Ex Parte Muller et alDownload PDFBoard of Patent Appeals and InterferencesJul 11, 200810355394 (B.P.A.I. Jul. 11, 2008) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________________ Ex parte LOUIS MULLER, HASSAN EL GHOBARY and FABRICE PONTHET ____________________ Appeal 2008-3609 Application 10/355,394 U.S. Patent Publication 2004/0152796 Technology Center 1700 ____________________ Decided: July 11, 2008 ____________________ Before: FRED E. McKELVEY, Senior Administrative Patent Judge, and SALLY GARDNER LANE and SALLY C. MEDLEY, Administrative Patent Judges. McKELVEY, Senior Administrative Patent Judge. DECISION ON APPEAL A. Statement of the case 1 2 3 Momentive Performance Materials, Inc. ("Momentive"), the real party in interest identified in the Appeal Brief, seeks review under 35 U.S.C. Appeal 2008-3609 Application 10/355,394 1 2 3 4 5 6 7 8 9 § 134(a) of a final rejection of claims 1-2, 4-7, 10-12, 14-17, 20-24, 26-29, 31-32 and 45, the only claims remaining in the application on appeal.1 We have jurisdiction under 35 U.S.C. § 6(b). The application on appeal was filed on 31 January 2003. Insofar as we can tell, Momentive does not claim benefit of any earlier filing application. The Examiner rejected the claims on appeal under 35 U.S.C. § 103(a) as being unpatentable over the prior art. The following prior art was relied upon by the Examiner. Name Patent Number Issue Date10 11 12 13 14 15 Reischl US 3,243,475 29 Mar. 1966 Takeyasu US 6,043,291 28 Mar. 2000 The reader should know that no references to et al. are made in this opinion. Reischl and Takeyasu are prior art under 35 U.S.C. § 102(b). 1 We will make the following observations about the real party in interest identified in the Appeal Brief. First, the PTO PALM records show an assignment from the three named inventors to Crompton Corporation. Reel 013723, Frame 0402, recorded 31 January 2003. Second, the PTO PALM records further show an assignment from Crompton Corporation to General Electric Company. Reel 020072, Frame 0289, recorded 07 November 2007. Third, the PTO PALM records still further show a security agreement by "assignors" (1) Momentive Performance Materials Holdings, Inc., (2) Momentive Performance Materials GmbH & Co. KG, and (3) Momentive performance Materials Japan Holdings GK to "assignee" JP Morgan Chase Bank, N.A., "as administrative agent." We will assume that (a) the statement of real party in interest in the Appeal Brief is correct and (b) counsel for Momentive will inform all who need to be informed of this decision on appeal. 2 Appeal 2008-3609 Application 10/355,394 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 B. Record on appeal In deciding this appeal, we have considered only the following documents: 1. Specification, both as filed and as published. 2. Final Rejection mailed 14 November 2006. 3. Amended Appeal Brief filed 29 June 2007, including Exhibits A through G of the evidence appendix of the Amended Appeal Brief. 4. Examiner’s Answer mailed 30 August 2007. 5. Reischl. 6. Takeyasu. 7. Claims on appeal as reproduced in the claim appendix of the Appeal Brief. C. Issues The issue on appeal is whether Momentive has sustained its burden of showing that the Examiner erred in rejecting the claims on appeal as being unpatentable under 35 U.S.C. § 103(a) over the prior art. D. Findings of fact The following findings of fact are believed to be supported by a preponderance of the evidence. To the extent that a finding of fact is a conclusion of law, it may be treated as such. Additional findings as necessary may appear in the Discussion portion of the opinion. 23 Prior art revealed in the specification Polyurethane foams are produced by reacting an organic 24 polyisocyanate with compounds containing two or more active hydrogens, 25 3 Appeal 2008-3609 Application 10/355,394 generally in the presence of blowing agents, catalysts, silicone-based 1 surfactants and other auxiliary agents. Specification, page 1:13-15. 2 3 The active hydrogen-containing compounds are typically polyols (which result in polyurethanes), polyamines (which result in 4 polyureas), and water. Specification, page 1:15-17. 