Ex Parte Eisen et al

Board of Patent Appeals and Interferences

Aug 29, 2007

11008592 (B.P.A.I. Aug. 29, 2007)

This opinion is not binding precedent of the Board.
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
Exparte BAYER MATERIALSCIENCE AG
Appeal 2007-3396
Application 1 11008,592'
Technology Center 1700
Decided: August 29,2007
Before RICHARD TORCZON, SALLY GARDNER LANE, and
MICHAEL P. TIERNEY, Administrative Patent Judges.
TORCZON, Administrative Patent Judge.
DECISION ON APPEAL
The claims on appeal broadly relate to processes for the production of
molded polyurethane articles having a compressed shell and a cellular core
(integral-skin foams) using inorganic zeolite^.^ All pending claims stand
rejected. The appellant (Bayer) seeks review of the rejection. We affirm.
1 Norbert Eisen, Hans-Detlef Arntz & Lutz Liebegott, Process for the
production ofpolyurethane integral skin foams (filed 9 December 2004).
2 Specification (Spec.) 1 :3-5.
Appeal 2007-3396
Application 1 11008,592
THE CLAIMS
Claims 1-7 are pending. Bayer does not provide separate arguments
for subgroups of claims so we treat the claims as standing or falling together
and select the sole independent claim as representative of the group.3
Claim 1 defines the invention as follow^:^
A process for the production of polyurethane integral
skin foams comprising
(1) preparing a polyol formulation (A) comprising
a) at least one polyol component having a OH
number of from 20 to 1050 and a
functionality of from 2 to 6, or a mixture of
polyol components having a mean OH
number of from 250 to 650 and a mean
functionality of from 2.5 to 5,
b) optionally, one or more chain extenders
and/or crosslinkers,
c) optionally, one or more activators,
d) water and
e) optionally, one or more additives and
auxiliary substances, and
(2) reacting formulation (A) with an isocyanate
component (B) con~prising
f ) one or more organic and/or modified organic
polyisocyanates and/or polyisocyanate pre-
polymers and
g) one or more inorganic zeolites.
The Board is obligated to construe pending claims as broadly as their
terms reasonably allow.5 The phrase "polyurethane integral skin foams"
37 C.F.R. tj 41.37(c)(l)(vii).
4 Claim language is reproduced from the claim appendix of the Appeal Brief
(Br .) .
In re Zletr, 893 F.2d 3 19, 321, 13 USPQ2d 1320, 1322 (Fed. Cir. 1989).
Appeal 2007-3396
Application 1 11008,592
means molded polyurethane foams with a compressed shell and a cellular
6 core. Integral-skin foams may be soft to rigid.7
Claim 1 uses the transition "comprising" three times: (1) in describing
the process steps, (2) in describing the polyol formulation, and (3) in
describing the isocyanate component. Use of "comprising" opens the
limitation so described to the inclusion of additional, unlisted elements.
Bayer uses "polyol" and "polyhydroxyl" interchangeably in its
~~ec i f i ca t ion .~ Hence, we construe "polyols" to be a synonym for
polyhydroxyls in the relevant art.
Elements b), c), and e) are included "optionally", which means that
they are not limiting.9 Reduced to essentials, formulation (A) must have at
least an appropriate polyol component and water, while component (B) must
have at least an appropriate polyisocyanate and an inorganic zeolite.
THE REJECTIONS
All claims are rejected under 35 U.S.C. 8 103 as directed to subject
matter that would have been obvious to a person having ordinary skill in the
art. The examiner relies on patents to ~ o r n , " ~kowronski," and is en'^ as
6 Spec. 1:3-5.
7 Spec. 2:7-10.
Spec. 2:20-25 & 3:24-4:lO.
In re Johnston, 435 F.3d 1381, 1384,77 USPQ2d 1788, 1790 (Fed. Cir.
2006) (optional elements do not limit a claim).
10 Peter Horn et al., Production of chlorofluorocarbon-free, urethane-
containing moldings having a cellular core and a compactedperipheral
zone, US 5,334,620 A1 (issued 2 August 1994) (Horn).
I I Michael J. Skowronski and Kenneth G. Trout, High equivalent weight
polyesterpolyols for closed cell, rigid foams, US 5,660,926 A1 (issued
26 August 1997) (Skowronski).
Appeal 2007-3396
Application 1 11008,592
evidence of obviou~ness.'~ The examiner has also rejected all claims under
a double-patenting theory as having been obvious in view of the Eisen patent
claims and the Horn and Skowronski patents.
