Ex Parte Ohyama et al

Board of Patent Appeals and Interferences

Aug 31, 2009

11109028 (B.P.A.I. Aug. 31, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte TAKAKO OHYAMA,
HIROMASA KAWAGUCHI,
and HIDEO IKOMA
____________

Appeal 2009-001946
Application 11/109,028
Technology Center 1700
____________

Decided: August 31, 2009
____________

Before CHUNG K. PAK, TERRY J. OWENS, and MARK NAGUMO,
Administrative Patent Judges.

PAK, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
refusal to allow claims 1, 5, 7, 14, and 16 through 23. Claims 24 through 30,
the other claims pending in the above-identified application, stand
withdrawn from consideration by the Examiner. We have jurisdiction under
35 U.S.C. § 6(b).
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We AFFIRM.
STATEMENT OF THE CASE
The subject matter on appeal is directed to a cushion material used in
flexographic printing. (Spec. 1). Details of the appealed subject matter are
recited in representative claims 1, 5, and 23 reproduced below:1
1. A cushioning material for flexographic printing, comprising:

a substrate including a polyurethane foam produced by using
a reactive silicone foam stabilizer in which an SiO% is in a range
of 10 to 25%, and the polyurethane foam has a density in a range
of 0.1 to 0.7 g/cm3 and a bubble fraction of 60% or less;

at least one adhesive layer provided on at least one surface of
the substrate.

5. A cushioning material comprising:

the polyurethane foam as a substrate, said polyurethane foam
including a reactive silicone foam stabilizer; and

an adhesive layer formed on at least one surface of the substrate.

23. A flexographic printing arrangement comprising:

a substrate including a polyurethane foam with a reactive
silicone foam stabilizer, said reactive silicone foam stabilizer
in the polyurethane foam having an SiO% in a range of 10 to
25%, said polyurethane foam having a density in a a [sic] range
of 0.1 to 0.7 g/cm3, said polyurethane foam having a bubble
fraction of 60% or less;

an adhesive layer arranged on a surface of said substrate.

1 Pursuant to the requirements of 37 C.F.R. § 41.37(c)(1)(vii) (2007), we
limit our discussion to claims 1, 5, 7, 19, and 23.

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The Examiner relied upon the following prior art references as
evidence of unpatentability (Ans. 2-3):
Rather 5,325,776 Jul. 5, 1994
Price 2003/0124337 A1 Jul. 3, 2003
Kawaguchi 6,948,429 B2 Sep. 27, 2005
Ochiai JP 363239013 A Oct. 5, 19882

The Examiner rejected claims 1, 5, 7, 14, and 16 through 23 under
35 U.S.C. § 103(a) as unpatentable over the combined disclosures of Price,
Rather, and Ochiai. The Examiner also rejected claims 1, 5, 7, 14, and 16
through 23 under the judicially created doctrine of nonstatutory obviousness-
type double patenting as unpatentable over the claims of Kawaguchi in view
of the disclosure of Ochiai.
With respect to the Examiner’s § 103(a) rejection, Appellants contend
that one of ordinary skill in the art would not have had any reason to employ
the reactive silicone foam stabilizer taught by Ochiai as the silicone foam
stabilizer in forming Price’s polyurethane foam as required by claims 1, 5,
and 23 (App. Br. 7-10 and Reply Br. 2-5). Appellants also contend that one
of ordinary skill in the art would not have been led to use a reactive silicone
foam stabilizer having the SiO content in the range recited in
claims 1 and 23 (10 to 25%) and prepare a polyurethane foam having the
bubble fraction recited in claims 1 and 23 (60% or less) (App. Br. 10-11 and
Reply Br. 6). Appellants further contend that the additional property (total
light transmission of 55% or more) of the cushioning material recited in