5 When a polyurethane is made from a polyisocyanate and a polyol, and 6 assuming an equimolar amount of isocyanate and polyols are used, the 7 following general reaction takes place: 8 9 OCN―R1―NCO + HO―R2―OH → 10 OCN―R1―[―NH―CO―O―R2―]n―OH where n is an integer—the higher the value of n the higher the molecular 11 weight of the polyurethane. The ― NH―CO―O― group is a urethane 12 group. 13 Two major reactions are promoted by the catalysts among the 14 reactants during the preparation of polyurethane foam, gelling and blowing. 15 Specification, page 1:17-18. 16 These two reactions must proceed simultaneously and at a 17 competitively balanced rate during the process in order to yield 18 polyurethane foam with desired physical properties. Specification, 19 page 1:18-20. 20 Owing to their outstanding physical properties, polyurethane foams 21 are used in a very wide range of areas. Specification, page 1:21-22. 22 A particularly important market for various types of polyurethane 23 foams is said to be the automotive industry. Specification, page 1:22-23. 24 See also Exhibit C of the evidence appendix of the Appeal Brief. 25 4 Appeal 2008-3609 Application 10/355,394 Polyurethane foams are typically used in motor vehicles as roof 1 linings, for interior cladding of the doors, for punched-out sun visors, and 2 for seat systems. Specification, page 1:23-25. 3 A problem said to be associated with the production of molded foams, 4 which is usually worse in the case of rapid cure foam formulations, is foam 5 tightness. Specification, page 2:1-2. 6 A high proportion of closed cells is said to cause foam tightness at 7 the time the molded foam part is removed from the mold. Specification, 8 page 2:2-4. 9 If left to cool in that state, the foam part will generally shrink 10 irreversibly. Specification, page 2:4. 11 A high proportion of open cells are required if the foam is to have a 12 desired high resiliency (i.e., generally "flexible" as opposed to generally 13 "rigid" foam). Specification, page 2:4-6. 14 Many strategies have been proposed, both chemical and mechanical, 15 to minimize the quantity of closed cells at demold (i.e., being taken out of 16 the mold). Specification, pages 7-9. 17 18 One strategy to provide a foam having open cells is to employ a 19 silicone-based surfactant to stabilize the foam until the product-forming chemical reaction is sufficiently complete so that the foam is self-20 supporting and does not suffer objectionable collapse. Specification, 21 page 2:10-13. 22 Additionally, the silicone surfactant should help getting open foam at 23 the end of the foaming process. Using open-cell foams is particularly 24 5 Appeal 2008-3609 Application 10/355,394 critical when producing HR (i.e., "high resiliency") foams. Specification, 1 page 2:13-15. 2 Examples of such silicon-based surfactants are short polydimethyl-3 siloxanes surfactants having from about two to about seven siloxane units. 4 Specification, page 2:15-16. 5 6 The polydimethylsiloxane has the general formula: 7 CH3 CH3 CH3 8 │ │ │ 9 CH3―Si―[O―Si―]n―O―Si―CH3 10 │ │ │ 11 12 CH3 CH3 CH3 13 where n is 0-5. The surfactant does not contain any hydroxyl [―OH] groups and 14 therefore does not react with any available isocyanate group. 15 The surfactant is generally of low molecular weight and mobile thus 16 stabilizing the foam without closing the cell structure. Specification, 17 page 2:16-18. 18 There is a drawback associated with employing a polyurethane foam 19 made with this type of surfactant in forming components, e.g., foam seats, 20 headliners, sun visors, etc. In particular, the unreacted low molecular 21 weight surfactant will volatize from the polyurethane foam and 22 subsequently deposits as an oily film on, for example, the car windows. 23 Specification, page 2:18-23. The deposits, in turn, scatters light resulting in 24 poor lighting conditions for the driver. Specification, page 2:23. 25 According to Momentive, and speaking as of 2003, in recent years the 26 requirements set by the automotive manufacturers for their foam suppliers 27 6 Appeal 2008-3609 Application 10/355,394 have become substantially more stringent, especially with regard to an 1 emission specification. Specification, page 3:1-2. 