Ex Parte Rosthauser et al

Patent Trial and Appeal Board

Feb 25, 2016

13238071 (P.T.A.B. Feb. 25, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/238,071 09/21/2011
157 7590 02/29/2016
Covestro LLC
1 Covestro Circle
PITTSBURGH, PA 15205
FIRST NAMED INVENTOR
James W. Rosthauser
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
BMS l l 2020/MD09-24 9252
EXAMINER
RIOJA, MELISSA A
ART UNIT PAPER NUMBER
1767
NOTIFICATION DATE DELIVERY MODE
02/29/2016 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
veronica. thompson@covestro.com
US-IPR@covestro.com
laura.finnell@covestro.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL
AND APPEAL BOARD
Ex parte JAMES W. ROSTHAUSER, JAMES P. KOTAR, and
USAMA E. YOUNES
Appeal2014-003121
Application 13/238,071 1
Technology Center 1700
Before MICHAEL P. COLAIANNI, WESLEY B. DERRICK, and
JEFFREY W. ABRAHAM, Administrative Patent Judges.
COLAIANNI, Administrative Patent Judge.
DECISION ON APPEAL
1 According to Appellants, the real party in interest is Bayer MaterialScience
LLC. Br. 1.
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Application 13/238,071
Appellants appeal under 35 U.S.C. § 134 the final rejection of claims
1-18. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b).
We AFFIRM.
Appellants' invention is directed to medium density, highly filled
polyurethane molded foams having good impact resistance and a process for
their production (Spec. 1:10-12; claim l, claim 15).
Claim 1 is illustrative:
1. A molded glass-reinforced, filled polyurethane foam
having a density of from 10 to 50 pounds per cubic foot and
having a notched Izod impact resistance between about 5 and
about 14 foot-pounds/inch comprising a reaction product of:
a) a polyurethane-forming reaction mixture,
b) from 5 to 35% by weight, based on total weight of the
foam, of glass fibers having a length of from 12.5 to 50 mm,
c) from 25 to 60% by weight, based on total weight of the
foam, of at least one filler which is different from b ), and
d) a blowing agent comprising water formed in a mold.
Appellants appeal the following rejections:
1. Claims 1, 2, 5, 7, and 9-13 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Deaver (US 4,005,035 issued Jan. 25, 1977).
2. Claims 3 and 4 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Deaver in view of Brown (US 2007 /0222105 Al published Sept.
27, 2007) and MUL TRANOL® 3900 Product data sheet from Bayer
(Bayer MaterialScience, Multranol® 3900 Polyether Polyol (2006)).
3. Claims 1, 2, 5, 13-15, and 17 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Shutov (US 2007/0027227 Al published Feb. 1,
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Application 13/238,071
2007) in view of Recker et al. (US 4,251,428 issued Feb. 17, 1981
(hereinafter "Recker")).
4. Claim 6 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Shutov in view Recker and Genz et al. (US 6,310, 114 B 1 issued Oct.
30, 2001 (hereinafter "Genz")).
5. Claim 8 is rejected under 35 U.S.C. §103(a) as unpatentable over
Shutov in view of Recker and Hom et al. (US 6,169,124 Bl issued
Jan. 2, 2001 (hereinafter "Hom")).
6. Claim 16 and 18 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Shutov in view of Recker and Lammeck
(US 6,156,811 issued Dec. 5, 2000 (hereinafter "Lammeck")).
FINDINGS OF FACT & ANALYSIS
REJECTIONS (1) AND (2)
Regarding rejection (1 ), Appellants argue the subject matter of claim
1 only (Br. 4---6). Appellants' arguments regarding rejection (2) rely solely
on arguments made regarding claim 1 with an emphasis that Brown does not
cure the deficiencies argued with respect to claim 1 (id. at 6-7). Therefore,
the claims under rejections (1) and (2) will stand or fall with our analysis of
the rejection of claim 1.
We have fully considered Appellants' arguments and find ourselves in
agreement with the Examiner that Deaver alone and Deaver in view of
Brown would have rendered obvious the subject matter of claim 1 for the
reasons advanced by the Examiner on pages 4--8 and 18-23 of the Answer.
We add the following analysis primarily for emphasis.
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Application 13/238,071
The Examiner finds that Deaver teaches the subject matter of claim 1,
except for the length of the glass fibers used as reinforcement and the
notched Izod impact resistance property (Ans. 4--5). The Examiner finds
that Deaver teaches ranges of amounts of glass fiber and filler that overlap
with those amounts of glass fiber and filler required by the claims (id. at 5).
