Ex Parte Dreier et al

Board of Patent Appeals and Interferences

Dec 15, 2008

11032434 (B.P.A.I. Dec. 15, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte THORSTEN DREIER, ROLF ROERS, MATTHAUS GOSSNER,
and
SVEN MEYER-AHRENS
____________

Appeal 2008-5284
Application 11/032,434
Technology Center 1700
____________

Decided: December 15, 2008
____________

Before BRADLEY R. GARRIS, LINDA M. GAUDETTE, and
JEFFREY B. ROBERTSON, Administrative Patent Judges.

ROBERTSON, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) (2002) from the
Examiner’s rejection of claims 1-13. (Examiner’s Answer entered
Appeal 2008-5284
Application 11/032,434

November 9, 2007, hereinafter “Ans.”). We have jurisdiction pursuant to 35
U.S.C. § 6(b) (2002).
We AFFIRM.
THE INVENTION
Appellants’ claimed invention is directed to flexible polyurethane
foam satisfying the requirements of Federal Motor Vehicle Safety Standard
(FMVSS) 302. (Spec. 2, ll. 1-12). The flexible polyurethane foam is a
reaction product of an organic and/or modified polyisocyanate with a polyol
component. (Spec. 3, ll. 3–21). The polyol component includes from about
90 to about 99 parts by weight of a polyether polyol having an OH value of
from about 20 to about 200 mg KOH/g and a functionality of 2 to 4, and
from about 1 to about 10 parts by weight of a polyether ester polyol having
an OH value of from about 150 to about 450 mg KOH/g and a functionality
of from about 2 to about 3. (Spec. 3, l. 28 – 5, l. 20). The polyurethane
foam is prepared in the presence of water and/or another blowing agent, a
catalyst, a stabilizer, optionally a flame retardant, and optionally another
additive. (Spec. 5, l. 21 – 7, l. 7).

Claim 1, reproduced below, is representative of the subject matter on
appeal.
1. A flexible polyurethane foam satisfying the requirements of
FMVSS 302 comprising the reaction product of

a) an organic and/or modified polyisocyanate with

b) a polyol component comprising:
1) from about 90 to about 99 parts by weight of
a polyether polyol having an OH value of
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from about 20 to about 200 mg KOH/g and
a functionality of 2 to 4,
and

2) from about 1 to about 10 parts by weight of
a polyether ester polyol having an OH value
of from about 150 to about 450 mg KOH/g
and a functionality of from about 2 to about
3,
in the presence of

c) water and/or another blowing agent,

d) a catalyst,

e) a stabilizer,

f) optionally, a flame retardant and,

g) optionally, an auxiliary and/or additive which is
different from c), d), e) and f).

THE REJECTIONS
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Sollers 5,552,449 Sep. 3, 1996
Mattesky 6,391,933 B1 May 21, 2002

The Examiner rejected claims 1-13 under 35 U.S.C. § 103(a) (2002)
as being unpatentable over Mattesky, alone, or in view of Sollers. The
Examiner found that Mattesky discloses preparing flexible polyurethane
foams, but that Mattesky does not require a mixture of polyether ester
polyols with polyether polyols. (Ans. 3). The Examiner found that
Mattesky discloses a mixture of polyols in the examples as well as polyether
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Application 11/032,434

ester polyols having hydroxyl numbers and functionalities that overlap the
claimed polyether ester polyols. (Ans. 3). The Examiner concluded that it
would have been obvious to have employed the polyether ester polyols
disclosed by Mattesky in combination with the polyether polyols of
Mattesky in order to impart foam forming reactive effects. (Ans. 4). The
Examiner found that Mattesky does not teach the amounts of each polyol,
but concluded that discovering the optimal or workable ranges would have
been a matter of routine skill in the art. (Ans. 4). The Examiner also found
that Mattesky does not require fire retardant additives. (Ans. 4). The
Examiner found that Sollers teaches fire retardant additives in closely related
polyurethane foam preparations. (Ans. 4). The Examiner concluded that it
would have been obvious to add the flame retardants of Sollers in the
preparations of Mattesky to impart flame retardant effects in Mattesky’s
products. (Ans. 4).
Appellants contend that Mattesky does not suggest the claimed
combination of polyether and polyether ester polyols. (Appeal Brief filed
September 4, 2007, hereinafter “Br.,” 4). Appellants argue that Mattesky is
silent as to flame retardancy and fails to provide any information as to how
to satisfy FMVSS 302. (Br. 4). Appellants contend that the working and
comparison examples of the present Specification show that the claimed
combination of polyols is essential to produce the claimed polyurethane
foams. (Br. 5). Appellants argue that Sollers does not disclose polyether
ester polyols. (Br. 6). Appellants contend that Sollers does not teach foams
that satisfy FMVSS 302 in the absence of a flame retardant. (Br. 6 and 7).

