11745920 (B.P.A.I. Mar. 28, 2011)

Ex Parte Zhao et al

Board of Patent Appeals and InterferencesMar 28, 2011

11745920 (B.P.A.I. Mar. 28, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 11/745,920 05/08/2007 Wen Wei Zhao 213202-00574 1655 27160 7590 03/29/2011 KATTEN MUCHIN ROSENMAN LLP (C/O PATENT ADMINISTRATOR) 2900 K STREET NW, SUITE 200 WASHINGTON, DC 20007-5118 EXAMINER COONEY, JOHN M ART UNIT PAPER NUMBER 1765 MAIL DATE DELIVERY MODE 03/29/2011 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE __________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES __________ Ex parte WEN WEI ZHAO, MLADEN VIDAKOVIC, and EUGENE SMEIANU __________ Appeal 2010-011037 Application 11/745,920 Technology Center 1700 __________ Before TONI R. SCHEINER, ERIC GRIMES, and FRANCISCO C. PRATS, Administrative Patent Judges. GRIMES, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134 involving claims to an isocyanate-based polymer foam. The Examiner has rejected the claims as anticipated and indefinite. We have jurisdiction under 35 U.S.C. § 6(b). We reverse the indefiniteness rejection, but affirm the rejection for anticipation. Appeal 2010-011037 Application 11/745,920 2 STATEMENT OF THE CASE The Specification discloses that “incorporation of an active hydrogen- containing phosphite compound in an otherwise general formulation for production of an isocyanate-based polymeric foam results in a foam hav[ing] significantly improved anti-yellowing properties” (id. at 4: ¶ 0017). Claims 1-39 are on appeal. Claim 1 is representative and reads as follows: 1. An isocyanate-based polymer foam produced from a formulation comprising an isocyanate, a blowing agent, a first active hydrogen- containing compound and a second active hydrogen-containing compound different than the first active hydrogen-containing compound, the second active hydrogen-containing compound consisting essentially of an anti- yellowing amount of an active hydrogen-containing phosphite compound. I. The Examiner has rejected claims 1-39 under 35 U.S.C. § 112, second paragraph on the basis that the recitation of “an anti-yellowing amount of an active hydrogen-containing phosphite compound” is confusing “because it can not [sic] be determined what range of amount values are intended to be included or excluded by this recitation” (Answer 4). Appellants contend that the Specification “would convey more than adequate information for a person of ordinary skill in the art to be able to understand the metes and bounds of Claims 1-39” and the meaning of the term “an anti-yellowing amount of an active hydrogen-containing phosphite compound” (Appeal Br. 13). We agree with Appellants that the phrase “an anti-yellowing amount of an active hydrogen-containing phosphite compound” does not make the Appeal 2010-011037 Application 11/745,920 3 claims indefinite. The Specification states that “the present invention relates to an isocyanate-based polymer foam, inter alia, having improved anti- yellowing properties compared to prior art foams” (Spec. 1, ¶ 0002). The Specification discloses that [p]referably, the second active hydrogen-containing compound is present in the formulation in an amount in the range from of about 0.1 to about 20, more preferably from about 0.5 to about 10, most preferably from about 0.5 to about 3.0, parts by weight per 100 parts by weight of the first active hydrogen-containing compound. (Spec. 11, ¶ 0047.) The Specification also discloses a specific method for testing foams to determine their anti-yellowing properties (id. at 17, ¶ 0062). Thus, the Specification states that the foams have improved anti- yellowing compared to prior art foams, discloses a preferred range for the amounts of the phosphite compound, and discloses a method for measuring yellowing. We agree with Appellants that the Specification makes reasonably clear the meaning of the cited phrase to one of ordinary skill in the art. We reverse this rejection. II. Issue The Examiner has rejected claims 1-39 under 35 U.S.C. § 102(b) as being anticipated by Lickei.1 The claims have not been argued separately and therefore stand or fall together. 37 C.F.R. § 41.37(c)(1)(vii). The Examiner finds that Lickei discloses “polyurethane foams prepared by mixing and reacting isocyanates…, polyetherpolyols, water as a 1 Lickei et al., US 4,135,042, Jan. 16, 1979 Appeal 2010-011037 Application 11/745,920 4 blowing agent…, [and] scorch inhibiting compounds,” which read on the claimed active hydrogen-containing phosphite compounds (Answer 4). Appellants contend that Lickei does not anticipate claim 1 because “[a] large number of [Lickei’s] aliphatic phosphites do not contain one or more active hydrogen atoms as specified in the claims” (Appeal Br. 13). The issue with respect to this rejection is: Does the evidence of record support the Examiner’s finding that Lickei discloses a polyurethane foam containing the anti-yellowing “active hydrogen-containing phosphite compound” recited in claim 1? Findings of Fact 1. The Specification discloses that “[m]ost preferably, the second active hydrogen-containing compound comprises tris(dipropyleneglycol) phosphite” (Spec. 11, ¶ 0046). 2. Lickei discloses the “[u]se of phosphites as scorch inhibitors in polyurethane foams” (Lickei, abstract). 3. Lickei discloses that “[i]llustrative phosphites … include … tris(dipropylene glycol)phosphite…” (id. at col. 2, ll. 30, 46). 4. Lickei discloses that a polyurethane foam containing no scorch inhibitor showed severe discoloration while, under the same conditions, a polyurethane foam containing tris(dipropylene glycol)phosphite showed only moderate discoloration (id. at col. 7, l. 65 to col. 8, l. 5). Analysis Appellants do not dispute that Lickei discloses an isocyanate-based polymer foam produced from a formulation comprising an isocyanate, a blowing agent, a first active hydrogen-containing compound and an anti- Appeal 2010-011037 Application 11/745,920 5 yellowing phosphite compound, as required by claim 1. However, Appellants argue that Lickei’s anti-yellowing phosphite compounds are not the claimed “active hydrogen-containing phosphite compound.” Appellants’ arguments are not persuasive. As the Examiner has pointed out, Lickei “makes specific reference in the examples, including Example II, and at column 2 line 46” to tris(dipropyleneglycol) phosphite, which is recited in dependent claim 28 (Answer 6). The Specification discloses that the most preferred “active hydrogen-containing phosphite compound” is tris(dipropyleneglycol) phosphite. Thus, Lickei discloses a polyurethane foam containing the claimed “active hydrogen-containing phosphite compound.” Conclusion of Law The evidence of record support the Examiner’s finding that Lickei discloses a polyurethane foam containing the anti-yellowing “active hydrogen-containing phosphite compound” recited in claim 1. SUMMARY We reverse the rejection of claims 1-39 under 35 U.S.C. § 112, second paragraph. However, we affirm the rejection of claims 1-39 under 35 U.S.C. § 102(b). TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED lp