Ex Parte Gertzmann et al

Patent Trial and Appeal Board

Dec 3, 2012

11407818 (P.T.A.B. Dec. 3, 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.
11/407,818 04/20/2006 Rolf Gertzmann PO8703/BMS041045 9113
23416 7590 12/03/2012
CONNOLLY BOVE LODGE & HUTZ, LLP
P O BOX 2207
WILMINGTON, DE 19899
EXAMINER
NILAND, PATRICK DENNIS
ART UNIT PAPER NUMBER
1762
MAIL DATE DELIVERY MODE
12/03/2012 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 ROLF GERTZMANN, CHRISTOPH IRLE, and
RIKF ROSCHU
____________

Appeal 2011-010400
Application 11/407,818
Technology Center 1700
____________

Before JEFFREY T. SMITH, DEBORAH KATZ, and
GRACE KARAFFA OBERMANN, Administrative Patent Judges.

OBERMANN, Administrative Patent Judge.

DECISION ON APPEAL
The named inventors (collectively “Appellant”) appeal under 35
U.S.C. § 134 from the rejection of claims 1-21 directed to an aqueous
coating composition and process for preparing an aqueous coating
composition. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

Appeal 2011-010400
Application 11/407,818

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STATEMENT OF THE CASE
Claim 1 is illustrative of the subject matter on appeal:
1. A process for preparing aqueous coating composition which
comprises

I) preparing a polyurethane dispersion by

1) preparing in a first step a NCO prepolymer
solution which has a concentration of 66% to 98%
by weight in a solvent having a boiling point of
below 100°C at atmospheric pressure and which is
the reaction product of:

a) one or more polyisocyanates with

b) one or more polyols having average
molecular weights Mn of 500 to 6000,

c) one or more polyols having average
molecular weights Mn of 62 to 500, and

d) one or more compounds which contain an
ionic group or a potential ionic group,

wherein said NCO prepolymer does not comprise
non-ionic hydrophilic groups,

2) in a second step dispersing NCO prepolymer
I.1) in water and at least partly neutralizing the
potential ionic groups to form ionic groups before,
during or after the dispersion,

3) in a third step chain extending NCO prepolymer
I.1) with

e) one or more polyamines having average
molecular weights Mn of below 500, and

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Application 11/407,818

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4) in a fourth step removing solvent completely by
distillation, and subsequently

II) adding 1 % to 7% by weight of an ethylene or propylene
glycol ether and optionally other coating additives
together or separately to the polyurethane dispersion
from I).

The Examiner relies on the following evidence of unpatentability:

Markusch US 4,501,852 Feb. 26, 1985
Nicks US 4,552,908 Nov. 12, 1985
Noll US 4,745,151 May 17, 1988
Bodwell US 5,238,987 Aug. 24, 1993

THE REJECTION
Appellant seeks our review of the final rejection of claims 1-21 under
35 U.S.C. § 103(a) as unpatentable over Markusch in view of Nicks,
Bodwell, and Noll, either individually or in combination with each other.

ANALYSIS
Appellant argues claims 1-21 as a group. App. Br. 6-7.1 We select
claim 1 as representative of the group. Claims 2-21 stand or fall with
claim 1. 37 C.F.R. § 41.37(c)(1)(vii).
The Examiner finds that Markusch discloses a composition that
excludes non-ionic hydrophilic groups, when such groups are included in an
amount of 0% as suggested in the reference. Ans. 5-6 (citations omitted).

1 We refer in our analysis to the Examiner’s Answer mailed January 25,
2011 (“Ans.”) and the Appeal Brief filed November 18, 2010 (“App. Br.”)
Appeal 2011-010400
Application 11/407,818

4
The Examiner further finds that Markusch discloses every limitation of
claim 1, but for the ethylene or propylene glycol ether (coalescent
compounds) recited in part II of claim 1. Id. at 4. Markusch generally
discloses “ethers” as suitable coalescents, whereas part II of claim 1
specifies ethylene or propylene glycol ether. Id. at 4-5 (citing Markusch
9:47). The Examiner determines that an ordinary artisan would have been
led to modify Markusch’s composition to include the well-known
coalescents (i.e., ethylene or propylene glycol ether) as disclosed in Nicks,
Bodwell, and Noll. Id. at 4-4 (citations omitted).
Appellant’s sole argument on appeal is that the aqueous coating
composition of claim 1, which excludes non-ionic hydrophilic groups,
exhibits “unexpectedly superior water and ethanol resistance compared to
coatings produced from compositions that contain non-ionic hydrophilic
groups.” App. Br. 6. The Examiner finds that Markusch discloses a
composition that excludes non-ionic hydrophilic groups, Ans. 5-6, 8.
Appellant in the Brief does not challenge that finding. See generally App.
Br. The evidence advanced by Appellant is unconvincing because it
contains no comparative data that is representative of the closest prior art
composition, namely, Markusch’s composition that excludes non-ionic
hydrophilic groups. App. Br. 6 (relying upon Comparative Example 5); see
Ans. 10-11; In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991)
(“[W]hen unexpected results are used as evidence of nonobviousness, the
results must be shown to be unexpected compared with the closest prior
art.”) (citation omitted); In re Burckel, 592 F.2d 1175, 1179-80 (CCPA
1979) (claimed subject matter must be compared with closest prior art in a
manner that addresses the thrust of the rejection).
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Application 11/407,818

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The Examiner further finds that the inventive examples upon which
Appellant relies include “butyl glycol” as the coalescent, whereas claim 1
specifies a broader range of coalescents that encompasses “ethylene or
propylene glycol ethers.” Ans. 11; see App. Br. 6 (advancing Examples 1
and 2, which contain “butyl glycol”). On this record, the evidence supports
the Examiner’s finding that the examples advanced by Appellant are not
commensurate in scope with claim 1. Ans.11.
Appellant’s further contention that the applied art fails to recognize
the “improved resistance to water and ethanol” that attends exclusion of non-
ionic hydrophilic groups is unconvincing. App. Br. 6. For a prima facie
case of obviousness to be established the references need not recognize the
problem solved by the Appellant. See In re Kemps, 97 F.3d 1427, 1430
(Fed. Cir. 1996). In any event, we agree with the Examiner that the
advantage recognized by Appellant (namely, that hydrophobic moieties
improve resistance to water and ethanol) would not have been unexpected to
a person of ordinary skill in the art. Ans. 6-7.
On this record, the Examiner prima facie shows that the subject matter
of claim 1 would have been obviousness over the applied art, Ans. 3-7, and
Appellant fails to come forward with evidence of unexpected results
sufficient to overcome that prima facie showing. App. Br. 6-7.
No persuasive argument or evidence having been brought forward by
Appellant, we affirm the rejection of claims 1-21.

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CONCLUSION
We have considered Appellant’s other arguments but find them
unpersuasive for the reasons stated in the Answer. We affirm the rejection
of claims 1-21.
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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