Ex Parte Shimoma et al

Patent Trial and Appeal Board

Apr 28, 2016

11730325 (P.T.A.B. Apr. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
111730,325 03/30/2007 Hitoshi Shimoma
22850 7590 05/02/2016
OBLON, MCCLELLAND, MAIER & NEUSTADT, LLP,
1940 DUKE STREET
ALEXANDRIA, VA 22314
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.
3064 l 9USOCONT 7815
EXAMINER
SERGENT, RABON A
ART UNIT PAPER NUMBER
1765
NOTIFICATION DATE DELIVERY MODE
05/02/2016 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):
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HITOSHI SHIMOMA, KOTA HAMASAKI, MAKITO NAKAMURA,
HISASHI SATO, and HIROSHI WADA 1
Appeal2014-002362
Application 11/730,325
Technology Center 1700
Before CHUNG K. PAK, TERRY J. OWENS, and JEFFREY T. SMITH,
Administrative Patent Judges.
PAK, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134(a) from the
Examiner's decision2 rejecting claims 1-21, which are all of the claims pending in
the above-identified application. A hearing was conducted on April 7, 2016, a
written transcript of which will be entered into the electronic record in due course.
We have jurisdiction under 35 U.S.C. § 6(b ).
We REVERSE.
1 The real party in interest is said to be Asahi Glass Company, Limited. Appeal
Brief filed July 1, 2013 ("App. Br.") at 2.
2 Final Action mailed November 23, 2012 ("Final Act.") at 1-8 and the Examiner's
Answer mailed August 7, 2013 2012 ("Ans.") at 2.
Appeal2013-002362
Application 11/730,325
STATEMENT OF THE CASE
The subject matter on appeal is directed to "a pressure-sensitive adhesive"
and "a process for urethane resin production in which a urethane resin usable as a
raw material for pressure-sensitive is produced." Spec. i-f 1. The process is said to
be useful for yielding "a urethane resin which has a low viscosity and is usable as a
wide range of pressure-sensitive adhesives ranging from a strong-tack region to a
slight-tack region." Id. at i-f 6. Details of the appealed subject matter are recited in
illustrative claims 1, 4, and 8, 3 which are reproduced below from the Claims
Appendix of the Appeal Brief:
1. A process for producing a urethane resin, comprising:
reacting a polyol with a polyisocyanate compound in a
proportion that isocyanate groups are in excess to thereby obtain an
isocyanate-group-terminated prepolymer,
thereafter reacting the isocyanate-group-terminated prepolymer
with a chain extender having three or more functional groups reactive
with an isocyanate group to obtain a polymer; and
reacting the resultant polymer with a chain terminator;
\~1herein the three or more functional groups of the chain
extender consist of:
one primary amino group or one secondary amino group,
one primary hydroxyl group, and
at least one of a secondary hydroxyl group or a tertiary
hydroxyl group, and
the primary amino group or secondary amino group and the
primary hydroxyl group react with an isocyanate group of the
prepolymer.
4. A pressure-sensitive adhesive comprising a urethane resin obtained by a
process which comprises:
reacting a polyol with a polyisocyanate compound in a
proportion that isocyanate groups are in excess to thereby obtain an
isocyanate-group-terminated prepolymer,
3 Independent claims 1, 4, and 8 are the broadest claims on appeal.
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Appeal2013-002362
Application 11/730,325
thereafter reacting the isocyanate-group-terminated prepolymer
with a chain extender having three or more functional groups reactive
with an isocyanate group to obtain a polymer; and
reacting the resultant polymer with a chain terminator;
wherein the three or more functional groups of the chain
extender consist of:
one primary amino group or one secondary amino group,
one primary hydroxyl group, and
at least one of a secondary hydroxyl group or a tertiary
hydroxyl group, and
the primary amino group or secondary amino group and the
primary hydroxyl group react with an isocyanate group of the
prepolymer.
