Ex Parte Dorr et al

Patent Trial and Appeal Board

Sep 25, 2012

11796388 (P.T.A.B. Sep. 25, 2012)

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.
11/796,388 04/27/2007 Sebastian Dorr PO8945/BMS061055 4840
23416 7590 09/26/2012
CONNOLLY BOVE LODGE & HUTZ, LLP
P O BOX 2207
WILMINGTON, DE 19899
EXAMINER
COONEY, JOHN M
ART UNIT PAPER NUMBER
1765
MAIL DATE DELIVERY MODE
09/26/2012 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 SEBASTIAN DORR, THORSTEN RISCHE, THOMAS FELLER,
MICHAEL HECKES, HOLGER CASSELMANN, and
THOMAS MICHAELIS
____________

Appeal 2011-008135
Application 11/796,388
Technology Center 1700
____________

Before ROMULO H. DELMENDO, MARK NAGUMO, and
DEBORAH KATZ, Administrative Patent Judges.

DELMENDO, Administrative Patent Judge

DECISION ON APPEAL

Sebastian Dorr, et al., the Appellants,1 seek our review under 35
U.S.C. § 134(a) of a final rejection of claims 13-24.2 We have jurisdiction
under 35 U.S.C. § 6(b). We affirm.

1 The Appellants identify the real party in interest as “Bayer MaterialScience
AG.” Appeal Brief filed November 8, 2010 (“Br.”) at 1.
2 See Br. 2; Advisory Action mailed November 4, 2010.
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Application 11/796,388

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STATEMENT OF THE CASE

The invention relates to a microporous coating that may be applied on
a wide variety of carrier materials (e.g., flat textile structures). Spec. 1, ll.
11-12 and 29, l. 30 to 30, l. 12.
Representative claim 13 is reproduced below:
13. A process for the production of microporous
coatings, in which a composition comprising an aqueous,
anionically hydrophilised polyurethane dispersion (I) and a
cationic coagulant (II) containing a cationically hydrophilised
polyurethane polyurea dispersion is foamed and dried.

The Examiner rejected the claims as follows:
I. Claims 13, 16, and 19-24 under 35 U.S.C. § 102(b) as
anticipated by Dahmen;3 and
II. Claims 14, 15, 17, 18, 20, and 23 under 35 U.S.C. § 103(a) as
unpatentable over Dahmen in view of Langel.4
In addition, the Examiner provisionally rejected the claims as follows:
III. Claims 13-24 under the judicially created doctrine of
obviousness-type double patenting over claims 1-12 of
copending Application 11/732,363;

3 U.S. Patent 4,774,131 issued September 27, 1988.
4 U.S. Patent 6,451,963 B1 issued September 17, 2002.
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IV. Claims 13-24 under the judicially created doctrine of
obviousness-type double patenting over claims 1-19 of
copending Application 12/245,286; and
V. Claims 13-24 under the judicially-created doctrine of
obviousness-type double patenting over claims 12-22 of
copending Application 11/732,575.
Examiner’s Answer mailed January 13, 2011 (“Ans.”) at 3-7.

