Ex Parte Miller

Board of Patent Appeals and Interferences

Sep 23, 2008

10818108 (B.P.A.I. Sep. 23, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________

Ex parte EDWARD A. MILLER
______________

Appeal 2008-5099
Application 10/818,108
Technology Center 1700
_______________

Decided: September 23, 2008
_______________

Before EDWARD C. KIMLIN, BRADLEY R. GARRIS, and
CHARLES F. WARREN, Administrative Patent Judges.

WARREN, Administrative Patent Judge.

DECISION ON APPEAL
Applicant appeals to the Board from the decision of the Primary
Examiner finally rejecting claims 1 through 17 and 19 through 35 in the
Office Action mailed March 28, 2007, and subsequently refusing to allow
claims 2 through 4, 7, 9 through 12, 16, 20 through 22, 24, 25, 27 through
30, and 34 as amended in the Amendment filed May 22, 2007 which was

Appeal 2008-5099
Application 10/818,108
entered in the Advisory Action mailed June 14, 2007 (“Advisory Action”).
35 U.S.C. §§ 6 and 134(a) (2002); 37 C.F.R. § 41.31(a) (2007).
We affirm the decision of the Primary Examiner.
Claim 1 illustrates Appellant’s invention of a process for producing a
rigid polyurethane foam, and is representative of the claims on appeal:
1. A process for producing a rigid polyurethane foam comprising
spraying a mixture comprising at least one isocyanate and at least one
isocyanate reactive compound onto a supporting surface through a plurality
of flat spray nozzles arranged over the supporting surface such that foam
cells in the rigid polyurethane foam have substantially uniform dimensional
stability and compressive strength throughout the foam.
The Examiner relies upon the evidence in these references (Ans. 3):
Stalter 3,927,162 Dec. 16, 1975
Ebeling 4,216,181 Aug. 5, 1980
Appellant requests review of the ground of rejection of the appealed
claims under 35 U.S.C. § 103(a) as unpatentable over Ebeling in view of
Stalter advanced on appeal.1 Ans. 3; Br. 3.
Appellant argues the claims as a group. Br. 7-8. Thus, we decide this
appeal based on independent claims 1 and 19. 37 C.F.R. § 41.37(c)(1)(vii)
(2007).
The principal issue in this appeal is whether the Examiner has carried
the burden of establishing a prima facie case of obviousness which turns on
the issues addressed below.
The plain language of independent claim 1 specifies a process
comprising at least the steps of, among other things, spraying any rigid
polyurethane foam reaction mixture of any isocyanate and any isocyanate
2
Appeal 2008-5099
Application 10/818,108
reactive compound onto an supporting surface through a plurality of flat
spray nozzles, such that the combination of the reaction mixture and the flat
spray nozzles result in the “foam cells in the rigid polyurethane foam have
substantially uniform dimensional stability and compressive strength
through the foam.” In the process comprising at least the same steps
encompassed by independent claim 19, the combination of the reaction
mixture and the flat spray nozzles results in “substantially full liquid wet-out
of the foam . . . on the supporting surface.” See Spec., e.g., 3:8-13, 4:8-14,
4:30 to 5:4, and 5:14-17.
There is no dispute that Ebeling does not disclose a plurality of flat
spray nozzles or using the same to apply a rigid polyurethane foam reaction
mixture as “a liquid foamable reaction mixture” to a surface Ans. 3-4; Br. 7.
We find that Ebeling would have disclosed to one of ordinary skill in this art
an apparatus in which valves 10 are “adjusted to supply the necessary
quantity of reaction mixture from each branch pipe 7 to produce a uniform
film 11 across the whole width of deflector plate 6” surface. Ebeling col. 3,
ll. 19-27, and Fig. 1.
There is no dispute that Stalter discloses a rigid polyurethane foam
reaction mixture applied to a surface by a single flat spray nozzle. Ans. 3-4;
Br. 7. We find Stalter would have disclosed to one of ordinary skill in this
art fan nozzle 16, which is a flat spray nozzle, that can apply the reaction
mixture to “a pour surface” of a “slab belt, mold, etc.” such that the “entire
surface . . . receives the charge at essentially the same time, [and] the

