Ex Parte Wiedermann et al

Board of Patent Appeals and Interferences

Apr 29, 2004

08362547 (B.P.A.I. Apr. 29, 2004)

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The opinion in support of the decision being entered
today was not written for publication in a law journal
and is not binding precedent of the Board.
UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES

Ex parte ROLF WIEDERMANN, STEPHAN WENDEL
and WOLFGANG SCHMITZ

Appeal No. 2004-0800
Application No. 08/362,547

ON BRIEF

Before KIMLIN, WARREN and PAWLIKOWSKI, Administrative Patent
Judges.
KIMLIN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 3-9.
Claim 9 is illustrative:
9. A process for the production of rigid foams containing
urethane groups and predominately isocyanurate groups consisting
of reacting:
1) polyisocyanates;
with
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Application No. 08/362,547
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2) from 30 to 90 parts by weight of compounds containing
at least two isocyanate-reactive hydrogen atoms, having
molecular weights of 400 to 10,000, and containing
branched chains;
in the presence of
3) one or more C1 to C6 hydrocarbons as the sole blowing
agents;
4) from 10 to 60 parts by weight of flameproofing agents;
and
5) from 10 to 20 parts by weight of compounds containing
at least two isocyanate-reactive hydrogen atoms and
having molecular weights of 32 to 399 as crosslinking
agents;
and, optionally,
6) auxiliary agents and additives which are selected from
the group consisting of emulsifiers, foam stabilizers,
catalysts, reaction retarders, cell regulators,
pigments, dyes, stabilizers against ageing and
weathering, plasticizers, fungistatic agents,
bacteriostatic agents and fillers;
wherein the parts by weight of components (2), (4) and (5) totals
100 parts by weight, and wherein the reaction is conducted at an
isocyanate index of 200 to 600.
The examiner relies upon the following reference as evidence
of obviousness:
Volkert 5,096,933 Mar. 17, 1992
The present application is related to parent application,
U.S. Application No. 08/362,547. An appeal was taken to this
Board in the parent application (Appeal No. 1998-3149), and the
Board affirmed the examiner's rejection of the appealed claims
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under 35 U.S.C. § 103 over the same reference presently applied
by the examiner. The appealed claims are essentially the same as
those in the prior appeal with the exception that appealed
claim 9 now recites "one or more C1 to C6 hydrocarbons as the
sole blowing agents," whereas claim 9 of the prior appeal recited
"blowing agents consisting essentially of C1 to C6 hydrocarbons."
The present appeal also includes a Declaration of Wolfgang
Friederichs that was not of record in the prior appeal.
Appealed claims 3-9 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Volkert.
In accordance with the grouping of claims set forth at
page 3 of appellants' Brief, claims 4, 5, 7, 8 and 9 stand or
fall together, as do claims 3 and 6.
We have thoroughly reviewed each of appellants' arguments
for patentability, as well as the declaration evidence relied
upon in support thereof. However, we are in complete agreement
with the examiner that the claimed subject matter would have been
obvious to one of ordinary skill in the art within the meaning of
§ 103 in view of the applied prior art. Accordingly, we will
sustain the examiner's rejection.
There is no dispute that Volkert, like appellants, discloses
a process for producing rigid polyurethane foams which includes
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Application No. 08/362,547
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reacting polyisocyanates with compounds containing at least two
isocyanate-reactive hydrogen atoms in the presence of one or more
C1 to C6 hydrocarbons as the sole blowing agents. Appellants
also do not contest the examiner's factual determination that the
reaction process of Volkert includes claimed components (4) and
(5). Also, while Volkert does not expressly disclose that the
reaction is conducted at an isocyanate index of 200 to 600,
appellants do not take issue with the examiner's rationale that:
Volkert does set forth ranges of variation and
selectivity in choosing the NCO contents for conducting
the reactions of their concern, and, further, sets
forth that it is well known to the ordinary
practitioner in the art that increasing NCO content
values leads to increased isocyanurate contents which
have the known result of increased flame retardance
(see again column 11 lines 32-38), as well as,
increases in heat and sag resistance (an additional art
known effect).
(Page 4 of Answer, second paragraph). It is appellants'
principal contention that "[a]lthough the disclosure of the
Volkert reference is broad enough to encompass only cyclopentane
as the sole blowing agent . . . none of the working examples of
this reference use cyclopentane and/or cyclohexane alone, or any
other hydrocarbon having from 1 to 6 carbon atoms!" (sentence
bridging pages 4 and 5 of Brief). Appellants urge that Volkert
teaches that the blowing agent is preferably used in conjunction
with water. However, it is well settled that in determining
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obviousness under § 103 a reference must be considered in its
entirety, including its non-preferred embodiments. Here,
although Volkert prefers that the blowing agents are used in
conjunction with water, the reference expressly teaches that
cyclopentane or mixtures of cyclopentane and/or cyclohexane can
be used alone or in combination with other alkanes. Accordingly,
we find that it would have been obvious for one of ordinary skill
in the art, based on the Volkert disclosure, to formulate rigid
polyurethane foams by utilizing one or more C1 to C6 hydrocarbons
as the sole blowing agents, as presently claimed.
As for separately argued claims 3 and 6, which recite
pentane and hexane, respectively, as the blowing agents, we agree
with the examiner that it would have been obvious for one of
ordinary skill in the art to formulate a rigid polyurethane foam
by reacting the components disclosed by Volkert, and presently
claimed, wherein the blowing agent is pentane or hexane or
mixtures thereof. While Volkert teaches that saturated
hydrocarbons, such as pentane, "possess thermal conductivities
which are too high to generate PU rigid foams having the required
insulating properties" (column 2, lines 33-35), it would have
been obvious for one of ordinary skill in the art to employ
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pentane or hexane as the blowing agent in applications where
thermal insulation is not a consideration.
Appellants rely upon the Friederichs Declaration to
demonstrate that the examples of Volkert which use water as a
blowing agent produce a foam having a brittle surface, whereas
the elimination of water results in a foam exhibiting strong
shrinkage and less dimensional stability. However, appellants
have proffered no objective evidence which establishes that the
declaration results would have been unexpected to one of ordinary
skill in the art. Indeed, it would appear that appellants
acknowledge that it was known in the art that water causes
surface brittleness. In particular, appellants state that "water
is known to cause surface brittleness in foams due to the
reaction between the isocyanate and water which results in the
elimination of carbon dioxide" (page 5 of Brief, third
paragraph). Appellants' specification, at page 1, also indicates
that this was known in the art.
Also, significantly, the Declaration does not establish that
processes within the broad scope of the appealed claims produce
unexpected results. For the reasons set forth in the prior Board
decision (see pages 5-6), appellants' specification data, which
is not relied upon in the present appeal, falls far short of
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being commensurate in scope with the degree of protection sought
by the appealed claims. In re Grasselli, 713 F.2d 731, 743,
218 USPQ 769, 778 (Fed. Cir. 1983). Nor is there any evidence of
record which establishes that the specification results would be
considered truly unexpected by one of ordinary skill in the art.
In re Merck & Co., 800 F.2d 1091, 1099, 231 USPQ 375, 381 (Fed.
Cir. 1986).
In conclusion, based on the foregoing, the examiner's
decision rejecting the appealed claims is affirmed.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED
EDWARD C. KIMLIN )
Administrative Patent Judge )
)
)
)
)
CHARLES F. WARREN ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
)
BEVERLY PAWLIKOWSKI )
Administrative Patent Judge )
ECK:clm
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Bayer Corporation
Patent Department
100 Bayer Road
Pittsburgh, PA 15205-9741