UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES

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1 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES Ex parte BRUCE D. LAWREY, ROBERT F. REBELLO, ROGER DALE LANE and W. BRENT SMITH Appeal Technology Center 1700 Decided: October 30, 2009 Before DEMETRA J. MILLS, ERIC GRIMES, and FRANCISCO C. PRATS, Administrative Patent Judges. MILLS, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C The Examiner has rejected the claims for obviousness. We have jurisdiction under 35 U.S.C. 6(b). STATEMENT OF CASE The following claim is representative. 1. A segmented polyurethane/urea produced by reacting in solution:

2 a) an isocyanate-terminated prepolymer having a free isocyanate group content of from about 2.25 to about 4% which is the reaction product of (1) a stoichiometric excess of at least one diisocyanate with (2) an isocyanate-reactive component comprising: (i) a diol component comprising: (a) from about 25 equivalent percent to about 75 equivalent percent of at least one polyoxypropylene diol having a molecular weight of at least 1500 Da and an average unsaturation level less than or equal to 0.03 meq/g, and (b) from about 25 equivalent percent to about 75 equivalent percent of at least one polytetramethylene ether glycol having a molecular weight of from about 600 Da to about 6000 Da; and, optionally, (ii) one or more other materials containing at least one functional group that is reactive with an isocyanate group, provided that the sum of the equivalent percents of (i) and (ii) is 100 equivalent percent, with b) a diamine chain extender comprising: (1) from 30 to about 75 equivalent percent, based on total equivalents of b), of at least one asymmetric aliphatic and/or cycloaliphatic diamine and (2) at least one linear diamine in the presence of c) a solvent. Cited References Dreibelbis US 5,000,899 Mar. 19, 1991 Fishback US 6,255,431 Jul. 3, 2001 Lawrey US 2003/ Dec. 4, 2003 Grounds of Rejection 1. Claims 1-15 are rejected under 35 U.S.C. 103(a) as being obvious over Lawrey in view of Dreibelbis. 2

3 The Examiner concludes that: ISSUE (Ans. 5.) [I]t would have been obvious to one skilled in the art at the time of invention to have modified the amounts of ethylene diamine and asymmetric diamine chain extender in Lawrey et al based on the motivation that Dreibelbis et al teach it would have resulted in improved mechanical properties useful in applications that are analogous to Lawrey et al, as well as Lawrey et al and Dreibelbis et al have like compositions. Appellants contend that Lawrey does not teach or suggest a chain extender which must include greater than 25 up to 75 equivalent percent of an asymmetric aliphatic or cycloaliphatic diamine. 1 (App. Br. 4.) Appellants argue that Dreibelbis teaches spandex polymers which are significantly different in composition from the polymers disclosed by Lawrey et al and required in Appellants' claimed invention, and that there is no motivation to combine the cited references. (App. Br. 5.) The issue is: Have Appellants demonstrated error in the Examiner s prima facie case of obviousness? 1 Appellants arguments are based on the claims requiring greater than 25 percent asymmetric aliphatic or cycloaliphatic diamine, but the claims actually recite from 30 to about 70 percent. See the amendment filed July 16,

4 FINDINGS OF FACT 1. Lawrey discloses a segmented polyurethane/urea and method for production comprising an isocyanate terminated prepolymer, which is the reaction product of diisocyanate (1), isocyanatereactive component (2), chain extender (b), and in the presence of solvent (c) (Abstract). Lawrey et al first teach that diisocyanate (1) consists of methylene diphenylene diisocyanate, chemically synonymous with diphenylmethane diisocyanate, and present amounts resulting in a prepolymer having an isocyanate content of 2-3.5%. (Ans. 3-4, citing Lawrey, at 28, and 33.) 2. In Lawrey, isocyanate-reactive component (2) comprises two diols consisting of polytetramethylene ether glycol (b), and polyoxypropylene diol (a) having the molecular weights of and Daltons respectively, both of which overlap appellants' claimed ranges (id. at 4, citing Lawrey at 38, and 45). Furthermore, the polyoxypropylene diol (a) has an average unsaturation level less than 0.02 meq/g (id., citing Lawrey at 45). Lawrey teaches other hydroxyl or isocyanate reactive species are present with the diol corresponding to claimed (ii) component (id., citing Lawrey at 47). 3. Regarding the claimed ranges for the polyoxypropylene diol (a) and polytetramethylene ether glycol (b), paragraph 45 teaches that polytetramethylene ether glycol (b) has an equivalent percent range overlapping the claimed range, and that the remainder of the diol is 4