2 Whereas in the past attention was focused only on the fogging 3 behavior of the foams, as of 2003 the content of volatile organic 4 compounds (VOC) is also a subject of analytical determinations (e g., 5 Volkswagen central standard 55 031 and Daimler Chrysler PB VWT 709). 6 Specification, page 3:3-10. 7 8 Problem to be solved 9 It would therefore be desirable to employ a silicon-based surfactant which provides polyurethane foams having reduced VOC (volatile organic 10 compounds) emissions while imparting excellent physical properties 11 without closing (tightening) or substantially closing the cells of the 12 polyurethane foams. Specification, page 3:11-14. 13 It would further be desirable to employ the silicon-based surfactant to 14 provide high resilience flexible polyurethane foams having reduced VOC 15 emissions. Specification, page 3:14-16. 16 17 18 19 20 21 22 23 24 The invention Momentive says it overcomes the VOC problem by using particular surfactants in the process for preparation of the polyurethane. The process is said to typically involve the reaction of an isocyanate and a polyol (a component having at least two hydroxyl [―OH] groups). Specification, page 6:18-21. The isocyanate can be those commonly used, including TDI and MDI. Specification, page 9:19 to page 10:13. 7 Appeal 2008-3609 Application 10/355,394 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 While the claims on appeal call for the use of "a" polyol which is a polyether polyol derived from ethylene oxide and propylene oxide, according to the specification various polyols, "either alone or in admixture," can be used. Specification, page 11:14-15. Included in the list of polyols described are those claimed (specification, page 11:16-17) as well as polyester polyols (specification, page 12:6-8). More particularly, polyols said to be useful in the process of the invention are those used to make flexible slabstock foams, flexible molded foams and semiflexible foams. Specification, page 11:4-7. Specifically identified polyols are polyether polyols and polyester polyols. Specification, page 11:7-8. The "preferred" surfactant said to be useful is described by a generic formula as follows (specification, page 4:18 to page 5:2): M'tDxD*yMu where: M' is R12RSiO0.5 D is R12SiO D* is R1RSiO M is R13SiO0.5 R1 can be a saturated aliphatic group, e.g., methyl [―CH3] R is "a divalent hydrocarbon moiety, optionally interrupted with methoxy or ethoxy groups and attached to a hydroxy [―OH] end group." t is an integer from 0-2 u is an integer from 0-2 8 Appeal 2008-3609 Application 10/355,394 1 2 3 4 5 t + u = 2 x + y = 1 - 200 t + y = at least 1 A "particularly preferred" surfactant is one having the formula (specification, page 5:17): R1 R1 R16 7 │ │ │ HO―R2―Si―[O―Si―]x―O―Si―R2―OH 8 9 │ │ │ R1 R1 R110 11 12 13 where: R1 can be a saturated aliphatic group, e.g., methyl [―CH3] 14 R2 can be a divalent hydrocarbon group, optionally interrupted 15 with methoxy or ethoxy groups 16 17 x is an integer between 2 and about 12. 18 Comparative VOC evidence Table VI in the specification (page 21) is said to show data reported 19 from comparative testing of two surfactants within the scope of claim 1 and 20 "a commercial silicone surfactant." 21 A polyisocyanate (MDI) and a polyether polyol were reacted with a 22 catalyst and the surfactant. 23 24 The surfactants are identified as C6, C7 and C9. Table VI. C9—the commercial surfactant—is a "low molecular weight 25 polydimethyl siloxane oil with the formula MDxM with the x ranging 26 from 2 to 16 and having no hydroxyl [―OH] end groups." 27 9 Appeal 2008-3609 Application 10/355,394 1 CH3 CH3 CH3 2 │ │ │ 3 CH3―Si―[O―Si―]x―O―Si―CH3 4 │ │ │ 5 6 CH3 CH3 CH3 7 where x is 2 to 16. 8 C6 is a surfactant with the formula MtDx, 9 where: 10 t = 2 11 x = 4 M = R12RSiO0.5 12 13 R = not identified, but may be methyl (―CH3) R1 = not identified, but may be methyl (―CH3) 14 15 16 CH3 CH3 CH3 17 │ │ │ 18 HO―CH3―Si―[O―Si―]4―O―Si―CH3―OH 19 │ │ │ 20 21 CH3 CH3 CH3 Table III mentions a "Branching group Composition." Specification, 22 page 19:7. See also specification, page 8:4-6. It is not apparent to us what 23 Momentive means by "Branching group Composition." 