Ex Parte Braun et al

Patent Trial and Appeal Board

Jun 14, 2017

13322108 (P.T.A.B. Jun. 14, 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.
13/322,108 11/22/2011 Frank Braun 074014-0452-286587 8625
123223 7590 06/16/2017
Drinker Biddle & Reath LLP (WM)
222 Delaware Avenue, Ste. 1410
Wilmington, DE 19801-1621
EXAMINER
DOLLINGER, MICHAEL M
ART UNIT PAPER NUMBER
1766
NOTIFICATION DATE DELIVERY MODE
06/16/2017 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):
IPDocketWM @ dbr.com
penelope. mongelluzzo @ dbr. com
DB RIPDocket @ dbr. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte FRANK BRAUN and FRANK PRISSOK
Appeal 2016-004036
Application 13/322,1081
Technology Center 1700
Before WESLEY B. DERRICK, CHRISTOPHER C. KENNEDY, and
JENNIFER R. GUPTA, Administrative Patent Judges.
DERRICK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from the final rejection of
claims 14-19 and 21 under 35 U.S.C. § 103(a) as being unpatentable over
Prissok2 in view of Loh.3 We have jurisdiction under 35 U.S.C. § 6.
We AFFIRM.
1 Appellants identify BASF SE as the real party in interest. Appeal Br. 2.
2 Prissok et al., WO 2007/082838 Al, published July 26, 2007; the Office
relies on corresponding English language US 2010/0222442 Al, published
September 2, 2010, the use of which is not contested.
3 Loh et al., US 2007/0179205 Al, published August 2, 2007.
Appeal 2016-004036
Application 13/322,108
THE INVENTION
The subject matter of the claims on appeal relates to a process for
production of an expandable thermoplastic polymer comprising water as
blowing agent that includes the steps of storing the thermoplastic polymer in
water so that water is absorbed to obtain the expandable thermoplastic
polymer. Specification filed November 22, 2011 (“Spec.”), Abstract, 1,
11. 5-9.
Claim 14—the sole independent claim—is representative.
14. A process for the production of an expandable
thermoplastic polymer consisting of polyurethane comprising
water as single blowing agent, comprising at least the step of:
(A) immersing of a thermoplastic polymer consisting of
polyurethane in water for a period of 1 to 300
hours, so that water is absorbed by the
polyurethane, in order to obtain an expandable
polyurethane, wherein after step (A), the water
content of the expandable polyurethane is at least
5% by weight.
DISCUSSION4
We have reviewed the ground of rejection set forth by the Examiner,
Appellants’ arguments, and the Examiner’s response to the proffered
arguments. See Final Act. 2-\\ Appeal Br. 3-9; Ans. 2-5. On this record,
we are unpersuaded that the Examiner erred reversibly and we determine
that a preponderance of the evidence supports the Examiner’s conclusion of
obviousness. We add the following.
4 We refer to the Specification, the Final Office Action dated March 26,
2015 (“Final Act.”), the Appeal Brief filed August 24, 2015 (“Appeal Br.”),
and the Examiner’s Answer dated December 14, 2015 (“Ans.”).
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Application 13/322,108
The Examiner relies on Prissok for its disclosure of a process for
preparing expandable and expanded particles of thermoplastic polyurethane
(TPU) including the impregnation of TPU pellets with 1 to 30 parts by
weight of a blowing agent impregnated at a temperature of 100 to 150 °C
for, generally, 0.5 to 10 hours. Ans. 2 (citing Prissok H 31, 38, 40^11).
Prissok discloses that the TPU pellets are “heated with water, with a
suspending agent, and with the blowing agent.” Prissok 131. The Examiner
further finds Prissok discloses impregnating the TPU beads with water.
Ans. 2. As found by the Examiner, Prissok discloses that the blowing agent
can be a hydrocarbon. Ans. 2 (citing Prissok 135).
Loh is directed to polymer expanded foams, including polyurethane
foams, and discloses the use of water as an internal blowing agent. The
Examiner relies on Loh for its teaching that “water provides a low-cost,
environmentally friendly alternative to conventional hydrocarbon blowing
agents.” Ans. 2-3 (citing Loh 13). The Examiner further finds Loh to
“teach[] that the polymer beads may be expanded by means of hot air,
supersaturated water steam or microwave heating.” Ans. 3 (citing Loh 17)
(emphasis omitted).
