11401510 (B.P.A.I. Apr. 19, 2011)

Ex Parte Neal et al

Board of Patent Appeals and InterferencesApr 19, 2011

11401510 (B.P.A.I. Apr. 19, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte BRIAN L. NEAL, MICAH N. MOORE, STANLEY L. HAGER and RANDALL A. CARTER ____________ Appeal 2009-015131 Application 11/401,510 Technology Center 1700 ___________ Before TERRY J. OWENS, JEFFREY T. SMITH, and KAREN M. HASTINGS, Administrative Patent Judges. HASTINGS, Administrative Patent Judge. DECISION ON APPEAL Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s final decision rejecting claims 1-48. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We AFFIRM. Appeal 2009-015131 Application 11/401,510 2 Claim 1 is illustrative of the subject matter on appeal: 1. An isocyanate-reactive component comprising: at least about 10 wt.%, based on the weight of the isocyanate- reactive component, of a vegetable oil-based polyol; a nonionic emulsifier comprising one of an aliphatic alcohol ethoxylate and an aliphatic phenol ethoxylate having a polymerized ethylene oxide content of at least about 25 moles per equivalent of alcohol or phenol and a HLB value greater than about 17; one or more non-vegetable oil-based polyols; one or more silicone surfactants, and optionally, water or other blowing agents, catalysts, pigments and fillers, wherein the isocyanate-reactive component is storage stable at temperatures of from about -10°C to about 60°C for at least about three days. The Examiner maintains, and Appellants appeal, the rejection under 35 U.S.C. § 103(a) of claims 1-48 as unpatentable over the combined prior art of Clatty1 and Hammel2. Appellants do not set forth separate, substantive arguments for any particular claim on appeal, including for those claims separately rejected by the Examiner3. We choose claim 1 as representative and all of the appealed claims stand or fall together with claim 1. 1 Clatty, US 6,649,667 B2 issued Nov. 18, 2003. 2 Hammel, US 6,121,337 issued Sep. 19, 2000. 3 The Examiner separated the claims into three groups, however, each group was rejected on the basis of the same prior art. Appeal 2009-015131 Application 11/401,510 3 MAIN ISSUE ON APPEAL Did the Examiner reversibly err in determining that the claimed isocyanate-reactive component would have been obvious over the applied combined prior art, because, as alleged by Appellants, neither Clatty nor Hammel teach or suggest that the claimed emulsifiers would promote storage stability as claimed? (App. Br.; Reply Br. generally). We answer this question in the negative. PRINCIPLES OF LAW In assessing whether a claim to a combination of prior art elements would have been obvious, the question to be asked is whether the improvement of the claim is more than the predictable use of prior art elements according to their established functions. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). The analysis need not seek out precise teachings directed to the specific subject matter of the claim, for it is proper to take account of the inferences and creative steps that a person of ordinary skill in the art would employ. Id. at 418. “For obviousness under § 103, all that is required is a reasonable expectation of success.” In re O’Farrell, 853 F.2d 894, 903-04 (Fed. Cir. 1988). ANALYSIS We have thoroughly reviewed each of Appellants’ arguments for patentability. However, we are in agreement with the Examiner that the claimed subject matter would have been obvious to one of ordinary skill in the art within the meaning of § 103 in view of the applied prior art. Appeal 2009-015131 Application 11/401,510 4 Specifically, we agree with the Examiner that it would have been obvious to include the Tergitol® NP-40 hydrogen bond forming agent of Hammel’s isocyanate-reactive composition in the isocyanate-reactive composition of Clatty since Hammel teaches that this agent will “provide advantages such as imparting lubricity to the foamable composition” (Ans. 4). We add the following primarily for emphasis. Appellants’ argument that neither reference recognizes the advantage of increasing the storage stability (e.g., App. Br. 4-6) is unavailing. While we agree that the problem faced by an applicant is a relevant factor, a teaching or suggestion of applicant's problem is not always required for a prima facie case of obviousness. An invention may be obvious for reasons the inventor did not contemplate. See In re Dillon, 919 F.2d 688, 693 (Fed. Cir. 1990)(en banc). Furthermore, we find that the desired additional storage stability property would have naturally flowed from following the suggestion of Hammel to use Tergitol ® NP-40 in an isocyanate-reactive composition to reduce the permeation of air into the foam (col. 3, ll. 57-60; col. 3, l. 66 – col. 4, l. 1). Ex parte Obiaya, 227 USPQ 58, 60 (BPAI 1985), aff'd. mem., 795 F.2d 1017 (Fed. Cir. 1986)(holding that the recognition of another advantage flowing naturally from following the suggestion of the prior art cannot be the basis for patentability when the difference would otherwise be obvious). Appellants’ additional arguments in the Appeal Brief are unavailing because they improperly focus on the teachings of Clatty and Hammel individually instead of addressing the Examiner's stated case for obviousness (App. Br. generally). “[O]ne cannot show non-obviousness by attacking Appeal 2009-015131 Application 11/401,510 5 references individually where … the rejections are based on combinations of references.” In re Keller, 642 F.2d 413, 426 (CCPA 1981). Appellants’ argument that there is no reason to choose the Tergitol® NP-40 hydrogen bond forming agent out of the hundreds of bonding agents included in Hammel (Reply Br. 2) is unavailing. As stated by our reviewing court in Merck & Co., Inc. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989), the disclosure in a prior art reference of compositions having various effective ingredient combinations does not render any particular formulation less obvious, particularly when the claimed composition is used for the identical purpose taught by the prior art reference. Appellants’ conclusory argument that halocarbon blowing agents such as in Hammel would not be present in Appellants’ mixture (Reply Br. 3) is unpersuasive since Appellants’ claims optionally include “water or other blowing agents” (see, e.g., claim 1). Accordingly, it would have been prima facie obvious for one of ordinary skill in the art, using no more than ordinary creativity, to have modified the isocyanate-reactive composition of Clatty to include the known Tergitol® NP-40 hydrogen bond forming agent of Hammel. This would appear to be no more than the predictable use of a known prior art additive for its known function. In the present case, Appellants have not established on this record that the use of an emulsifier within the claimed parameters achieves a new, unexpected result as a storage stability agent for an isocyanate reactive mixture. While Appellants make reference to Specification data (App. Br. 8, 9), Appellants have not provided the requisite analysis of the data which demonstrates that methods and products within the scope of the broadly Appeal 2009-015131 Application 11/401,510 6 drafted claims on appeal produce unexpected results. It is not within the purview of this Board to analyze specification data and ferret out results in a light that is most favorable to Appellants. Manifestly, it is Appellants who must shoulder the burden of establishing results that would be considered truly unexpected by one of ordinary skill in the art. In re Merck & Co., 800 F.2d 1091, 1099 (Fed. Cir. 1986); In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972). Under these circumstances, Appellants have not shown reversible error in the Examiner’s determination that the subject matter of independent claim 1 (as well as all the remaining not separately argued claims) would have been prima facie obvious over the combined teachings of the applied prior art references. For the reasons stated above and in the Answer, we sustain the § 103 rejection of all of the appealed claims4. The decision of the Examiner is affirmed. 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). AFFIRMED sld 4 Only those arguments actually made by Appellants have been considered in this decision. Arguments which could have been made but that Appellants chose not to make have not been considered and are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(vii) (2008).