Ex Parte O et alDownload PDFPatent Trial and Appeal BoardAug 1, 201412211217 (P.T.A.B. Aug. 1, 2014) Copy Citation 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. 12/211,217 09/16/2008 James O'Connor 103028-200 8038 27267 7590 08/01/2014 WIGGIN AND DANA LLP ATTENTION: PATENT DOCKETING ONE CENTURY TOWER, P.O. BOX 1832 NEW HAVEN, CT 06508-1832 EXAMINER SERGENT, RABON A ART UNIT PAPER NUMBER 1765 MAIL DATE DELIVERY MODE 08/01/2014 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 JAMES O'CONNOR and YE MING ____________ Appeal 2012-011465 Application 12/211,217 Technology Center 1700 ____________ Before PETER F. KRATZ, MARK NAGUMO, and MICHAEL P. COLAIANNI, Administrative Patent Judges. KRATZ, Administrative Patent Judge. DECISION ON APPEAL This is a decision on an appeal under 35 U.S.C. § 134 from the Examiner’s final rejection of claims 1-21. We have jurisdiction pursuant to 35 U.S.C. § 6. Appellants’ invention is directed to the preparation of controlled viscosity, liquid isocyanurate-modified polymeric methylene bis(phenylisocyanate) (isocyanurate-modified/trimerized PMDI) compositions and their use in making rigid polyurethane/polyisocyanurate foams. The controlled viscosities are achieved via an admixture of the isocyanurate-modified PMDI with conventional polymeric methylene bis(phenylisocyanate) (conventional PMDI), which admixture of trimerized Appeal 2012-011465 Application 12/211,217 2 PMDI and conventional PMDI can be further formulated and used for making foams, including a rigid polyurethane/polyisocyanurate foam product (Spec. ¶¶ 0002 -0004, 00010 – 00013, 00015, 00016). According to Appellants, conventional PMDI is a product mixture having a viscosity within the range of 30- 300 cps and typically includes about 50 to about 70 percent, by weight of two ring compounds with the remainder of the mixture containing compounds having three or more rings (Spec. ¶¶ 0004, 00015). Claims 1, 7, and 16 are illustrative and reproduced below: 1. A method for producing a liquid, isocyanurate-modified PMDI having controlled viscosity comprising the steps of: (a) trimerizing PMDI having from about 50 wt% to about 70 wt% of two ring compounds based on the total weight of said PMDI and having a viscosity at 25° C within a range of from about 30 to about 100 cps in the presence of a catalytically effective amount of a trimerization catalyst to produce isocyanurate-containing PMDI having a viscosity at 25° C within a range of from about 2,000 mPas to about 200,000 mPas; (b) deactivating the trimerization catalyst to provide a mixture containing isocyanurate-modified PMDI and deactivated trimerization catalyst; and, (c) admixing the mixture from step (b) with a sufficient amount of PMDI having from about 50 wt% to about 70 wt% of two ring compounds based on the total weight of said PMDI and having a viscosity at 25° C within a range of from about 30 to about 100 cps to provide an admixture having a viscosity at 25° C within a range of from about 400 mPas to about 20,000 mPas. 7. A composition comprising an admixture of (a) PMDI having from about 50 wt% to about 70 wt% of two ring compounds based on the total weight of aid PMDI and having a viscosity at 25° C within a range of from about 30 to about 100 cps and (b) isocyanurate-modified PMDI, wherein the weight ratio (a) to (b) is from about 1:10 to about 10:1; and wherein the Appeal 2012-011465 Application 12/211,217 3 admixture has a viscosity at 25° C within a range of from about 400 mPas to about 20,000 mPas. 16. A method for producing a liquid, isocyanurate-modified PMDI having controlled viscosity comprising the steps of: (a) trimerizing PMDI having from about 50 wt% to about 70 wt% of two ring compounds based on the total weight of said PMDI and having a viscosity at 25° C within a range of from about 30 to about 300 cps in the presence of a catalytically effective amount of a trimerization catalyst being 1, 3, 5 tris(N,N-dimethylaminopropyl)-s hexahydro-5-triazine to produce isocyanurate-containing PMDI having a viscosity at 25° C within a range of from about 2,000 mPas to about 200,000 mPas; (b) deactivating the trimerization catalyst with PMDI having from about 50% to about 70% of two ring compounds and having a viscosity at 25° C within a range of from about 30 to about 300 cps, optionally in combination with an acid chloride or an acid to provide a mixture; and (c) admixing the mixture from step (b) with a sufficient amount of PMDI having from about 50 wt% to about 70 wt% of two ring compounds and having a viscosity at 25° C within a range of from about 30 to about 300 cps sufficient to provide an admixture having a viscosity at 25° C within a range of from about 400 mPas to about 20,000 mPas. The Examiner relies on the following prior art references as evidence in rejecting the appealed claims: Zemlin US 3,590,411 July 6, 1971 Falkenstein US 3,970,600 