Ex Parte Kresta et al

Board of Patent Appeals and Interferences

Aug 29, 2007

10164480 (B.P.A.I. Aug. 29, 2007)

The opinion in support of the decision being entered today is
not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JIRI E. KRESTA,
DAVID M. ROJAS,
RAMON MOLINER,
CHANDRASIRI JAYAKODY
and DAN MYERS
____________

Appeal 2007-1023
Application 10/164,480
Technology Center 1700
____________

Decided: August 29, 2007
____________

Before BRADLEY R. GARRIS, THOMAS A. WALTZ, and
CATHERINE Q. TIMM, Administrative Patent Judges.

GARRIS, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134 from the final
rejection of claims 1-18 and 21-28. We have jurisdiction under 35 U.S.C.
§ 6.
Appeal 2007-1023
Application 10/164,480

We AFFIRM-IN-PART.
Appellants claim a method for producing a flexible silicone foam,
such as an open cell flexible silicone foam, comprising reacting a
polyisocyanate with a silicone oligomer, such as a hydroxy alkyl terminated
silicone oligomer. Appellants also claim the silicone foam resulting from
their claimed method.
Claims 1, 18, 26, 27, and 28 are representative of the claimed subject
matter on appeal and read as follows:
1. Method for producing an open cell flexible silicone foam
comprising reacting a polyisocyanate, a hydroxy alkyl terminated or amino
alkyl terminated silicone oligomer having a plurality of functional end
groups with active hydrogens, and, optionally, a crosslinker, under foam
forming conditions wherein the average total functionality of said
polyisocyanate, said silicone oligomer having a plurality of functional end
groups with active hydrogens, and said crosslinker is greater than 2 to
produce an open cell flexible silicone foam having silicone in a polymer
backbone as siloxane linkages.

18. A silicone foam as made by method of claim 13 having the
density between 0.5 pcf to 17 pcf.

26. A method for producing a silicone foam comprising reacting a
polyisocyanate, a silicone oligomer having a plurality of functional end
groups with active hydrogens, and, optionally, a crosslinker, under foam
forming conditions wherein the average total functionality of said
polyisocyanate, said silicone oligomer having a plurality of functional end
groups with active hydrogens, and said crosslinker is greater than 2 to
produce silicone foam.

27. A method as recited in claim 26 wherein the silicone oligomer
having a plurality of functional end groups with active hydrogens is at least
10% percent of the reaction mixture.

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Appeal 2007-1023
Application 10/164,480

28. A method as recited in claim 26 wherein the silicone foam has
greater than 10% of silicone in a polymer backbone of the silicone foam.

The references set forth below are relied upon by the Examiner as
evidence of anticipation and obviousness:
Henrichs US 4,350,777 Sep. 21, 1982
Haas US 5,023,280 Jun. 11, 1991
Walmsley US 5,120,771 Jun. 9, 1992
Burkhart US 5,985,948 Nov. 16, 1999
Tokumoto US 6,384,097 B1 May 7, 2002

Claims 18, 27, and 28 are rejected under the first paragraph of
35 U.S.C. § 112 as failing to comply with the written description
requirement of this paragraph.
Claims 1-10, 12, 22, and 26 are rejected under 35 U.S.C. § 102(e) as
being anticipated by Burkhart and under 35 U.S.C. § 102(b) as being
anticipated by Henrichs.
Under 35 U.S.C. § 103(a): claims 11, 13-18, and 23 are rejected over
Burkhart or Henrichs in view of Haas; claim 21 is rejected over Burkhart or
Henrichs in view of Walmsley; and claims 24 and 25 are rejected over
Burkhart or Henrichs in view of Tokumoto.
For the reasons which follow, we will sustain each of the above-noted
prior art rejections but we will not sustain the § 112, first paragraph,
rejection.

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Appeal 2007-1023
Application 10/164,480

THE § 112, FIRST PARAGRAPH, REJECTION
The Examiner believes the written description requirement is violated
by the claim 18 density range "between 0.5 pcf to 17 pcf" (Answer 3-4).
In response, Appellants correctly point out that their Specification
discloses a density range between 0.5 pcf to 25 pcf (Specification 6) and that
the Specification examples include density ranges from 2.25 pcf to 6.40 pcf
(Specification Examples 1-7 at 16-26)(Appeal Br. 10-13; Reply Br., filed
April 12, 2006, unnumbered page 3). Appellants argue that these
Specification ranges descriptively support the claim 18 range and as support
for this argument cite In re Wertheim, 541 F.2d 257, 265, 191 USPQ 90, 98
(CCPA 1976)(where broad described range pertains to same invention as
narrower and subsumed claimed range, then broader range describes
narrower range).
The Appellants' argument is well taken. Our study of the
Specification disclosure reveals that the broad described density range of 0.5
pcf to 25 pcf does not pertain to a different invention than the narrower and
subsumed claim 18 range of 0.5 pcf to 17 pcf, and the Examiner does not
contend otherwise. Under these circumstances, those with skill in this art
would recognize from the Specification disclosure that Appellants' silicone
foam includes the density range defined by claim 18. Wertheim, 541 F.2d at
262, 191 USPQ at 96.
Similar reasoning applies to the Examiner's position that the
respective ranges of claims 27 and 28 do not comply with the written
description requirement.
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Appeal 2007-1023
Application 10/164,480

