Ex Parte Avis

Board of Patent Appeals and Interferences

Jul 28, 2009

10421570 (B.P.A.I. Jul. 28, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte RICHARD AVIS
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Appeal 2008-001400
Application 10/421,570
Technology Center 1700
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Decided: 1July 28, 2009
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Before JEFFREY T. SMITH, KAREN M. HASTINGS, and
JEFFREY B. ROBERTSON, Administrative Patent Judges.

SMITH, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134 the final rejection of claims
50-69. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b).

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the Decided Date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
Appeal 2008-001400
Application 10/421,570

We AFFIRM.
Appellant’s invention is directed to a game ball that incorporates a
polymer foam processed with an inert fluid blowing agent. (Spec. 1).
Claim 50 is illustrative:
50. A soccer ball comprising:
a cover that forms an exterior surface of a soccerball, the cover including a
plurality of panels connected along abutting edges;
a foam layer located within the cover, foam layer including a closed cell,
cross-linked, foam processed with a high-purity nitrogen blowing agent, and
the foam layer being substantially devoid of chemical residue from a
chemical blowing agent;
a textile layer located within the foam layer, the textile layer including at
least one textile material; and
an inflatable bladder located within the textile layer.

The Examiner relies on the following prior art reference as evidence
of unpatentability:

Murphy US 4,454,253 Jun. 12, 1984
Sullivan US 5,356,941 Oct.18, 1994
Walker US 5,647,590 Jul. 15, 1997
Chan US 2003/0228946 A1 Dec. 11, 2003

Appellant appeals the following rejection:
Claims 50-69 stand rejected under 35 U.S.C. § 103(a) as being
obvious over the combined teachings of Murphy, Chan, Walker, and
Sullivan.

ISSUE
The issue presented for review is: Has Appellant satisfied his burden
of showing that that the foam of Murphy is produced by a process that
results in foam that is not substantially devoid of chemical residue from a
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chemical blowing agent as required by the independent claims? We decide
this issue in the negative.
We have thoroughly reviewed each of Appellant’s arguments for
patentability. However, we are in complete agreement with the Examiner
that the claimed subject matter is not patentable within the meaning of § 103
in view of the applied prior art. Accordingly, we will sustain the Examiner’s
rejection.

PRINCIPLES OF LAW
It has long been held that “‘[i]f the product in the product-by-process
claim is the same as or obvious from a product of the prior art, the claim is
unpatentable even though the prior product was made by a different
process.’” SmithKline Beecham Corp. v. Apotex Corp., 439 F.3d 1312, 1317
(Fed. Cir. 2006) (quoting In re Thorpe, 777 F.2d 695, [697] (Fed. Cir.
1985)).
“Where a product-by-process claim is rejected over a prior art product
that appears to be identical, although produced by a different process, the
burden is upon the applicants to come forward with evidence establishing an
unobvious difference between the claimed product and the prior art
product.” In re Marosi, 710 F.2d 799, 803 (Fed. Cir. 1983). In re Best, 562
F.2d 1252, 1255 (CCPA 1977).
“Product-by-process” limitations define or characterize a product by
reciting the way the product is made. Claims containing such limitations are
interpreted during prosecution as being anticipated by or obvious in view of
any product, no matter how made, that is the same as any product made by a
process within the scope of the steps recited in the claim. See, e.g., In re
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Thorpe, 777 F.2d 695, 697 (Fed. Cir. 1985) (“[i]f the product in a product-
by-process claim is the same as or obvious from a product of the prior art,
the claim is unpatentable even though the prior product was made by a
different process.”) (citations omitted).
FACTUAL FINDINGS (FF)
1. Conventional soccer balls are substantially spherical and have a
layered construction that includes a cover, a supportive structural lining, and
an inflatable bladder. Soccer balls may also incorporate a polymer foam
layer to enhance pliability and cushioning. (Spec. [05] and [06]; Chan
[0002]).
2. Suitable polymer foams for soccer balls include foamed
polyolefin polymers and foamed polyurethane polymers. . (Spec. [06]; Chan
[0025]).
3. Traditional soccer ball covers are modeled into a plurality of
panel configurations including twenty hexagonal panels and twelve
pentagonal panels. (Spec. [06]; Chan [0003]).
4. The specification discloses a “manufacturing process
commonly employed to produce polyolefin foam suitable for the
conventional soccer ball utilizes chlorofluorocarbons, hydrofluorocarbons,
or volatile hydrocarbons as a blowing agent.” (Spec. [07]) The
specification discloses a draw back to the disclosed blowing agents is the
possible release of chemicals that are considered to be detrimental to the
global environment and possible errors in the manufacturing process. (Spec.
[07])
5. The specification discloses polymer foams processed with a
nitrogen blowing agent are known and “are commercially-available from
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Application 10/421,570

