Ex Parte Kresta et alDownload PDFBoard of Patent Appeals and InterferencesAug 29, 200710164480 (B.P.A.I. Aug. 29, 2007) Copy Citation The opinion in support of the decision being entered today is not binding precedent of the Board.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. 2 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. 3 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. 4 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" 5 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. 6 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. 7 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). 8 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. 9 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. 10 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 cam BECK & THOMAS, P.C. SUITE 160 1575 MCFARLAND ROAD PITTSBURGH, PA 15216-1808 11 Copy with citationCopy as parenthetical citation