Ex Parte Schoenberger

Patent Trial and Appeal Board

Feb 22, 2016

12193232 (P.T.A.B. Feb. 22, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/193,232 08/18/2008
123223 7590 02/24/2016
Drinker Biddle & Reath LLP (WM)
222 Delaware A venue, Ste. 1410
Wilmington, DE 19801-1621
FIRST NAMED INVENTOR
Jan Schoenberger
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.
074023-0215-US (286805) 4446
EXAMINER
RIOJA, MELISSA A
ART UNIT PAPER NUMBER
1767
NOTIFICATION DATE DELIVERY MODE
02/24/2016 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):
IPDocketWM@dbr.com
penelope.mongelluzzo@dbr.com
DBRIPDocket@dbr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAN SCHOENBERGER 1
Appeal2014-002446
Application 12/193,232
Technology Center 1700
Before ROMULO H. DELMENDO, KAREN M. HASTINGS, and
WESLEY B. DERRICK, Administrative Patent Judges.
DERRICK, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134(a) from the
Examiner's maintained rejection under 35 U.S.C. § 103(a) of claims 1, 3, 4,
6, and 8-15. We have jurisdiction pursuant to 35 U.S.C. § 6(b ).
We AFFIRM.
CLAIMED SUBJECT MATTER
Appellant's claimed invention is directed to compositions and
methods for producing hydrophilicized polyurethane foams. Spec. Abstract.
1 According to Appellant, the Real Party in Interest is Bayer MaterialScience
AG. Br. 1.
Appeal2014-002446
Application 12/193,232
Claim 1 (emphasis and formatting added) is illustrative:
1. A polyurethane foam comprising an EO/PO block copolymer as
stabilizer, wherein said polyurethane foam is obtained from an aqueous,
anionically hydrophilicized polyurethane dispersion (1) by mechanical
frothing and physical drying, wherein said EO/PO block copolymer
comprises 40 % to 85 % by weight of ethylene oxide units based on the sum
total of all ethylene oxide and propylene oxide units and has a number-
average molecular weight of 1,000 to 10,000 g/mol, and wherein said
aqueous, anionically hydrophilicized polyurethane dispersion (1) is obtained
by
A) producing isocyanate-functional prepolymers from at least
Al) organic polyisocyanates;
and
A2) polymeric polyols having number-average molecular
weights in the range of from 400 to 8,000 g/mol and OH
functionalities in the range of from 1.5 to 6;
A3) optionally hydroxyl-functional compounds having
molecular weights in the range of from 62 to 399 g/mol; and
A4) optionally isocyanate-reactive, anionic, or potentially
anionic and/or optionally nonionic hydrophilicizing agents;
C) wholly or partially reacting the free NCO groups of said isocyanate-
functional prepolymers via chain extension with
Bl) amino-functional compounds having molecular weights in the
range from 32 to 400 g/mol; and/or
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Application 12/193,232
B2) with isocyanate-reactive, preferably amino-functional, anionic or
potentially anionic hydrophilicizing agents,
wherein said prepolymers are dispersed in water after B) and any potential
ionic groups present are converted into their ionic form by partial or
complete reaction with a neutralizing agent.
Br. 10-11 (Claims Appendix).
THE REJECTIONS
The Examiner maintains the following grounds of rejection under 35
U.S.C. § 103(a):
1. claims 1, 3, 4, and 15 over Schutze et al. (US 6,642,303 B2, issued
November 4, 2003) (hereinafter "Schutze") in view of Thiede et al.
(US 2006/0142529 Al, published June 29, 2006) (hereinafter "Thiede"),
Gribble et al. (US 6,271,276 Bl, issued August 7, 2001) (hereinafter
"Gribble"), and Skaggs et al. (US 6,087 ,440, issued July 11, 2000)
(hereinafter "Skaggs");
2. claims 6 and 10 over Schutze in view of Thiede;
3. claims 8, 9, and 14 over Schutze in view of Thiede and Skaggs; and
4. claims 11-13 over Schutze in view of Thiede and Gribble.
DISCUSSION
Appellant sets forth claims 1, 6, and 15 as the independent claims on
appeal. See, e.g., Br. 2. We note that claims 11 and 12 may not be proper
dependent claims as they are directed to a different statutory category than
claims 6 and 11, respectively, from which they depend. Claims 6, 11, & 12.
In the event of further prosecution, Appellant and the Examiner
should consider whether claim 6, incorporating the limitations of claim 1,
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Application 12/193,232
including that the "foam is obtained ... by mechanical frothing and physical
drying" (claim 1 ), by its dependency from claim 1 (claim 6), is further
limited by claim 11 reciting "[a] process ... comprising mechanically
frothing and drying the composition of claim 6" (claim 11) and also whether
claim 11 is further limited by claim 12 reciting "polyurethane foam
produced by the process of claim 11" (claim 12).