2 Appellants do not question the Examiner’s reliance on the English
translation submitted by Appellants as corresponding to the Japanese patent
document issued to Ochiai referred to in the rejection of record. (Compare
Ans. 3, 5, and 7-13, with App. Br. 7-14 and Reply Br. 2-7). Accordingly,
our reference to Ochiai is to the English translation submitted by Appellants.
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claims 7, 14, and 17 would not have naturally flowed from following the
suggestion of the combined teachings of Price, Rather, and Ochiai (App.
Br. 12 and Reply Br. 6-7). Finally, Appellants contend that Ochiai does not
teach a reactive silicone foam stabilizer having a reactive group capable of
reacting with one of polyol and isocyanate as recited in claim 19 (App.
Br. 13).
With respect to the Examiner’s nonstatutory obviousness-type double
patenting rejection, Appellants contend that one of ordinary skill in the art
would not have had any reason to employ a reactive silicone foam stabilizer
in preparing Kawaguchi’s polyurethane foam (App. Br. 13-14 and Reply
Br. 7).
I. OBVIOUSNESS UNDER 35 U.S.C. § 103
ISSUES AND CONCLUSIONS
The dispositive questions raised in this Appeal are:
(1) Have Appellants identified reversible error in the Examiner’s
determination that one of ordinary skill in the art would have been led to
employ the reactive silicone foam stabilizer taught or suggested by Ochiai in
forming a polyurethane foam layer of the cushioning material taught by
Price as required by claims 1, 5, and 23?
(2) Have Appellants identified reversible error in the Examiner’s
determination that one of ordinary skill in the art would have been led to
employ Rather’s polyurethane foam layer having the bubble fraction recited
in claims 1 and 23 as the polyurethane foam layer of the cushioning material
taught by Price and the Examiner’s finding that Ochiai necessarily teaches or
would have suggested a reactive silicone foam stabilizer having the SiO
percentage recited in claims 1 and 23?
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(3) Have Appellants identified reversible error in the Examiner’s
finding that the additional light transmission property of a cushioning
material recited in claims 7, 14, and 17 would have naturally flowed from
the suggestion of the applied prior art references of a cushioning material
suitable for flexographic printing made of the same ingredients as those
claimed?
(4) Have Appellants identified reversible error in the Examiner’s
finding that Ochiai teaches a reactive silicone foam stabilizer having a
hydroxyl reactive group capable of reacting with one of polyol and
isocyanate as required by claim 19?
On this record, we answer these questions in the negative.
RELEVANT FINDINGS OF FACT
1. Price teaches a foam cushion tape used in flexographic printing (p.
1, para. 0002).
2. Price teaches that the foam cushion tape comprises a compressible
polyurethane foam layer (12) disposed between a first adhesive
layer (24) and an anchoring layer (16) (p. 1, para. 0013 and p. 2,
paras. 0014 and 0017 and Fig. 1),
3. Appellants do not dispute the Examiner’s finding that the
anchoring layer (16) is also an adhesive layer.
4. Price teaches (p. 2, para. 0022) that:
Polyurethane foam compositions suitable for use
in the manufacture of the tapes are known in the
art . . . . In general, polyurethane foams are
formed from compositions comprising an organic
isocyanate component reactive with an active
hydrogen-containing component [e.g., a polyol], a
surfactant, and a catalyst.
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5. Price teaches (p. 4, para. 0034) that:
A wide variety of surfactants can be employed for
purposes of stabilizing the froth, organosilicone
surfactants being preferred. A preferred
organosilicone surfactant is a copolymer consisting
essentially of SiO2 (silicate) units and (CH3)3SiO0.5
(trimethylsiloxy) units in a molar ratio[3] of silicate
to trimethylsiloxy units of about 0.8:1 to about
2.2:1, preferably about 1:1 to about 2.0:1. Another
preferred organosilicone surfactant stabilizer is a
partially cross-linked siloxane-polyoxyalkylene
block copolymer and mixtures thereof wherein the
siloxane blocks and polyoxyalkylene blocks are
linked by silicon to carbon, or by silicon to oxygen
to carbon, linkages . . . . The amount of the
organosilicone polymer employed as a foam
stabilizer in this invention can very over wide
limits, e.g., from about 0.5 weight parts to
10 weight parts or greater, per hundred weight
parts of the active hydrogen component.

6. The Examiner finds at page 8 of the Answer, and Appellants do
not dispute anywhere in the Appeal Brief and the Reply Brief, that
the organosilicone foam stabilizers taught by Price are regular
silicone foam stabilizers.
7. Price exemplifies forming a polyurethane foam layer having a
density of about 30 pounds per cubic foot (kilograms per cubic
meter) via using the above-mentioned materials, i.e., a polyol, a
catalyst, an isocyanate, a surfactant and a pigment (p. 5, para. 0044
and p. 6, para. 0050).