5 polyoxypropylene diol (a). Therefore, the ranges of (a) and (b) claimed by appellant in claims 1, 5, and 10 are satisfied. (Ans. 4.) 4. Finally, Lawrey discloses that the chain extender consists of a linear, specifically ethylene diamine, asymmetric aliphatic, and/or cycloaliphatic diamines, the solvent used during production is dimethyl acetamide, and the final polyurethane is spun into spandex fibers. (Ans. 4, citing Lawrey at s 2, 30, 32, 51, and 53.) 5. Lawrey fails, however, to teach the same amount of asymmetric diamine as the claims, instead only disclosing up to 25 equivalent percent. (Ans. 4.) 6. Dreibelbis teach a spandex comprising segmented polyurethane/urea, which is the reaction product of isocyanate terminated aliphatic polyether polyol chain and diamine chain extender (Ans. 4-5, citing Dreibelbis at col. 1, ll. 8-10; col. 2, ll ; col. 3 ll , and 41). The polyether polyol is based on tetrahydrofuran, which is commonly known to produce polytetramethylene ether glycol, and the chain extender is a mixture of ethylene diamine and an asymmetric diamine, specifically 2-methylpentamethylene diamine (MPMD), in a 50/50 mole % mixture (id., citing Dreibelbis at col. 3, ll ). 7. Regarding the equivalent and mole percentages of diamine chain extenders, since the symmetrical and asymmetrical polyamines are both diamine, the amounts correspond, i.e. mole % = equivalent %. [Dreibelbis] go on to explain that this mixture of chain extender 5

6 results in favorable effects on tenacity and set characteristics of fibers without adverse effects on creep (Ans. 5, citing Dreibelbis at col. 3, ll ) 8. The Examiner finds that, it would have been obvious to one skilled in the art at the time of invention to have modified the amounts of ethylene diamine and asymmetric diamine chain extender in Lawrey based on the motivation that Dreibelbis teach it would have resulted in improved mechanical properties useful in applications that are analogous to Lawrey, as well as Lawrey and Dreibelbis have like compositions. (Dreibelbis at col. 3, ll ) (Ans. 5.) 9. Lawrey discloses up to about 25% of an asymmetric aliphatic or cycloaliphatic diamine chain extender and at least one linear diamine (Lawrey, page 3, 30) which is different from the 30 to 75% asymmetric aliphatic or cycloaliphatic diamine chain extender and at least one linear diamine claimed. 10. Appellants have not provided evidence that about 25% diamine chain extender yields a significantly different product than that produced using the 30% diamine chain extender claimed. 11. Lawrey teaches that [l]owering unsaturation and the attendant large monol fraction in polyoxypropylene polyols has been touted as a means for production of polyurethane elastomers having improved properties. (Lawrey, page 2, 0014.) 12. Lawrey recognizes that polyoxypropylene glycol is a potential substitute for PTMEG which can be used to prepare spandex 6

7 fibers. (Id. at 1, 008.) The spandex of Lawrey may comprise fibers made from 50-90% PTMEG. (Lawrey, page 4, 0045.) PRINCIPLES OF LAW In rejecting claims under 35 U.S.C. 103, the examiner bears the initial burden of presenting a prima facie case of obviousness. Only if that burden is met, does the burden of coming forward with evidence or argument shift to the applicant. In re Rijckaert, 9 F.3d 1531, 1532 (Fed. Cir. 1993) (citations omitted). In order to determine whether a prima facie case of obviousness has been established, we consider the factors set forth in Graham v. John Deere Co., 383 U.S. 1, 17 (1966); (1) the scope and content of the prior art; (2) the differences between the prior art and the claims at issue; (3) the level of ordinary skill in the relevant art; and (4) objective evidence of nonobviousness, if present. [O]bviousness requires a suggestion of all limitations in a claim. CFMT, Inc. v. Yieldup Intern. Corp., 349 F.3d 1333, 1342 (Fed. Cir. 2003) (citing In re Royka, 490 F.2d 981, 985 (CCPA 1974)). Attorney argument cannot take the place of evidence. In re DeBlauwe, 736 F.2d 699, 705 (Fed. Cir. 1984). ANALYSIS Appellants contend that their claimed invention requires a diamine chain extender in amounts greater than those taught by Lawrey et al. (App. Br. 4-5.) Appellants disagree with the Examiner s finding that the amount of asymmetric aliphatic and/or cycloaliphatic diamine disclosed by Lawrey 7

8 et al "overlaps" the amount required by Appellants' claims, urging that an amount of "up to about 25" clearly does not overlap "greater than 25". (Id. at 5.) Further, Appellants argue that (Id.) the teachings of Lawrey cannot be construed in any manner which would teach one skilled in the art, particularly one skilled in the art addressing the same problem as that which was addressed by Appellants (i.e., improved heat set efficiency) to use an amount of asymmetric aliphatic/cycloaliphatic diamine greater than 25 equivalent percent. Support for Appellants' position is arguably found in the examples given in Lawrey et al in which the greatest amount of asymmetric aliphatic/ cycloaliphatic diamine used was 15 equivalent percent and the teaching of Lawrey et al column 8, paragraph [0082] that the presence of the asymmetric aliphatic or cycloaliphatic codiamine reduced set. We are not persuaded. We acknowledge that Lawrey discloses up to about 25% of an asymmetric aliphatic or cycloaliphatic diamine chain extender and at least one linear diamine (Lawrey, page 3, 30) which is different from the 30 to 75% asymmetric aliphatic or cycloaliphatic diamine claimed. Thus while Lawrey might not serve as an anticipatory reference, it serves to support a prima facie case of obviousness, given the closeness of the prior art and claimed amounts of the diamine reactant, and given the fact that Lawrey uses all of the other claimed reactants in the claimed amounts (see FF1-5), and the fact that Appellant has not provided evidence that the 30% aliphatic or cycloaliphatic diamine chain extender claimed yields a significantly different product than that produced using 25% of the diamine reactant as described by Lawrey. In any event, the Examiner relies on Dreibelbis not Lawrey for the amount of diamine chain extender. 8