8. A pressure-sensitive adhesive comprising a urethane resin obtained by
reacting a urethane resin with a polyisocyanate compound; wherein the
urethane resin is obtained by a process which comprises:
reacting a polyol with a polyisocyanate compound in a
proportion that isocyanate groups are in excess to thereby obtain an
isocyanate-group-terminated prepolymer,
thereafter reacting the isocyanate-group-terminated prepolymer
with a chain extender having three or more functional groups reactive
with an isocyanate group to obtain a polymer; and
reacting the resultant polymer with a chain terminator;
wherein the three or more functional groups of the chain
extender consist of:
one primary amino group or one secondary amino group,
one primary hydroxyl group, and
at least one of a secondary hydroxyl group or a tertiary
hydroxyl group, and
the primary amino group or secondary amino group and the
primary hydroxyl group react with an isocyanate group of the
prepolymer.
App. Br. 16-19 (emphasis added).
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Appeal2013-002362
Application 11/730,325
The Examiner has maintained the following grounds of rejection:
1. Claims 1-13 and 16-21under35 U.S.C. §103(a) as unpatentable over
the combined teachings of Shigemori 4 and Gertzmann; 5 and
2. Claims 14 and 15 under 35 U.S.C. § 103(a) as unpatentable over the
combined teachings of Shigemori, Gertzmann, and Le-Khac. 6 Final Act. 2-7 and
Ans. 3-7.
DISCUSSION
Upon consideration of the evidence on this appeal record in light of the
respective positions advanced by the Examiner and Appellants, we determine that
the Examiner has not demonstrated, by a preponderance of the evidence, that the
applied prior art would have rendered the subject matter recited in claims 1-21
obvious to one of ordinary skill in the art within the meaning of 35 U.S.C. § 103(a)
for the reasons set forth in the Appeal Brief and the Reply Brief. We add the
following primarily for emphasis.
As recognized by both the Examiner and Appellants, Shigaemori teaches a
urethane urea resin pressure sensitive adhesive having a hydroxyl group as a side
chain, which is prepared by reacting a polyol and polyisocyanate to form a
polyurethane prepolymer having an isocyanate group at the end, reacting the
prepolymer with a chain extender of formula (1 ):
4 JP 2003-012751 A published in the name of Shigemori on January 15, 2003
("Shigemori").
5 US 2004/0034146 Al published in the name of Gertzmann et al. on February 19,
2004 ("Gertzmann").
6 US 5,470,813 issued in the name ofLe-Khac on March 6, 2008 ("Le-Kwac").
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Appeal2013-002362
Application 11/730,325
wherein Y is a univalent hydrocarbon group containing one or more functional
groups containing active hydrogen, R 1 and R2 a univalent hydrocarbon group that
does not contain a hydrogen atom or a hydroxyl group and R3 and R 4 are a
hydrogen atom or a univalent hydrocarbon group, and then reacting the resultant
polymer with a chain terminator. Ans. 3; App. Br. 7; Shigaemori i-fi-12, 7-13, 20,
23, 24, 28, 33, 39, and 101. Shigaemori explains that the chain extenders
encompassed by formula ( 1) are diamine compounds having a hydroxyl group,
which are useful for forming urea linkage in preparing a urethane urea resin
having a hydroxyl group as a side chain. See App. Br. 7-10 together with
Shigaemori i-fi-16 and 9, which state that "[a]s JP 2001-122938 A showed, we used
the Michael addition type [di]amine compound as a chain elongation agent" and
"[t]he invention provides the manufacturing method of the binder which simplifies
the manufacturing process of the Michael addition type urethane urea binder" and
Shigaemori i1 50 which identifies the amine compounds specified by formula (1) as
publically known diamine compounds. Consistent with these disclosures of
Shigaemori, the Examiner acknowledges that Shigaemori does not teach using a
chain extender having at least three functional groups consisting of "one primary
amino group or one secondary amino group, one primary hydroxyl group, and at
least one of a secondary hydroxyl group or a tertiary hydroxyl group" to form,
inter alia, a urethane linkage (the primary hydroxyl group reacting with an
isocyanate group of the prepolymer) as recited in claims 1, 4, and 8. Ans. 4.