24 The "Branching group Composition" for C6 and C7 is identified as 25 allylalcohol (―CHâ•CH―CH2―OH). 26 The "Branching group Composition" for C9 is identified as 27 allylethoxyethanol (―CHâ•CH―CH2―O―CH2―CH2―OH). 28 10 Appeal 2008-3609 Application 10/355,394 The branching groups differ, but both branching groups would have 1 hydroxyl [―OH] groups which could react with an isocyanate group. 2 We are under the impression that C9 would not have any hydroxyl 3 group and therefore the Branching group Composition discussion with 4 respect to C9 is particularly confusing. 5 C7 appears to be the same surfactant as C6, but mixed with some 6 silicone oil. 7 8 9 10 11 12 13 14 15 16 VOC measurements are reported in ppm (parts per million) as follows (Table VI): C6 4 invention C7 13 invention C9 180 not invention We have assumed that the data presented in the examples and tables in the specification are based on actual experimentation. According to Momentive, the reduction in ppm VOC is "drastic." Specification, page 21:3. 17 18 19 20 21 22 23 24 25 Claims on appeal According to Momentive, "the claims stand or fall together." Appeal Brief, page 12:2. Claim 1, which we reproduce from the claim appendix of the Appeal Brief, reads [some indentation and matter in brackets added]: A process for preparing a high resiliency polyurethane foam comprising the step of reacting a polyisocyanate with a polyether polyol derived from ethylene oxide and propylene oxide; and, of from about 0.1 to about 3 phpp [parts per 11 Appeal 2008-3609 Application 10/355,394 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 hundred of polyol—specification, page 13:3] of a silicon-based surfactant composition as a stabilizer for the foam, the silicone-based surfactant composition comprising a silicone having from about 3 to 10 siloxane units of the general formula: M*tDxD*yMu wherein: M* is R12RSiO0.5; D is R12SiO; D* is R1RSiO; M is R13SiO0.5; R1 is an aromatic or saturated aliphatic hydrocarbon group; R is a divalent hydrocarbon moiety having a hydroxy end group; t and u and integers from 0-2; t + u = 2; x + y = 1-8; and t + y is at least one, in the presence of a blowing agent and under conditions sufficient to form the high resiliency polyurethane foam. 12 Appeal 2008-3609 Application 10/355,394 1 2 3 Prior art In addition to the prior art and background discussed in the specification, the record also contains Reischl and Takeyasu. (1) Reischl4 5 6 7 8 9 10 11 12 13 14 15 16 17 Reischl describes production of polyurethane foam made from polyisocyanates and polyesters. Col. 1:11-15. Polyurethanes made from polyesters are said to have stability problems based on hydrolysis. Col. 1:26-28 and 53-55. According to Reischl, polyurethanes made from polyethers do not present a problem because polyether based polyurethanes are said to be resistant to hydrolysis. Col. 1:39-40. Reischl claims to have solved the hydrolysis problem by using an organo silicon compound having at least one group containing hydrogen atoms reactive with an ―NCO (isocyanate) group. Col. 1:69-71; col. 2:6-11. Two typical compounds suitable for Reischl's purpose are the following (col. 3:10 and 3:20). 18 CH3 CH3 CH3 19 │ │ │ 20 HO―CH3―Si―O―Si―O―Si―CH3―OH 21 │ │ │ 22 23 CH3 CH3 CH3 and 24 CH3 CH3 CH3 25 │ │ │ 26 HO―CH3―Si―[O―Si―]n―O―Si―CH3―OH 27 │ │ │ 28 CH3 CH3 CH3 13 Appeal 2008-3609 Application 10/355,394 1 2 3 4 where n = 0 to 100 or more. One skilled in the art would appreciate the fact that the top compound is a species within the scope of the bottom compounds when n = 1. (2) Takeyasu 5 6 7 8 9 10 11 12 Takeyasu, like the background of the invention in the Momentive specification, reveals that polyurethane foams are made by reacting a polyisocyanate with a polyol in the presence of a catalyst, a blowing agent, and a surfactant. The polyol may be a polyether or a polyester. Col. 3:62-67. Instructions appear on process conditions leading to rigid, soft and semi-rigid polyurethane foams. Col. 6:18 through col 7:18. 