The Examiner concludes that it would have been obvious to one of
ordinary skill armed with the knowledge of the cited art to have used water
as the blowing agent in Prissok because Loh teaches that water is a low-cost,
environmentally friendly alternative to conventional hydrocarbon blowing
agents as used in Prissok. Ans. 3.
Appellants contend that the Examiner has failed to establish a prima
facie case of obviousness and further proffer evidence to rebut the prima
facie case.
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Application 13/322,108
In arguing against the prima face case, Appellants concede that
Prissok discloses heating TPU pellets with water and a blowing agent, but
contend that water is not included in the listed blowing agents that are
incorporated in the disclosed amounts of 0.1 to 40 parts by weight. Appeal
Br. 5—6 (citing Prissok || 35-38).
Appellants proffer further arguments directed in the main to the
Examiner’s reliance on Loh. Appellants contend that one of ordinary skill in
the art would not have had a reasonable expectation of success using water
as a blowing agent because “Loh deals specifically with polystyrene foams”
rather than polyurethane foams as in Prissok or the instant invention.
Appeal Br. 6. Similarly, Appellants contend that if Loh were to disclose
polyurethane, it “could only be considered a disclosure generally of
polyurethane, not specifically thermoplastic polyurethane” and that for this
reason as well there would be no reasonable expectation of success. Appeal
Br. 7. Appellants also contend that Loh fails to “furnish the required
suggestion for immersion of polyurethane in water” and does not “suggest a
polyurethane immersed in water, where after the immersion the water
content is at least 5% by weight.” Appeal Br. 6. Appellants also contend
that Loh would not suggest a process in which water is used as the only
blowing agent because water is disclosed “as a carrier and as a co-blowing
agent.” Appeal Br. 6-7 (citing Loh || 13, 38).
Appellants’ arguments as to Prissok not disclosing water as a blowing
agent is wholly without persuasive merit because the Examiner relies on
Loh, not Prissok, for the teaching that water can be used as an alternative to
hydrocarbon blowing agents and one cannot show nonobviousness by
attacking references of a combination individually. In re Keller, 642 L.2d
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Application 13/322,108
413, 425 (CCPA 1981) (The relevant obviousness analysis “is what the
combined teachings of the references would have suggested to those of
ordinary skill in the art.”).
Appellants’ argument that one of ordinary skill would not have had a
reasonable expectation of success in applying Loh’s teaching of water as a
blowing agent because it specifically deals with polystyrene foam rather
than polyurethane is not persuasive because Loh does, in fact, teach
polyurethane beads. Ans. 3 (citing Loh 133); see also Loh 17. It is well
established that a reference is good for all that it fairly teaches a person
having ordinary skill in the art. See, e.g., Merck & Co., Inc. v. Biocraft
Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989); In re Mills, 470 F.2d 649,
651 (CCPA 1972). Also, as reasonably set forth by the Examiner, and
unrebutted in the absence of a Reply Brief by Appellants, “the foaming with
water as a blowing agent is a mostly physical process, and the ordinarily
skilled artisan would expect it to work in most non-reactive polymers.”
Ans. 3. As to Appellants’ related argument grounded on Loh merely
disclosing polyurethane and not of a thermoplastic polyurethane, it is
unpersuasive for the reasons that set forth by the Examiner including
thermoplastic polyurethane would be immediately envisaged by the
ordinarily skilled artisan and, more importantly, that Prissok is relied on for
the thermoplastic polyurethane (TPU). Ans. 4 (citing Prissok, Abstract).
Further, Appellants have not asserted that the proposed modification
to the process of Prissok would have been beyond the capabilities of a
person of ordinary skill in the art at the time of the invention. Absent such
an assertion, we “take account of the inferences and creative steps that a
person of ordinary skill in the art would employ” and find a person of
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Application 13/322,108
ordinary skill in the art would have overcome those difficulties within their
level of skill. KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
As to Loh not specifically disclosing the water immersion step recited
in the claims or that the water content is at least 5%, the Examiner rightly
sets forth both that the immersion step is disclosed in the primary reference
Prissok and that Loh specifically recites a water content of 10% in polymers.
Ans. 3—4 (citing Loh, Table 1). further, on this record, we are apprised of
no particular meaning as to immersion that is contrary to that in Prissok in
which TPU pellets were heated with, inter alia, water. See, e.g., Prissok
131.