OBVIOUSNESS
In analyzing obviousness, the scope and content of the prior art must
be determined, the differences between the prior art and the claims
ascertained, and the ordinary level of skill in the art resolved. Objective
evidence of the circumstances surrounding the origin of the claimed subject
matter (so-called secondary considerations) may also be relevant. Such
secondary considerations guard against the employment of impermissible
hindsight. l 4
Scope and content of the prior art
The Horn patent
Horn teaches processes for producing soft-elastic to rigid urethane
moldings having a cellular core, a compact peripheral zone, and a smooth
surface using polyisocyanate and water, rather than chlorofluorocarbons, as
the blowing agent.'' In discussing the prior art, Horn notes that using
l 2 Norbert Eisen and Daniel Seidlitz, Method for producing so8 to semi-rigid
polyurethane integral foamed materials, US 6,590,003 B2 (issued 8 July
2003) (Eisen).
l 3 Examiner's Answer (Ans.) 3.
14 Graham v. John Deere Co., 383 U.S. 1 , 17, 36 (1 966), cited with approval
in KSR Int'l v. Teleflex Inc., 127 S. Ct. 1727, 82 USPQ2d 1385 (2007). The
record on appeal does not contain objective evidence of secondary
considerations.
l 5 Horn 1:8-19.
Appeal 2007-3396
Application 1 11008,592
zeolites in water-based processes reacting polyols with polyisocyanates
improves the flame-resistance of such foams. The prior art also teaches
using polyols with mean hydroxyl (OH) ful~ctioi~ality of at least 2.2 and a
mean hydroxyl number of at least 300.16
Horn specifically teaches a process of reacting in a closed mold with
compaction: l 7
a) an organic andlor modified organic poly~socyanate
with
b) at least one relatively high-molecular-weight
compound containing at least two reactive hydrogen
atoms,
c) optionally, a low-molecular-weight chain extender
andlor crosslinking agent, in the presence of
d) a blowing agent,
e) a catalyst,
f) additives, wherein one of the additives is an
amorphous, microporous silica gel, and,
g) optionally, assistants.
The high-molecular weight compound b) has a functionality of from 2
to 8. The precise functionality relates to the resulting foam rigidity: a higher
functionality results in a more rigid foam. Polyols are recommended as
being particularly successful. l 8 In each of Horn's examples, a "urethane-
containing quasi-prepolyrner" called Component B is prepared by reacting a
polyisocyanate with a polyol or polyol mixture having a hydroxyl number of
2 5 0 . ' ~
l 6 Horn 2:8-28.
17 Horn 2:56-3:12 & claim 1.
Horn 4:5 1-5:5.
19 Horn 15:30-38, 16:28-38 & 17: 18-32.
Appeal 2007-3396
Application 1 11008,592
Horn teaches that in low-density (softer) foams it is advantageous to
use crystalline microporous molecular sieves in combination with the
amorphous microporous silica gel.2o Several zeolites are listed as
particularly suitable crystalline microporous molecular sieve^.^' One of the
zeolites recommended is faujasite, which Bayer requires as the zeolite in its
dependent claim 7.22 According to Horn, it is expedient to mix the silica gel
with the high molecular weight compound to improve the processing
properties and stability of this component of the system. 23 Horn also,
however, notes background art in which zeolites are added to both the polyol
and polyisocyanate components.24
The Skowronski patent
Skowronski relates to the preparation of insulating foams using high
equivalent weight polyester polyols to permit the use of blowing agents
other than conventional fully halogenated chlorofluorocarbons.'5 Any
hydrogen-containing blowing agent may be used although the focus is on
organic blowing agents, like hydrogen-containing halocarbons and
hydrocarbons. Water is suggested as a co-blowing agent with the hydrogen-
containing halo carbon^.^^
Skowronski notes that it is conventional to preforrnulate two
components, a polyisocyanate component and a polyol component that are to
20 Horn 11 :45-50.
21 Horn 11:51-12:15.
22 Br. 12.
23 Horn 1 1 :33-42.
24 Horn 2: 19-28.
25 Skowronski 1 :9- 15.
26 Skowronski 10: 1-3 1.
Appeal 2007-3396
Application 111008,592
be reacted together, with the remaining ingredients distributed between these
two components or added as yet another component.27 If water is used,
Skowronski teaches that it is convenient to add it with the polyo1.28
Bayer appears to question whether Skowronski is even analogous art.
