurets (trimers)6 for making polyurethane
`
`elastomers. Col. 6:28-34.
`
`Appellant's attack on the use of Bravet repeats the arguments with respect to
`
`claim 1 and Rejection 1. In addition, Bravet is said not to cure the deficiencies of
`
`Ammons '529 because it describes the use of trimers and dimers in combination
`
`with a polyether or polyester. Br., page 17. Appellant's argument overlooks the
`
`reason why the Examiner cited Bravet (cid:9)
`
`to show that Appellant's isocyanate trimer
`
`and dimers are known to be used to make polyurethane elastomers. Ans., page 8.
`
`6 The idealized structure for the biuret of hexamethylene diisocyanate is:
`
`OCN (CH2)6
`
`H
`
`if
`c— N— (C132)6 — NCO
`
`C N (042)6 —NCO
`
`0 H
`The idealized structure of the isocyanurate of hexamethylene diisocyanate is:
`
`NC()
`
`(CH7)6
`N
`
`0 =C (cid:9)
`
`OCN — (012),5 (cid:9)
`
`(C1-12)6 — NCO
`
`co=
`N N
`C (cid:9)
`O
`
`See Kennedy, col. 4:3-25 and Wagner, claims 3 and 5.
`
`17
`
`
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`Appeal 2013-006445
`Application 11/638,876
`
`Appellant is using a known isocyanate trimer (Bravet) for its intended
`
`purpose (Ammons '529).7
`
`Rejection 2 is affirmed.
`
`C. Rejection 3
`
`Claim 17 stands rejected under 35 U.S.C. § 103 as being unpatentable over
`
`Ammons '529 in view of Ammons '070 or Chang '457 further in view of
`
`Watanabe '877. Ans., page 5.
`
`Claim 17 reads:
`
`The polyurethane according to claim 1 [reproduced above],
`wherein the reaction product components further comprise one
`or more . . . hydroxy functional acrylates, hydroxy functional
`methacrylates . . . and mixtures thereof.
`
`Claim 17 differs from Ammons '529 in that Ammons '529 does not
`
`describe the use of hydroxy functional acrylates or hydroxy functional
`
`methacrylates as a reaction component. Ans., page 5.
`
`To overcome the difference, the Examiner turned to Watanabe. Ans.,
`
`pages 5-6.
`
`With reference to Figures lA and 1B, reproduced below, Watanabe
`
`teaches the following.
`
`We have not overlooked that portion of Ammons '529 indicating that use of
`"linear aliphatic polyisocyanates [are said to] have poorer heat distortion
`temperatures than products of the present invention" which use "cycloaliphatic
`polyisocyanates." Col. 2:13-16. Appellant does not rely on this portion of
`Ammons '529 in presenting its appeal. Nor could it, given that claims 1, 2, and 5
`do not claim any particular degree of heat distortion.
`
`18
`
`
`
`Appeal 2013-006445
`Application 11/638,876
`
`FIGURE 1 A
`
`FIGURE
`
`1 a
`.......
`
`3
`
`Figs. 1A and 1B depict a polyurethane type resin sheet.
`
`FIGS. lA and 1B are the schematic cross-sectional views
`showing one example of the polyurethane type resin sheet
`having the continuous layer, in which FIG. lA is a cross-
`section of a single sheet, one side of which has been reformed.
`Such surface reformation can be realized by, for example,
`impregnating a polymerizable compound into one side (2) of a
`polyurethane type thermoplastic resin sheet (1), and then
`subjecting the impregnated polymerizable compound [e.g.,
`acrylic acid and its esters and methacrylic acid and its esters
`(col. 8:50-51)] to polymerization. The other side (3) is not
`reformed. Since the impregnated polymerizable compound
`penetrates into the polyurethane type thermoplastic resin sheet
`(1) to a certain depth from the surface (2) on one side, there can
`be formed a reformed polyurethane type thermoplastic resin
`layer of a certain thickness including the surface (2). This
`reformed polyurethane type thermoplastic resin layer is
`continuous with a non-reformed polyurethane type
`thermoplastic resin layer. The polyurethane type resin sheet
`shown in FIG. lA will hereinafter be referred to as "sheet X".
`FIG. 1B is a schematic cross-section showing another example
`of the polyurethane type resin sheet having a continuous layer.
