Ex Parte Fink et alDownload PDFBoard of Patent Appeals and InterferencesJun 28, 201010986674 (B.P.A.I. Jun. 28, 2010) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte JOHN T. FINK, GEORGE O. DE LA GARZA, JOHN R. RUCKER, BEAT B. NIEDEROEST, and STEPHEN DRAP ____________ Appeal 2010-000688 Application 10/986,674 Technology Center 1700 ____________ Decided: June 28, 2010 ____________ Before EDWARD C. KIMLIN, BRADLEY R. GARRIS, and CATHERINE Q. TIMM, Administrative Patent Judges. KIMLIN, Administrative Patent Judge. DECISION ON APPEAL This is an appeal from the final rejection of claims 1, 3-6, 8, 9, 11, 12, 14-16, 18-19, 21-25, and 27-30. Claim 1 is illustrative: 1. A rebond polyurethane foam structure obtained from the steps of: Appeal 2010-000688 Application 10/986,674 2 (a) providing a mixture of particles of polyurethane foam having a mean particle size in the range of 1/8 to 1/2 inch (0.32 to 1.27 cm), wherein at least 20% by weight of such particles comprise particles of viscoelastic polyurethane foam having glass transition temperature above -20°C; (b) wetting the foam particles with a liquid prepolymer binder; (c) compressing the wetted admixture to a compression ratio of at least about 3; (d) curing the binder with heat or steam to form the rebond polyurethane foam structure having a density in the range of 5 to 25 pounds per cubic foot (80.1 to 400.5 kg/m3). The Examiner relies upon the following references as evidence of obviousness: Triolo 6,136,870 Oct. 24, 2000 Martel 2003/0181538 A1 Sep. 25, 2003 Appellants’ claimed invention is directed to a rebond polyurethane foam structure and its method of preparation. The method entails providing a mixture of particles of polyurethane foam comprising at least 20% by weight of viscoelastic polyurethane foam, wetting the foam particles with a liquid prepolymer binder, compressing the wetted admixture and curing the binder. Appealed claims 1, 3-6, 8, 9, 11, 12, 14-16, 18, 19, 21-25 and 27-30 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Triolo in view of Martel. Appeal 2010-000688 Application 10/986,674 3 Appellants provide separate arguments for claims 25 and 27-30, as a group. Accordingly, the remaining claims on appeal stand or fall together with claim 1. We have thoroughly reviewed each of Appellants’ arguments for patentability, as well as the Declaration evidence relied upon in support thereof. However, we are in complete agreement with the Examiner that the claimed subject matter would have been obvious to one of ordinary skill in the art within the meaning of § 103 in view of the applied prior art. Accordingly, we will sustain the Examiner’s rejection for essentially those reasons expressed in the Answer, and we add the following primarily for emphasis. There is no dispute that Triolo, like Appellants, discloses a method of making a rebond polyurethane foam structure by providing particles of polyurethane foam having a particle size within the claimed range, wetting the foam particles with a liquid prepolymer binder, compressing the wetted admixture and curing the binder to form the rebond polyurethane foam structure having a density within the claimed range. As acknowledged by the Examiner, and stressed by Appellants, Triolo teaches the use of polyurethane foam particles, in general, but does not specify any particular type of polyurethane foam. Martel, on the other hand, evidences that viscoelastic polyurethane foams were known in the art, and Martel teaches grinding viscoelastic polyurethane foams for recycling. Accordingly, based on the collective teachings of Triolo and Martel, we concur with the Examiner that it would have been prima facie obvious for one of ordinary skill in the art to select viscoelastic polyurethane foams in making the polyurethane foam structure of Triolo. Appeal 2010-000688 Application 10/986,674 4 The principal argument advanced by Appellants is that their Declaration evidence establishes that one of ordinary skill in the art would not use viscoelastic polyurethane foam particles of the size achieved by Martel in making a rebond polyurethane foam structure of the type disclosed by Triolo. Appellants submit that “[t]he Niederoest Declaration shows that when the teachings of the two references asserted by the Examiner are attempted to be combined, the product formed is not the rebond structure claimed in this application” (Prin. Br. 14, second para.). Appellants point out that the Declaration demonstrates that when viscoelastic foam particles of the size obtained by Martel are used, “the material did not form the rebond foam structure” (id.). Appellants contend, therefore, that the references are not combinable. We agree with the Examiner that the Declaration evidence does not rebut the prima facie case of obviousness inasmuch as it is not directed to the thrust of the Examiner’s rejection. It is not the Examiner’s position that it would have been obvious for one of ordinary skill in the art to use the small viscoelastic polyurethane particles of Martel in the rebond process of Triolo. Rather, the rejection is based on the rationale that it would have been obvious for one of ordinary skill in the art to select conventional viscoelastic polyurethane foam particles of the size taught by Triolo for making a rebond foam structure by the Triolo method. In the words of the Examiner, “[a]s Triolo et al. already addresses the sizing concerns of appellants’ claims, it is seen that Martel et al.’s disclosure is looked to more for its disclosure of material selection for use in the preparations of Triolo et al.” (Ans. 5, first full para.). Appellants have apprised us of no reason why one of ordinary skill in the art would not have selected any conventional, Appeal 2010-000688 Application 10/986,674 5 commercially-available polyurethane foam, including viscoelastic polyurethane foam, for the rebond process of Triolo. We are also unpersuaded by Appellants’ argument that one of ordinary skill in the art would not have selected the expensive viscoelastic polyurethane for the process of Triolo since Triolo is concerned with reducing cost by using more filler in the rebond product. We agree with the Examiner that it would have been a matter of obviousness for one of ordinary skill in the art to weigh the cost of making a product against the beneficial properties resulting from the added cost. Appellants have not explained why it would have been nonobvious for one of ordinary skill in the art to make a more expensive product than the one disclosed by Triolo in order to attain improved properties. Appellants also cite Example 1 of the present application as evidence of unexpected results. Appellants submit that the use of viscoelastic foam particles yields a surprisingly much higher hysteresis compared to other rebond structures without viscoelastic foam particles. However, Appellants have not established why such results would have been unexpected to one of ordinary skill in the art when using viscoelastic particles. Merely pointing out a difference in properties when using different materials does not establish the unexpected nature of the difference. Appellants have not satisfied their burden of demonstrating that rebond polyurethane foam structures within the scope of the appealed claims produce results that would be considered truly unexpected by one of ordinary skill in the art. In re Merck & Co., Inc., 800 F.2d 1091, 1099 (Fed. Cir. 1986); In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972). Likewise, Appellants have not demonstrated that achieving the density and hysteresis recited in claim 25 Appeal 2010-000688 Application 10/986,674 6 would have been unexpected to one of ordinary skill in the art when using a viscoelastic polyurethane foam. In conclusion, based on the foregoing, the Examiner’s decision rejecting the appealed claims 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)(1)(v). AFFIRMED kmm CONNOLLY BOVE LODGE & HUTZ, LLP P.O. BOX 2207 WILMINGTON, DE 19899 Copy with citationCopy as parenthetical citation