1 The Examiner withdrew the ground of rejection of the claims under 35
U.S.C. § 112, second paragraph, in the Advisory Action.
3
Appeal 2008-5099
Application 10/818,108
foaming begins simultaneously throughout.” Stalter, e.g., col. 1, ll. 8-12, 34-
35 and 39-50, col. 2, ll. 11-26, and Fig. 1.
On this record, we determine the combined teachings of Ebeling and
Stalter, the scope of which we determined above, provide convincing
evidence supporting the Examiner’s case that the claimed invention
encompassed by claim 1, as we interpreted this claim above, would have
been prima facie obviousness to one of ordinary skill in the rigid
polyurethane foam forming arts familiar with the application of a rigid
polyurethane foam forming reaction mixture to a surface. Indeed, as the
Examiner submits, this person would have modified Ebeling’s apparatus for
applying a liquid foamable reaction mixture by using Stalter’s fan nozzle 16
on each of Ebeling’s branch pipes 7 “for the purpose of obtaining uniform
distribution,” and would have used Ebeling’s apparatus so modified with
Stalter’s rigid polyurethane foam reaction mixture to make a rigid
polyurethane foam reaction product. Ans. 3-4.
We are mindful that neither Stalter nor Ebeling discloses that the use
of a fan or flat spray nozzle to apply a rigid polyurethane foam reaction
mixture to a surface would have the results specified in independent claims 1
and 19. However, patentability is not established by describing the results of
a process in terms not found in the applied prior art. See, e.g., In re Skoner,
517 F.2d 947, 950-51 (CCPA 1975) (“Appellants have chosen to describe
their invention in terms of certain physical characteristics. . . . Merely
choosing to describe their invention in this manner does not render
patentable their method which is clearly obvious in view of [the reference].”
(Citation omitted)). In this respect, it is well settled that Appellant’s
4
Appeal 2008-5099
Application 10/818,108
elucidation of the mechanism of an old process or discovery of a new benefit
of that process does not render the old process again patentable simply
because those practicing the process may not have appreciated the
mechanism or the results produced thereby. See, e.g., In re Woodruff,
919 F.2d 1575, 1577 (Fed. Cir. 1990); W.L. Gore & Assocs. v. Garlock, Inc.,
721 F.2d 1540, 1548 (Fed. Cir. 1983) (“[I]t is . . . irrelevant that those using
the invention may not have appreciated the results[,] . . . [otherwise] it would
be possible to obtain a patent for an old and unchanged process.” (citations
omitted)).
Accordingly, we are of the opinion that one of ordinary skill in this art
routinely following the combined teachings of Ebeling and Stalter would
have reasonably arrived at the claimed process of producing a rigid
polyurethane foam, including all of the limitations thereof arranged as
required therein, without recourse to Appellant’s Specification. See, e.g.,
KSR Int’l Co. v. Teleflex, Inc., 127 S. Ct. 1727, 1739 (2007) (a patent
claiming a combination of elements known in the prior art is obvious if the
improvement is no more than the predictable use of the prior art elements
according to their established functions); In re Kahn, 441 F.3d 977, 985-88
(Fed. Cir. 2006); In re Keller, 642 F.2d 413, 425 (CCPA 1981)(“[T]he test
[for obviousness] is what the combined teachings of the references would
have suggested to those of ordinary skill in the art.”); In re Sovish, 769 F.2d
738, 743 (Fed. Cir. 1985) (skill is presumed on the part of one of ordinary
skill in the art); In re Bozek, 416 F.2d 1385, 1390 (CCPA 1969)(“Having
established that this knowledge was in the art, the examiner could then
properly rely, as put forth by the solicitor, on a conclusion of obviousness
5
Appeal 2008-5099
Application 10/818,108
‘from common knowledge and common sense of the person of ordinary skill
in the art without any specific hint or suggestion in a particular reference.’”);
see also In re O’Farrell, 853 F.2d 894, 903-04 (Fed. Cir. 1988) (“For
obviousness under § 103, all that is required is a reasonable expectation of
success.” (citations omitted)).
Upon reconsideration of the record as a whole in light of Appellant’s
contentions, we are of the opinion that Appellant has not successfully
rebutted the prima facie case. Appellant submits Stalter’s fan nozzle is
“intended for use with a rectangular mold, not with an unbounded
supporting surface as is instantly recited,” and thus, “one of ordinary skill in
the art would appreciate that [Stalter’s] fan nozzle would not provide the
instantly recited” foam properties recited in claim 1 or the process property
recited in claim 19. Br. 7. Thus, Appellant argues the references provide no
reason to combine the same as suggested by the Examiner. Br. 7. Appellant
further contends the references do not disclose achieving the process
property recited in claim 19 and thus cannot suggest a solution to a problem
they do not recognize. Br. 7, citing In re Shaffer, 229 F.2d 476 (CCPA
1956).
The difficulty with Appellant’s first contention is that neither claim 1
nor claim 19, as we interpreted these claims above, specifies “an unbounded
supporting surface.” Instead, both claims encompass any supporting surface
and thus, would include Ebeling’s deflector plate 6 and Stalter’s slab belt
and mold pour surfaces. Further, on this record, the fact that one of ordinary
skill in this art would not find a disclosure of the product and process
properties specified in claims 1 and 19 in the references is not determinative
6
Appeal 2008-5099
Application 10/818,108
of whether this person would have combined the references as Appellants’
contend. Indeed, this person would have recognized that both Ebeling and
Stalter apply foamable reaction mixtures to a surface and that Stalter’s fan
nozzle can be used in Ebeling’s apparatus to apply the reaction mixture to
Ebeling’s deflector plate, even though not motivated to do so for the same
reasons argued by Appellant. In this respect, “[a]s long as some motivation
or suggestion to combine the references is provided by the prior art taken as
a whole, the law does not require that the references be combined for the
reasons contemplated by the inventor.” In re Beattie,
974 F.2d 1309, 1312 (Fed. Cir. 1992) ((citing, inter alia, In re Kronig,
539 F.2d 1300, 1304 (CCPA 1976)); see also In re Kemps, 97 F.3d 1427,
1430 (Fed. Cir. 1996) (citing In re Dillon, 919 F.2d 688, 693 (Fed. Cir.
1990) (en banc)). Indeed, here both Ebeling and Stalter apply a foamable
reaction mixture to a surface in similar manner and thus, each is not directed
to a distinctly different apparatus from that of the other as was the case with
the references applied in Shaffer. 229 F.2d at 478-79.
Accordingly, based on our consideration of the totality of the record
before us, we have weighed the evidence of obviousness found in the
combined teachings of Ebeling and Stalter with Appellant’s countervailing
evidence of and argument for nonobviousness and conclude that the claimed
invention encompassed by appealed claims 1 through 17 and 19 through 35
would have been obvious as a matter of law under 35 U.S.C. § 103(a).
The Primary Examiner’s decision is affirmed.

7
Appeal 2008-5099
Application 10/818,108
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)(iv).
AFFIRMED

tc

BAYER MATERIAL SCIENCE LLC
100 BAYER ROAD
PITTSBURGH, PA 15205
8