Ex Parte Super et al

Board of Patent Appeals and Interferences

May 28, 2009

10957993 (B.P.A.I. May. 28, 2009)

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