Ex Parte Matijega

Board of Patent Appeals and Interferences

Sep 23, 2002

09064486 (B.P.A.I. Sep. 23, 2002)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
Paper No. 18
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte RONEY J. MATIJEGA
____________
Appeal No. 2001-0826
Application No. 09/064,486
____________
ON BRIEF
____________

Before KIMLIN, WARREN, and LIEBERMAN, Administrative Patent Judges.
LIEBERMAN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the decision of the examiner
refusing to allow claims 1 through 24, which are all the claims pending in this application.
THE INVENTION
The invention is directed to a method of forming a rigid polyurethane foam. The
method comprises contacting a polyisocyanate and a low molecular weight compound
having two to three active hydrogen groups in the presence of water. The foam is formed
Appeal No. 2001-0826
Application No. 09/064,486
2
in the absence of a polyol having a hydroxyl functionality greater than three. Additional
limitations are provided in the following illustrative claim.
THE CLAIM
Claim 1 is illustrative of appellants’ invention and is reproduced below:
1. A method for forming a polyurethane foam comprising: contacting a
first reactant comprised of a polyisocyanate having an average isocyanate
functionality of at least 2 and a second reactant comprised of a low molecular
weight compound that has at least two to, at most, three groups containing an
active hydrogen in the presence of water for a time sufficient to form a substantially
rigid foam, provided the foam is formed essentially in the absence of a cross-linking
polyol having a hydroxyl functionality greater than 3.
THE REFERENCE OF RECORD
As evidence of anticipation, the examiner relies upon the following reference:
Gott et al. (Gott) 5,234,965 Aug. 10, 1993

THE REJECTION
Claims 1 through 24 stand rejected under 35 U.S.C. § 102(b) as being anticipated
by Gott.
OPINION
We have carefully considered all of the arguments advanced by the appellant and the
examiner, and agree with the appellant for the reasons set forth in the Brief and those
herein that the rejection of record is not well founded. Accordingly, we reverse the
rejection.
Appeal No. 2001-0826
Application No. 09/064,486
3
THE REJECTION UNDER SECTION 102(b)
In order for a claimed invention to be anticipated under 35 U.S.C. § 102(b), all of
the elements of the claim must be found in one reference. See Scripps Clinic & Research
Found. v. Genentech Inc., 927 F.2d 1565, 1576, 18 USPQ2d 1001, 1010 (Fed. Cir.
1991).
It is the examiner’s position that “anticipation is held evident for all claims 1-24.”
See Answer, page 4. We disagree.
We find that Gott is directed to a process for the preparation of a flexible, semi-
flexible or rigid polyurethane foam. See column 1, lines 6-8. The foam is prepared by
reacting an organic polyisocyanate, a polyhydric compound and a blowing agent among
other components. See column 2, lines 5-14. We find that isocyanate compounds within
the scope of the claimed matter are disclosed at column 2, line 29 to column 3, line 5.
We find that the polyhydric component is disclosed at column 3, line 6 to column 4, line
58. The component includes compounds having a molecular weight of from 200 to
3,000 and has a functionality of 2 to 8 hydroxyl groups. See column 3, lines 6-15. We
find that suitable polyhydric compounds are disclosed at column 4, lines 39-58. They are
however, disclosed only with respect to hydroxyl number and we cannot ascertain either
their molecular weight or their functionality. Accordingly, we cannot conclude that they
fall within the scope of the claimed subject matter as being a low molecular compound.
Based upon the above findings, we conclude that in order to arrive at the claimed
Appeal No. 2001-0826
Application No. 09/064,486
4
subject matter, a person having ordinary skill in the art would have to carefully pick and
choose and combine various disclosures among the teachings of Gott to obtain the requisite
component to prepare the rigid polyurethane foam required by the claimed subject matter.
While picking and choosing may be entirely proper in making an obviousness rejection
under 35 U.S.C. § 103, it has no place in making a rejection under 35 U.S.C. § 102(b)
for anticipation. See In re Arkley, 455 F.2d 586, 587-88, 172 USPQ 524, 526
(CCPA 1972). Furthermore, we conclude that Gott does not provide a disclosure with
sufficient specificity to constitute a description of the claimed composition within the
purview of 35 U.S.C. § 102(b). See In re Schaumann, 572 F.2d 312, 315, 197 USPQ
5, 8 (CCPA 1978). Accordingly, we do not sustain the rejection of the claims on appeal
under 35 U.S.C. § 102(b) as anticipated by Gott.
OTHER MATTERS
Upon return of this case to the jurisdiction of the examiner, careful consideration
should be given to instituting a rejection of each of the claims under Section 103(a) over
Gott.
Gott discloses the preparation of a rigid urethane foam composition utilizing a
polyol having a molecular weight of 200. See column 3, line 7. The specification defines
the molecular weight of the low molecular weight compound (LMWC) as being at most
about 200. See specification, page 8. It is well established that a, “claimed invention is
rendered prima facie obvious by the teachings of a prior art reference that discloses a range
Appeal No. 2001-0826
Application No. 09/064,486
5
that touches the range recited in the claim.” See In re Geisler, 116 F.3d 1465, 1469-
70, 43 USPQ2d 1362, 1365 (Fed. Cir. 1997). Gott further discloses the requisite
polyisocyanate, column 2, line 29 - column 3, line 5. Water is disclosed as a blowing
agent at column 6, lines 62-64. Furthermore, the method of the claimed subject matter
requiring contacting the two components in the presence of water is disclosed in the form
of a one shot process wherein all the necessary ingredients are mixed together. See column
8, lines 22-26. Accordingly, the requisite elements, components and method steps
required to establish a prima facie case of obviousness with respect to at least claim 1 are
disclosed by Gott.
Appeal No. 2001-0826
Application No. 09/064,486
6
DECISION
The rejection of claims 1 through 24 under 35 U.S.C. § 102(b) as being
anticipated by Gott is reversed.
The decision of the examiner is reversed.

REVERSED
EDWARD C. KIMLIN )
Administrative Patent Judge )
)
)
)
)
) BOARD OF PATENT
CHARLES F. WARREN ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
)
PAUL LIEBERMAN )
Administrative Patent Judge )
PL:hh
Appeal No. 2001-0826
Application No. 09/064,486
7
STEPHEN S. GRACE
P.O. BOX 1967
MIDLAND, MI 48641-1967