July 20, 1976 Markusch US 3,981,831 Sept. 21, 1976 Blount US 4,377,659 Mar. 22, 1983 Narayan (‛125) US 4,382,125 May 3, 1983 Narayan (‛627) US 4,743,627 May 10, 1988 Appeal 2012-011465 Application 12/211,217 4 The Examiner maintains the following grounds of rejection:1 Claims 16-21 stand rejected under 35 U.S.C. § 112, second paragraph as being indefinite for failing to particularly point out and distinctly claim the subject matter which applicant regards as invention. Claims 1-21 stand provisionally rejected on the ground of non- statutory obviousness-type double patenting over claims 1-15 of co-pending Application No. 11/903,362.2 Claims 1-15 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Narayan ‘125 in view of Narayan ‘627, Zemlin, Markusch, and Blount. Claims 16-21 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Narayan ‘125 in view of Narayan ‘627, Zemlin, Markusch, Blount, and Falkenstein. We reverse the stated rejection of claims 16-21 under 35 U.S.C. § 112, second paragraph and the Examiner’s rejection of claims 16-21 under 35 U.S.C. § 103(a). We affirm all of the other rejections maintained by the Examiner substantially for the reasons set forth in the Examiner’s Answer. Concerning the indefiniteness rejection of claims 16-21, the Examiner maintains that the percentage values in step b of claim 16 are indefinite because it is not clear if the percent is by weight or by mole percent or if the percent is based on the PMDI component or some other entity (Ans. 5). 1 A previously maintained rejection of claims 1 through 21 under the first paragraph of 35 U.S.C. § 112 for . failing to comply with the written description requirement was withdrawn by the Examiner (Ans. 4). 2 Related Appeal No. 2012-011297(Application No. 11/903,362, the parent of this continuation-in-part application) is being decided concurrently with this appeal. Appeal 2012-011465 Application 12/211,217 5 However, we agree with Appellants that when claim 16 is read as a whole in light of the subject Specification as it would have been understood by one of ordinary skill in the art, the percentage range for the two ring compounds content of the PMDI specified in step b of claim 16 would have been understood as specifying percentages by weight based on the total weight of the PMDI component (Reply Br. 5). As recited in the other steps of claim 16, the PMDI has a recited percentage range of two ring compounds present, based on weight percent. The Specification provides that conventional production processes typically yield PMDI product “containing from about 50% to about 70% of the two ring compounds†and that the described PMDI content amounts are specified “based on the total weight of the PMDI batch†(Spec. 0004). In light of the above, the Examiner has not persuasively articulated why the percentage recitation for the two ring compounds present in PMDI as set forth in step b of claim 16 would have been understood as being based on something other than a weight percent based on the PMDI total weight. On this record, we reverse the Examiner’s rejection of claims 16-21 under the second paragraph of 35 U.S.C. § 112. Turning to the Examiner’s provisional obviousness-type double patenting (ODP) rejection, Appellants offer no argument to the contrary in the Appeal Brief. In the Reply Brief (p. 5), Appellants note a previously made request that the provisional ODP rejection be held in abeyance pending an indication of allowable subject matter. On this appeal record, we decline to entertain Appellants’ request for delay in reaching the ODP rejection. Accordingly, we summarily sustain the Examiner’s provisional ODP rejection. Appeal 2012-011465 Application 12/211,217 6 Concerning the Examiner’s rejections of the appealed claims under 35 U.S.C. § 103(a), we begin with the Examiner’s rejection of claims 1-15 over Narayan ‘125 in view of Narayan ‘627, Zemlin, Markusch, and Blount. Appellants present arguments for method claims 1-6 based on claim 1 and for the composition claims 7-15 based on claim 7 without separately arguing the other appealed claims. Accordingly, we limit our discussion to one representative claim in each group, that is, claims 1 and 7. The other claims in each group stand or fall with the corresponding representative claim we address. See 37 C.F.R. § 41.37(c)(1)(vii) (2007). Concerning claim 1, the Examiner has determined that Narayan ‘125 teaches or suggests a method for trimerizing PMDI (making an isocyanurate-modified PMDI) that corresponds to Appellants’ claim 1 method with the exception that Narayan ‘125 lacks disclosure of a step of admixing other organic polyisocyanates with the trimerized PMDI product of Narayan ‘125 to modify its properties (e.g., viscosity and NCO content), such as by admixture of PMDI with trimerized PMDI, as required by step c of Appellants’ claim 1 (Ans. 5 and 6). In so determining, the Examiner