3 The claimed percentage of SiO in a reactive organosilicone foam stabilizer
is not recited to be the molar ratio taught by Price.
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8. Appellants do not dispute the Examiner’s finding that Price’s
polyurethane foam has a density of 30 lb/ft3 “which converts to
0.48g/cm3 (1 lb/ft3 = 0.016 g/cm3)” (compare Ans. 4 with App. Br.
and Reply Br.).
9. Price teaches that the polyurethane foam layer typically has a
thickness of 5 to 60 mils and “can be of variable compressibility as
is known in the art” (p. 1, para. 0013).
10. Price teaches the importance of improving adhesion between
polyurethane foams and a PET film or other films (pp. 5-6,
paras. 0048-0053).
11. Rather, like Price, teaches a polyurethane foam layer useful for
flexographic printing, wherein the use of a high density
polyurethane foam containing “discrete, separated closed cell voids
[] which form pneumatically compressible pockets is believed to
be critical in improving performance” of the cushioning materials
(col. 1, ll. 10-17 and col. 2, ll. 38-45).
12. Rather exemplifies a cured polyurethane foam layer having a void
volume percentage of 33% with a density being less than 40 lb/ft3
[<0.64 g/cm3] at a thickness of less than 40 mils and over 50 lb/ft3
at a thickness greater than 60 mils (col. 6, ll. 9-12 and 34-46).
13. Rather, like Price, teaches a polyurethane foam layer having a
thickness of 30 to 60 mils adhered to a PET film (col. 2, ll. 45-50).
14. Ochiai teaches (p.2) that:
[T]he inventors herein studied the method for
adding the silicon foaming agent to the
polyurethane material, however, if the regular
silicon foaming agent is used, silicon foaming
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agent bleeds on the surface of polyurethane layer,
hence, blocking the adhesion with the surface skin
material such as polyvinyl chloride.

15. Ochiai teaches that to provide sufficient adhesion between the
surface skin material and the polyurethane foam layer, the
polyurethane material is foamed using a reactive type silicon foam
stabilizing agent while the polyurethane material is between the
core material and the surface skin material (pp. 2-3).
16. Ochiai teaches (p. 3) that:
[W]hile the polyurethane material is in the
process of foaming reaction, reactive type silicon
foaming agent reacts, hence, it does not bleed on
the polyurethane layer surface, thus not adversely
impacting on the adhesion characteristics.

17. Ochiai uses the term “a reactive type silicon foaming agent” or “a
reactive silicone foam stabilizer” interchangeably in preparing a
polyurethane foam layer and teaches that the amount of a reactive
silicone foam stabilizer used is dependent on the kind of the
reactive silicone foam stabilizer and the composition of
polyurethane stock employed (p. 3 and Abstract).
18. Ochiai teaches (Abstract and p. 3) that:
A preferable reactive silicone foam stabilizer is of
a type which has a high content of a primary OH
group (having one hydroxyl group) at the terminal
of the molecular chain of an organic silicon
compound.

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PRINCIPLES OF LAW
Under 35 U.S.C. § 103, the factual inquiry into obviousness requires a
determination of: (1) the scope and content of the prior art; (2) the
differences between the claimed subject matter and the prior art; (3) the level
of ordinary skill in the art; and (4) secondary considerations, if any. Graham
v. John Deere Co., 383 U.S. 1, 17-18 (1966).
As stated in KSR Int’l Co., v. Teleflex, Inc., 550 U.S. 398, 418 (2007):
[A]nalysis [of whether the subject matter of a claim would have
been prima facie obvious] need not seek out precise teachings
directed to the specific subject matter of the challenged claim,
for a court can take account of the inferences and creative steps
that a person of ordinary skill in the art would employ.

KSR also instructs:
When there is a design need or market pressure to solve a
problem and there are a finite number of identified, predictable
solutions, a person of ordinary skill has good reason to pursue
the known options within his or her technical grasp. If this
leads to the anticipated success, it is likely the product . . . of
ordinary skill and common sense.

Id. at 421.

