Ex Parte King et al

Patent Trial and Appeal BoardJun 29, 2018

14107044 (P.T.A.B. Jun. 29, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 14/107,044 12/16/2013 Gerald King 76230 7590 07/03/2018 LANXESS Solutions US Inc. 199 Benson Road Middlebury, CT 06749 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 259-069US-2013P001.US 3549 EXAMINER RODD, CHRISTOPHER M ART UNIT PAPER NUMBER 1766 NOTIFICATION DATE DELIVERY MODE 07 /03/2018 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): patents@chemtura.com docketing@dilworthip.com ipmail@lanxess.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte GERALD KING, CESARE SANTUCCI, STEP ANIA NARD IN, ENRICO FRESCH, GIULIO PIETRO DI EGIDIO, MARCO MENNECHELLI, and CHRIS A VERIS 1 Appeal2017---010099 Application 14/107 ,044 Technology Center 1700 Before TERRY J. OWENS, BEYERL YA. FRANKLIN, and GEORGE C. BEST, Administrative Patent Judges. FRANKLIN, Administrative Patent Judge. DECISION ON APPEAL Appellants request our review under 35 U.S.C. Â§ 134 of the Examiner's decision rejecting claims 23 and 24. We have jurisdiction over the appeal under 35 U.S.C. Â§ 6(b). 1 Appellants identify the real party in interest as Chemtura Corp. App. Br. 3. Appeal2017-010099 Application 14/107 ,044 STATEMENT OF THE CASE Claim 23 is illustrative of Appellants' subject matter on appeal and is set forth below: 23. A polyurethane prepolymer rotational casting composition comprising: a) an isocyanate-terminated polyurethane prepolymer prepared by reacting an organic diisocyanate monomer with a polyol, which prepolymer comprises a reaction product of polytetramethylene ether glycol and 4,4'-diisocyanato diphenylmethane, which prepolymer comprises less than 1.0% by weight of free 4,4'-diisocyanato diphenylmethane, based on the total weight of the prepolymer; and b) a curative comprising, based on the total weight of the curative, i) about 10 wt% to about 90 wt% of a polyol comprising polytetramethylene ether glycol; ii) about 10 wt% to about 90 wt% of an aromatic diamine comprising diethyl toluene diamine and/or dimethylthio-toluene diamine; iii) about 0.1 wt% to about 1.5 wt% of a thixotropic aliphatic amine selected from the group consisting of ethylene diamine, 1,6-hexanediamine, 1, 12-dodecane diamine, 1,4- cyclohexane diamine, isophorone diamine, diethylene triamine, triethylene tetramine, amine-terminated polyoxypropylenes, xylene diamine, and piperazine; and iv) about 1. 0 wt% to about 10 wt% of a thixotropic colloidal additive selected from the group consisting of fumed silica, clay, bentonite, and talc, wherein the total active hydrogen content of the curative agent is equal to about 80- 115% of the total isocyanate content of the isocyanate- terminated polyurethane prepolymer. Appeal2017-010099 Application 14/107 ,044 The Examiner relies on the following prior art references as evidence of unpatentability: Gajewski US 5,895,806 (hereinafter, Gajewski '806) Rosenberg US 2003/0065124 Al Gajewski US 2003/0232954 Al (hereinafter, Gajewski '954) Xie US 2009/0076239 Al Apr. 20, 1999 Apr. 3, 2003 Dec. 18, 2003 Mar. 19, 2009 H. D. Ruprecht et al., Roll Covering by Rotational Casting with Fast- Reacting PUR Systems, Polyurethanes World Congress (1991). Anil K. Bhowmick, Rubber Products Manufacturing Technology, CRC Press (1994). THE REJECTIONS Claims 23 and 24 are rejected under pre-AIA 35 U.S.C. Â§ 103(a) as being unpatentable over Gajewski '806 in view of Xie. Claims 23 and 24 are rejected under pre-AIA 35 U.S.C. Â§ 103(a) as being unpatentable over Rosenberg, in view of Gajewski '806, Ruprecht, Bhowmick, and Gajewski '954. ANALYSIS Upon consideration of the evidence on this record and each of the respective positions set forth in the record, we find that the preponderance of evidence on this record supports Appellants' stated position. Accordingly, we reverse each of the Examiner's rejections on appeal essentially for the reasons presented by Appellants, with the following emphasis. Central to Appellants' position in the record is the argument that there is insufficient motivation to combine the references (whether it is Gajewski Appeal2017-010099 Application 14/107 ,044 '806 in view of Xie, or Rosenberg in view of Gajewski '806). 