Ex Parte Brown

Board of Patent Appeals and Interferences

Aug 29, 2008

10326338 (B.P.A.I. Aug. 29, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte SCOTT A. BROWN
____________

Appeal 2008-3333
Application 10/326,338
Technology Center 1700
____________

Decided: August 29, 2008
____________

Before EDWARD C. KIMLIN, CHARLES F. WARREN, and
CATHERINE Q. TIMM, Administrative Patent Judges.

TIMM, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1-6, 8-10, 13-45, and 47-48. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.

Appeal 2008-3333
Application 10/326,338

I. BACKGROUND
The invention relates to a composition for preparing polyurethane
foams, particularly for strengthening and sealing voids and geological
formations in a wet environment. (Spec. ¶ 4). In particular, the invention
relates to the use of a substantially water insoluble ester diluent, which
allows the polyisocyanate component to react with a polyol while inhibiting
the more likely reaction of the polyisocyanate component with excess water.
(Spec. ¶ 29). Claims 1, 38, and 48 are illustrative of the subject matter on
appeal:
1. A foam comprising the reaction product of a composition, the
composition comprising:
polyisocyanate;
polyether polyol;
a blowing agent selected from the group consisting of water,
hydrofluorocarbons, hydrochlorofluorocarbons, aliphatic hydrocarbons and
mixtures thereof; and
ester diluent which is water insoluble and substantially non-reactive
with the polyisocyanate;
wherein the polyisocyanate, polyether polyol, and ester diluent
comprise at least about 80% by weight of the total composition; and wherein
the foam formed from said composition has a density of less than about 3
pounds per cubic foot.

38. A method of stabilizing or reducing earth subsidence beneath a
structure on a substrate with a polyurethane foam comprising:
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mixing a composition of polyisocyanate, a polyether polyol, a
blowing agent selected from the group consisting of water,
hydrofluorocarbons, hydrochlorofluorocarbons, aliphatic hydrocarbons and
mixtures thereof, and an ester diluent which is water insoluble and
substantially non-reactive with the polyisocyanate to form a reaction
mixture, wherein the polyisocyanate, polyether polyol, and ester diluent
comprise at least 80% by weight of the total composition; and
injecting the reaction mixture into the substrate to form a foam having
a density of less than about 3 pounds per cubic foot.

48. A composition for forming dimensionally stable foam in wet
environments, the composition comprising:
polyisocyanate;
polyether polyol;
blowing agent; and
2,2,4-trimethyl-1,3-pentanediol diisobutyrate;
wherein the polyisocyanate, polyether polyol, and 2,2,4-trimethyl-l ,3-
pentanediol diisobutyrate comprise at least about 97% by weight of the total
composition.

The Examiner relies on the following prior art references to show
unpatentability:
Haekkinen US 4,567,708 Feb. 4, 1986
Inagaki et al. US 5,741,825 Apr. 21, 1998
Hagquist US 6,288,133 B1 Sep. 11, 2001

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Oertel, Günter, ed., “Flexible Polyurethane Molded Foams,” Polyurethane
Handbook, 2nd Ed., Hanser Publishers, New York, pp. 220-221
(1994)(hereinafter “Oertel”).