Turning to the rejections before us, upon consideration of the
evidence and opposing contentions of Appellant and the Examiner, we are
not persuaded of reversible error in the Examiner's decision rejecting all
claims as unpatentable for obviousness. 2 We will, therefore, sustain the
§ 103 rejections advanced in this appeal based on findings of fact,
conclusions of law, and rebuttals to arguments in the Non-Final Office
Action and in the Answer.
Appellant contends the Examiner has failed to establish a prima facie
case of obviousness and, assuming a prima facie case was made, that
unexpected results demonstrate the non-obviousness of the appealed claims.
We address both contentions in tum.
The Prima Facie Case
Appellant does not contest the Examiner's factual findings as to what
is disclosed or taught by Schutze. Br., generally. Appellant similarly does
not contest the Examiner's relevant factual finding that Thiede discloses use
of EO/PO block copolymer. Br. 5-6 ("Schutze does not teach or suggest the
recited EO/PO block copolymer [as] a stabilizer of its dispersions ... the
2 We refer to the Non-Final Office Action (mailed September 27, 2012), the
Appeal Brief (filed May 28, 2013), and the Answer (mailed September 27,
2013).
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Application 12/193,232
Examiner combines Schutze with Thiede, which specifically discloses the
use of oxyethylene/oxypropylene block copolymer surfactants, such as
Pluronic PE 6800, in its polyurethane foams.") (Thiede i-f 30, Example 8).
Nor does Appellant contest that one of ordinary skill in the art would have
been motivated to include a foam stabilizer. Br. 6.
Rather, Appellant argues that the Examiner has provided no rationale
for selecting the particular surfactants of Thiede for use as a foam stabilizer
in preparing the foams of Schutze over all the foam stabilizers known to the
skilled artisan at the time of the invention. Br. 6. In support of the
argument, Appellant points to the Specification's disclosure of other known
foam stabilizers and Thiede' s disclosure that in addition to specifically
mentioned surfactants that "[ o ]ther surfactants equivalent in nature or
performance [sic] may be used." Br. 6 (citing Spec. 27, 1. 23; Thiede i-f 30).
Appellant contends that lacking any rationale or evidence for the particular
selection the Examiner has engaged in impermissible hindsight. Br. 6.
Appellant's argument is without persuasive merit for the reasons set
forth by the Examiner. Ans. 10-11. Thiede teaches use of surfactant
additives "chosen to give a foam with a good appearance of cell structure
and size and to minimize collapse and or foam deformation" (Thiede i-f 30)
and teaches the oxyethylene/oxypropylene block copolymer surfactants,
such as Pluronic PE 6800, to be preferred surfactants (Thiede i-f 30, Example
6 i-fi-1 42--43). The existence of other surfactants is insufficient to show error
where particular surfactants are taught to be preferred. Thiede' s teaching
that other surfactants can be used if equivalent in nature or performance,
without identifying those other surfactants, is also insufficient to show error.
See, e.g., KSR Int'! v. Teleflex Inc., 550 U.S. 398, 401 (2007) ("a
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Appeal2014-002446
Application I2/193,232
combination of familiar elements according to known methods is likely to be
obvious when it does no more than yield predictable results.").
Unpersuaded by Appellant's argument that the Examiner's reasoning
and conclusions are unsupported by the applied prior art and/or otherwise
based on teachings that are insufficient to support the conclusion of
obviousness, we are likewise not persuaded the Examiner relied on
impermissible hindsight. If the Examiner has articulated a reason having
rational underpinnings for making a proposed modification or combination
of prior art teachings, then that articulated reasoning demonstrates the
combination is not based on hindsight. See In re Kahn, 44I F.3d 977, 988
(Fed. Cir. 2006) (requiring "some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness") (cited with
approval in KSR, 550 U.S. at 4I8).
The conclusion of obviousness is, accordingly, well supported.
Unexpected Results
Appellant contends that there are unexpected results establishing the
non-obviousness of the pending claims. Br. 7. Appellant relies on
comparison between inventive Examples SI, S2, S3, and S4 and
comparative Examples VI, V2, V3, and VIO. Br. 7 (citing Spec. 25, 1. 3 to
29, 1. 8). The particular properties contrasted include the imbibition rates of
physiological saline, free swell absorptive capacities, and moisture vapor
transmission rates set forth in Tables 2 and 4. Br. 7. Appellant contends
that the imbibition rates of Examples SI through S4 are "dramatically faster"
than those of Examples VI, V2, V3, and VIO, that the "free swell absorptive
capacity ... is also better," and that moisture vapor transmission rates were
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Application 12/193,232
markedly higher than the one comparative example where any moisture
vapor transmission was detected. Br. 7.
