Ex Parte Muller et al

Board of Patent Appeals and Interferences

Jul 11, 2008

10355394 (B.P.A.I. Jul. 11, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte LOUIS MULLER, HASSAN EL GHOBARY
and FABRICE PONTHET
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Appeal 2008-3609
Application 10/355,394
U.S. Patent Publication 2004/0152796
Technology Center 1700
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Decided: July 11, 2008
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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
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Momentive Performance Materials, Inc. ("Momentive"), the real
party in interest identified in the Appeal Brief, seeks review under 35 U.S.C.

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§ 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
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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.
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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
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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
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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
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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
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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
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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.
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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
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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
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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
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1 CH3 CH3 CH3
2 │ │ │
3 CH3―Si―[O―Si―]x―O―Si―CH3
4 │ │ │
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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
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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 (―CH═CH―CH2―OH). 26
The "Branching group Composition" for C9 is identified as 27
allylethoxyethanol (―CH═CH―CH2―O―CH2―CH2―OH). 28
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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
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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.
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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
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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.
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Prior art
In addition to the prior art and background discussed in the
specification, the record also contains Reischl and Takeyasu.
(1) Reischl4
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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 │ │ │
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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
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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
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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.
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Rebuttal evidence
Momentive cites and discusses several prior art references.
(1) Szycher's Handbook of Polyurethanes (1999)
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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)
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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)
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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?)
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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)
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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
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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)
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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.
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(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.
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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).
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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
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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.
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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.
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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
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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 …").
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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
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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.
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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).
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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.
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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.
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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
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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.
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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.
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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

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MOMENTIVE PERFORMANCE MATERIALS INC-
TARRYTOWN
C/O DILWORTH & BARRESE, LLP
333 EARLE OVINGTON BLVD.
UNIONDALE, NY 11553
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