Regarding claim 27, it is significant that the Examiner does not
dispute the findings made in the Newaz § 1.132 Declaration of record
wherein declarant calculated that the Specification examples include silicone
oligomer ranging from 0.1% to 75.7% of the reaction mixture (Appeal Br.
36-37). Therefore, the question is whether this disclosed oligomer range
pertains to a different invention than the "at least 10%" range of claim 27.
Wertheim, 541 F.2d at 265, 191 USPQ at 98.
An artisan would recognize from Appellants' Specification that the
amount of silicone oligomer in the reaction mixture affects characteristics
such as fire-retardance of the resulting silicone foam (Specification 6) and
that as little of 0.1% silicone oligomer gives added flame-retardant qualities
(Specification 14; Example 7 at Specification 24-26). Likewise, the artisan
would recognize that greater amounts of silicone oligomer would provide
greater degrees of such characteristics as fire-retardance (Examples 1-6 at
Specification 16-24).
These circumstances would lead the artisan to perceive the
aforementioned Specification range of silicone oligomer as pertaining to the
same invention as the claim 27 range. That is, in each case, a greater or
lesser amount of silicone oligomer results in a greater or lesser degree of a
desired characteristic such as fire-retardance. It follows that the artisan
would consider the claim 27 range "at least 10%" silicon oligomer as
descriptively supported by the Specification disclosure.
As for claim 28, the Newaz Declaration evinces (and the Examiner
does not disagree) that the claimed feature "wherein the silicone foam has
greater than 10% of silicone in a polymer backbone of the silicone foam"
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Appeal 2007-1023
Application 10/164,480

necessarily results from the amount of silicone oligomer in the reaction
mixture (Appeal Br. 37-38). In other words, the amount of silicone in the
polymer backbone as required by claim 28 is a consequence of the amount
of silicone oligomer in the reaction mixture as required by claim 27. Since
claim 27 complies with the written description requirement as explained
above, claim 28 must necessarily also comply.
For the above stated reasons, we cannot sustain the Examiner's § 112,
first paragraph, rejection of claims 18, 27, and 28 as failing to comply with
the written description requirement.

THE § 102 REJECTION OF CLAIMS 1-10, 12, 22, AND 26 OVER
BURKHART

The Appellants' sole argument concerning this rejection is that
"Burkhart has hydroxy alkyl groups attached to an oxygen thus making it an
ether" and as a consequence "Burkhart only shows hydroxy ether terminated
siloxane which is different from a hydroxy alkyl terminated [silicon
oligomer]" (Appeal Br. 14).
As an initial matter, we observe that this argument is not germane to
rejected claim 26 since this claim, unlike the other rejected claims, is not
limited to "a hydroxy alkyl terminated … silicone oligomer" (claim 1).
Because the § 102 rejection of claim 26 over Burkhart has not been
contested on the record before us, we hereby summarily sustain this claim 26
rejection.
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Appeal 2007-1023
Application 10/164,480

Concerning the other rejected claims, we emphasize that these claims
must be given their broadest reasonable interpretation consistent with the
Specification as they would be interpreted by one of ordinary skill in the art.
In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364, 70 USPQ2 1827,
1830 (Fed. Cir. 2005).
According to the Appellants, "[h]ydroxy alkyl terminated … silicone,
means having a hydroxy alkyl … group that is directly attached to a silicon
atom on the ends of the silicone oligomer" (Appeal Br. 14; emphasis
deleted). However, a direct attachment is not required by either claim 1 or
the Specification (see, e.g., Specification 9-10). Furthermore, neither the
Appeal Brief nor the Reply Brief refers to any evidence of record showing
that an artisan would interpret the claim 1 phrase "a hydroxy alkyl
terminated … silicone oligomer" as requiring the direct attachment urged by
Appellants.
Therefore, based on the record before us, we find that the broadest
reasonable interpretation of claim 1 by one with ordinary skill in this art
consistent with Appellants' disclosure includes a silicone oligomer
terminated with a hydroxy alkyl which is attached either directly or
indirectly to the silicon atom at the ends of the oligomer. For this reason,
and since Burkhart undisputedly discloses a silicone oligomer terminated
with a hydroxyl alkyl (albeit via an oxygen atom between the alkyl and the
silicon atom), we find claim 1 to be anticipated by Burkhart.
It follows that we hereby sustain the § 102 rejection of claims 1-10,
12, and 22 as well as of claim 26 as being anticipated by Burkhart.

