Ex Parte Ambrose et al

Patent Trial and Appeal Board

Oct 31, 2012

12056306 (P.T.A.B. Oct. 31, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
12/056,306 03/27/2008 Ronald R. Ambrose 075380A1 9347
24959 7590 10/31/2012
PPG INDUSTRIES INC
INTELLECTUAL PROPERTY DEPT
ONE PPG PLACE
PITTSBURGH, PA 15272
EXAMINER
LEONARD, MICHAEL L
ART UNIT PAPER NUMBER
1763
MAIL DATE DELIVERY MODE
10/31/2012 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)

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________

Ex parte RONALD R. AMBROSE,
ANTHONY M. CHASSER, MARY ANN FUHRY,
HONGYING ZHOU, GREGORY J. MCCOLLUM,
and IRINA G. SCHWENDEMAN
________________

Appeal 2011-009842
Application 12/056,306
Technology Center 1700
________________

Before PETER F. KRATZ, LINDA M. GAUDETTE, and
GEORGE C. BEST, Administrative Patent Judges.

BEST, Administrative Patent Judge.

DECISION ON APPEAL
The Examiner finally rejected claims 16-18 of Application 12/056,306
under 35 U.S.C. § 103(a). Appellants seek reversal of these rejections
pursuant to 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6(b).
For the reasons set forth below, we AFFIRM and designate a NEW
GROUND OF REJECTION.
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BACKGROUND
The ’306 application describes processes for the preparation of
polycarbodiimides and their uses in water-based compositions for coating
various articles (Spec. 1). The claims on appeal are directed to a particular
genus of polycarbodiimide compounds.
Claim 16 is the only independent claim remaining in the ’306
application and is reproduced below:
16. A polycarbodiimide having a structural formula selected
from (a) or (b) including mixtures thereof:

where e is an integer of from 2 to 20; f and g are each at least 1,
and f+g is an integer up to 20; E is a radical selected from

where R2 and R3 are hydrocarbon radicals; R4 is hydrogen or a
hydrocarbon radical; Y is a radical of the structure:

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where R is C1 to C4 alkyl; a is 5 to 50 and b is 0 to 35, and when
b is present the mole ratio of a to b is at least 1:1; R1 is
hydrogen or a hydrocarbon radical and D is a divalent linking
group or a chemical bond and Y is derived from a polyether
amine having a molecular weight greater than 500.
(App. Br. 8).
REJECTIONS
The Examiner finally rejected claims 16-18 under 35 U.S.C. § 103(a)
as obvious over the U.S. Patent No. 6,063,890 (“Tye,” issued May 16, 2000)
in view of U.S. Patent Application Publication No. 2004/0260013 A1
(“Richards,” Dec. 23, 2004).
DISCUSSION
Appellants challenge the Examiner’s rejection of the claims,
advancing two arguments: (1) the Examiner did not properly establish a
prima facie case that claim 18 is obvious over the combination of Tye and
Richards (App. Br. 3-4), and (2) the Examiner erred in concluding that the
proffered evidence of unexpected results did not rebut the prima facie case
of obviousness (id. at 4-6). We address these arguments seriatim.
First, Appellants argue that the Examiner failed to establish a prima
facie case of obviousness with respect to claim 18 (App. Br. 3-4). Although
Appellants concede that the Examiner has established a prima facie case
with respect to claims 16 and 17 (id. at 3), they argue that the Examiner has
not properly demonstrated that the combination of Tye and Richards
describe or suggest the use of C1-C4 diols as chain extenders in the central
portion of the claimed polycarbodiimides (id. at 3-4). In an Advisory Action
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responding to Appellants’ Amendment After Final Rejection, the Examiner
asserted that Richards describes or suggests the use of a C1-C4 diol as a
chain extender (see October 29, 2010 Advisory Action 2). The Examiner
maintains this position in the Examiner’s Answer (Ans. 5-6).
Richards describes the use of several different diols as chain extenders
in the formation of a polyurethane from isocyanate compounds (Richards
¶ [0091]). One of the diols disclosed in this portion of Richards is 1,4-
butanediol (id.). Appellants argue that a person of ordinary skill in the art
would not have had any particular reason to select 1,4-butanediol from the
others disclosed by Richards and to use it in the formation of an isocyanate-
prepolymer material (App. Br. 4). The Examiner, however, explained that
“[a] person of ordinary skill in the art selects isocyanate-reactive
components based on [the] desired final polyurethane properties” (Ans. 6).
Although Appellants complain that this assertion is not supported by any
evidence (App. Br. 4), the cited portion of Richards supports the Examiner’s
contention. In discussing the use of ethylene oxide copolymers as chain-
extending compounds, Richards describes variation of the ratio of ethylene
oxide units to other alkylene glycol units depending on the degree of
hydrophobicity desired in the polyurethane backbone (Richards ¶ [0091]).
For the foregoing reasons, we conclude that the Examiner’s finding
that Richards describes or suggests the use of 1,4-butanediol in the manner
required by claim 18 is supported by the evidence. We therefore find that the
Examiner properly established the existence of a prima facie case that claim
18 of the ’306 application would have been obvious over the combination of
Tye and Richards.
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Second, Appellants argue that “the working examples shown in
[Appellants’] application effectively rebut the prima facie showing” of
obviousness (App. Br. 4 (italics in original)).
The Examiner bears the initial burden, on review of the prior art or on
any other ground, of presenting a prima facie case of unpatentability. In re
Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). If the Examiner meets that
burden, the applicant bears the burden of coming forward with evidence or
argument. Id.
One way for a patent applicant to rebut a prima facie case of
obviousness is to make a showing of ‘unexpected results,’ i.e.,
to show that the claimed invention exhibits some superior
property or advantage that a person of ordinary skill in the
relevant art would have found surprising or unexpected.