13 14 15 Rebuttal evidence Momentive cites and discusses several prior art references. (1) Szycher's Handbook of Polyurethanes (1999) 16 17 18 19 20 21 22 23 24 25 Appeal Brief, Exhibit A Momentive calls Szycher to our attention (Appeal Brief, page 13) to establish that there is a "world of difference" between a polyether based polyurethane and a polyester based polyurethane. Based on Szycher, Momentive maintains that the polyester-based polyol disclosure of Takeyasu is non-analogous to Momentive's claimed polyether-based polyols. We note that Szycher tells us that polyether-based polyols produce very high quality polyurethane foams. (2) Encyclopedia of Polymer Science and Engineering (1988) 14 Appeal 2008-3609 Application 10/355,394 1 2 3 4 5 6 7 Appeal Brief, Exhibit B Momentive calls Exhibit B to our attention (Appeal Brief, page 14) to establish that different polyols are used to make rigid vis-à -vis flexible foams. According to Momentive, Takeyasu is limited to rigid foams while Momentive claims "high resiliency foams." (3) Randall, The Polyurethanes Book (2002) 8 9 10 11 12 13 14 15 16 Appeal Brief, Exhibit C Momentive calls Exhibit C to our attention (Appeal Brief, page 15) apparently to establish that polyether polyols are necessary for production of high resiliency foams. According to Randall, as of 2002, a majority of molded foams are made using a "cold-cure" process. Ethylene oxide tipped, high molecular weight polyols are reacted with TDI or MDI. The polyols are polyether- based polyols. (4) Bayer-Polyurethanes Handbook (1979?) 17 18 19 20 21 Appeal Brief, Exhibit D Momentive calls Bayer to our attention to establish that polyether- based polyols and not polyester-based polyols are used to make high resiliency foams. (5) ICI Polyurethanes Book (1987) 22 23 24 25 Appeal Brief, Exhibit E ICI Polyurethanes is called to our attention to show that one of ordinary skill in the art would know that to produce cold-cure foams, i.e., high resilience polyurethane foams, one would use a polyether triol with a 15 Appeal 2008-3609 Application 10/355,394 1 2 3 high ratio of primary to secondary hydroxyl groups with a mean molecular weight from about 4,600 to 6000. (6) Dow Flexible Polyurethane Foams (1997) 4 5 6 7 8 9 10 11 Appeal Brief, Exhibit F Dow is cited to show some properties of high resiliency polyurethane foams. "HR" is an abbreviation for "high resiliency" foams which were "earlier" referred to as cold-cure foams. Dow tells us that HR foams generally require less active silicone surfactants and in many cases require only cell-size regulating types of surfactants. 12 13 14 15 16 17 18 19 20 21 22 23 (7) Japanese Laid-Open Patent HEI 4-185626 Momentive cites the above-identified Japanese Patent. Appeal Brief, page 17. A copy of the patent and an English language translation does not appear in the evidence appendix of the Appeal Brief. Accordingly, we decline to consider the Japanese Patent. We will note, however, that what Momentive says the Japanese Patent supposedly reveals has not been squared with the disclosure in the specification that both polyether polyols and polyester polyols "are useful in the process of the invention for making … flexible slabstock foams … [and] flexible molded foams …." Molded foams, of course, are used in automobiles. See Exhibit C of the evidence appendix of the Appeal Brief. 16 Appeal 2008-3609 Application 10/355,394 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 E. Principles of law A claimed invention is not patentable if the subject matter of the claimed invention would have been obvious to a person having ordinary skill in the art. 35 U.S.C. § 103(a); KSR Int’l Co. v. Teleflex Inc., 127 S. Ct. 1727 (2007); Graham v. John Deere Co. of Kansas City, 383 U.S. 1 (1966). Facts relevant to a determination of obviousness include (1) the scope and content of the prior art, (2) any differences between the claimed invention and the prior art, (3) the level of skill in the art and (4) any relevant objective evidence of obviousness or non-obviousness. KSR, 127 S. Ct. at 1734; 1389, Graham, 383 U.S. at 17-18. Familiar items may have obvious uses beyond their primary purposes, and in many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle. KSR, 127 S. Ct. at 1742; In re Icon Health and Fitness, Inc., 496 F.3d 