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Appeal 2007-1023
Application 10/164,480

THE § 102 REJCTION OF CLAIMS 1-6, 12, 22, AND 26 OVER
HENRICHS

The Appellants' sole argument concerning this rejection is that the
cellular elastomer of Henrichs is impermeable to water and therefore cannot
be characterized as an open cell foam (Br. 20-22). In this regard, the
Appellants provide the following definition by the Polyurethane Foam
Association for "open cell structure":
A permeable structure in flexible foam in which there is no
barrier between cells, and gases or liquids can pass through the
foam. Most cell walls have been ruptured to varying extent.

(id. at 20-21 (emphasis deleted) and at 54-55).

This argument also is not relevant to rejected claim 26 because this
claim does not require the silicone foam to possess an open cell structure.
Therefore, since this rejection of claim 26 has not been contested in the
record before us, we summarily sustain this claim 26 rejection.
Concerning the "open cell" (claim 1) requirement of the other rejected
claims, the Examiner finds that Henrichs inherently discloses a cellular
elastomer having this characteristic (Answer 15). We agree with this finding
since it is reasonably supported by a basis in fact. See Ex parte Levy,
17 USPQ2d 1461, 1463-464 (BPAI 1990). This basis in fact is set forth
below.
The cellular structure of Henrichs’ elastomer is not described as open
or closed. Instead, the elastomers of Henrichs are defined as fine or
microcellular and as impermeable to water (col. 1, l. 67-col. 2, l. 43).
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Appeal 2007-1023
Application 10/164,480

Importantly, a thorough study of the reference disclosure reveals that these
elastomers are not completely impermeable to water. This is clearly
demonstrated by the reference examples in columns 15-22 wherein each of
the many inventive elastomers of these examples absorbed (i.e., were
permeated by) water. Indeed, some of these inventive elastomers absorbed
significant amounts of water such as 24.4% by weight (Table 4 in col. 20).
Because Henrichs’ elastomers are penetrated to a significant extent by water
(i.e., as much as 24.4% by weight of water absorption), we find that these
elastomers necessarily would be penetrated to an even greater extent by
gases.
This last mentioned finding of fact reasonably supports a
determination that gases can pass through (i.e., completely penetrate) the
flexible foam elastomer of Henrichs in accordance with the above quoted
definition provided by Appellants for "open cell structure." For this reason,
it is appropriate to require the Appellants to prove that Henrichs' elastomers
do not necessarily or inherently possess the open cell characteristic of the
Appellants' claim 1/22 product. The fairness of so allocating the burden of
proof is based on the inability of the Patent and Trademark Office to
manufacture products or to obtain and compare prior art products. See In re
Best, 195 USPQ 430, 433-34) On this record, the Appellants have proffered
no such proof.
Under these circumstances, we also hereby sustain the § 102 rejection
of claims 1-10, 12, and 22 as well as of claim 26 as being anticipated by
Henrichs.

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Appeal 2007-1023
Application 10/164,480

THE § 103 REJECTIONS
In addition to the unpersuasive arguments discussed above, the
Appellants contend that the Examiner's § 103 rejections are improper based
on the unembellished assertion that the applied references contain no
teaching or suggestion for combining their teachings based upon a
reasonable expectation of success (Appeal Br. 15-19, 22-26).
This assertion has no perceptible merit. The applied reference
teachings would have been combined in the manner proposed by the
Examiner based upon a reasonable expectation for success for reasons fully
explained in the Answer. For example, as properly concluded by the
Examiner, "it would have been obvious for one having ordinary skill in the
art to have employed the fire retardants of Haas … in the preparations of
Burkhart … for the purpose of imparting their flame retarding effect"
(Answer 6).
Therefore, it is appropriate that we also hereby sustain each of the
§ 103 rejections before us in this appeal.

CONCLUSION
We reverse the § 112, first paragraph, rejection of claims 18, 27, and
28 but affirm the § 102 and § 103 rejections of claims 1-18 and 21-26.
The decision of the Examiner is affirmed-in-part.

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Appeal 2007-1023
Application 10/164,480

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(iv)(effective Sept.
13, 2004).
AFFIRMED-IN-PART

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