Ex Parte Super et alDownload PDFBoard of Patent Appeals and InterferencesMay 28, 200910957993 (B.P.A.I. May. 28, 2009) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte MICHAEL S. SUPER and KARL W. HAIDER ____________ Appeal 2009-003757 Application 10/957,993 Technology Center 1700 ____________ Decided:1 May 28, 2009 ____________ Before CHUNG K. PAK, ROMULO H. DELMENDO, and JEFFREY B. ROBERTSON, Administrative Patent Judges. DELMENDO, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of claims 18-48. (Appeal Brief filed March 14, 2008, hereinafter “Br.”; Final 1 The two-month time period for filing an appeal or commencing a civil action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date shown on this page of the decision. The time period does not run from the Mail Date (paper delivery) or Notification Date (electronic delivery). Appeal 2009-003757 Application 10/957,993 2 Office Action mailed October 12, 2007). We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. STATEMENT OF THE CASE Appellants state that the claimed invention relates to “a process for producing polyurethane-polyester composite involving applying a polyurethane matrix including a polyether containing both hydroxyl- functionality and unsaturation-functionality to a partially cured unsaturation- containing polyester matrix and curing the matrices” (Specification, hereinafter “Spec.” 3, ll. 2-6). According to Appellants, “adhesion between an unsaturation containing polyester matrix and a polyurethane matrix is greatly enhanced by the inclusion in the polyurethane matrix of at least one polyether containing both hydroxyl-functionality and unsaturation- functionality” (id. at 1, ll. 8-12). Claims 18 and 33 on appeal read as follows: 18. A process for producing a polyester-polyurethane composite, the process comprising: applying a polyurethane matrix including a polyether containing both hydroxyl-functionality and unsaturation- functionality to a partially cured unsaturation-containing polyester matrix; and curing the matrices. 33. One of a spa, bath tub, shower stall, tub surround, sink, table top, and kitchen counter top produced with the composite made by the process according to Claim 18. (Br. 7 and 10; Claims Appendix.) The Examiner relied upon the following as evidence of unpatentability: Appeal 2009-003757 Application 10/957,993 3 Mueller 5,215,796 Jun. 1, 1993 Smith 6,114,402 Sep. 5, 2000 The Examiner rejected claims 18-32 and 35-48 under 35 U.S.C. § 102(b) as anticipated by Smith (Examiner’s Answer mailed May 23, 2008, hereinafter “Ans.,” 3). The Examiner rejected claims 33 and 34 under 35 U.S.C. § 103(a) as unpatentable in view of the combined teachings of Smith and Mueller (Ans. 4). ISSUES The Examiner found that Smith describes every limitation of claim 18 (Ans. 3). Appellants, on the other hand, contended that Smith does not anticipate because “Smith discloses rigid foam polyurethanes (i.e., cellular polyurethanes) whereas the instant invention provides a process for the production of non-cellular polyurethanes” (Br. 4). With respect to the second ground of rejection, the Examiner found that Smith does not disclose “that the polyester-polyurethane composite is utilized in the formation of a spa, bath tub, and other items as claimed [in claim 33]” (Ans. 4). To account for this difference, the Examiner relied on the teachings of Mueller, which was found to disclose that “composite shaped articles such as bathtubs, bathtub and shower enclosures, shower stalls, basins, and the like comprised of synthetic resinous materials [e.g., polyester and polyurethane layers] are known and have become increasingly popular due, inter alia, to their light weight, ease of installation, and easy maintenance” (id.). Based on these teachings, the Examiner concluded: Appeal 2009-003757 Application 10/957,993 4 [I]t would have been obvious to one of ordinary skill in the art at the time of the invention to form composite shaped articles . . . as claimed using the inventive process and materials disclosed by Smith. The motivation to utilize the Smith process and polyester-polyurethane composite would be to form a strong and effective bond between the layers and hence eliminate structural weaknesses [id.]. Appellants again contended that “the instant invention is directed to a process for the production of a non-cellular material” and that “[t]here is no teaching or suggestion in Smith and Mueller either alone or in combination to produce a composite with non-cellular material as is done in the instant process” (Br. 6). Thus, the issues arising from the respective positions of the Examiner and Appellants are: Have Appellants shown reversible error in the Examiner’s finding that Smith discloses every limitation recited in claim 18 because Smith does not disclose non-cellular polyurethanes? Have Appellants shown reversible error in the Examiner’s conclusion that it would have been obvious to one of ordinary skill in the art to arrive at subject matter of claim 33 because neither Smith nor Mueller discloses non- cellular polyurethanes? FINDINGS OF FACT 1. Appellants’ Specification discloses that the composites of the present invention “may also contain other additives commonly used in the art including, but not limited to, leveling agents, wetting agents, flow control agents, anti-skinning agents, anti-foaming agents . . . ” (Spec. 9, ll. 23-26; emphasis added). Appeal 2009-003757 Application 10/957,993 5 2. Smith discloses: The invention comprises a foamable polyurethane composition for the preparation of rigid foam polyurethane and adapted for use in bonding to an unsaturated polyester resin composition, typically employed as an unsaturated polyester resin layer in contact with at least one surface of the rigid foam polyurethane composition [col. 2, ll. 23-28]. 3. Smith teaches: The polyurethane composition also includes or has added thereto an additive organic compound having an active hydroxyl group which reacts with the polyisocyanate and which also contains an available, unreacted ethylenically unsaturated group which reacts subsequently with the monomer-containing unsaturated polyester resin composition applied to the rigid polyurethane foam, thereby providing a strong chemical bond between the rigid polyurethane foam and the cured unsaturated polyester resin composition layer [col. 2, ll. 36-45]. 