See also In re Hoeschele, 406 F.2d 1403, 1406-407 (CCPA 1969) (“[I]t is
proper to take into account not only specific teachings of the references but
also the inferences which one skilled in the art would reasonably be
expected to draw therefrom.”); In re Boesch, 617 F.2d 272, 276 (CCPA
1980) (“[D]iscovery of an optimum value of a result effective variable . . . is
ordinarily within the skill of the art.”); In re Aller, 220 F.2d 454, 456 (CCPA
1955) (“[W]here the general conditions of a claim are disclosed in the prior
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art, it is not inventive to discover the optimum or workable ranges by routine
experimentation.”).
“[W]here the prior art gives reason or motivation to make the claimed
[invention]…the burden (and opportunity) then falls on an applicant to rebut
that prima facie case. Such rebuttal or argument can consist of . . . any other
argument or presentation of evidence that is pertinent.” In re Dillon,
919 F.2d 688, 692-93 (Fed. Cir. 1990) (en banc).
ANALYSES
Claims 1, 5, and 23:
As indicated supra, Price teaches a foam cushion tape useful for
flexographic printing, wherein the foam cushion tape comprises a
compressible polyurethane foam layer with one of its surfaces attached to an
adhesive layer. The compressible polyurethane foam suitable for
flexographic printing, according to Price, is known in the art and is formed
from an organic isocyanate component, an active hydrogen-containing
component, such as a polyol, a catalyst, and a surfactant, such as an
organosilicone surfactant used as a foam stabilizer.
The Examiner finds at page 8 of the Answer, and Appellants do not
dispute anywhere in the Appeal Brief and the Reply Brief, that the
organosilicone foam stabilizers taught by Price are “regular” silicone foam
stabilizers, not the claimed reactive organosilicone foam stabilizer.
However, Ochiai teaches (p. 2) that:
[T]he inventors herein studied the method for
adding the silicon foaming agent to the
polyurethane material, however, if the regular
silicon foaming agent is used, silicon foaming
agent bleeds on the surface of polyurethane layer,
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hence, blocking the adhesion with the surface skin
material such as polyvinyl chloride.

To provide sufficient adhesion between the surface of a skin material and the
polyurethane foam layer, Ochiai teaches employing a reactive silicone foam
stabilizer in preparing a polyurethane foam. Specifically, Ochiai teaches (p.
3) that:
[W]hile the polyurethane material is in the process
of foaming reaction, reactive type silicon foaming
agent reacts, hence, it does not bleed on the
polyurethane layer surface, thus not adversely
impacting on the adhesion characteristics.

Given the desire for improving the adhesion property of a
polyurethane foam layer taught by Price, we concur with the Examiner that
one of ordinary skill in the art would have been led to employ the reactive
type silicone foam stabilizer taught by Ochiai as the organosilicone
surfactant (foam stabilizer) in forming the polyurethane foam taught by
Price within the meaning of 35 U.S.C. § 103(a).
In reaching this determination, we have considered Appellants’
arguments at pages 7 through 10 of the Appeal Brief and pages 2 through 6
of the Reply Brief that Ochiai is directed to an integral foam molding
process in which a polyurethane foam is formed between the core and the
surface skin materials for the purpose of directly bonding the polyurethane
foam layer to the skin material. However, the bleeding effect associated
with a silicone foam stabilizer discussed in Ochiai is directed to a
polyurethane foam in general, inclusive of the polyurethane foam taught by
Price. Ochiai’s studies on the bleeding effect affecting adhesion of a
polyurethane foam are not said to be limited to its particular polyurethane
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foam making process. Thus, one of ordinary skill in the art would have been
led to employ a reactive type silicone foam stabilizer in forming Price’s
polyurethane foam, with a reasonable expectation of successfully improving
its adhesion property.
Claims 1 and 23:
Claims 1 and 23, unlike claim 5, further require a reactive silicone
foam stabilizer to have an SiO% in the range of 10 to 25%. The purpose of
employing the claimed percentage of SiO, according to Appellants at page
12 of the Specification, is to provide foam stabilizing and bleeding
preventive functions to a reactive silicone foam stabilizer. Specifically, the
Specification states (p. 12) that:
The reactive silicone foam stabilizer has an SiO%
preferably in the range of 10 to 25%. An SiO% of less than
10% does not provide an expected foam stabilizing force, while
an SiO% in excess of 25% causes an unreacted portion to bleed
out to the surface of the polyurethane foam to thereby reduce
the adhesive force (bonding force) of the surface of the
polyurethane foam.