notes Appellants’ acknowledgment concerning conventional PMDI set forth in the subject Specification (Ans. 5; Spec. ¶ 0004). In particular, Appellants report that conventional PMDI is a product mixture having a viscosity within the range of about 30-300 cps and typically includes about 50 to about 70 percent, by weight, of two ring compounds with the remainder of the mixture containing compounds having three or more rings (Spec. ¶¶ 0004, 00015). Appellants limit their argument to step c of claim 1(App. Br. 12-14). Concerning the latter step, the Examiner turns to Narayan ‘627, Zemlin, Appeal 2012-011465 Application 12/211,217 7 Markusch, and Blount for disclosures of blending various polyisocyanates with a trimerized PMDI product or other modified polymeric polyisocyanate to adjust the polyisocyanate blend properties such as by controlling/reducing the viscosity of the polyisocyanate product (Ans. 6-7). In addition, the Examiner has found that Narayan ‘627 teaches that trimerized (isocyanurate- modified) PMDI has an increased viscosity level (Ans. 6; Narayan, col. 4, ll. 39-40; compare Spec. ¶ 00016). Based on the applied prior art, the Examiner reasonably maintains that adding a known lower viscosity polyisocyanate, such as a conventional PMDI to the trimerized PMDI of Narayan ‘125, would have been an obvious viscosity adjustment for one of ordinary skill in the art to make in order to control/decrease the viscosity of the trimerized PMDI of Narayan ‘125 to manipulate/enhance the processing characteristics thereof (Ans. 6-7). In this regard, it would have been reasonably expected that blending a complex mixture of isocyanurate-modified PMDI with a conventional PMDI mixture would yield a product mixture having a viscosity value between that of the isocyanurate-modified PMDI and that of the conventional PMDI before they are blended together. In light of the foregoing and for reasons set forth by the Examiner in the Examiner’s Answer (Ans. 5-7), Appellants’ arguments to the effect that none of Narayan ‘627, Zemlin, Markusch, and Blount discloses blending the particular polyisocyanate (conventional PMDI) required by step c of claim 1 with a trimerized PMDI are not persuasive of substantive error in the Examiner’s obviousness position. Appellants assert that other properties of the trimerized PMDI are changed by blending it with a low viscosity PMDI and that such would not Appeal 2012-011465 Application 12/211,217 8 have been predictable (App. Br. 14; Reply Br. 8). However, Appellants have not substantiated why one of ordinary skill in the art would have expected that blending a conventional PMDI with a trimerized PMDI would yield an unpredictable NCO content or unpredictable stability property for the blend and/or why such a blend would have been considered contraindicated to one of ordinary skill in the art at the time of the invention. Indeed, Appellants disclose that other polyisocyanates may be employed and claim 1 uses open “comprising†language, which claim language embraces other polyisocyanate component additions (Spec. ¶ 00028). As indicated above, Narayan ‘125 suggests that both PMDI and trimerized PMDI, which each include mixtures of polyisocyanate compounds, can be utilized as a polyisocyanate component individually in the formation of foam products. These circumstances suggest that the addition of a compatible polyisocyanate having known properties, such as conventional PMDI, would have been expected to yield predictable outcomes for the resultant blend of conventional PMDI with trimerized PMDI rather than unpredictable properties and functionalities (Narayan ‘125, col. 2, ll. 27-55, col. 6, ll. 30- 32, Examples 7, 9, and 10; Spec. ¶ 0004). “The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.†KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). Appellants’ reliance on the arguments made with respect to claim 1 for advocating reversal of the Examiner’s obviousness rejection of composition claim 7 are correspondingly unpersuasive as to the resultant composition from blending conventional PMDI with trimerized PMDI for reasons discussed above and in the Examiner’s Answer. As for the separate Appeal 2012-011465 Application 12/211,217 9 argument concerning the blending ratio of “from about 1:10 to about 10:1†required in composition claim 7, we concur with the Examiner that one of ordinary skill in the art would have readily arrived at a workable blend ratio within the broadly recited range in order to obtain a workable viscosity for further processing the product polymeric polyisocyanate mixture utilizing the known respective viscosity values of the trimerized PMDI and the conventional PMDI and the fact that the final viscosity of the mixture would be based on the relative amounts of each of these components employed therein (Ans. 10). As a final point, we concur with the Examiner that Appellants have