Appellant argues "[ t ]hese results are unexpected because nothing in
the cited references, particularly Thiede, suggest that use of oxyethylene I
oxypropylene block copolymer surfactants, such as Pluronic PE 6800, would
have a beneficial effect on any of these three properties." Br. 7.
Having carefully considered the record, we do not find Appellant's
contention that there are unexpected results supporting the patentability of
the claims well-founded. Critically, Appellant does not direct us to any
statement in the Specification attesting to the unexpected nature of the
results or to any persuasive evidence that the results obtained would have
been unexpected at the time of the invention. Absent such, Appellant cannot
meet their burden. See, e.g., In re Geisler, 116 F.3d 1465, 1471 (Fed. Cir.
1997) ("Geisler made no such assertion [that results were unexpected] in his
application. Nor did Geisler submit any such statement through other
evidentiary submissions, such as an affidavit or declaration under Rule 132
... Instead, the only reference to unexpected results was a statement by
Geisler's counsel ... that Geisler's results were 'surprising."').
Appellant's reliance on the absence of a suggestion in the cited prior
art, particularly Thiede, that use of surfactants according to the claims would
have a beneficial effect on the three properties is ill-founded. "It is well-
established that unexpected results must be established by factual evidence."
In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984). On this record,
Appellant has failed to explain why, or to proffer evidence to establish that,
the lack of description in the cited prior art is indicative that the results
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Application 12/193,232
would not be expected by those skilled in the art, let alone to establish that
the results would also be unexpected later at the time of the invention.
Further, we find the Examiner's determination that the results relied
on by Appellant fall short of establishing the patentability of the claims to be
well-founded. Ans. 12-14. "It is well settled 'that objective evidence of
non-obviousness must be commensurate in scope with the claims which the
evidence is offered to support."' In Graselli, 713 F.2d 731, 743 (Fed. Cir.
1983) (quoting In re Tiffin, 448 F.2d 791, 792 (CCPA 1971)).
The claims set forth a polyurethane foam comprising an EO/PO block
copolymer with an EO content of 40 to 85% and an average molecular
weight of 1,000 to 10,000. Ans. 12, Claim 1. The claims, being silent as to
the amount of the EO/PO block copolymer, encompass polyurethane foams
comprising EO/PO block copolymer in any amount. Ans. 12. In contrast,
the relied-on inventive examples S l-S5 employ only two EO/PO block
copolymers (PLURONIC PE 10500 and PLURONIC PE 6800) and these are
only employed in amounts between 2.5 and 5.1 grams. Ans. 12-13; Spec.
Table 3.
Similarly, "the claims encompass a polyurethane derived from at least
a polyisocyanate Al), polymeric polyols with the claimed molecular weight
and functionality A2), and amino-functional or isocyanate-reactive chain
extenders Bl) and B2)" (Ans. 13, see also Claim 1), and the relied-on data,
limited to the results obtained using only two polyurethane dispersions,
Polyurethane Dispersion 1 and IMPRANIL® DLU, is insufficient to
establish that the alleged superior results would be obtained by addition of
the claimed EO/PO block copolymer in the various polyurethane prepared
derived from at least Al), A2), Bl) and B2) (Ans. 13). Further, as explained
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Application 12/193,232
by the Examiner, the composition of the polyurethane dispersion formed
using IMPRANIL® DLU is in part unknown. Ans. 13.
Appellant fails to explain why the limited showing is reasonably
commensurate with the scope of the claims. Br. 7.
As determined by the Examiner, accordingly, the data provided by
Appellant is not commensurate with the scope of claims encompassing a
range of various EO/PO block copolymers used in varying amounts with
varied polyurethanes. Ans. 12-13.
On the record before us, therefore, Appellant has failed to overcome
the Examiner's prima facie case.
For these reasons, Appellant's arguments do not persuade us of any
reversible error in the Examiner's rejection of the appealed claims as
obvious over the cited prior art. In re Jung, 637 F.3d 1356, 1365 (Fed. Cir.
2011).
We will, therefore, affirm the Examiner's obviousness rejections of
claims 1, 3, 4, 6, and 8-15.
CONCLUSION
The Examiner's decision to reject claims 1, 3, 4, 6, and 8-15 under
35 U.S.C. § 103(a) is AFFIRMED.
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(l).
AFFIRMED
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