Ex Parte Dobransky

Board of Patent Appeals and Interferences

Sep 14, 2009

10965352 (B.P.A.I. Sep. 14, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
_________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte MICHAEL A. DOBRANSKY
__________

Appeal 2009-002432
Application 10/965,352
Technology Center 1700
___________

Decided: September 14, 2009
___________

Before BRADLEY R. GARRIS, ADRIENE LEPIANE HANLON, and
CHARLES F. WARREN, Administrative Patent Judges.

HANLON, Administrative Patent Judge.

DECISION ON APPEAL

A. STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134 from an Examiner’s decision
rejecting claims 1-13 and 15-26. We have jurisdiction under 35 U.S.C.
§ 6(b). We AFFIRM.
Appeal 2009-002432
Application 10/965,352

The subject matter on appeal is directed to a rigid polyurethane foam.
Claim 1, reproduced below, is illustrative.
1. A rigid polyurethane foam comprising the reaction
product of:

a polyol component comprising,

about 70% to about 40% by weight, based on the
weight of the polyol component, of at least one
polyether polyol, and

about 30% to about 60% by weight, based on the
weight of the polyol component, of at least one
polyester polyol having an OH number of less than
about 350 mg KOH/g; with

at least one isocyanate, at a polyol component to
isocyanate ratio of about 1:1.25 by volume,

in the presence of a blowing agent chosen from n-pentane,
isopentane and cyclopentane, and optionally, in the presence of
at least one of catalysts, fillers, additives and surfactants,

wherein the rigid polyurethane foam has a cross linking density
of less than about 2.6.

Br. 11, Claims Appendix.1
The following Examiner’s rejections are before us on appeal:
(1) Claims 1-13 and 15-26 are rejected under 35 U.S.C. § 102(b) as
anticipated by Hickey.2
(2) Claims 1-13 and 15-26 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Javarone.3

1 Appeal Brief dated March 19, 2008.
2 WO 00/61654 published October 19, 2000.
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(3) Claims 1-13 and 15-26 are rejected under 35 U.S.C. § 103(a) as
unpatentable over White.4
The Appellant indicates that claims 1-13 and 15-26 stand or fall
together for each of the rejections on appeal. Br. 3-4.
B. ISSUES
(1) Has the Appellant identified reversible error in the Examiner’s
finding that Hickey anticipates the polyurethane foam recited in claim 1?
(2) Has the Appellant identified reversible error in the Examiner’s
conclusion that the polyurethane foam recited in claim 1 would have been
obvious to one of ordinary skill in the art in view of the teachings of
Javarone or White?
C. FINDINGS OF FACT
The Examiner found that Hickey discloses:
[P]reparations of polyisocyanate based foams prepared using
polyether and polyester polyol blends as claimed, isocyanates,
alkane blowing agents, and catalysts that are prepared at
isocyanate indexes meeting the values of appellants’ claims and
under reactant conditions such that the crosslink degrees of
appellants’ claims are inherently possessed by the produced
foams (see abstract, page 12 lines 12-23, the examples, and the
entire document).

Ans. 3.5
The Examiner found that Hickey Example F4 describes a foam having
a polyol/isocyanate ratio that anticipates the ratio recited in claim 1. Ans. 7.
The Examiner found that Javarone discloses:

3 EP 1 219 653 A1 published July 3, 2002.
4 US 6,348,161 B1 issued February 19, 2002.
5 Examiner’s Answer dated May 28, 2008.
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[P]reparations of polyisocyanate based foams prepared using
polyether and polyester polyol blends as claimed, isocyanates,
alkane blowing agents, and catalysts that are prepared at
isocyanate indexes in overlap with the values of appellants’
claims and under reactant conditions such that the crosslink
degrees of appellants’ claims are held to be possessed by the
produced foams (see abstract, paragraph [0009]-[0024], [0033],
and the examples, as well as, the entire document).