1374, 1380 (Fed. Cir. 2007). An inventor must show that the results the inventor says the inventor achieves with the invention are actually obtained with the invention and it is not enough to show results are obtained which differ from those obtained in the prior art—any difference must be shown to be an unexpected difference. In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972). See also In re Geisler, 116 F.3d 1465, 1469-70 (Fed. Cir. 1997) (party asserting unexpected results has the burden of proving that the results are unexpected). A showing of unexpected results generally must be commensurate in scope with the breadth of the claimed invention. In re Greenfield, 571 F.2d 1185, 1189 (CCPA 1978). See also In re Harris, 409 F.3d 1339, 1344 (Fed. Cir. 2005). 17 Appeal 2008-3609 Application 10/355,394 1 2 3 4 5 6 7 8 9 The showing must be clear and convincing. McClain v. Ortmayer, 141 U.S. 419, 429 (1891) (conclusive evidence need to show invention performs some new and important function not performed by the prior art); In re Heyna, 360 F.2d 222, 228 (CCPA 1966) (applicant required to submit clear and convincing evidence to support an allegation of unexpected property). See also In re Passal, 426 F.2d 409, 412 (CCPA 1970) and In re Lohr, 317 F.2d 388, 392 (1963) (conclusive proof of unexpected results not submitted by applicant). F. Discussion 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 Examiner’s § 103 rejection The Examiner found that silicone surfactants within the scope of those identified in Momentive's claim 1 have been used as surfactants to make polyurethane foams. Examiner's Answer, page 3—relying on Reischl. The Examiner further found that Reischl differs from the claimed subject matter in that it describes the use of polyester-based polyols to make polyurethane foams whereas claim 1 requires the presence of a polyether based polyol. The Examiner still further found that it is well-known in the art that polyurethanes can be made from both polyester-based polyols and polyether- based polyols. The Examiner in effect found that polyester-based polyols and polyether-based polyols are "equivalent." Accordingly, the Examiner reasoned that one skilled in the art would have found it obvious to use the Reischl surfactant to make polyether-based polyurethane foams. 18 Appeal 2008-3609 Application 10/355,394 1 2 3 4 Momentive's views Momentive takes the position that polyester-based polyols and polyether-based polyols are not equivalent, Reischl's focus is on rigid foams, and therefore the Examiner has no case. 5 6 7 Obviousness of claimed invention We have little trouble concluding that the invention of claim 1 would have been obvious—for at least two reasons. (1) Reason 18 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 Our first reason takes into account the breadth of claim 1. A claim undergoing examination is given its broadest reasonable construction consistent with the specification. In re Prater, 56 CCPA 1381, 1395-96, 415 F.2d 1393, 1404-05 (CCPA 1969). It is true that claim 1 calls for use of "a polyether polyol …." So a polyether polyol must be used. However, claim 1 is not limited to the use of just a polyether polyol. The specification reveals that a mixture of both a polyether polyol and a polyester polyol is suitable. Specification, page 11:4 to page 12:8. Momentive has suggested that there is no way a polyester-based polyol would be used to make a flexible foam. But, Momentive's specification seems to say otherwise. See also Stevens, Polymer Chemistry, page 445 (2d ed. 1990) ("Flexible [polyurethane] foams are usually prepared from dihydroxy polyesters or polyethers …" and "Flexible foams are used as … automobile crash panels …"). 