`This sheet is obtained by laminating the sheet X (4) and a
`polyurethane type thermoplastic resin sheet (5). (cid:9)
`This
`polyurethane type resin sheet can also be manufactured by
`laminating, in advance, two sheets of polyurethane type
`thermoplastic resin sheets, and then reforming one side thereof.
`It should be understood, however, that distinction between
`"continuation" and "non-continuation" is made in relation to
`
`19
`
`
`
`Appeal 2013-006445
`Application 11/638,876
`
`the reformed layer and the non-reformed layer, hence the sheet
`shown in FIG. 1B is a kind of the polyurethane type resin sheet
`having the continuous layer.
`
`Watanabe, col. 5:9-41.
`
`Appellant maintains that Watanabe does not describe mixing the
`
`polymerizable compound as a component to make the polyurethane. Br., page 22.
`
`The Examiner agrees, but held that it would have been obvious to
`
`incorporate the polymerization compound into the reaction mixture. Ans., page 6.
`
`In other words, the Examiner found that incorporating the polymerizable
`
`compound into the reaction mixture would have been an obvious way of
`
`accomplishing the objective of Watanabe (cid:9)
`
`providing unsaturated groups that are
`
`incorporated as side chains to the polyurethane, which can later be cross-linked.
`
`We agree with the Examiner's analysis, but also refer to Swiderski
`
`describing a sequential method of making a urethane-acrylate oligomer by mixing
`
`an isocyanate ("D") with a polyol ("P") to make what Swiderski refers to as
`
`"DPD" followed by addition of an acrylate ("A") to make what Swiderski refers to
`
`as "ADPDA. Page 6281, col. 1. Swiderski confirms that the acrylate or
`
`methacylate may be added to a mixture prior to molding an article.
`
`20
`
`
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`Appeal 2013-006445
`Application 11/638,876
`
`We also agree with the Examiner that Appellant has not addressed the
`
`Examiner's precise rationale for relying on Watanabe. Ans., page 9.8
`Rejection 3 is affirmed.
`
`V. Decision
`Upon consideration of the appeal, and for the reasons given herein, it is
`ORDERED that Rejection 1 of claims 1-4, 7-15, 19-23, 26-34, 36,
`
`and 37 is affirmed.
`FURTHER ORDERED that Rejection 1 of claim 35 is reversed.
`FURTHER ORDERED that Rejection 2 of claims 5 and 6 is affirmed.
`FURTHER ORDERED that Rejection 3 of claim 17 is affirmed.
`FURTHER ORDERED that claims 28 and 35 are newly rejected
`
`under 35 U.S.C. § 112 as being indefinite.
`FURTHER ORDERED that because our affirmance rationale differs
`somewhat from that of the Examiner and because we rely on prior art not relied
`upon by the Examiner, our affirmance of the prior art rejections is designated as a
`new rejection. 37 C.F.R. § 41.50(b).
`FURTHER ORDERED that our decision is not a final agency action.
`
`8 Appellant attempts in the Reply Brief to answer the Examiner's rationale. Reply
`Brief, page 9. However, the Examiner's rationale in the Answer, was previously
`made in the Final Rejection at pages 7-8. The argument presented in the Reply
`Brief should have been presented in the Brief so that it might have been addressed
`by the Examiner in the Answer. We decline to consider in the first instance the
`new argument raised in the Reply Brief
`
`21
`
`
`
`Appeal 2013-006445
`Application 11/638,876
`
`FURTHER ORDERED that within two (2) months from the date of
`
`our decision, appellant may further prosecute the application on appeal by
`
`exercising on of the two following options:
`
`Option 1: Request that prosecution be reopened by submitting
`
`an amendment or evidence or both. 37 C.F.R. § 41.50(b)(1).
`
`Option 2: Request rehearing on the record presently before the
`
`Board. 37 C.F.R. § 41.50(b)(2).
`
`FURTHER ORDERED that no time period for taking any subsequent
`
`action in connection with this appeal may be extended under 37 C.F.R.
`
`§ 1.136(a)(1)(iv).
`
`bar
`
`AFFIRMED-IN-PART
`(New Rejection under 37 C.F.R. § 41.50(b))
`
`22
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