Ex Parte Assemat et al

Patent Trial and Appeal Board

Mar 3, 2017

13580607 (P.T.A.B. Mar. 3, 2017)

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.
13/580,607 08/22/2012 Virginie Assemat 69192-US-PCT 1359
109 7590 03/07/2017
The Dow Chemical Company
P.O. BOX 1967
2040 Dow Center
Midland, MI 48641
EXAMINER
RIOJA, MELISSA A
ART UNIT PAPER NUMBER
1768
NOTIFICATION DATE DELIVERY MODE
03/07/2017 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):
FFUIMPC@dow.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte VIRGINIE ASSEMAT, CHRISTIAN GOELLER, and
LUDOVIC HARELLE
Appeal 2016-001556
Application 13/580,607
Technology Center 1700
Before KAREN M. HASTINGS, RAE LYNN P. GUEST, and
DEBRA L. DENNETT, Administrative Patent Judges.
DENNETT, Administrative Patent Judge.
DECISION ON APPEAL1
STATEMENT OF THE CASE
Appellants2 appeal under 35 U.S.C. § 134(a) from a rejection of
claims 1—10. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 In this Opinion, we refer to the Specification filed August 22, 2012
(“Spec.”); the Final Action delivered electronically on January 26, 2015
(“Final Act.”); the Appeal Brief filed April 13, 2015 (“App. Br.”); and the
Examiner’s Answer delivered electronically on September 9, 2015 (“Ans.”).
Appellants did not file a Reply Brief.
2 Appellants identify Dow Global Technologies LLC as the real party in
interest. App. Br. 3.
Appeal 2016-001556
Application 13/580,607
The claims are directed to a one component foam formulation, an
article comprising five liters or more of the formulation; and a method for
dispensing the formulation. Claims 1, 6, and 8. Claim 1, reproduced below,
is illustrative of the claimed subject matter:
1. A one-component-foam formulation comprising an
isocyanate compound, a polyol, an amine catalyst, an
emulsifier, a cell opener, surfactant and propellant wherein the
propellant is present at a concentration in a range of from 5 to
35 weight-percent of the total one-component-foam formulation
weight and that is at least 50 weight-percent non-liquefied inert
gases based on total propellant weight, the surfactant is a
silicone glycol copolymer and the cell opener is present at a
concentration in a range from greater than zero weight-percent
to less than 0.008 weight-percent based on polyol weight.
App. Br. 13 (Claims App’x).
REFERENCES
The Examiner relies on the following prior art in rejecting the claims
on appeal:
Treadwell US 4,200,699 Apr. 29, 1980
Radovich US 4,452,924 June 5, 1984
Reese et al. US 5,631,319 May 20, 1997
(“Reese”)
Braun et al. US 6,013,691 Jan. 11,2000
(“Braun”)
Bleys et al. US 2009/0069456 Al Mar. 12, 2009
(“Bleys”)
Kalinowski et al. US 2010/0158614 Al June 4, 2010
(“Kalinowski”)
REJECTIONS
The Examiner maintains the rejection of the claims under 35 U.S.C. §
103(a) as follows: (1) claims 1^4 over Braun in view of Bleys, as evidenced
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Application 13/580,607
by Treadwell; (2) claim 5 over Braun in view of Bleys, as evidenced by
Treadwell, and further in view of Kalinowski, as evidenced by Radovich;
and (3) claims 6—10 over Braun in view of Bleys, as evidenced by
Treadwell, and further in view of Reese. Final Act. 3 and 5—9. The
Examiner withdrew the rejection of claim 10 under 35 U.S.C. § 112(b) in the
Advisory Action electronically delivered on March 11, 2015.
OPINION
All of the claims are rejected as obvious over at least the combination
of Braun in view of Bleys, as evidenced by Treadwell. Final Act. 3 and 5—9.
Appellants argue that the Examiner failed to make a prima facie case for
obviousness because Bleys is non-analogous art to Appellants’ invention and
therefore cannot properly be combined with Braun. See, e.g., App. Br. 11.
Appellants argue claims 1—4 as a group. App. Br. 8. We select claim
1 as representative of the group. Claims 2-4 will stand or fall with claim 1.