DISCUSSION

III–V.
As noted by the Examiner, Ans. 9, the Appellants have not contested
Rejections III–V in their Appeal Brief. Accordingly, we summarily affirm
Rejections III–V.
I.
While referring to claims 13 and 21, the Appellants have not offered
any argument in support of the separate patentability of any other claim. Br.
3-4. Therefore, pursuant to 37 C.F.R. § 41.37(c)(1)(vii), we select claim 13
as representative of the claims subject to Rejection I and confine our
discussion to this selected claim. Claims 16 and 19-24 stand or fall with
claim 13.
The Examiner found that Dahmen describes every limitation of claim
13. Ans. 3, 7-8.
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The Appellants contend that the process of claim 13 differs from
Dahmen’s process because the claimed process calls for foaming a single
composition comprising the recited components (I) and (II), whereas
“Dahmen discloses a process that involves coating a textile material with
two oppositely charged aqueous anionic dispersions of polyurethanes.” Br.
3. Specifically, the Appellants argue that “Dahmen does not disclose
foaming both of the applied coatings,” because “Dahmen only discloses
applying the second coating as a foam over the already-applied compact first
coat.” Id.
Thus, the dispositive issue is:
Does Dahmen describe the limitation “a composition comprising an
aqueous, anionically hydrophilised polyurethane dispersion (I) and a cationic
coagulant (II) containing a cationically hydrophilised polyurethane polyurea
dispersion is foamed and dried” in claim 13?
We agree with the Examiner that Dahmen describes the disputed
limitation. Contrary to the Appellants’ belief, the disputed limitation does
not require forming a single composition comprising (I) and (II) and then
foaming the single composition. Claim 13, which is an original claim,
merely recites “a composition comprising . . . polyurethane dispersion (I)
and . . . cationic coagulant (II) . . . is foamed and dried.” When given its
broadest reasonable interpretation, taking into account the description in the
Specification, one skilled in the relevant art would have understood that the
limitation encompasses a composition obtained by combining a foam of (I)
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with coagulant (II) to form a foamed, dried final composition containing (I)
and (II). Indeed, the Specification plainly discloses preferred embodiments
of the invention in which polyurethane dispersion (I) is foamed and then
combined with cationic coagulant (II). Spec. 40, l. 1 to 42, l. 4. Oatey Co.
v. IPS Corp., 514 F.3d 1271, 1276 (Fed. Cir. 2008) (“We normally do not
interpret claim terms in a way that excludes embodiments disclosed in the
specification.”).
Having construed the disputed claim limitation, we turn to Dahmen.
The Examiner’s findings that Dahmen describes components (I) and (II), as
specified in claim 13, are not disputed. Ans. 3; Br. 3-4. Specifically,
Dahmen describes a process including coating two oppositely charged
aqueous ionic dispersions of polyurethanes that contain no free isocyanate
groups and contain covalently bonded, solubility-enhancing ionic groups,
drying, and optionally waterproofing. Abst. Dahmen also teaches that the
cationic polyurethane may be applied as a first coat and an anionic
dispersion is used as a second coat with no intermediate drying (i.e., wet-on-
wet). Col. 2, ll. 62-68. Dahmen further teaches that “in a preferred
embodiment, the second coat can be applied on the compact first coat as
foam.” Col. 3, ll. 1-5. Although Dahmen teaches the combination of the
cationic polyurethane and the anionic polyurethane dispersion in the form of
coatings, the process covered by claim 13 is sufficiently broad to include
contacting two coatings on a wet-on-wet basis where one of the coatings is a
foam. Because the two coating are combined on a wet-on-wet basis, and
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because the composition obtained by Dahmen is said to have “a particularly
soft and bulky feel and a very good drape to textile materials coated in this
manner” (col. 3, ll. 5-8), it is reasonable to infer that the composition
resulting from the combined coatings is foamed and dried as required by
claim 13.
Therefore, the Examiner correctly found that Dahmen anticipates
claim 13.
II.
The Appellants rely on the same arguments offered against Rejection I
and add that “Langel also fails to teach or suggest these missing features.”
Br. 4. Because we found the Appellants’ argument against Rejection I
unpersuasive, we affirm Rejection II for these same reasons.

SUMMARY

The rejection of claims 13, 16, and 19-24 under 35 U.S.C. § 102(b) as
anticipated by Dahmen is affirmed.
The rejection of claims 14, 15, 17, 18, 20, and 23 under 35 U.S.C. §
103(a) as unpatentable over Dahmen in view of Langel is affirmed.
The provisional rejection of claims 13-24 under the judicially created
doctrine of obviousness-type double patenting over claims 1-12 of
copending Application 11/732,363 is affirmed.
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Application 11/796,388

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The provisional rejection of claims 13-24 under the judicially created
doctrine of obviousness-type double patenting over claims 1-19 of
copending Application 12/245,286 is affirmed.
The provisional rejection of claims 13-24 under the judicially-created
doctrine of obviousness-type double patenting over claims 12-22 of
copending Application 11/732,575 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.
AFFIRMED

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