2 Appeal Br. 9. Appellants argue, inter alia, that Gajewski '806 concerns a method of rotational casting (a coating method), and provides a curative especially for this type of coating method, requiring quick cure times. Appeal Br. 15. Appellants argue that Xie and Rosenberg, on the other hand, are directed to molding operations requiring longer cure times. Appeal Br. 17. Appellants explain throughout the record how molding operation methods are very dissimilar from rotational casting methods, each associated with materials, steps, and equipment to conduct the respective methods differing from each other. Appellants thus submit that one skilled in the art would not find evidence in the applied art that a rotational casting coating operation requiring fast cure is made easier by reducing the amount of free MDI, and would instead find reason to avoid the low free MDI prepolymers due to the extended cure times associated with molding operations. Appeal Br. 18. The Examiner responds, refers to paragraph [0071] of Xie, and states that the disclosure found therein of"[ s Jome less common industrial casting operations for simple articles permit the use of higher viscosity and shorter pour life" provides enough suggestion to support sufficient motivation for one to use the low free monomer prepolymers of Xie/Rosenberg in the rotational casting method of Gajewski '806. Ans. 9-10. It is thus the Examiner's position that this sentence constitutes a suggestion that the prepolymers of Rosenberg/Xie can be used in the "less common industrial 2 Appellants argue Xie and Rosenberg in the alternative, stating that the respective disclosures are very similar. Appeal Br. 9. Appeal2017-010099 Application 14/107 ,044 casting operations", and that this supports the proposed modification. Ans. 10. However, we agree with Appellants that this teaching is not an adequate suggestion to use the type of prepolymers of Rosenberg/Xie in making a curative for the rotational casting method of Gajewski '806 (requiring quick cure times). As Appellants point out, there is no indication in Xie/Rosenberg as to what these "less common industrial casting operations" might be. When read in the context of paragraph [0071 ], one would understand it to be pertaining to molding operation methods. Furthermore, as Appellants point out, there is significant discussion in Rosenberg/Xie about the need to reduce high reactivity by reducing free MDI content and the desirability of longer cure times of the low free monomer prepolymers. Appeal Br. 17-18. We thus agree with Appellants that there is insufficient facts to support the Examiner's position that the prepolymers of Rosenberg/Xie are necessarily useful not only in the molding operations therein, but in rotational casting process of the kind of Gajewski. Reply Br. 4. We are thus convinced that the Examiner's interpretation of the prior art is flawed and therefore there is insufficient factual support for the Examiner's position as discussed by Appellant throughout the record. Therefore, the Examiner's proposed modification (of either Gajewski '806 in view of Xie, or Rosenberg in view of Gajewski '806) appears to be premised on an impermissible use of hindsight after review of Appellants' disclosure rather than on a supported reason (in making the modification) available to an ordinarily skilled artisan and consistent with the teachings thereof. KSR Int 'l. Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007) (The fact Appeal2017-010099 Application 14/107 ,044 finder must be aware "of the distortion caused by hindsight bias and must be cautious of arguments reliant upon ex post reasoning"; citing Graham v. John Deere Co., 383 U.S. 1, 36 (1966) (warning against a "temptation to read into the prior art the teachings of the invention in issue")). We therefore reverse both rejections. DECISION Each rejection is reversed. REVERSED