Ans. 4.
The Examiner found that the difference between Javarone and the
claimed subject matter is that Javarone “is not specific in its requirement of
isocyanate to polyol content values of ‘about 125’.” Ans. 4.
The Examiner found that White discloses:
[P]reparations of polyisocyanate based foams prepared using
polyether and polyester polyol blends as claimed, isocyanates,
alkane blowing agents, and catalysts and under reactant
conditions and using amounts of crosslinking agents such that
the crosslink degrees of appellants’ claims are held to be
possessed by the produced foams (see abstract, column 3 line
48-column 7 line 20, and the claims, as well as, the entire
document).

Ans. 5.
The Examiner found that the difference between White and the
claimed subject matter is that White “is not specific in its requirement of
isocyanate to polyol content values of ‘about 125’.” Ans. 5.
D. PRINCIPLES OF LAW
“To anticipate a claim, a prior art reference must disclose every
limitation of the claimed invention, either explicitly or inherently.” In re
Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1977). “A reference is no less
anticipatory if, after disclosing the invention, the reference then disparages
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it.” Celeritas Technologies, Ltd. v. Rockwell Intern. Corp., 150 F.3d 1354,
1361 (Fed. Cir. 1998).
A claimed invention is not patentable if the subject matter of the
invention would have been obvious to a person having ordinary skill in the
art at the time the invention was made. 35 U.S.C. § 103(a); KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 405 (2007); Graham v. John Deere Co., 383
U.S. 1, 13 (1966).
E. ANALYSIS
1. Issue (1)
The Appellant argues that Hickey discloses a polyol blend made from
a polyester polyol containing a hydrophobic material. The Appellant argues
that claim 1 does not require this special polyol blend. Br. 5.
Claim 1 recites “A rigid polyurethane foam comprising the reaction
product of: a polyol component comprising . . . at least one polyether
polyol, and . . . at least one polyester polyol having an OH number of less
than about 350 mg KOH/g . . . .” Br. 11, Claims Appendix (emphasis
added). Hickey discloses a polyol blend comprising a polyether polyol and a
polyester polyol which contains a hydrophobic material. See, e.g., Hickey
6:22-7:14.
In the §102(b) rejection before us, the issue is not whether claim 1
requires the polyol blend disclosed in Hickey. The issue is whether the
polyol blend of Hickey is within the scope of the claimed polyol blend.
Claim 1 does not expressly exclude a polyester polyol containing a
hydrophobic material. See In re Baxter, 656 F.2d 679, 686 (CCPA 1981)
(term “comprising” permits the inclusion of unrecited materials). Moreover,
the Appellant has failed to direct us to any evidence establishing that the
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polyester polyol of Hickey, which contains the hydrophobic material, has an
OH number outside the claimed range. Thus, we conclude that the polyol
blend disclosed in Hickey is within the scope of the polyol blend recited in
claim 1.
The Appellant also generally contends that none of the examples in
Hickey are conducted at the polyol/isocyanate ratio recited in claim 1. Br. 5.
The Examiner directs our attention to Example F46 of Hickey and
finds:
Example F4 at page 46 of Hickey et al. provides 100
parts polyol to 117.72 parts of isocyanate {1:1.1772} and an
isocyanate Index value of 120 which in the context of the
instant invention anticipates the range of values encompassed
by “about 1:1.25” set forth by appellants’ claims.