19 Appeal 2008-3609 Application 10/355,394 1 2 3 4 5 6 7 8 9 10 To the extent that any polyester-based polyol is used even in minor amounts in the process of claim 1—along of course with a polyether-based polyol—then use of the surfactants of Reischl would have been obvious. Why? Reischl tells one skilled in the art that polyester-based polyurethanes suffer from hydrolysis problems and use of the Reischl surfactant overcomes those problems. It would appear under these circumstances that Momentive is using a known surfactant for its intended purpose to achieve a totally expected result. KSR, 127 S. Ct. at 1740; Anderson's-Black Rock, Inc. v. Pavement Salvage Co., 396 U.S. 57 (1969). (2) Reason 211 12 13 14 15 16 17 18 19 20 21 22 23 24 25 In addressing Reason 2, we first observe, as did the Supreme Court in KSR, that a person skilled in the art is not an automaton. KSR, 127 S. Ct. at 1742. What problem was Momentive trying to solve? It was a VOC [volatile organic compounds] problem resulting from volatilization of silicon oil surfactants used to make open-cell flexible foams for use as components in automobiles. Specification, page 2:18-23 and page 3:11-12. To eliminate a VOC problem one skilled in the art would have recognized that some means must be used to prevent the surfactant from escaping from the foam. A first option which would have been recognized would be a closed cell system. But, as Exhibit D points out, flexible foams with closed cells tend to shrink, particularly if made with a water blowing agent. Exhibit D, page 67:1-3. 20 Appeal 2008-3609 Application 10/355,394 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 A second option which would have been recognized would have been use of a known surfactant which would react with either the isocyanate or the polyether to become part of the chemical structure of the polyurethane foam thereby preventing volatilization of the surfactant. Known surfactants with terminal hydroxyl [―OH] groups would have been recognized by one skilled in the art as suitable for reacting with isocyanate groups [―NCO] on the polyisocyanate. The surfactants claimed by Momentive were known as surfactants for use in making polyurethane foams as shown by Reischl. The surfactants are described as useful because the surfactants contain hydroxyl groups which will react with available isocyanate groups. It is true that Reischl is concerned with polyester-based polyurethanes and was seeking to solve a hydrolysis problem. However, one skilled in the art seeking to avoid VOC problems in polyether-based polyols would have recognized and would have predicted that the hydroxyl-containing surfactants of Reischl would react with isocyanate groups available during the making of a polyether-based polyurethane. Hindsight is always a concern when an obviousness rejection is made. KSR, 127 S. Ct. at 1742. However, obviousness judgments are necessarily based on hindsight. As long as an obviousness judgment takes into account only knowledge known in the art, there is no hindsight. In re McLaughlin, 58 CCPA 1310, 1313-14, 443 F.2d 1392, 1395 (CCPA 1971). 21 Appeal 2008-3609 Application 10/355,394 1 2 3 4 5 6 7 8 Rigid rules that deny factfinders recourse to common sense cannot be the linchpin upon which a hindsight argument is based. KSR, 127 S. Ct. at 1742-43. One skilled in the polyurethane art would have the common sense to know, based on all the prior art before us, that a surfactant with a hydroxyl group would react with available isocyanate groups to become part of the polyurethane foam chemical structure and thereby not be available as a volatile organic compound. 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 The comparative showing In reaching our decision we have not overlooked the comparative showing in the specification. Any showing of unexpected results must be clear and convincing and must be commensurate in scope with the breadth of the claims. First, we do not think on this record that the results are unexpected. One skilled in the art would have recognized that a surfactant which is "tied" up in the chemical structure of the polyurethane would not become VOC. Second, we are not entirely sure of the exact chemical structure of C6 and C7. The meaning of the branching group composition identification as allylalcohol and allylethoxyethanol is not clear to us. Moreover, we have not found a clear statement in the specification establishing the correctness of our assumption that the groups of C6 and C7 corresponding to Momentive's "R1" groups are methyl groups. Third, it is not clear that the comparative showing between (1) C6 and C7 on the one hand and (2) C9 on the other hand is commensurate in scope with the breadth of the claims. 