The Examiner finds that Deaver teaches glass fibers having a length that
ranges from 1/32 of inch to 1 inch (roughly 1 to 25 mm), which overlaps the
claimed glass fiber length range (12.5 mm to 50 mm). The Examiner
concludes that it would have been obvious to select glass fibers having a
length at the upper end of the range disclosed by Deaver that overlaps with
the claimed glass fiber length range (id.). The Examiner finds that though
Deaver discloses that using longer glass fibers resulted in a higher viscosity
for the foam composition, Deaver does not disclose that the higher viscosity
is undesirable (id.). Regarding the notched Izod impact resistance, the
Examiner finds that because Deaver's reinforced polyurethane foam has the
same materials and is made by a similar process, the foam has the required
notched Izod Impact resistance (id. at 5---6).
Appellants argue that a person of ordinary skill in the art reading
Deaver would not have any reason to expect that selection of glass fibers
having a particular length, much less the lengths required in Appellants'
claimed invention, would be advantageous for any reason (Br. 5).
Appellants contend that Deaver teaches to avoid fiber lengths greater than 1
inch (25.4 mm) and that the best results are achieved using fibers of Y4 inch
(i.e., 6 mm), which is outside the scope of Appellants' claims. Id.
Appellants contend that Example IX in Deaver is the only example that uses
1 inch glass fibers, but the amount of filler is outside of Appellants' claimed
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range for filler. Id. Appellants further contend that Deaver describes the
result achieved by Example IX as only "[f]air" surface quality and cell
uniformity with unacceptably high viscosity which would not have led one
of ordinary skill in the art to use the 1 inch glass fibers (id.).
Appellants' arguments fail to address the fact that Deaver includes a
broader disclosure that discloses a polyurethane foam composition having
amounts of glass fiber and filler, and glass fiber lengths that overlap with
those claimed by Appellants. Where ranges of a claimed composition
overlap ranges disclosed in the prior art, a prima facie case of obviousness
typically exists. In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003).
Accordingly, the overlap of the claimed amounts of glass fiber and filler and
the lengths of the glass fibers with the amounts of glass fiber and filler and
lengths of glass fibers disclosed by Deaver establishes a prima facie case of
obviousness. Deaver's preference for fibers about Y4 of an inch does not
detract from Deaver's broader disclosure of compositions having filler
amounts, glass fiber amounts, and glass fiber lengths that overlap with the
amounts and lengths claimed (Deaver, col. 6, 11. 8-10, 65---68). All
disclosures of the prior art, including unpreferred embodiments, must be
considered. In re Lamberti, 545 F.2d 747, 750 (CCPA 1976).
Regarding Appellants' argument that Deaver teaches that longer glass
fibers cause an undesirable increase in viscosity, this is an overstatement.
Rather, Deaver teaches that when glass fibers exceeding 1 inch are used the
increases in viscosity of the starting materials becomes undesirable (col. 7,
11. 4-6). In other words, glass fiber lengths of 1 inch (i.e., 25.4 mm) are
suitable in Deaver' s polyurethane foam and do not produce an undesirable
increase in viscosity.
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Appellants argue that Deaver uses chlorofluorocarbon blowing agents,
not water, as required by the claims. This argument is not persuasive in light
of the Examiner's finding that Deaver teaches at column 7, lines 50-51 that
the blowing agent contains water in addition to the chlorofluorocarbon. In
other words, the claim recitation of a blowing agent "comprising water"
does not exclude Deaver's blowing agent that includes water and
chlorofluorocarbons (Ans. 5, 22).
Regarding rejection (2) of claims 3 and 4, Appellants argue that
Brown does not cure the deficiencies of Deaver (Br. 6-7). Appellants argue
that Brown teaches using glass fibers having lengths from 3 .2 mm to 25 .4
mm but does not disclose suitable amounts of such glass fibers greater than
the 5% minimum required in Appellants' claimed invention (id. at 7).
Appellants' arguments fail to address the Examiner's stated rejection
that relies on Brown only to teach the particular polyols required by claims 3
and 4. Indeed, as noted above, we do not find any failings in Deaver with
regard to the subject matter of claim 1. Accordingly, Appellants' arguments
are not persuasive.
We affirm the Examiner's § 103 rejections (1) and (2).
REJECTIONS (3) TO (6)
Appellants' arguments focus on the subject matter of claim 1 (Br. 8-
25). Appellants' arguments regarding rejections (4) to (6) are the same as
those made regarding claim 1 (id. at 11-25). Accordingly, the claims under
rejections (4) to (6) will stand or fall with our analysis of the rejection of
claim 1 under rejection (3).
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We have fully considered Appellants' arguments and find ourselves in
agreement with the Examiner that Shutov in view of Recker would have
rendered obvious the subject matter of claim 1 for the reasons advanced by
the Examiner on pages 9-11 and 24--35 of the Answer. We add the
following analysis primarily for emphasis.