9 Dreibelbis teaches a spandex comprising segmented polyurethane/ urea, which is the reaction product of isocyanate terminated aliphatic polyether polyol chain and diamine chain extender (Dreibelbis col. 1, ll. 8-10; col. 2 ll ; col. 3 ll , and col. l. 41). The polyether polyol is based on tetrahydrofuran, which is commonly known to produce polytetramethylene ether glycol, and the chain extender is a mixture of ethylene diamine and an asymmetric diamine, specifically 2- methylpentamethylene diamine (MPMD), in a 50/50 mole % mixture (id. at col. 3, ll ). (FF6.) Appellants argue that Dreibelbis does not teach or suggest a spandex produced using the low unsaturation polyoxyproylene diol claimed. (App. Br. 7.) Appellants argue that Dreibelbis is directed to spandex polymers that are significantly different in chemical composition than those disclosed by Lawrey. (App. Br. 6.) Again we are not persuaded. Lawrey prepares segmented polyurethane ureas used in the production of spandex by chain extending an isocyanate prepolymer with a diamine chain extender. (Lawrey, Abstract.) Lawrey teaches that lowering unsaturation and the attendant large monol fraction in polyoxypropylene polyols has been touted as a means for production of polyurethane elastomers having improved properties. (Lawrey, page 2, 0014.) The prepolymers of Lawrey are derived from polytetramethylene ether glycol (PTMEG). (Id. at 1, 001.) Lawrey recognizes that polyoxypropylene glycol is a substitute for PTMEG which can be used to prepare spandex fibers. (Id. at 1, 008.) The spandex of 9

10 Lawrey may comprise fibers made from 50-90% PTMEG. (Lawrey, page 4, 0045.) Dreibelbis also relates to polyurethane urea spandex. (Dreibelbis, col. 1, ll ) The spandex polymer was derived from an isocyanate capped glycol which had been chain extended with a mixture of diamines. (Id. at col. 1, ll ; FF6.) More particularly, Dreibelbis discloses a spandex made from 100% THF/MeTHF copolyethers. The Examiner indicates that tetrahydrofuran (THF) is commonly known to produce polytetramethylene ether glycol, as exemplified by Fishback on column 2, lines Appellants do not provide evidence to the contrary. Appellants have failed to indicate with appropriate evidence how the spandex fibers of Dreibelbis are significantly different in chemical composition (App. Br. 5) than those of Lawrey when they both appear to result in polyurethane ureas prepared by chain extension of polyether glycols with diamines. The compositions of Lawrey can contain up to 90% PTMEG and the compositions of Dreibelbis comprise 100% THF/MeTHF copolyethers, and tetrahydrofuran (THF) is commonly known to produce polytetramethylene ether glycol, as exemplified by Fishback on column 2, lines (Ans. 6.) Thus the compositions of Lawrey and Dreibelbis would reasonably appear to one of ordinary skill in the art to be more alike ( PTMEG content), than different. Thus, it would have been obvious to use the amount of chain extender of Dreibelbis to modify the composition of Lawrey to provide favorable effects on tenacity and set characteristics of fibers without adverse effects on creep (id. at col. 3, ll ). (Ans. 5.) 10

11 Attorney argument that the compositions of Dreibelbis are significantly different from those of Lawrey cannot take the place of evidence that the compositions are significantly different. In re DeBlauwe, 736 F.2d 699, 705 (Fed. Cir. 1984). Regarding Appellants the position that Dreibelbis teaches away from tetrahydrofuran based polyether, it is the Examiner's contention that Appellants have incorrectly interpreted the teachings of Dreibelbis on column 3 lines (Ans. 6-7.) (Ans. 6-7.) The Examiner finds that: [T]hese teachings do not direct one away from standard THF based polyether polyol, but instead explain that when using mixtures of 3- Me THF and standard THF; it is preferred to use 20 mol% or less of 3-Me THF relative to the standard THF. Based on this correct interpretation, the polyether polyol of Dreibelbis is in fact more analogous to that of Lawrey since it is based on a larger amount standard THF relative to 3-Me THF. Again, Appellants have provided no evidence that the compositions of Dreibelbis are significantly different from those of Lawrey. CONCLUSION OF LAW Appellants have not demonstrated error in the Examiner s prima facie case of obviousness. In view of the above, the obviousness rejection of the claims is affirmed. SUMMARY The obviousness rejection is affirmed. 11

12 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R (a). AFFIRMED lp BAYER MATERIAL SCIENCE LLC 100 BAYER ROAD PITTSBURGH PA