Ex Parte Fink et al

Board of Patent Appeals and Interferences

Jun 28, 2010

10986674 (B.P.A.I. Jun. 28, 2010)

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
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Decided: June 28, 2010
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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:

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(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.
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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.
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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,
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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
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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

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