The Examiner maintains the following rejections:
1. Claims 1-2, 5-6, 8-10, 13-18, 21-23, 25-28, 30-37, 42-44, and
47 rejected under 35 U.S.C. § 102(b) as anticipated by Inagaki et al.
(“Inagaki”);
2. Claims 38-41 rejected under 35 U.S.C. § 103(a) as obvious over
Haekkinen in view of Inagaki; and
3. Claims 3, 4, 19, 20, 24, 29, 45, and 48 rejected under 35 U.S.C.
§ 103(a) as obvious over Inagaki in view of Oertel.
Appellant provides arguments for each of these rejections separately.
However, Appellant does not provide separate arguments for any individual
claims within each rejection. Thus, we decide these grounds of rejection on
the basis of claims 1, 38, and 48. See 37 C.F.R. § 41.37(c)(1)(vii)(“When
multiple claims subject to the same ground of rejection are argued as a group
by appellant, the Board may select a single claim from the group of claims
that are argued together to decide the appeal with respect to the group of
claims as to the ground of rejection on the basis of the selected claim
alone.”).
II. DISCUSSION
A. Rejection under 35 U.S.C. § 102(b) based on Inagaki
Appellant argues that the phrase “a blowing agent selected from the
group consisting of water, hydrofluorocarbons, hydrochlorofluorocarbons,
aliphatic hydrocarbons and mixtures thereof,” as recited in claim 1, limits
the claim to only these “conventional blowing agents” and excludes the
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“specialized blowing agents” taught by Inagaki, specifically
iodofluorohydrocarbons, perfluoroalkenes and hydrogen-containing
fluoromorpholine derivatives. (App. Br. 5; Reply Br. 6). To support this
argument, Appellant explains that Appellant’s Specification does not teach
the specialized blowing agents (App. Br. 6) and that Inagaki does not teach
that the specialized blowing agents could be omitted or replaced by the
conventional blowing agents claimed. (Reply Br. 2). Appellant also argues
that the Examiner has based the finding that a greater than 97%
concentration of polyisocyanate, polyol and ester diluent are taught by
Inagaki on an allegedly erroneous fact, i.e., that the blowing agent would no
longer be present in the foam. (App. Br. 6).
The Examiner responds that Inagaki teaches the presence of water and
other blowing agents, as claimed. (Ans. 7). The Examiner finds that the
specialized blowing agents taught by Inagaki are not excluded by the claims,
but rather the claims “are open to other elements not expressly recited.”
(Ans. 7-8). The Examiner also argues that Sample 1-2 of Example 1 of
Inagaki teaches a 75% content of the polyisocyanate, polyether polyol and
ester diluent components, which is “about 80%” as claimed. (Ans. 8). The
Examiner also responds that “regarding the higher values set forth by
appellant’s claims, examiner maintains that upon formation of gas to cause
gas formation the specialized blowing agent of Inagaki et al. is no longer a
component of the foam which is formed.” (Ans. 8).
The issue on appeal arising from the contentions of Appellant and the
Examiner is: has Appellant shown that the Examiner reversibly erred in
finding that claim 1 reads on the teachings of Inagaki?

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The evidence of record supports the following Findings of Fact (FF):
1. Appellant’s Specification teaches that
Organic blowing agents include, but are not
limited to, non-ozone depleting
hydrofluorocarbons, non-ozone depleting
hydrochlorofluorocarbons and aliphatic
hydrocarbons. Conventional blowing agents
known for preparing water-blown and non-water
blown polyurethanes may be used. The blowing
agents may be used singly or in mixtures. The use
of individual blowing agents or mixtures of
blowing agents is determined by the desired
properties of the polyurethane. A person of
ordinary skill in the art of preparing polyurethanes
can make the selection of the proper blowing agent
or combination of blowing agents for a particular
application by routine testing.
(Spec. ¶ 40).
2. Inagaki teaches that “[a]nother preferable blowing agent of the
present invention is the above-mentioned blowing agent further mixed with
a hydrocarbon, in particular a hydrocarbon having a boiling point of 50º C or
lower.” (Inagaki, col. 3, ll. 32-35).
3. Inagaki also teaches that “water is used as the blowing agent in
addition to the above-mentioned blowing agent.” (Inagaki, col. 3, ll. 36-38).
4. While Inagaki teaches that “the permeation of the gas of the
blowing agent is hard to occur” when water is used as the blowing agent,
Inagaki does not teach that permeation never occurs. (Inagaki, col. 7, ll. 27-
30).
5. Inagaki teaches that “there still remains an inconvenience of
possible decomposition of the blowing agent inside the closed cells” when a
reducing agent is not used. (Inagaki, col. 7, l. 56 to col. 8, l. 4).
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"It is a ‘bedrock principle’ of patent law that ‘the claims of a patent
define the invention to which the patentee is entitled the right to exclude.’"
Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed.Cir.2005) (en banc).
During examination, "claims . . . are to be given their broadest reasonable
interpretation consistent with the specification, and . . . claim language
should be read in light of the specification as it would be interpreted by one
of ordinary skill in the art." In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d
1359, 1364 (Fed. Cir. 2004).
“‘Comprising’ is a term of art used in claim language which means
that the named elements are essential, but other elements may be added and
still form a construct within the scope of the claim.” Genentech Inc. v.
Chiron Corp., 112 F.3d 495, 501 (Fed. Cir. 1997); see also In re Baxter,
656 F.2d 679, 686 (CCPA 1981)(“the term ‘comprises’ permits the inclusion
of other steps, elements, or materials.”). However, “[b]y using the term
‘consisting essentially of,’ the drafter signals that the invention necessarily
includes the listed ingredients and is open to unlisted ingredients that do not
materially affect the basic and novel properties of the invention.” PPG
Indus., Inc. v. Guardian Indus. Corp., 156 F.3d 1351, 1354 (Fed. Cir. 1998).
To establish that “consisting essentially of” excludes specific unlisted
ingredients, Appellant bears the burden of: (1) showing the basic and novel
characteristics of their claimed invention, and (2) establishing how those
characteristics would be materially changed by any allegedly excluded
component of an applied reference. See In re DeLajarte, 337 F.2d 870,
873-74 (CCPA 1964).
Applying the preceding legal principles to the Factual Findings in the
record of this appeal, we determine that Appellant has not shown that the
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Examiner reversibly erred in finding that claim 1 reads on the teachings of
Inagaki.
Claim 1 uses the open language “comprising” with respect to the
components of the claimed composition. (Claim 1). As such, the claim is
open to the inclusion of components other than those elements explicitly
claimed. Genentech, 112 F.3d at 501. The phrase “selected from the group
consisting of water, hydrofluorocarbons, hydrochlorofluorocarbons,
aliphatic hydrocarbons and mixtures thereof” is common Markush-type
claim language. The “consisting of” transitional phrase only delineates the
group from which at least one blowing agent element must be selected. The
use of such Markush-type claim language, however, does not negate the
open “comprising” language used to delineate the elements of the claimed
composition. Therefore, the claim is open to the inclusion of any additional
blowing agent(s), including the specialized blowing agents taught by
Inagaki. Since Inagaki clearly teaches water and other hydrocarbons as
blowing agents in addition to the specialized blowing agents (FF 2-3),
Inagaki teaches the presence of a blowing agent as claimed. The additional
presence of the specialized blowing agent does not prevent the teachings of
Inagaki from falling within the scope of claim 1.1

