Ex Parte Limerkens et al

Patent Trial and Appeal Board

Feb 1, 2016

12307015 (P.T.A.B. Feb. 1, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/307,015 12/30/2008
62068 7590 02/03/2016
HUNTSMAN INTERNATIONAL LLC
LEGAL DEPARTMENT
10003 WOODLOCH FOREST DRIVE
THE WOODLANDS, TX 77380
FIRST NAMED INVENTOR
Dominicus Limerkens
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
EU-50942 8797
EXAMINER
KHARE, ATUL P
ART UNIT PAPER NUMBER
1742
NOTIFICATION DATE DELIVERY MODE
02/03/2016 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
Martha_ Victory@Huntsman.com
USPatents@Huntsman.com
Joanne_Cutlip@Huntsman.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DOMINICUS LIMERKENS and HUGO VERBEKE 1
Appeal2014-005874
Application 12/307,015
Technology Center 1700
Before BRADLEY R. GARRIS, WESLEY B. DERRICK, and
CHRISTOPHER L. ODGEN, Administrative Patent Judges.
GARRIS, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134, Appellants appeal from the Examiner's
rejection under 35 U.S.C. § 103(a) of claims 5 and 7-14 as unpatentable
over Murphy et al. (US 4,454,253, issued June 12, 1984) (hereinafter
"Murphy") in view of Yu et al. (US 2005/0131095 Al, published June 16,
2005) (hereinafter "Yu") and the alternative§ 103 rejection of claims 7 and
11-14 as unpatentable over these references in combination with Ho (US
1 Huntsman International LLC is identified as the real party in interest.
Br. 2.
Appeal2014-005874
Application 12/307,015
6, 100,310, issued Aug. 8, 2000) as evidenced by Parfondry et al. (US
6,579,912 B2, issued June 17, 2003) (hereinafter "Parfondry"). We have
jurisdiction under 35 U.S.C. § 6.
We AFFIRM.
Appellants claim a process for preparing a tennis ball comprising
making a ball-shaped elastomeric polyurethane foam by reacting an aromatic
polyisocyanate with a polyoxyethylene polyoxypropylene polyol having an
oxyethylene content of 50-90% by weight and having a level of unsaturation
of at most 0.03 meq/g wherein the polyurethane foam has a density ranging
from 250-540 kg/m3 (independent claims 5 and 11). The polyol may have
an average nominal functionality of 2--4 and an average molecular weight of
1000-8000 (dependent claim 7, independent claim 11 ).
A copy of representative claims 5 and 7, taken from the Claims
Appendix of the Appeal Brief, appears below.
Claim 5: A process for preparing a tennis ball comprising: making a
ball-shaped elastomeric polyurethane foam by putting an aromatic
polyisocyanate, a polyol comprising at least 60 % by weight of a
polyoxyethylene polyoxypropylene polyol having an oxyethylene content of
50-90 % by weight and having a level ofunsaturation of at most 0.03 meq/g
and a blowing agent into a ball-shaped mould and by allowing these
ingredients to form the elastomeric polyurethane foam; removing the foam
from the mould; and covering the foam with a textile material, wherein the
elastomeric polyurethane foam has a density ranging from 250 kg/m3 to 540
kg/m3.
Claim 7: The Process according to claim 5, wherein the
polyoxyethylene polyoxypropylene polyol has an average nominal
functionality of 2-4 and an average molecular weight of 1000-8000.
2
Appeal2014-005874
Application 12/307,015
Appellants do not separately argue the individual claims listed in the
rejections (Br. 4--7). Therefore, the claims in these respective rejections will
stand or fall with representative claims 5 and 7.
We sustain the Examiner's rejections based on the findings of fact,
conclusions of law, and rebuttals to arguments which are well and
thoroughly expressed in the Answer. The following comments are added for
emphasis only.
Appellants concede that "Murphy does disclose that a surfactant can
be used to modify the density of the foam product disclosed in th[ e]
reference" (Br. 5) but argue that "Murphy provides no rationale that would
lead one skilled in the art to lower the density of that product to the density
range that is recited in Claims 5 and 11 of the present application" (id.).
Appellants' argument is not persuasive. As more thoroughly
explained by the Examiner in the Answer (Ans. 12-14), Murphy's teaching
that "the density and rebound characteristics of the [game ball] product of
the invention can be varied according to the requirements of the desired end
use" (col. 7, 11. 16-18) would have suggested appropriate tennis ball
densities as claimed.
Regarding the Examiner's conclusion that it would have been obvious
to provide Murphy with the polyol disclosed by Yu and required by claim 5,
Appellants ask, "[W]hat would lead one skilled in the art to use the
polyoxyethylene polyoxypropylene polyol of Yu in the composition
disclosed in Murphy?" (Br. 6).
As well reasoned by the Examiner in the rejection, the provision
would have been made because of Yu's teaching that the polyol yields
polyurethane foam having improved properties including resilience,
rebound, compression set, hysteresis loss, and texture (Ans. 4). The
3
Appeal2014-005874
Application 12/307,015
Examiner explicitly finds that such properties "are particularly relevant to
[Murphy's] game balls" (id.), and Appellants do not dispute this finding with
any reasonable specificity. Moreover, contrary to Appellants' apparent
belief (Br. 5-6), the respective polyols of Murphy and Yu do not have
incompatible specifications for the reasons given by the Examiner (Ans. 15)
which are not challenged by Appellants (i.e., no Reply Brief has been filed).
For the reasons given in the Answer and emphasized above,
Appellants' arguments fail to reveal error in the Examiner's§ 103 rejection
of claims 5 and 7-14 as unpatentable over Murphy in view of Yu.
The Examiner accurately points out that Appellants do not contest the
rejection of claims 7 and 11-14 based on Murphy and Yu alone (Ans. 16).
Nevertheless, Appellants challenge the alternative rejection of these claims
based on Murphy, Yu, Ho, and Parfondry by inquiring, "What rationale
would one skilled in the art have to make the modification as asserted by the
Examiner in light of the fact that Ho and Yu are clearly directed to two
different types of polyols having significantly different ox[y ]ethylene
contents?" (Br. 7).
As fully detailed by the Examiner, Ho and Parfondry reinforce the
Examiner's determination in the rejection based on Murphy and Yu alone
that Yu's disclosure would have suggested providing Murphy with a
polyoxyethylene polyoxypropylene polyol of the type defined by claim 5
having average nominal functionalities and average molecular weights of the
type defined by claim 7 (Ans. 8, 16-18). Appellants fail to show the
Examiner's determination to be erroneous in either the rejection based on
Murphy and Yu alone or the alternative rejection based on Murphy, Yu, Ho,
and Parfondry.
The decision of the Examiner is affirmed.
4
Appeal2014-005874
Application 12/307,015
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F. R. § 1.136(a).
AFFIRMED
5