Although Ochiai does not specifically mention the claimed SiO% in its
reactive silicone foam stabilizer as argued by Appellants, Ochiai does teach
that its reactive silicone foam stabilizer performs the same stabilizing and
bleeding preventing functions said to be imparted by the claimed SiO%
content. Thus, there is a reasonable basis to believe that Ochiai’s reactive
silicone foam stabilizers have the percentage of SiO recited in claims 1 and
23. The burden is on Appellants to show that Ochiai’s reactive silicone
foam stabilizer does not necessarily have the claimed percentage of SiO.
Appellant, however, have not provided such a showing.
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More importantly, however, as correctly found by the Examiner at
page 11 of the Answer, Ochiai teaches that the amount of a reactive silicone
foam stabilizer added for the purpose of stabilizing the polyurethane foam
and preventing bleeding of the foam stabilizer is dependent on the types of
reactive silicone foam stabilizers and the compositions of the polyurethane
material selected. Implicit in this teaching of Ochiai is that it is within the
ambit of one of ordinary skill in the art to select appropriate amounts of
appropriate reactive silicone foam stabilizers, inclusive of those claimed in
claims 1 and 23, for given compositions of polyurethane foams to stabilize
the foam and prevent the bleeding of the stabilizer. Thus, we concur with
the Examiner that it is within the ambit of one of ordinary skill in the art to
employ appropriate reactive silicone foam stabilizers, especially those
having the claimed percentage of SiO, to carry out the purpose of foam
stabilizing and bleeding preventive functions taught by Ochiai.
Appellants contend that Price and Rather do not teach or would not
have suggested a polyurethane foam having the claimed bubble fraction of
60% or less as required by claims 1 and 23. However, as indicated supra,
Price teaches a polyurethane foam layer having a thickness of 5 to 60 mils
suitable of flexographic printing. Price’s polyurethane foam layer has a
density of 30 lb/ft3 (i.e., 0.48g/cm3; corresponding to the recited limitation)
and can have desired compressibility. Although Price does not specify the
percentage of a closed cell void volume (bubble fraction)4 in its
polyurethane foam, Rather teaches that the use of a high density

4 Although the Specification does not provide the meaning of the claimed
“bubble fraction,” we infer from the Specification and Kawaguchi (co-
owned related patent) that the claimed bubble fraction is a void volume
percentage represented by closed void cells in a polyurethane foam.
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polyurethane foam layer containing discrete, separated closed cell voids
which form pneumatically compressible pockets is critical in improving
performance of the cushioning materials useful for flexographic printing.
Rather then goes on to exemplify a cured polyurethane foam layer having a
void volume percentage of 33% corresponding to the claimed bubble
fraction. According to Rather, its void volume percentage is applicable to
polyurethane foam layers having thicknesses and densities inclusive of those
of Price’s polyurethane foam.
It follows that one of ordinary skill in the art interested in improving
the performance of Price’s cushioning material would have been led to
employ a polyurethane foam layer having the claimed void volume
percentage of 33% as the polyurethane foam layer of Price’s cushioning
material suitable for flexographic printing.
Claims 7, 14, and 17:
Claims 7, 14, and 17 require that the claimed cushioning material has
a total light transmission of 55% or more. The Specification does not
explain how such a property can be obtained. The Specification only states
(Spec. 7-8) that:
Furthermore, the present invention is characterized in
that the cushioning material for flexographic printing has a total
light transmission of 55% or more.
As a result, the cushioning material becomes transparent
or semitransparent. Therefore, a marking for positioning given
to, for example, the printing cylinder can be seen through the
cushioning material at the time of attachment of a flexographic
printing plate to the printing cylinder. Accordingly, the
flexographic printing plate can be positioned precisely, and
easily attached without the occurrence of misalignment.