As to Appellants’ argument that Loh would not suggest use of water
alone as a blowing agent, but only as a co-blowing agent with other blowing
agents, on this record, we are unpersuaded of reversible error because Loh
teaches that “[wjater provides a low-cost, environmentally friendly
alternative to conventional hydrocarbon blowing agents” (Loh 113) and
Appellants fail to direct us to any persuasive argument or persuasive
evidence that this teaching would not reasonably suggest to a skilled artisan
the substitution of water for Prissok’s conventional hydrocarbon blowing
agent (Prissok 135). See In re Preda, 401 L.2d 825, 826 (CCPA 1968)
(“[I]n considering the disclosure of a reference, it is proper to take into
account not only specific teachings of the reference but also the inferences
which one skilled in the art would reasonably be expected to draw
therefrom.”). Moreover, the “prior art reference must be ‘considered
together with the knowledge of one of ordinary skill in the pertinent art.’” In
re Paulsen, 30 L.3d 1475, 1480 (Led. Cir. 1994) (quoting In re Samour, 571
L.2d 559, 562 (CCPA 1978)). As to Appellants’ reliance on paragraph 38 of
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Appeal 2016-004036
Application 13/322,108
Loll, the passage merely states that “the polymer beads may be co-foamed”
and not that they must be co-foamed.
On this record, for the reasons above, we are not persuaded that the
Examiner erred reversibly in determining the claims would have been prima
facie obvious over Prissok in view of Loh.
We now turn to the proffered evidence of unexpected results.
Appellants contend that there are advantages that would not have been
expected by a person of ordinary skill in the art. Appeal Br. 7-9. In
support, Appellants rely on the differences between Examples 1 and 2,
particularly as to the amount of water taken up by granules upon soaking and
then on the expansion upon treatment with steam. Spec. 17,1. 35-18,1. 24.
Under the single set of conditions used, granules of the thermoplastic
polyurethane A in Example 1 take up water—increasing in weight by 60%—
and expand when treated with steam while granules of the thermoplastic
polyurethane B in Example 2 do not take up much water—increasing in
weight by 2%—do not expand when treated with steam. Appeal Br. 7-9;
Spec. 17,1. 35-18,1. 24. Appellants contend that “if immersion does not
result in an amount of water of at least 5% by weight [the amount of water
recited in claim 14], no polyurethane foam can be obtained at all.” Appeal
Br. 8. Appellants further contend that “the example and the comparative
example clearly show the advantage of the present invention.” Appeal Br. 8.
On this record, having considered the proffered evidence, cited
portions of the Specification, we find it wholly insufficient to rebut the
prima facie case. It is well established that Appellants bear the burden of
showing the claimed invention imparts unexpected results. In re Geisler,
116 F.3d 1465, 1470 (Fed. Cir. 1997); In re Klosak, 455 F.2d 1077, 1080
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Application 13/322,108
(CCPA 1972). To meet the burden, Appellants must establish that the
results actually would have been unexpected, and that the unexpected results
are reasonably commensurate with the scope of protection sought by the
claims on appeal. In re Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983); In re
Clemens, 622 F.2d 1029, 1035 (CCPA 1980); Klosak, 455 F.2d at 1080.
As to the results being unexpected, Appellants direct us to no
persuasive evidence, but only proffer repeated contentions that fail even to
cite to any portion of the Specification that includes an assertion that the
results were unexpected. Appeal Br. 7-9. That is insufficient because
“[attorney’s argument. . . cannot take the place of evidence.” In re
Pearson, 494 F.2d 1399, 1405 (CCPA 1974). Further, as highlighted by the
Examiner, there is a reasonable basis for the results to be expected as
explained in response to the proffer (Ans. 4-5), as well as in the relied on
teachings of Loh using water as a blowing agent (Ans. 2—4).
We also find Appellants’ position that the proffered data is
commensurate with the scope of the claims ill-founded because there is no
persuasive evidence, or even cogent argument, as to the similarity of what
was used in testing—thermoplastic polyurethane A in Example 1 that took
up 60 wt. % water—with what is encompassed by claim 14 which merely
requires it be a thermoplastic polyurethane that can take up at least 5 wt. %
water upon immersion for a specified period of time. In re Harris, 409 F.3d
1339, 1344 (Fed. Cir. 2005) (“Even assuming that the results were
unexpected, Harris needed to show results covering the scope of the claimed
range. Alternatively Harris needed to narrow the claims.”).
On balance, the evidence of record weighs most heavily in favor of
the Examiner’s conclusion of obviousness.
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Appeal 2016-004036
Application 13/322,108
DECISION
The Examiner’s decision rejecting claims 14-19 and 21 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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