1 We note that claim 43 uses the partially closed phrase “consisting
essentially of” rather than the “comprising” language of claim 1. However,
Appellant did not argue claim 43 separately and under a separate heading.
(See App. Br.) As such, we chose to make our determination based on claim
1. See 37 C.F.R. § 41.37(c)(1)(vii). Nonetheless, the specialized blowing
agents would not be excluded by the “consisting essentially of” language
because Appellant has not demonstrated that such blowing agents would
materially affect the basic and novel properties of the invention. PPG
Indus., 156 F.3d at 1354; DeLajarte, 337 F.2d at 873-74. Rather, the
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Additionally, Appellant has not contested the Examiner’s finding that
Sample 1-2 of Example 1 of Inagaki teaches a 75% content of the claimed
polyisocyanate, polyol and ester diluent, which is “about 80%” as called for
in claim 1. (See App. Br. and Reply Br.). Rather, Appellant contests the
Examiner’s basis for finding in the teachings of Inagaki the recitation of
97% concentration recited in, for instance, Appellant’s claim 2. (App. Br.
6). As noted above, Appellant did not separately argue any claims under a
separate heading, and thus we chose claim 1 to base our determination. See
37 C.F.R. § 41.37(c)(1)(vii). Based on the uncontested rationale of the
Examiner regarding this limitation and on our analysis above, we determine
that Appellant has not shown that the Examiner reversibly erred in finding
that claim 1 reads on the teachings of Inagaki. Accordingly, we sustain the
Examiner’s rejection under 35 U.S.C. § 102(b) based on the teachings of
Inagaki.
Additionally, since the limitation of 97% content of the claimed
polyol, polyisocyanate and ester diluent is recited in claim 48, the rejection
of which is discussed below, we agree with the Examiner that one of
ordinary skill in the art would have understood that some of the blowing
agent would be released, consumed, permeated out of the foam or
decomposed, as suggested by Inagaki. (FF 4-5). As such, we agree with the
Examiner that the weight content of the remaining polyol, polyisocyanate
and ester diluent in the foam material made from the composition taught by
Specification evinces that one of ordinary skill in the art could select any
organic blowing agent, either alone or in a mixture, that is suitable for use in
the present invention by routine experimentation based on the desired
properties of the foam. (FF 1).
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Inagaki would be greater than in the initial composition due to some loss of
the blowing agent.

B. Rejection under 35 U.S.C. § 103(a) based on Haekkinen and Inagaki
Appellant’s arguments regarding claims 38-41 rest on the fact that
“Inagaki et al. does not teach or suggest the foam composition required by
Appellant’s claims,” as argued above. (App. Br. 7).
Thus, for the same reasons addressed above and since Appellant does
not contest the combination of Haekkinen and Inagaki, we sustain the
Examiner’s rejection under 35 U.S.C. § 103(a) based on the teachings of
Haekkinen and Inagaki.