not substantiated unexpected results for the claimed process or product based on comparative evidence (Ans. 10). Appellants have not articulated, if such were intended, how the examples of the subject Specification provide such comparative evidence showing unexpected results for the subject matter of Appellants’ invention as compared with the closest prior art. After all, it is well settled that Appellants have the burden to establish unexpected results by presenting evidence of such unexpected results for subject matter that is reasonably commensurate in scope with the claimed subject matter as compared to the closest prior art. “The evidence presented to rebut a prima facie case of obviousness must be commensurate in scope with the claims to which it pertains.†In re Dill, 604 F.2d 1356, 1361 (CCPA 1979); see also, 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.â€). Evidence of superior results does not establish “unexpected†results. See Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1371 (Fed. Cir. 2007) (“[B]y definition, any Appeal 2012-011465 Application 12/211,217 10 superior property must be unexpected to be considered as evidence of non- obviousness.â€). On this record, we shall sustain the Examiner’s obviousness rejection of claims 1-15. Concerning the Examiner’s separate stated obviousness rejection of claims 16-21, Appellants argue the claims together as a group. We select claim 16 as the representative claim on which we decide this appeal as to this ground of rejection.3 Claim 16 is drawn to a method similar to claim 1 with the additional proviso that deactivation of the trimerizing catalyst is accomplished with PMDI, optionally together with acid chloride or an acid. Concerning this additional claim feature, the Examiner adds Falkenstein to the previously discussed combination of Narayan ‘125 in view of Narayan ‘627, Zemlin, Markusch, and Blount. The Examiner maintains that Narayan teaches or suggests that an acid or an acid chloride can be employed to deactivate the trimerizing catalyst but is silent as to the role of unmodified PMDI in such catalyst deactivation (Ans. 8). The Examiner turns to Falkenstein for evincing that as catalyst level decreases trimerizing decreases, with a minimum level of catalyst required for promoting the reaction (id.). The Examiner basically maintains that combining additional reactant (PMDI) with the known acid or acid chloride deactivators would have been obvious to one of ordinary skill in the art to assist catalyst deactivation/quenching.4 3 Neither Appellants nor the Examiner separately addressed the obviousness of product claim 21. 4 The Examiner interprets claim 16 as requiring the addition of unmodified PMDI for the catalyst deactivation step (Ans. 8). The Specification supports this interpretation of claim 16 (Spec. ¶ 00025). Appeal 2012-011465 Application 12/211,217 11 Appellants argue that the disclosure of Falkenstein as to the relationship between the degree of conversion and catalyst amounts employed taken together with the disclosures of the previously discussed references is not suggestive of the use of added PMDI in a trimerizing catalyst deactivation step (App. Br. 16; Reply Br. 10). In particular, Appellants argue that Falkenstein teaches employing acids and acid compounds for deactivating the trimerizing catalyst but does not describe using any PMDI for catalyst deactivation (id.; Falkenstein, col. 5, ll. 4-12). We agree with Appellants because the Examiner’s citation to the column 4 passage of Falkenstein concerning the relationship between the amount of catalyst used and the degree of conversion desired has not been shown to reasonably suggest using PMDI addition for deactivating trimerizing catalyst whereas the column 5 disclosure of Falkenstein cited to by Appellants reasonably supports Appellants’ opposing position. Accordingly, we reverse the Examiner’s obviousness rejection of claims 16-21 on this appeal record. CONCLUSION/ORDER The Examiner’s decision to reject claims 16-21 under 35 U.S.C. § 112, second paragraph as being indefinite for failing to particularly point out and distinctly claim the subject matter which applicant regards as invention and to reject claims 16-21 under 35 U.S.C. § 103(a) as being unpatentable over Narayan ‘125 in view of Narayan ‘627, Zemlin, Markusch, Blount, and Falkenstein is reversed. Appeal 2012-011465 Application 12/211,217 12 The Examiner’s decision to reject claims 1-21 provisionally on the ground of non-statutory obviousness-type double patenting over claims 1-15 of co-pending Application No. 11/903,362 is affirmed. The Examiner’s decision to reject claims 1-15 under 35 U.S.C. § 103(a) as being unpatentable over Narayan ‘125 in view of Narayan ‘627, Zemlin, Markusch, and Blount 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(a). AFFIRMED cam Copy with citationCopy as parenthetical citation