Ans. 7; see also Pall Corp. v. Micron Separations, Inc., 66 F.3d 1211, 1217
(Fed. Cir. 1995) (“The use of the word ‘about,’ avoids a strict numerical
boundary to the specified parameter.”).
Significantly, the Appellant does not contest the Examiner’s findings.
Thus, we find that Hickey describes a polyol/isocyanate ratio that anticipates
the claimed polyol/isocyanate ratio. See In re Wertheim, 541 F.2d 257, 267
(CCPA 1976) (“the disclosure in the prior art of any value within a claimed
range is an anticipation of the claimed range”).
Finally, the Appellant argues that Hickey does not mention that the
disclosed foams are usable at high temperatures. Br. 5-6.
Claim 1 does not recite that the claimed foams are usable at “high”
temperatures. See In re Self, 671 F.2d 1344, 1348 (CCPA 1982) (arguments
based on limitations not appearing in the claims fail at the outset). However,

6 Example F4 uses inventive polyol blend P. Hickey 46, 36.
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to the extent the claimed foams are usable at high temperatures, there is no
reason to believe that the foams described in Hickey would not also be
usable at high temperatures. See In re Spada, 911 F.2d 705, 708 (Fed. Cir.
1990) (“The discovery of a new property or use of a previously known
composition, even when that property and use are unobvious from the prior
art, can not impart patentability to claims to the known composition.”).
In sum, the Appellant has not identified reversible error in the
Examiner’s finding that Hickey anticipates the polyurethane foam recited in
claim 1.
2. Issue (2)
a. Javarone
There is no dispute that Javarone discloses foams prepared from
polyol blends comprising polyester polyols and polyether polyols, and
hydrocarbon blowing agents. However, the Appellant argues that the foams
prepared from the polyol blends disclosed in Javarone are unstable
emulsions, requiring water levels of less than 0.5%.7 In contrast, the
Appellant argues that “[t]he instantly claimed polyol blends are phase stable
(although not explicitly stated in the application) and the instant example has
a higher water level than allowed by Javarone et al.”8 For this reason, the
Appellant argues that Javarone does not teach or suggest the foams recited in
claim 1. Br. 7.
The Appellant’s argument is not persuasive of reversible error. First,
claim 1 does not recite a water level. See Self, 671 F.2d at 1348 (arguments

7 We note that Javarone discloses that the water level may be as high as 5%
by weight. Javarone, para. [0024].
8 According to the Appellant’s Specification, the polyurethane foam
described in Example 1 contained 0.5% by weight water. Spec. 15.

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based on limitations not appearing in the claims fail at the outset). Second,
to the extent the Appellant is arguing that the foams recited in claim 1
exhibit unexpected stability, the Appellant has failed to direct us to any
evidence of unexpected results. See In re Schulze, 346 F.2d 600, 602
(CCPA 1965) (“Argument in the brief does not take the place of evidence in
the record.”).
In sum, the Appellant has not identified reversible error in the
Examiner’s conclusion that the polyurethane foam recited in claim 1 would
have been obvious to one of ordinary skill in the art in view of the teachings
of Javarone.
b. White
The Appellant argues that White discloses a specific polyol blend that
“was not used in the instant disclosure.” Br. 9.
The Appellant’s argument is not persuasive of reversible error. The
issue under §103(a) is whether the claimed polyol blend would have been
obvious to one of ordinary skill in the art in view of the teachings in White.
The Examiner found, and the Appellant does not contest, that White
discloses a polyol blend within the scope of claim 1. Ans. 5.
The Appellant also argues that White does not report any foam
properties and does not teach or suggest that the disclosed foams can
withstand high temperatures. Br. 9.
This argument is not persuasive of reversible error. Claim 1 does not
recite that the foams can withstand “high” temperatures. See Self, 671 F.2d
at 1348 (arguments based on limitations not appearing in the claims fail at
the outset). To the extent the Appellant is arguing that the foams recited in
claim 1 can unexpectedly withstand high temperatures, the Appellant has
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failed to direct us to any evidence of unexpected results. See Schulze, 346
F.2d at 602 (“Argument in the brief does not take the place of evidence in
the record.”).
In sum, the Appellant has not identified reversible error in the
Examiner’s conclusion that the polyurethane foam recited in claim 1 would
have been obvious to one of ordinary skill in the art in view of the teachings
of White.
F. DECISION
The decision of the Examiner 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).

AFFIRMED

tc

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