To remedy these deficiencies in Shigaemori, the Examiner relies on the
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Appeal2013-002362
Application 11/730,325
disclosure of Gertzmann. 7 Id. According to the Examiner, Gertzmann teaches
using alkanolamines, such as 1-(2-hydroxyethyl) amino-2 propanol, as a chain
extender in forming polyurethane adhesives. Id. The Examiner then concludes
that:
[I]t would have been obvious to arrive at the claimed limitations since
one of ordinary skill in the art would have found it obvious to use the
chain extending compound of the adhesive of Gertzmann et al. in the
production of the adhesive of Shigemori. [Id.]
However, as correctly explained by Appellants, the Examiner has not
demonstrated that one of ordinary skill in the art would have been led to employ 1-
(2-hydroxyethl) amino-2 propanol taught by Gertzmann as the chain extender that
reacts with the isocyanate-terminated prepolymer used to form Shigaemori' s
urethane urea resin pressure sensitive adhesive having a hydroxyl group as a side
chain. App. Br. 7-12. Notwithstanding the Examiner's findings to the contrary,
Gertzmann teaches forming a hydrophilic or hydrophilicizable polyurethane by
reacting one or more isocyanate components \~1ith at least one component B
selected from one or more diols or polyols, one or more hydrophilic compounds,
and polyamines and/or alkanolamines, such as 1-(2-hydroxyethl) amino-2
propanol, in the presence of ethylenically unsaturated monomers. Gertzmann iii!
14-24, 40. Gertzmann does not identify at least one component B, including
polyamines and/or alkanolamines, as a chain extender. Id. The hydrophilic or
hydrophilicizable polyurethane resulting from reacting the above reactants
together, according to Gertzmann, is used to form aqueous emulsifier-free and
solvent-free polyurethane-polyacrylate hybrid dispersions suitable for paints and
7 The Examiner has not relied upon the disclosure of Le-Khac to remedy the above
deficiencies of Shigaemori. Ans. 6-7.
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Appeal2013-002362
Application 11/730,325
adhesives. Gertzmann ilil I 4, 81. On this record, the Examiner has not shown that
1-(2-hydroxyethl) amino-2 propanol, one of the reactants used for forming
Gertzmann's polyurethane, is useful as a chain extender for the prepolymer that is
used to prepare Shigaemori's urethane urea resin pressure sensitive adhesive.
Final Act. 2-7 and Ans. 3-8. Nor has the Examiner asserted or shown that
Shigaemori and Gertzmann individually, or in combination, teach or would have
suggested using a chain extender to form both urea and urethane bonds (the
primary amino group or secondary amino group and the primary hydroxyl group
reacting with an isocyanate group of the prepolymer) as required by claims 1, 4,
and 8. Compare App. Br. 9 with Ans. 3-8.
Under these circumstances, we determine that the Examiner has not
identified any apparent reason or suggestion in the applied prior art that would
have prompted one of ordinary skill in the art to employ Gertzmann's 1-(2-
hydroxyethl) amino-2 propanol as the chain extender for Shigaemori's prepolymer
to arrive at the claimed invention. In re Jung, 637 F.3d 1356, 1365---66 (Fed. Cir.
2011) (explaining that while "the applicant must identify to the Board what the
examiner did wrong, ... the examiner retains the burden to show
[unpatentability]"). Accordingly, we are constrained to reverse the Examiner's
rejections of claims 1-21under35 U.S.C. § 103(a).
ORDER
In view of the foregoing, the decision of the Examiner to reject claims 1-21
under 35 U.S.C. § 103(a) is REVERSED.
REVERSED
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