37 C.F.R. § 41.37(c)(l)(iv). Because Appellants argue patentability of
separately rejected claims 5—10 “for the same reasons set forth with respect
to Claim 1” (Appeal Brief 12), these claims will also stand or fall with claim
1.
The Examiner finds, and Appellants do not dispute, that Braun teaches
all limitations of claim 1 except the claimed amount of cell-opener. Final
Act. 3-4; see App. Br., generally. The Examiner finds that Braun discloses
the presence of cell-opener EP 89-95-03 in an amount of 0.11% by weight of
the polyol composition in Example 6, “but does not provide a general
teaching regarding the amount of cell opener that may be used.” Final Act.
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Application 13/580,607
4. The Examiner further finds that Bleys3 teaches that cell-openers are
suitably provided in an amount as low as 0.0001 weight percent calculated
from the amount of polyisocyanate and polyol used to make the foam, and
this would correspond to roughly 0.003 weight percent based on the weight
of the polyol. Id. at 4.
Appellants contend that Bleys is non-analogous art to either
Appellants’ invention or to Braun, because Appellants’ invention and Braun
are asserted to be directed to one-component foam formulations, while Bleys
is asserted to be directed to two-component foam formulations. App. Br. 8.
Whether art is analogous is a factual question, requiring inquiry into
the similarities of the problems and the closeness of the subject matter as
viewed by a person of ordinary skill. Scientific Plastic Prods., Inc. v.
Biotage AB, 766 F.3d 1355, 1360 (Fed. Cir. 2014); see also In re Clay, 966
F.2d 656, 658 (Fed. Cir. 1992) (“Whether a reference in the prior art is
‘analogous’ is a fact question.”). The scope of analogous art is to be
construed broadly. Wyers v. Master Lock Co., 616 F.3d 1231, 1238 (Fed.
Cir. 2010) (“The Supreme Court’s decision in KSR [ ] directs us to construe
the scope of analogous art broadly, stati ng that ‘'familiar items may have
obvious uses beyond their primary purposes, and a person of ordinary skill
often will be able to fit the teachings of multiple patents together like pieces
3 The Examiner misidentifies the Bleys reference as “Fekovic et al.” (see
Final Action 4), but specifies paragraph 24 as making the statement
regarding the amount of cell-opener, and thus clarifies that the Bleys
reference is the intended applied reference (see Bleys 124 (“The amount of
cell opener needed in general is rather small; it may vary between 0.0001—2
and preferably between 0.0001—1 % by weight calculated on the amount of
polyisocyanate and polyol used to make the foam.”)). The Examiner’s
reference to “Fekovic et al.” is harmless error.
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Application 13/580,607
of a puzzle.’” (citing KSR Int’l Co. v. Teleflex, Inc,, 550 U.8. 398, 402
(2007) (emphasis added)).
“Two separate tests define the scope of analogous prior art: (1)
whether the art is from the same field of endeavor, regardless of the problem
addressed and, (2) if the reference is not within the field of the inventor’s
endeavor, whether the reference still is reasonably pertinent to the particular
problem with which the inventor is involved.” In re Bigio, 381 F.3d 1320,
1325 (Fed. Cir. 2004) (citations and internal quotes omitted).
Appellants argue that the field of endeavor of the instant invention is
limited to one-component foams, while Bleys is directed to a different field
of endeavor: a foam formulation technology that requires including water in
the formulation, i.e., two-component foam. App. Br. 8. The Example and
Comparative Examples in the Specification each state that the polyol blend
of the invention optimally contains less than 0.07 wt% water based on polyol
blend weight. Spec. 7,11. 26—28; 9,11. 6—8 and 19—20.
Appellants point to pages 61—63 of Polyurethane Sealants:
Technology and Applications by Robert M. Evans,4 in support of their
argument that one-component foams/sealants and two-component
foams/sealants are “very different from one another.” App. Br. 6. We find
this argument unpersuasive. As the Examiner explained, Appellants’
invention and Bleys are both concerned with polyurethane foams which are
prepared with substantially similar ingredients via the reaction of isocyanate
compounds and isocyanate reactive compounds, including polyols and
4 See Robert M. Evans, Polyurethane Sealants: Technology and
Applications 61—63 (1993), submitted with the Appeal Brief. We consider
the reference as a courtesy, but do not find it persuasive of reversible error
by the Examiner.