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As indicated above, the collective teachings of Price, Rather, and
Ochiai would have suggested the claimed cushioning material suitable for
flexographic printing comprising a polyurethane foam layer having an
advantageous feature and an adhesive layer. The preponderance of the
evidence of record supports the finding by the Examiner at pages 7 and 8 of
the Answer that the additional (light transmission) property recited in claims
7, 14, and 17 would have naturally flowed from the suggestion of the applied
prior art references of a cushioning material suitable for flexographic
printing made of the same ingredients as those claimed. Compare In re
Papesch, 315 F.2d 381, 391 (CCPA 1963) (“a compound and all of its
properties are inseparable”); See also Ex parte Obiaya, 227 USPQ 58, 60
(BPAI 1985) ("The fact that appellant has recognized another advantageous
feature which would flow naturally from following the suggestion of the
prior art cannot be the basis for patentability when the differences would
otherwise be obvious.")
Appellants contend at page 12 of the Appeal Brief that the cushioning
material suggested by the applied prior art references would not necessarily
have the claimed light transmission property. According to Appellants (id.):
[E]ven if the polyurethane foam has similar constitution and
density, it does not necessarily attain a total light transmission
or 55% or more because of the presence or absence of coloring
or a difference in cell diameter or the like.

However, Appellants’ Specification does not support this contention: if
nothing special need be done to obtain the result, it follows that the result
must be the one that flows naturally from of making products within the
scope of the recited compositions. Nor have Appellants proffered any
objective evidence to support their contention. See, e.g., In re De Blauwe,
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736 F.2d 699, 705 ( Fed. Cir. 1984); In re Lindner, 457 F.2d 506, 508
(CCPA 1972) (Appellants' mere arguments in the Brief cannot take the place
of objective evidence.)
It follows that Appellants have not identified any reversible error in
the Examiner’s determination regarding obviousness of the subject matter
recited in claims 7, 14, and 17.
Claim 19:
Claim 19 recites that its reactive foam stabilizer has a reactive group
“capable of reacting with one of polyol, and isocyanate.” According to page
8 of the Specification,
In the present invention, the term “reactive silicone foam
stabilizer” refers to a foam stabilizer having a reactive group
capable of reacting with polyol, isocyanate, or the like that are
to be used for producing urethane. Examples of the reactive
group of the reactive silicone foam stabilizer include a hydroxyl
group, an amino group, an epoxy group, a carboxyl group, a
methacryl group, a mercapto group, and a phenol group.

The Examiner correctly finds that Ochiai teaches (Abstract) that:
A preferable reactive silicone foam stabilizer is of a type which
has a high content of a primary OH group (having one hydroxyl
group) at the terminal of the molecular chain of an organic
silicone compound. [(See also Ochiai, p. 3.)]

Contrary to Appellants’ argument at page 13 of the Appeal Brief, Ochiai
teaches a reactive silicone foam stabilizer having a hydroxyl reactive group,
which, as is well known to chemists and as Appellants admit, is capable of
reacting with one of polyol and isocyanate. It follows that Appellants again
fail to identify any reversible error in the Examiner’s finding that Ochiai
teaches the reactive silicone foam stabilizer recited in claim 19.
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Conclusion
In conclusion, based on the totality of the record, including due
consideration of Appellants’ arguments, we determine that the
preponderance of evidence weighs most heavily in favor of obviousness of
the subject matter claimed within the meaning of 35 U.S.C. § 103(a).

II. OBVIOUSNESS-TYPE DOUBLE PATENTING
ISSUE AND CONCLUSION
Have Appellants identified reversible error in the Examiner’s
determination that one of ordinary skill in the art would have been led to
employ the reactive silicone foam stabilizer taught or suggested by Ochiai in
forming a polyurethane foam layer of the cushioning material taught by
Kawaguchi as required by claims 1, 5, and 23?
On this record, we answer this question in the negative.
RELEVANT FINDINGS OF FACT
19. Kawaguchi recites claims 1 through 3 as follows:
1. A flexographic printing plate mounting sheet
comprising a foamed substrate, the foamed
substrate having an adhesive layer on one side and
a polyethylene terephthalate film on the other side,
the polyethylene terephthalate film having on its
remaining side an adhesive layer that is protected
by release paper, wherein: the foamed substrate
and the polyethylene terephthalate film are
unitarily formed; the foamed substrate is made of
urethane foam having a density of 0.3 to 0.6 g/cm3;
and the polyethylene terephthalate film has a
thickness of 12 to 50 μm.

2. A flexographic printing plate mounting sheet
according to claim 1, wherein a closed cell content
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of the urethane foamed substrate is equal to or
higher than 30% and equal to or lower than 60%.

3. A flexographic printing plate mounting sheet
according to claim 1, wherein a total light
transmittance is 55% or higher with the release
paper removed.