In re Soni, 54 F.3d 746, 750 (Fed. Cir. 1995) (italics in original). Once a
showing of unexpected results has been made, the presumption of
unpatentability created by the Examiner’s identification of a prima facie case
dissolves, and all of the evidence must be weighed together to reach a final
conclusion regarding the obviousness of the claim in question. Oetiker, 977
F.2d at 1445. “[P]atentability is [then] determined on the totality of the
record, by a preponderance of evidence with due consideration to
persuasiveness of argument.” Id.
In this case, Appellants argue that the ’306 application’s working
examples demonstrate the importance of using chain-terminating agents
“derived from a poly(ethylene oxide [EO])/poly(propylene oxide [PO])
amine having a molecular weight greater than 500 and a controlled ratio of
EO/PO of at least 1:1,” as required by claims 16-18 (App. Br. 5). Appellants
contend that the working examples demonstrate that the use of the claimed
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chain-terminating agents yields superior results compared to chain-
terminating agents that are outside the claims’ scope (id.).
The Examiner found that Appellants had not established the existence
of unexpected results (Ans. 7-8). See In re Mayne, 104 F.3d 1339, 1343
(Fed. Cir. 1997) (“An examination for unexpected results is a factual,
evidentiary inquiry . . . .”). Unexpected results must be established by factual
evidence. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997). Neither
attorney argument nor conclusory statements in the specification suffices. Id.
(citing In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1994)). For the
reasons set forth below, we agree with the Examiner’s finding that
Appellants have not demonstrated the existence of unexpected results.
First, Appellants have not presented any evidence that a person of
ordinary skill in the art would have considered the results described in the
working examples to be unexpected or surprising. The ’306 application’s
Specification does not describe the results as unexpected or surprising (Spec.
generally). Appellants do not point us to any declaration or affidavit that
makes such an assertion (App. Br. generally).
Based upon our review of the record on appeal, the first assertion that
the results are surprising appears in an Amendment made after the
Examiner’s final rejection (October 19, 2010 Amendment 4). The
Amendment describes the results as showing “somewhat unexpected
stability in aqueous medium” (id.). This characterization is repeated in the
Appeal Brief (App. Br. 3). This attorney argument is not sufficient to
establish that the observed results would have been unexpected to a person
of ordinary skill in the art. See Geisler, 116 F.3d at 1470; In re Wood, 582
F.2d 638, 642 (CCPA 1978) (“Mere lawyer’s arguments and conclusory
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statements in the specification, unsupported by objective evidence, are
insufficient to establish unexpected results.”).
The facts in this appeal are on all fours with the facts in Geisler. In
that case, the Federal Circuit explained that
there is nothing in the application, or in any evidentiary
submission made to the examiner, to support Geisler’s claim
that those test results were unexpected in light of the state of
scientific knowledge at the time regarding coatings of that
composition.
It is not enough for Geisler to suggest, as he does, that as a
matter of “common sense” a thicker coating would be expected
to wear better than a thin one. An assertion of what seems to
follow from common experience is just attorney argument and
not the kind of factual evidence that is required to rebut a prima
facie case of obviousness. . . .
It is also not enough for Geisler to argue that his test results are
contrary to the assumptions underlying the critical passage in
Zehender. The Zehender inventors may have assumed that a
protective layer of less than about 100 Angstroms would not
provide sufficient protection. Such an assumption is contrary to
Geisler’s evidence that a coating 50 Angstroms thick offers
better wear resistance than a coating 100 Angstroms thick, at
least as determined by the “brush tests” that Geisler conducted
on the coatings. But the fact that one group of inventors 15