4. Smith discloses: The ethylenically unsaturated group of the foamable polyurethane composite is available for reaction with the monomer in the unsaturated polyester resin, so that on curing of the unsaturated polyester resin layer . . . a strong chemical bond is formed between the rigid polyurethane foam core material, typically as an inner core section of a composite laminate, and the cured unsaturated polyester resin layer [col. 2, ll. 47-55]. PRINCIPLES OF LAW “To anticipate a claim, a prior art reference must disclose every limitation of the claimed invention, either explicitly or inherently.” In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997). It is well settled that the United States Patent and Trademark Office (PTO) is obligated to give claim terms their broadest reasonable interpretation, taking into account any enlightenment by way of definitions Appeal 2009-003757 Application 10/957,993 6 or otherwise found in the specification. In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007) (“[T]he PTO must give claims their broadest reasonable construction consistent with the specification. Therefore, we look to the specification to see if it provides a definition for claim terms, but otherwise apply a broad interpretation.”) (Citation omitted); In re Bigio, 381 F.3d 1320, 1324 (Fed. Cir. 2004) (“[T]he PTO gives a disputed claim term its broadest reasonable interpretation during patent prosecution.”). ANALYSIS With regard to the first ground of rejection, Appellants state that claims 18-32 and 35-48 stand or fall together (Br. 3). With regard to the second ground of rejection, Appellants state that claims 33 and 34 stand or fall together (id.). Accordingly, we select claims 18 and 33 as representative of the claims subject to the two grounds of rejections and confine our discussion to these selected claims. 37 C.F.R. § 41.37(c)(1)(vii) (2007). Claim Construction We start with claim construction. As stated above, we give claim terms their broadest reasonable construction, unless Appellants have established that the Specification compels a narrower construction. This principle is based on the notion that “during patent prosecution…claims can be amended, ambiguities should be recognized, scope and breadth of language explored, and clarification imposed.” In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989). Appeal 2009-003757 Application 10/957,993 7 In this case, Appellants do not direct us to any special definition for the term “polyurethane” that limits the claim term to a non-cellular polyurethane (Br. 3-6). Absent any special definition, one of ordinary skill in the art would have understood the term to include both cellular and non- cellular polyurethanes. Indeed, this construction is consistent with the Specification, which identifies anti-foaming agents as a non-limiting example of an additive that may be used and does not in any way exclude the use of an additive such as a blowing agent known for making a cellular polymer (Fact 1). ICON Health, 496 F.3d at 1379. Rejection of Claims 18-32 and 35-48 as Anticipated by Smith Claim 18 The Examiner found that Smith discloses every limitation of the claimed invention (Ans. 3; Facts 2-4). Appellants assert that Smith “does not describe or suggest the instant invention” (Br. 4). In particular, Appellants contend that (i) Smith discloses a “rigid foam polyurethane (i.e., cellular polyurethanes)” and (ii) “requires the presence of a blowing agent” while (i) the “instant invention provides a process for the production of non-cellular polyurethane” and (ii) that “anti- foaming agents are listed among the potential additives in the instant Specification” (Br. 4). Appellants’ contentions are not persuasive to show reversible error on the part of the Examiner because Appellants’ arguments are based on limitations that do not appear in the claims. In re Self, 671 F.2d 1344, 1348 (CCPA 1982) (“[A]ppellant's arguments fail from the outset because . . . they are not based on limitations appearing in the claims.”). Appeal 2009-003757 Application 10/957,993 8 As discussed above, we find no basis to narrow the scope of the claims in the manner as argued by Appellants. Contrary to Appellants’ belief, the Specification would have indicated to one skilled in the relevant art that the composite may include any known additive, including a blowing agent, and that an anti-foaming agent is merely an optional additive, not a required additive. Thus, we discern no error in the Examiner’s factual finding that claim 18 reads on Smith’s cellular (foamed) materials. Rejection of Claims 33 and 34 as Obvious in View of Smith and Mueller Claim 33 Appellants again contend that Smith lacks a teaching of a non-cellular material and further assert that Mueller fails to provide the teaching or suggestion missing in Smith (Br. 6). Because Appellants’ arguments are directed to a limitation not found in the claim and Appellants have not otherwise directed us to any basis to narrow the scope of the claims in the manner argued, as discussed above, we find that Appellants have not shown that the Examiner reversibly erred in concluding that claim 33 is obvious in view of the combined teachings of Smith and Mueller. CONCLUSION Appellants have not shown reversible error in the Examiner’s finding that Smith discloses every limitation recited in claim 18. Appellants have not shown reversible error in the Examiner’s conclusion that it would have been obvious to one of ordinary skill in the art Appeal 2009-003757 Application 10/957,993 9 to use a polyester-polyurethane composite made by Smith’s process in the production of Mueller’s bath tub or shower stall. DECISION The Examiner’s decision to reject (i) claims 18-32 and 35-48 under 35 U.S.C. § 102(b) as anticipated by Smith and (ii) claims 33 and 34 under 35 U.S.C. § 103(a) as obvious in view of the combined teachings of Smith and Mueller 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)(iv). AFFIRMED ack cc: BAYER MATERIAL SCIENCE LLC 100 BAYER ROAD PITTSBURGH PA 15205 Copy with citationCopy as parenthetical citation