The Examiner finds that Shutov teaches the subject matter of claim 1,
except for the length of the glass fibers and the claimed filler range (i.e., 20
to 60%). Ans. 9 (acknowledging that the amount of filler in Shutov's
example 1 is slightly outside (i.e., 62% fly ash) Appellants' claimed range).
The Examiner finds that one of ordinary skill in the art would have
optimized the amount of filler in Shutov to achieve a foam having desired
strength and impact resistance, which properties Shutov teaches are tied to
the amount of filler and fibers (id.). The Examiner finds that Shutov uses
glass fiber reinforcement but does not teach the lengths of the fibers. Id.
The Examiner finds that Recker teaches a polyurethane foam composite
having glass fiber lengths from 20 to 60 mm (id. at 9-10). The Examiner
finds that Recker and Shutov are analogous art as they are from the same
field of endeavor: fiber-reinforced polyurethanes (id. at 10). The Examiner
concludes that it would have been obvious to use glass fibers having a length
within the range disclosed by Recker to reinforce the foam of Shutov in
order to provide suitable length reinforcement fibers for a polyurethane foam
(id.).
Appellants argue that the Examiner's rejection based on Shutov
requires picking and choosing from the various teachings in Shutov to arrive
at the claimed invention (Br. 8). Picking and choosing from the teachings of
a prior art reference, however, is acceptable for a rejection under 35 U.S.C.
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§ 103. In reArkley, 455 F.2d 586, 587(CCPA1972) ("Thus, for the instant
rejection under 35 U.S.C. § 102(e) to have been proper, the Flynn reference
must clearly and unequivocally disclose the claimed compound or direct
those skilled in the art to the compound without any need for picking,
choosing, and combining various disclosures not directly related to each
other by the teachings of the cited reference. Such picking and choosing may
be entirely proper in the making of a 103, obviousness rejection .... ").
Appellants argue that Shutov does not provide guidance for selecting
5 to 35% of glass fibers having a length from 12.5 to 50 mm and from 25 to
60% by weight filler for the production of a molded foam having a density
of from 10 to 50 pounds per cubic foot as required by claim 1 (Br. 10).
Contrary to Appellants' argument, Shutov teaches that the filler may be
present in an amount from 30 weight% to 85 weight% and the glass fiber
reinforcement may be present in an amount from 1.0 weight % to 15
weight % (i-fi-f 15, 16). These ranges overlap the filler and glass fiber
reinforcing ranges required by the claims. Shutov further exemplifies
polyurethane composite densities from 43.6 to 52.1 lb/ft3 (i-f 22). The
Examiner concedes that Shutov does not teach glass fiber length and turns to
Recker to teach a suitable polyurethane glass fiber reinforcing length (Ans.
9-10).
Regarding Recker, Appellants contend that Recker' s material is not a
foam and Recker' s material has a density much higher than Shutov' s foams
(Br. 9). Appellants contend that because Recker' s polyurethane composite
is not a foam, one of ordinary skill in the art would not have looked to
Recker to improve Shutov's polyurethane foam (i.e., no reason to combine
the teachings of the references). (Id. at 9-10.) Appellants argue that were
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one of ordinary skill to combine Reeker's teachings with Shutov's foam, the
result would be foam with a much higher density. (Id. at 9.)
We are not persuaded by Appellants' argument. In the present case,
Shutov teaches that glass fibers are used in amounts ranging from 1.0 weight
% to 15 weight % to reinforce polyurethane foam, but is silent about the
glass fiber length. Recker teaches a polyurethane composite that uses glass
fibers having a length from 20 mm to 60 mm to improve the mechanical
properties of the composite (col. 11, 35---60). Recker teaches that the amount
of glass fibers used in the composite ranges from 5 to 60% depending upon
the level of desired improvement in the mechanical properties (col. 11, 11.
49-54). Given the overlap in glass fiber amounts between Recker and
Shutov, and that each discloses a polyurethane composite with glass fiber
reinforcements to improve mechanical properties of the composite, we agree
with the Examiner that it would have been obvious to use Reeker's teachings
regarding suitable fiber lengths for achieving desired mechanical
improvements in a polyurethane composite to determine the suitable glass
fiber lengths to use in Shutov's polyurethane foam composite to improve
mechanical properties of the foam. Thus, Appellants' arguments that one of
ordinary skill in the art would be led to a foam of much higher density and
not to the claimed invention (Br. 9) are without persuasive merit (see In re
Keller, 642 F.2d 413, 425 (CCPA 1981)).
For the above reasons, we affirm the Examiner's§ 103 rejections (3)
to (6).
DECISION
The Examiner's decision is affirmed.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
ORDER
AFFIRMED
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