Bayer argues that those in the art would not regard Skowronski's teachings
relating to closed-cell rigid foams to apply to Horn's and its own integral-
skin foams. It is not clear from the argument why this should necessarily be
true. No evidence is provided to support the argument. We cannot accept
bare argument as fact.29 Instead, we find compelling Horn's belief that
closed-cell rigid foams were pertinent in view of Horn's disclosure of such a
foam using zeolites in both the polyol and polylsocyanate components as
relevant background art.30
Bayer also argues that Skowronski does not teach the use of zeolites
and that its teachings cannot be combined with those of Horn to produce the
in~ent ion.~ ' These arguments are misdirected. The examiner does not rely
on Skowronski to teach the use of zeolites, so its deficiency in this regard is
hardly fatal to the rejection.32 Similarly, the rejection does not rest on a
physical corr~bination of the respective teachings of the references, but rather
on what the combined teachings of the references wo~lld mean to those in the
27 Skowronslu 12: 19-26.
28 Skowronski 12:40-42.
29 In re Geisler, 116 F.3d 1465, 1470,43 USPQ2d 1362, 1366 (Fed. Cir.
1997).
30 Horn 2: 19-28.
3 1 Br. 5 ; Reply 3.
3 2 Nat'l Steel Car, Ltd. v. Canadian Pac. Rwy., Ltd., 357 F.3d 13 19, 1336-37,
69 USPQ2d 164 1, 1654 (Fed. Cir. 2004) (noting that different references
contribute distinct teachings in support of the overall analysis).
Appeal 2007-3396
Application 11/008,592
art." The very narrow point for which the examiner cites Skowronski-that
additives may be used with either preforrnulated component-is so
consistent with what Horn already teaches or suggests that those in the art
would not be troubled by the lack of zeolites and less relevant teachings also
found in Skowronski.
The Eisen patent
Eisen relates to the production of polyurethane integral foams using a
fluoroalkane as the blowing agent.14 Specifically, a process in which:"
a) organic and/or modified organic polyisocyanates
and/or polyisocyanate prepolynlers are reacted with
b) at least one polyol component with an OH number of
20 to 200 and a functionality of 2 to 6, preferably 2 to 3,
c) optionally in combination with a polyol component
with an OH number of 201 to 899 and a functionality of
2 to 3, and with
d) at least one chain lengthening component with an OH
or amine number of 600 to 1,850 and a functionality of 2
to 4, and with
e) optionally additives, activators and/or stabilizers which
are known per se
in the presence of water and in the presence of 1,1,1,3,3-
pentafluorobutane and blowing agent mixtures
comprising at least one further fluoroalkane.
Eisen is consistent with, but for claim I less instructive than, Horn.
Consequently, we focus on the HornISkowronski rejection.
3 3 In re Etter, 756 F.2d 852, 859,225 USPQ 1 , 6 (Fed. Cir. 1985) (en banc).
34 Eisen 1:8-14.
3 5 Eisen 154-25.
Appeal 2007-3396
Application 1 11008,592
Differences between the prior art and claim I
Horn does not teach premixing the zeolites with the isocyanate
component. Horn's zeolite, if it is used at all, is added to an amorphous
microporous silica gel additive.36 in Horn's broadest teaching, the additive is
present when the polyisocyanate and polyol are rea~ted , '~ which would
include but does not require premixing the additive with the polyisocyanate.
Indeed, Horn teaches that it is "expedient" to mix the silica gel additive with
the high-molecular weight compound to improve processing properties and
stability of the polyol component.38
Bayer urges that Horn is different because it requires the use of an
amorphous microporous silica gel.39 his requirement is not a real
difference given the use of "comprising" in defining the (B) component of
claim 1. The (B) component is open to the inclusion of a silica gel.
Bayer also urges that Horn only teaches adding the zeolite to the
polyol f o r m ~ l a t i o n . ~ ~ We do not, and indeed cannot, read Horn so narrowly.
A reference cannot be limited to its examples or preferred embodiments, but
rather must be appreciated for all it says to those in the art.4' Horn teaches
adding zeolites to both the polyol and polyisocyanate components in the
production of closed-cell rigid foams, which Horn represents as relevant
background art. For integral-skin foams, Horn teaches that zeolites in silica
36 Horn 11:51-12:15.
3 7 Horn 2:56-3:12 & claim 1.
38 Horn 11:33-42.
39 Br. 4.
40 Br. 4; Reply 1-2.
4 1 In re Schreiber, 128 F.3d 1473, 1479,44 USPQ2d 1429, 1433 (Fed. Cir.