ISSUES
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Application 11/032,434

Based on the contentions of the Appellants and the Examiner, the
issues are:
Have Appellants shown that the Examiner erred in concluding that the
claimed polyurethane foam which satisfies FMVSS 302 would have been
prima facie obvious over Mattesky alone?
Have Appellants shown the Examiner erred in concluding that the
claimed polyurethane foam which satisfies FMVSS 302 would have been
prima facie obvious over Mattesky in view of Sollers?
If Appellants have failed to show that the Examiner erred, have
Appellants provided sufficient unexpected results to overcome the
Examiner’s prima facie case?

FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence.
1. Mattesky describes flexible polyurethane foams that are the
reaction product of at least one polyol and toluene diisocyanate in
the presence of a blowing agent, catalyst, and a stabilizer. (Col. 1,
l. 65 – col. 2, l. 2).
2. Mattesky describes polyols including polyether polyols, polyester
polyols, and polytetramethylether glycol caprolactam based esters
(polyether ester polyols). (Col. 3, ll. 53-67).
3. Mattesky describes a combination of two polyether polyols in the
examples. (Col. 4, ll. 58-64).
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4. Sollers describes flexible polyurethane foams that are the reaction
product of a mixture of polyols and a diisocyanate. (Col. 3, ll. 3-
32).
5. Sollers teaches that flame retardants are added to the polyurethane
foams and that the foams satisfy FMVSS 302. (Col. 5, ll. 11-60).
6. Appellants’ Specification discloses two comparative examples
where a combination of polyester polyol and polyether polyol did
not produce polyurethane foams that satisfy FMVSS 302. (Spec.
8, l. 5 – 9, l. 26; 10, Table, Examples 2 and 3).
7. Appellants’ Specification discloses polyurethane foams that satisfy
FMVSS 302 where the polyurethane foam contains a flame
retardant and is produced from a polyol component including a
single polyether polyol. (Spec. 8, l. 5 – 9, l. 26; 11, Table,
Examples 8, 11, and 13).
8. Appellants’ Specification discloses examples of polyurethane
foams that satisfy FMVSS 302 where the polyurethane foam
contains a flame retardant and is produced from a polyol
component including a polyether polyol and a polyether ester
polyol. (Spec. 8, l. 5 – 9, l. 26; 11, Table, Examples 6, 7, 9, and
10).
9. Appellants’ Specification discloses examples of polyurethane
foams that do not satisfy FMVSS 302 where the polyurethane
foam is produced from a polyol component including a polyether
polyol and a polyether ester polyol within the claimed amounts.
(Spec. 8, l. 5 – 9, l. 26; 11, Table, Examples 14 and 15).
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10. Appellants’ Specification contains no examples of polyurethane
foams produced from a polyol component including a polyether
polyol and a polyether ester polyol in amounts outside the claimed
ranges.

PRINCIPLES OF LAW
The disclosure of a reference may be relied upon for all it contains,
and is not limited to what is disclosed in the examples. In re Heck, 699 F.2d
1331, 1332-33 (Fed. Cir. 1983) (quoting In re Lemelson, 397 F.2d 1006,
1009 (CCPA 1968)). In responding to a prima facie case of obviousness,
one cannot show nonobviousness by attacking references individually where
the rejections are based on combinations of references. In re Keller, 642
F.2d 413 (CCPA 1981); In re Merck & Co., Inc., 800 F.2d 1091 (Fed. Cir.
1986).
A showing of unexpected results may be sufficient to overcome a
prima facie case of obviousness. In re Dillon, 919 F.2d 688, 692-93 (Fed.
Cir. 1990) (internal citations omitted). Such a showing must be based on
evidence, not argument or speculation. In re Mayne, 104 F.3d 1339, 1343-
44 (Fed. Cir. 1997); In re Schulze, 346 F.2d 600, 602 (CCPA 1965). The
evidence must also be reasonably commensurate in scope with the claimed
invention. In re Greenfield, 571 F.2d 1185, 1189 (CCPA 1978). Further,
the Federal Circuit has held that when the difference between a claimed
invention and the prior art is a claimed range; the applicant must show that
the range is critical through unexpected results. In re Woodruff, 919 F.2d
1575, 1578 (Fed. Cir. 1990) (internal citations omitted).
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ANALYSIS
Appellants have not separately grouped the claims subject to each of
the two grounds of rejection. Accordingly, we confine our discussion to
appealed claim 1, which contains the claim limitations representative of the
arguments made by Appellants pursuant to 37 C.F.R. § 41.37(c)(1)(vii)
(2006).1
Appellants have not demonstrated that the Examiner erred in
concluding the claimed polyurethane foam would have been prima facie
obvious over Mattesky alone. Mattesky discloses that at least one polyol
may be employed to produce the disclosed polyurethane foams. (FF 1).
Mattesky discloses a combination of two polyether polyols in the Examples.
(FF 3). Mattesky discloses that the polyols may be chosen from polyether
polyols, polyester polyols, or polyether ester polyols. (FF 2). Considering
the teachings of Mattesky as a whole, Mattesky suggests a combination of
any two of the disclosed polyols. Thus, Mattesky is not limited to the
disclosed combination of polyether polyols in the examples as argued by
Appellants. In addition, the flame retardant properties are an effect of the
combination of polyether polyols and polyether ester polyols used to prepare
the polyurethane foam. (See Ans. 5).
Appellants have not presented sufficient evidence to overcome the
Examiner’s prima facie case of obviousness that the claimed polyurethane
foams would have been obvious over Mattesky alone in the absence of a