20. Kawaguchi explains that the claimed urethane foam, as interpreted
in light of column 5, lines 3-10, of the Specification, embraces
polyurethane foams formed from a mixture of a polyetherpolyol,
an isocyanate, a catalyst, a surfactant, such as polydimethyl
siloxane, and a blowing agent (col. 5, ll. 3-10).
21. The relevant teachings of Ochiai discussed in FF 14-18 above are
also relied upon in the analysis below.

PRINCIPLES OF LAW
The key question in any obviousness double patenting analysis is:
“Does any claim in the application define merely an obvious variation of an
invention claimed in the patent asserted as supporting double patenting?”
General Foods Corp. v. Studiengesellschaft Kohle mbH, 972 F.2d 1272,
1278 (Fed. Cir. 1992) (discussing In re Vogel, 422 F.2d 438 (CCPA 1970)).
As stated by our reviewing court in In re Braat, 937 F.2d 589, 592 (Fed. Cir.
1991)(citation omitted):
Obviousness-type double patenting is a judicially
created doctrine intended to prevent improper timewise
extension of the patent right by prohibiting the issuance of
claims in a second patent which are not “patentably distinct”
from the claims of a first patent.

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An analysis analogous to an obviousness analysis under 35 U.S.C.
§ 103(a) comes into play during the step of determining the obviousness of
the “difference” between the claimed invention and the patented invention.
See Studiengesellschaft Kohle mbH v. N. Petrochemical Co., 784 F.2d 351,
355 (Fed. Cir. 1986); In re Longi, 759 F.2d 887, 892-93 (Fed. Cir. 1985).
The patent’s Specification may be used as a dictionary to determine the
meaning of terms in the patent’s claim. In re Vogel, 422 F.2d at 441.
ANALYSIS
Claims 1 through 3 of Kawaguchi recite (emphasis added):
1. A flexographic printing plate mounting sheet
comprising a foamed substrate, the foamed
substrate having an adhesive layer on one side and
a polyethylene terephthalate film on the other side,
the polyethylene terephthalate film having on its
remaining side an adhesive layer that is protected
by release paper, wherein: the foamed substrate
and the polyethylene terephthalate film are
unitarily formed; the foamed substrate is made of
urethane foam having a density of 0.3 to 0.6 g/cm3;
and the polyethylene terephthalate film has a
thickness of 12 to 50 μm.

2. A flexographic printing plate mounting sheet
according to claim 1, wherein a closed cell content
of the urethane foamed substrate is equal to or
higher than 30% and equal to or lower than 60%.

3. A flexographic printing plate mounting sheet
according to claim 1, wherein a total light
transmittance is 55% or higher with the release
paper removed.

The claimed urethane foam, as interpreted in light of column 5, lines 3-10,
of the Specification of Kawaguchi, embraces those polyurethane foams
Appeal 2009-001946
Application 10/109,028

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formed from a mixture of a polyetherpolyol, an isocyanate, a catalyst, a
surfactant, such as polydimethyl siloxane, and a blowing agent. Kawaguchi
does not specifically mention that its claimed polyurethane foam is produced
via using a reactive silicone foam stabilizer.
However, as indicated supra, Ochiai teaches the advantage of using a
reactive type silicone foam stabilizer in preparing a polyurethane foam.
Given the teachings of Ochiai discussed supra, we concur with the
Examiner that one of ordinary skill in the art interested in improving the
adhesion property of a polyurethane foam layer claimed in Kawaguchi
would have been led to employ the reactive type silicone foam stabilizer
taught by Ochiai as the organosilicone surfactant (foam stabilizer) in
forming the polyurethane foam claimed by Kawaguchi within the meaning
of 35 U.S.C. § 103(a).
Appellants’ objection, that there would not have been a reason to
employ the reactive silicone foam stabilizer taught by Ochiai in preparing
Kawaguchi’s polyurethane foam, are not persuasive for essentially the same
reasons given supra with respect to the foams taught by Price.

Conclusion
In conclusion, based on the totality of the record, including due
consideration of Appellants’ arguments, we determine that the
preponderance of evidence weighs most heavily in favor of obviousness of
the subject matter claimed.
ORDER
In view of the foregoing, the decision of the Examiner is affirmed.
Appeal 2009-001946
Application 10/109,028

21
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)(v).

AFFIRMED

psb

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