C. Rejection under 35 U.S.C. § 103(a) based on Inagaki, Oertel and
Hagquist
In addition to the arguments presented above regarding the teachings
of Inagaki, Appellant argues that “one of ordinary skill in the art would not
consider it obvious to combine the teachings of those references [Inagaki
and Hagquist] in the manner suggested by the Examiner,” since Inagaki is
directed to refrigerator insulation and Hagquist is directed to repair of
surface defects. (App. Br. 8).
To this argument, the Examiner responds that “each of the references
are reasonably pertinent to the particular problem with which appellant is
involved in that they are concerned with urethane article manufacture.”
(Ans. 9).
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The issue on appeal arising from the contentions of Appellant and the
Examiner is: has Appellant shown that the Examiner reversibly erred in
combining the teachings of Inagaki and Hagquist?
The evidence of record supports the following Findings of Fact (FF):
6. Inagaki states that “in view of the control of the cell diameter
and easiness in on-the-spot blowing/molding, polyurethane is particularly
preferred. The following description will therefore be made on the resin
foamed material produced by using urethane reaction.” (Inagaki, col. 3, ll.
54-59).
7. Inagaki teaches adding an ester “for the purposes of lowering
the viscosity of the raw material and of improving the intermiscibility of the
blowing agent with the raw material.” (Inagaki, col. 14, ll. 22-27).
8. Hagquist teaches a polyurethane composition that can be
foamed in the presence of high concentrations of water to locally repair
surface defects or reinforce structural members, such as spike holes left after
spike removal from railroad ties. (Hagquist, col. 1, ll. 22-28).
9. Hagquist teaches using 2,2,4-trimethyl-1,3-pentanediol
diisobutyrate as a plasticizer to enhance flow characteristics by reducing the
viscosity. (Hagquist, col. 9, ll. 21-32).
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 127 S. Ct. 1727,
1734 (2007). The question of obviousness is resolved on the basis of
underlying factual determinations including (1) the scope and content of the
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prior art, (2) any differences between the claimed subject matter and the
prior art, (3) the level of skill in the art, and (4) where in evidence, so-called
secondary considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18
(1966). See also KSR, 127 S. Ct. at 1734 (“While the sequence of these
questions might be reordered in any particular case, the [Graham] factors
continue to define the inquiry that controls.”).
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR Int'l Co. v. Teleflex Inc., 127 S. Ct. 1727, 1739 (2007).
Applying the preceding legal principles to the Factual Findings in the
record of this appeal, we determine that Appellant has not shown that the
Examiner reversibly erred in combining the teachings of Inagaki and
Hagquist.
Claim 48 calls for 2,2,4-trimethyl-1, 3 pentanediol diisobutyrate
(“TXIB”). (Claim 48). The Examiner relies on Hagquist to teach the use of
TXIB in a polyurethane foam. (Ans. 6-7). Hagquist teaches the use of
TXIB and Inagaki teaches the use of an ester for the same purpose, to lower
the viscosity of the materials in the formation of a polyurethane foam. (FF
6-9). Thus, one of ordinary skill in the art would have used TXIB as the
ester taught by Inagaki as TXIB would have yielded the predictable result of
lowering the viscosity of the materials of the polyurethane foam taught by
Inagaki. KSR, 127 S. Ct. at 1739. We find that both the polyurethane foams
taught by Inagaki and Hagquist are intended to be formed on-the-spot, or in
the location of use. (FF 6 and 8). Thus, one of ordinary skill in the art of
polyurethane foam manufacture would have considered the teachings of the
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references for the foams’ composition, despite the difference in intended use
of the foams once manufactured.
Therefore, we determine that Appellant has not shown that the
Examiner reversibly erred in combining the teachings of Inagaki and
Hagquist. Accordingly, we sustain the Examiner’s rejection under 35 U.S.C.
§ 103(a) based on the teachings of Inagaki, Oertel and Hagquist.
III. CONCLUSION
As indicated above, we reach the following conclusions:
(1) We sustain the Examiner's rejection of claims 1-2, 5-6, 8-10,
13-18, 21-23, 25-28, 30-37, 42-44, and 47 under 35 U.S.C. § 102(b) as
anticipated by Inagaki;
(2) We sustain the Examiner's rejection of claims 38-41 under 35
U.S.C. § 103(a) as obvious over Haekkinen in view of Inagaki; and
(3) We sustain the Examiner's rejection of claims 3, 4, 19, 20, 24,
29, 45, and 48 under 35 U.S.C. § 103(a) as obvious over Inagaki in view of
Oertel.
IV. DECISION
We affirm the decision of the Examiner.
V. TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(1)(iv).
AFFIRMED

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