1997); ArthroCare Corp. v. Smith & Nephew, Inc., 406 F.3d 1365, 1372,
74 USPQ2d 1749, 1755 (Fed. Cir. 2005).
Appeal 2007-3396
Application 1 11008,592
gel may be added for some applications. Horn further teaches that it is
"expedient" to mix the silica gel with the polyol component to improve the
processing properties and stability of the polyol component. Expediency is
not necessity. Horn does not teach that the process would not work if the
zeolite were not added to the polyol con~ponent or if it were added to the
polyisocyanate component instead. While Bayer is correct that Horn does
not teach adding zeolites to the polyisocyanate component, Horn does
suggest it by noting the expediency of the alternative and by noting that the
prior art adds zeolites to both components. Horn by no means teaches away
from adding zeolites to the polyisocyanate component.42
Skowronski is not directed to integral-skin foams and does not teach
the use of zeolites.
As Bayer notes, Eisen does not teach the use of zeolites.43
The ordinary level of skill in the art
We look to the evidence of record-the applicant's disclosure, the
cited references, and any declaration testimony-in resolving the ordinary
level of skill in the art. We focus on what those of skill in the art know and
can do.44 Bayer has not provided testimony on the level of skill
The specification exhibits relatively little confidence in the knowledge
of those in the art since it gives fairly precise directions on what ingredients
42 In re Fulton, 39 1 F.3d 1 195, 1200, 73 USPQ2d 1 141, 1 145 (Fed. Cir.
2004) (preferred alternatives do not teach away); In re Irlland Steel Co.,
265 F.3d 1354, 1361,60 USPQ2d 1396, 1402 (Fed. Cir. 2001) (lack of an
advantage is not a teaching away).
43 Br. 8.
44 Exparte Jud, 2006 WL 4080053 at *2 (BPAI) (rehearing with expanded
panel).
Appeal 2007-3396
Application 1 11008,592
to use and reveals little of direct relevance in the prior art. Indeed, the
background art that Bayer cites, while similar to what Eisen discloses, is
much less relevant than the older Horn patent.
Horn reveals broad familiarity in the polyurethane foam art with the
use of polyisocyanate and pol yo1 components in water to avoid the use of
more dangerous or otherwise undesirable ingredients. Horn provides
detailed discussions of suitable ingredients and their specific uses, including
polyisocyanates, polyhydroxyls (polyols), initiators, chain extenders, cross
linkers, blowing agents, catalysts, silica gel additives, surfactants, fillers, and
flame-proofing agents.45 Horn also expresses confidence that those in the art
would readily apply the teachings of related processes (such as for closed-
cell rigid foams) and the broader ~ i te ra ture .~~
Bayer suggests that the large number of crystalline microporous
molecular sieves that Horn teaches makes selection of a zeolite
improbable.47 To the contrary, Horn shows confidence that others in the art
have sufficient skill to select zeolites as appropriate from among the many
choices with very little guidance.
Those of skill in the art would appreciate that additional ingredients
may be added to either the polyisocyanate component or the polyol
component. Both Horn and Skowronski teach as much for the related close-
cell rigid foam art. Skowronski also suggests it when noting that adding
water to the polyol component is "convenient" rather than necessary.
Similarly, Horn teaches that it is "expedient" to add the silica gel to the
45 Horn 3:21-1354.
46 Horn 2: 19-28 and 13:35-43.
47 Br. 4.
Appeal 2007-3396
Application 1 11008,592
polyol component rather than necessary. In either case, adding the
ingredient to the polyol component may provide advantages, but those of
skill in the art would not understand either reference to teach away from the
alternative of adding the ingredient to the polyisocyanate component.
Bayer also argues that those in the art would not have expected the
use of zeolites in the polyisocyanate component to result in better Shore D
hardness values for the resulting integral-skin foam.4s The argument is
misdirected because the rationale underlying the claimed invention need not
be the same as the rationale in the prior art.49 Horn notes at least two
reasons to use zeolites: flame and heat resistanceS0 and for some customized
form~lations.~' If the use of zeolites provides other lagniappes, so much the
better.
Objective evidence of secondary considerations
The only evidence Bayer provides of secondary considerations is in
the specification. Bayer says the use of inorganic zeolites in the isocyanate
component provides surprisingly good results relative to European published
Application 0 3 19 866 A2. Bayer also provides three comparative examples
said to show the improvement.
We must give weight to evidence of secondary considerations in the
specification if the specification states that the results were not expected and
48 Br. 7.
49 In re Dillon, 9 19 F.2d 688,692-94, 16 USPQ2d 1897, 190 1-02 (Fed. Cir.
1990) (en banc).