years earlier may have made an assumption that was contrary
to Geisler’s test results does not prove that Geisler’s results
would be regarded as unexpected by one of ordinary skill in the
art at the time of Geisler’s application. Geisler did not offer
evidence of unexpected results in the form of a statement to that
effect from the inventors or any third party, or any objective
evidence from a respected source-the kind of evidence that we
have previously required to rebut a prima facie case.
Geisler, 116 F.3d at 1470 (emphasis added).
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Here, as in Geisler, Appellants do not point to any facts in the
Specification or in an affidavit or declaration that support their contention
that a person of ordinary skill in the art would have found the data reported
in the specification to be surprising. Appellants, therefore, have failed as a
matter of law to establish the existence of unexpected results.
Second, the Examiner’s determination that the results were not, in
fact, unexpected is supported by the record.
The Examiner determined that the increased stability of an aqueous
dispersion of the claimed polymers relative to polycarbodiimides made with
different terminal groups would not have been unexpected (Ans. 7-8). The
Examiner concluded that “[Appellants’] comparable data fails to overcome
the prima facie case of obviousness over the combination of references
because a higher ratio of EO:PO results in a more hydrophilic polyol which
would produce a more hydrophilic urethane and/or carbodiimide and would
not unexpectedly be more stable in an aqueous environment” (Ans. 8).
Appellants argue that the Examiner’s position is based upon speculation
(App. Br. 6).
The Examiner’s position, however, is not based upon speculation. It
was known in the art that ethylene glycol-based polyethers have greater
water solubility than other polyalkylene glycols. One of the cited references
demonstrates this knowledge by explaining that ethylene oxide units are to
be minimized in order to create a more hydrophobic polymer:
The polyalkylene glycol may be a random or block (co)polymer
containing repeat ethyleneoxy, propyleneoxy or butyleneoxy
groups, including mixtures thereof. As noted hereinbefore, it is
preferred that the polyurethane backbone is more hydrophobic
than the lateral or terminal chains (when present).
Consequently, in the case of copolymers involving ethylene
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oxide repeat units in component (d) it is preferred that the
amount of ethylene oxide in component d is not greater than
40%, more preferably not greater than 20% and especially not
greater than 10% by weight of the copolymer. It is particularly
preferred that polyalkylene glycol is free from ethyleneoxide
repeat units.
(Richards ¶ [0091]).
Thus, the Examiner’s finding that the results reported in the ’306
application’s Specification would not have been surprising to a person of
ordinary skill in the art is supported by the evidence.
CONCLUSION
For the reasons set forth above, we affirm the Examiner’s rejection of
claims 16-18 of the ’306 application as obvious over the combination of Tye
and Richards. Because our analysis relies upon facts and logic that the
Examiner did not use, we designate this as a new ground of rejection. See In
re Stepan Co., 660 F.3d 1341, 1344-45 (Fed. Cir. 2011).

This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b) (effective September 13, 2004, 69 Fed. Reg. 49960-01
(August 12, 2004), 1286 Off. Gaz. Pat. Office 21 (September 7, 2004)). 37
C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to this
paragraph shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that the appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
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(1) Reopen prosecution. Submit an appropriate amendment
of the claims so rejected or new evidence relating to the claims
so rejected, or both, and have the matter reconsidered by the
examiner, in which event the proceeding will be remanded to
the examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record. . . .

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, NEW GROUND OF REJECTION ENTERED
UNDER 37 C.F.R. § 41.50(b)

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