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Application 13/580,607
water. Ans. 9—10. In the instant application and in both Braun and Bleys,
the reaction mixture comprises cell openers. Cf. Spec. 2,11. 31-32 with
Braun, col. 11,11. 6-8 and Bleys 124. The cell opener serves to ensure
formation of an open cell foam to aid dimensional stability during curing.
Spec. 5,11. 10—12; see also Bleys Tflf 6, 8, 24, 46; Braun col. 10,11. 14—19.
The closeness of the subject matter and similarities of the problems
addressed by the instant invention and Bleys suggest that one of ordinary
skill in the art at the time of the invention would find them to be in the same
field of endeavor.
Moreover, we are not persuaded that Bleys is limited in its teachings
to two component foams, as argued by Appellants (see App. Br. 7-8).
Notably, Bleys teaches that its composition could be combined with water
(the two component embodiment) or, alternatively, “may be pre-reacted into
a so-called pre-polymer and subsequently this prepolymer may be reacted
with the water in the presence of the cell opener,” i.e., a one component
embodiment. Bleys 124; see also Advisory Action 3, mailed March, 11,
2015.
Bleys is also “reasonably pertinent to the particular problem with
which the inventor is involved.” In re Bigio, 381 F.3d at 1325. “A reference
is reasonably pertinent if. . . it is one which, because of the matter with
which it deals, logically would have commended itself to an inventor’s
attention in considering his problem. If a reference disclosure has the same
purpose as the claimed invention, the reference relates to the same problem,
and that fact supports use of that reference in an obviousness rejection.”
Innovention Toys, LLCv, MGA Entm’t, Inc,, 637 F.3d 1314, 1321 (Fed. Cir.
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2011) (quoting In re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992); see also In re
Klein, 647 F,3d 1343, 1348 (Fed. Cir. 2011) (same standard).
In order to portray Bleys as not reasonably pertinent art, Appellants
characterize the problem with which they were involved to be “a problem of
achieving an OCF [one-component foam] formulation in a professional scale
pressure vessel that uses a non-liquefied inert propellant at 20 atmospheres
pressure or more and that produces foam having no visible shrinkage and
with properties similar to those made with conventional propellants.” App.
Br. 11 (emphasis added). We disagree. Appellants did not dispute the
Examiner’s findings that Braun taught all limitations of claim 1 except for
the amount of cell opener claimed. See Final Act. 3^4; App. Br., generally.
Bleys logically would have commended itself to the attention of the
inventors here in resolving the problem of determining the most desirable
amount of cell opener to employ in the polyurethane foam composition of
Braun, and, thus, Bleys is reasonably pertinent to the problem addressed by
the invention, i.e., the difference between the prior art and the claimed
invention.
In addition, given the teachings of Braun are limited to single
exemplary cell opener concentration, it would have been a matter of only
routine experimentation for one having ordinary skill in the art at the time of
the invention to have discovered the optimal and workable ranges of cell
opener for the formulation of claim 1. See In re Alter, 220 F.2d 454, 456
(CCPA 1955) (“[I]t is not inventive to discover the optimum or workable
ranges by routine experimentation.”). Thus, a prima facie case of
obviousness of claim 1 is established. Appellants do not argue and have not
directed us to evidence to find that a one component foam having a cell
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Application 13/580,607
opener concentration of less than 0.008 weight percent has properties
different from those taught by Braun having a cell opener concentration of
0.11, particularly in light of the teachings of Bleys, which suggests
successful results over the entire described cell opener concentration range.
Appellants do not identify reversible error in the rejection of claim 1
under 35 U.S.C. § 103(a). For the reasons stated above, Appellants also fail
to identify reversible error in the rejection of claims 2—10.
DECISION/ORDER
The rejections of (1) claims 1—4 over Braun in view of Bleys, as
evidenced by Treadwell; (2) claim 5 over Braun in view of Bleys, as
evidenced by Treadwell, and further in view of Kalinowski, as evidenced by
Radovich; and (3) claims 6—10 over Braun in view of Bleys, as evidenced by
Treadwell, and further in view of Reese are affirmed.
It is ordered that the Examiner’s decision 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)(l)(iv).
AFFIRMED
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