1 Only those arguments actually made by Appellants have been considered in
this decision. Arguments which Appellants could have made but chose not
to make have not been considered and are deemed to be waived. See 37
C.F.R. § 41.37 (c)(1) (vii) (2004).
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flame retardant. Appellants’ Specification shows that a combination of
polyester and polyether polyols produces polyurethane foams that do not
satisfy FMVSS 302 in the absence of a flame retardant. (FF 6). Polyester
polyols are one of the polyols described by Mattesky. However, Appellants’
Specification also shows examples where a combination of polyether and
polyether ester polyols produces polyurethane foams that do not satisfy
FMVSS 302 in the absence of a flame retardant. (FF 9). Although
Appellants argue that these examples are outside the scope of claim 1 (Reply
Brief filed January 8, 2008, hereinafter “Rep.,” 2), Appellants offer no
explanation as to why this is the case. The examples appear to contain the
required polyol components in the required amounts set forth in claim 1. In
addition, Appellants have not provided sufficient evidence that the claimed
amounts of each polyol are critical to satisfying FMVSS 302. Appellants’
Specification shows no examples where the amounts of each polyol are
outside the claimed ranges. (FF 10). Accordingly, Appellants’ Specification
fails to provide sufficient evidence commensurate in scope with the claims
to overcome the Examiner’s prima facie case of obviousness over Mattesky
alone.
Appellants have not demonstrated that the Examiner erred in
concluding the claimed polyurethane foam would have been prima facie
obvious over Mattesky in view of Sollers. Appellants argue that Sollers
does not teach the claimed polyol combination. However, the Examiner
does not rely on Sollers for the combination of polyols as claimed, but for
the addition of flame retardant to flexible polyurethane foams. Appellants
cannot overcome a prima facie case by attacking each reference individually.
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Appellants have not provided sufficient unexpected results in order to
overcome the Examiner’s rejection of Mattesky in view of Sollers.
Appellants have not sufficiently demonstrated unexpected superior
properties of the claimed combination of polyether polyols and polyether
ester polyols in the presence of flame retardant compared to combinations of
the other polyols disclosed by Mattesky in the presence of a flame retardant.
The polyurethane foam of claim 1 optionally contains a flame retardant.
Therefore, Appellants’ experimental results of polyurethane foams in the
absence of flame retardant are not commensurate in scope with the claimed
polyurethane foams. Appellants’ Specification shows polyurethane foams
containing flame retardant with and without the claimed polyol component,
which have the same rating when subjected to FMVSS 302. (FF 7 and 8).
Thus, Appellants have not demonstrated that the claimed combination of
polyols produces unexpected superior results compared to combinations of
the other prior art polyols when the polyurethane foam is prepared in the
presence of a flame retardant.

CONCLUSION
Appellants have not shown that the Examiner erred in concluding that
the claimed polyurethane foam which satisfies FMVSS 302 would have
been obvious over Mattesky.
Appellants have not shown the Examiner erred in concluding that the
claimed polyurethane foam which satisfies FMVSS 302 would have been
obvious over Mattesky in view of Sollers.
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Appellants have not presented sufficient unexpected results in order to
overcome the Examiner’s prima facie case of obviousness over Mattesky or
Mattesky in view of Sollers.

ORDER
We affirm the Examiner’s decision rejecting claims 1-13 under 35
U.S.C. § 103(a) as being unpatentable over Mattesky.
We affirm the Examiner’s decision rejecting claims 1-13 under 35
U.S.C. § 103(a) as being unpatentable over Mattesky in view of Sollers.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 CFR §1.136(a)(1)(iv).
AFFIRMED

tc

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