Horn 2: 19-28.
" Horn 1 1 :45-50.
Appeal 2007-3396
Application 1 11008,592
demonstrates substantially improved results.52 The comparison, however,
must be with the closest prior art.53 Moreover, the comparison must be
representative of what the prior art teaches and what is now claimed.54 For
instance, an older or less related reference may be entitled to less weight as
evidence of what would have been expected as of the applicant's filing
date.55
Bayer's specification states that the result was "[s]urprisingly.. .greatly
improved" compared to the process of the European application. For the
purposes of this decision, we assume that the word "surprisingly" indicates
Bayer thought the improvement was unexpected. The specification does
not, however, substantiate the improvement with any data showing the
nature or degree of the improvement. Moreover, Bayer has not provided the
European application as evidence on appea15%o we cannot evaluate its
teachings even if we were so inclined. Thus, we cannot assess whether the
European application is newer or more relevant to what is now claimed than
the Horn patent, for example. On the present record, we have no more than
Bayer's unsupported assurance of surprising improvement, to which we can
accord little weight.
Bayer also provides three comparative examples showing foams made
with (1) no zeolite, (2) 6 wt.% zeolite in the polyol formulation, and
52 Geisler, 1 16 F.3d at 1470-7 1,43 USPQ2d at 1366.
53 Abbott Labs. v. Andrx Pharrn., Jnc., 452 F.3d 1331, 1345,79 USPQ2d
1321, 1332 (Fed. Cir. 2006).
54 In re Harris, 409 F.3d 1339, 1344, 74 USPQ2d 195 1, 1955 (Fed. Cir.
2005).
55 Geisler, 11 6 F.3d at 1470-7 1,43 USPQ2d at 1366.
56 Br. 13, Evidence Appendix.
Appeal 2007-3396
Application 1 11008,592
(3) 4 wt.% zeolite in the polyisocyanate component.57 In all three examples,
the sum of the weight percentages for the polyol formulation exceeds ZOO%,
which immediately raises questions about the reliability of the data reported.
Assuming the data is reliable and representative of the prior art for the
purpose of this discussion, since the art teaches the use of zeolites, the
closest comparison would be between examples (2) and (3). Only one result
is reported for both examples (2) and (3): the Shore D hardness, which are
38 and 44, respectively.58 This comparison shows nearly 16% greater
hardness with less zeolite when the zeolite is added to the polyisocyanate.
This difference in degree for a single example does not by itself establish the
sort of significant difference in kind required in the case law.59
In any case, the comparison is not representative of what those in the
art would have expected. The closest prior art, Horn, suggests that the
zeolite may be added to the polyol component, the polyisocyanate
component, or both. Consequently, Bayer's examples (2) and (3) are equally
representative of what the prior art teaches. Since they are equally
representative of the prior art expectations, the comparison cannot establish
unexpected results for the claimed invention compared to the prior art.
5 7 Spec. 6:17-10:5. Although the specification says "parts by weight" for the
polyol formulation components, the appeal brief confirms that weight
percent is what is intended. Br. 9.
58 Spec. 9, table. Example (1) has a Shore D hardness of 33.
59 Harris, 409 F.3d at 1344, 74 USPQ2d at 1955 (32-43% increase not an
unexpected result); Abbott Labs., 452 F.3d at 1345, 79 USPQ2d at 1332.
Appeal 2007-3396
Application 1 11008,592
Conclusion
A person having ordinary skill in the art would have considered the
subject matter of claim 1 to have been obvious based on the teachings of the
Horn patent alone. The Skowronski and Eisen patents, while not necessary,
are consistent with a conclusion of obviousness. Since the other claims
stand or fall with claim 1, the obviousness rejection for claims 1-7 is
AFFIRMED.
OBVIOUSNESS-TYPE DOUBLE PATENTING
The obviousness-type double-patenting rejection adds nothing to this
examination. On the facts of this record, where .the availability of the Eisen
patent as prior art is not an issue, the rejection appears to be just a more
complicated repetition of the obviousi~ess rejection. It is difficult to imagine
a circumstance on this record where we could affirm this rejection but not
the obviousness rejection.
Since we have affirmed the obviousness rejection, this rejection is
DISMISSED as moot without prejudice to being reasserted in light of new
facts or claims.
AFFIRMED
N. Denise Brown
BAYER MATERIALSCIENCE LLC
100 BAYER ROAD
PITTSBURGH, PA 15205-9741