Zotefoams Inc. of Croyden, England. under the tradenames of
PLASTAZOTE, which is a closed cell, cross-linked polyethylene foam;
EVAZOTE and SUPAZOTE, which are closed cell, cross-linked ethylene
copolymer foams; and PROPOZOTE, which is a closed cell polypropylene
copolymer foam.” (Spec. [21])
6. Murphy describes a process for preparing polymer
(polyurethane) foams utilizing water which reacts with excess isocyanate to
produce carbon dioxide as the blowing agent. (Ans. 3; Murphy, col. 4, ll.
48-53).
7. Appellant has not relied upon evidence to establish that
chemical residue remains from the blowing agent utilized in Murphy. (See
Briefs generally).
8. Appellant has not specifically challenged the Examiner's
reliance upon the teachings of the Walker and Sullivan references. (See
Briefs generally).

ANALYSIS
The Examiner’s finding that Murphy’s foam is substantially devoid of
chemical residue from a chemical blowing agent and therefore is identical to
the foam material of the claimed invention (Ans. 3; Final Office Action 2-3)
properly shifted the burden of showing that Murphy’s foam composition
does possess chemical residue from a chemical blowing agent. Best, 562
F.2d at 1255. Appellant has not explained why it would have been expected
that Murphy's foam product would have contained chemical residue from the
utilized blowing agent. Appellant has not relied upon evidence to establish
that chemical residue remains in the foam product from the blowing agent
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utilized in Murphy. Moreover, Appellant also has not established that the
blowing agent utilized in Murphy suffers from the same draw backs as
fluorocarbon blowing agents discussed in the specification.
Appellant’s specification acknowledges that the cited prior art
establishes that the formation of a soccer ball comprising a foam layer was
known to persons of ordinary skill in the art. Consequently, Appellant’s
arguments (App. Br. 8-9) that there is no motivation to utilize the foam
described in Murphy in a soccer ball are not persuasive.
Appellant’s arguments for patentability of claims 52, 54-69 are
premised on the product-by-process discussion presented for claim 50.
(App. Br. 10-12). These arguments are not persuasive for the reasons set
forth above. Appellant’s discussion of claims 52, 54-69 directed to
identification of features of these claims are not separate arguments.
For the foregoing reasons and those presented in the answer we affirm
the appealed rejection.2

2 It is not disputed that the utilization of polymer (polyurethane or
polyolefin) foam in soccer balls was known to persons of ordinary skill in
the art. (Note the specification and cited prior art). The idea of using known
commercially available polymer foam in soccer balls would have been
obvious to a person of ordinary skill in the art. That is, a person of ordinary
skill in the art would have reasonably expected that the use of polymer foam
produced utilizing an inert blowing agent that is commercially available
would have been suitable for use in soccer balls. See, e.g., KSR Int’l Co. v.
Teleflex, Inc., 550 U.S. 398, 416 (2007) (“when a patent claims a structure
already known in the prior art that is altered by the mere substitution of one
element for another known in the field, the combination must do more than
yield a predictable result”).

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Appeal 2008-001400
Application 10/421,570

DECISION
We affirm the Examiner’s § 103(a) rejection of claims 50-69 over the
combined teachings of Murphy, Chan, Walker, and Sullivan.
AFFIRMED

tc

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