22 Appeal 2008-3609 Application 10/355,394 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 Momentive's equivalency argument The principal point made by Momentive in the appeal is that the Examiner is wrong in finding that polyesters and polyethers are "equivalents" for making polyurethane foams and that in any event Reischl describes making rigid—not HR—foams. We view the "equivalency" and "rigid foam" arguments to be a side show which does not focus on the real issue at hand. It is true that polyesters are used to make foams which have different properties than foams made from polyethers. But that is not the point in this case. Both polyesters and polyethers are known for making flexible polyurethane foams. The significant disclosure of Reischl is the use of hydroxyl group containing surfactants which become "tied" up in the polyurethane foam structure. It is that concept which would lead one skilled in the art, exercising normal common sense, to recognize that the surfactant would, and could, not "escape" as a VOC. Momentive overlooks the extensive description of the problem faced by the foam and automobile industry all as set out in Momentive's specification. The record in this case shows that there was a "market demand" which motivated a solution to the problem. KSR, 127 S. Ct. at 1741. On this record, the solution to the problem was well within the skill of the polyurethane art. Momentive has not discovered that isocyantes and polyethers may be used to make polyurethane foam. Momentive has not discovered the need for surfactants to produce uniform cell structure. Momentive has not 23 Appeal 2008-3609 Application 10/355,394 1 2 3 4 5 6 7 8 discovered the need for a blowing agent. Momentive simply cannot dispute the fact that as of 2003 it is well-known in the polyurethane art that isocyantes are reacted with polyethers in the presence of a surfactant and a blowing agent to make flexible foams. Specification, page 1:13-15. All Momentive has discovered is that VOC can be reduced by using a surfactant which gets "tied" up in the polyurethane structure. That a surfactant with hydroxyl groups gets "tied" upon the structure was taught long ago by Reischl. There is nothing unexpected about Momentive's contribution. 9 10 11 12 13 14 15 16 17 18 Remaining arguments We have considered Momentive's remaining arguments and find none that warrant reversal of the Examiner’s rejection(s). Cf. Hartman v. Nicholson, 483 F.3d 1311, 1315 (Fed. Cir. 2007). G. Conclusions of law Momentive has not sustained its burden on appeal of showing that the Examiner erred in rejecting the claims on appeal as being unpatentable under 35 U.S.C. § 103(a) over the prior art. On the record before us, Momentive is not entitled to a patent containing the claims on appeal. 24 Appeal 2008-3609 Application 10/355,394 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 H. Decision Upon consideration of the appeal, and for the reasons given herein, it is ORDERED that the decision of the Examiner rejecting the claims on appeal over the prior art is affirmed. FURTHER ORDERED that since our claim interpretation rationale differs from the rationale of the examiner, our affirmance is designated as a new rejection. 37 CFR § 41.50(b) (2006). FURTHER ORDERED that our decision is not a final agency action. FURTHER ORDERED that within two (2) months from the date of our decision appellant may further prosecute the application on appeal by exercise one of the two following options: 1. Request that prosecution be reopened by submitting an amendment or evidence or both. 37 CFR § 41.50(b)(1) (2006). 2. Request rehearing on the record presently before the Board. 37 CFR § 41.50(b)(2) (2006). FURTHER ORDERED that 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) (2006). AFFIRMED New Ground of Rejection—37 C.F.R. § 41.50(b) (2007) lb 25 Appeal 2008-3609 Application 10/355,394 cc (via U.S. Mail): MOMENTIVE PERFORMANCE MATERIALS INC- TARRYTOWN C/O DILWORTH & BARRESE, LLP 333 EARLE OVINGTON BLVD. UNIONDALE, NY 11553 26 Copy with citationCopy as parenthetical citation