Gundolf Jacobs et al.

Patent Trials and Appeals Board

Jun 9, 2020

14646411 - (D) (P.T.A.B. Jun. 9, 2020)

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.
14/646,411 05/21/2015 Gundolf JACOBS BMS121157US 5363
157 7590 06/09/2020
Covestro LLC
1 Covestro Circle
PITTSBURGH, PA 15205
EXAMINER
RIOJA, MELISSA A
ART UNIT PAPER NUMBER
1768
NOTIFICATION DATE DELIVERY MODE
06/09/2020 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):
US-IPR@covestro.com
laura.finnell@covestro.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GUNDOLF JACOBS, HANS-DETLEF ARNTZ,
HANS-GEORG PIRKL, and ANGELIKA SCHULZ
Appeal 2019-002473
Application 14/646,411
Technology Center 1700
Before CATHERINE Q. TIMM, CHRISTOPHER C. KENNEDY, and
DEBRA L. DENNETT, Administrative Patent Judges.
TIMM, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 14, 16–21, and 23–25. See Final Act.
1.2 We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as Covestro
Deutschland AG. Appeal Br. 1.
2 The Final Action includes claim 15 as pending, but this claim was
cancelled by Appellant in an amendment filed Sept. 1, 2017.
Appeal 2019-002473
Application 14/646,411
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CLAIMED SUBJECT MATTER
The claims are directed to a process for producing flexible
polyurethane (PUR) foams (see, e.g., claim 14) and a flexible polyurethane
(PUR) foam obtained by the process (see, e.g., claim 24).
According to the Specification, the process involves “reacting organic
polyisocyanates containing di- and polyisocyanates of the diphenylmethane
(MDI) series with polyoxyalkylene polyethers.” Spec. 1:3–6. The
polyoxyalkylene polyethers have an oxyethylene fraction of 10 to 20 wt%,
based on the total weight of alkylene oxide fractions. Claim 14. The organic
polyisocyanates have a ratio of 4,4′-MDI to 2,4′-MDI between 1.6 and 2.7.
The process produces flexible PUR foams with an oxyethylene fraction of
less than or equal to 20 wt. %, based on the total weight of all alkylene oxide
fractions in all polyether polyols used to produce the foam.
Claim 14, reproduced below with the limitations most at issue
highlighted, is illustrative of the claimed subject matter:
Claim 14. A process for producing flexible PUR foams
which have an oxyethylene fraction of less than or equal to 20
wt. %, based on the total weight of all alkylene oxide fractions
in all polyether polyols used to produce the foam, having a DIN
EN ISO 845 apparent density in the range of ≥ 63 kg/m3 to ≤ 83
kg/m3 and a DIN EN ISO 2439-1-2009 hysteresis of ≤ 16, said
process comprising reacting component A which comprises
A1 one or more isocyanate-reactive components comprising:
A1.1 at least one polyether polyol having a functionality
of 2 to 6, a DIN 53240 hydroxyl number (OH
number) of 9 to 112 mg KOH/g, and an oxyethylene
fraction of 10 to 20 wt.%, based on the total weight
of alkylene oxide fractions used,
A2 water and/or physical blowing agents,
Appeal 2019-002473
Application 14/646,411
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A3 optionally, isocyanate-reactive hydrogen containing
compounds having an OH number of 140 mg KOH/g to
1800 mg KOH/g,
A4 auxiliary and added-substance materials comprising
a) catalysts,
b) surface-active added-substance materials, and/or
c) pigments or flame retardants,
wherein component A is free of polyricinoleic esters,
with
component B an isocyanate component comprising
B1 a mixture of di- and polyisocyanates of the
diphenylmethane (MDI) series,
and, optionally,
B2 one or more polyether polyols having a functionality of 2
to 8, a DIN 53240 OH number of ≥ 9 mg KOH/g to ≤ 56
mg KOH/g,
wherein the ratio of 4,4'-MDI to 2,4'-MDI is between 1.6 and
2.7 and total monomer content is 75 to 85 wt. %, based on the
total weight of isocyanates used,
wherein the flexible PUR foam is produced at an isocyanate
index of 75 to 110.
Appeal Br. 13–14 (Claims Appendix) (emphasis added).

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REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Herrington US 5,010,117 Apr. 23, 1991
Elwell US 5,114,989 May 19, 1992
Gansen US 5,369,138 Nov. 29, 1994

REJECTIONS
Claims 14, 16–19, and 23–25 are rejected under pre-AIA 35 U.S.C.
§ 103(a) as being unpatentable over Gansen, as evidenced by Herrington.
Ans. 3.
Claim 20 is rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Gansen. Ans. 9.
Claim 21 is rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Gansen in view of Elwell. Ans. 10.
OPINION
Claim 14
In arguing against the Examiner’s rejection of claims 14, 16–19, and
23–25 as obvious over Gansen, as evidenced by Herrington, Appellant does
not argue any claim apart from the others. We select claim 14 as
representative for resolving the issue on appeal.
The issue on appeal is whether Appellant has identified a reversible
error in the Examiner’s finding that Gansen would have suggested to one of
ordinary skill in the art forming a flexible polyurethane foam having an
oxyethylene fraction within the range of claim 14 using an isocyanate
mixture of 4,4'-MDI to 2,4'-MDI within the ratio further required by the
claim.
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Application 14/646,411
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Appellant has not identified such an error.
Gansen discloses a process of making molded cold-cure flexible
polyurethane foams by reacting (a) aromatic polyisocyanates with (b) a
combination of polyethers (b1) and (b2) and (d) water as a blowing agent.
Gansen col. 2, ll. 15–43. Appellant does not dispute that as calculated by the
Examiner, the total oxyethylene content can be as low as roughly 7.25 wt.%.
Compare Final Act. 5–6, with Appeal Br. 5 (“Appellant submits that the
overall range of oxyethylene content in the foam based on the broad
disclosure in the Gansen reference is from 7.25 wt.% to 47.5 wt.%.”).
Appellant contends that “proper motivation does not exist for one to
modify the oxyethylene content of the resultant foams of the Gansen
reference in the manner necessary to arrive at the present invention.” Appeal
Br. 6. According to Appellant, Gansen conveys that a high rebound
resilience requires high ethylene oxide (EO) contents. Appeal Br. 5, citing
Gansen col. 2, ll. 8–12. Appellant further contends that Gansen’s working
examples would have led the ordinary artisan to conclude that the
oxyethylene content must be greater than 20 wt.% to attain a high rebound
resilience. Appeal Br. 5–6.
Gansen does not support Appellant’s contention.
First, Gansen’s column 2, lines 8–12 does not support Appellant’s
argument because it discusses only one of two polyethers used in the
reaction scheme, i.e., the polyether having an ethylene oxide content greater
than 50 wt.%. Gansen col. 2, ll. 8–12 (“It has now surprisingly been found
that when polyethers having an ethylene oxide content greater than 50 wt.%
are used, even with MDI as the isocyanate, highly resilient foams can be
prepared.”). This portion of Gansen is referring to polyether (b1) of the
reaction components. Gansen col. 2, ll. 15–43. Gansen uses another
Appeal 2019-002473
Application 14/646,411
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polyether (b2), which has a lower ethylene oxide content of from 5 to 25
wt.% in combination with polyether (b1). Id. In column 2, lines 8–12,
Gansen is merely expressing that, to get the desired resilience, from 5 to 30
wt.% of the polyether must be of the type containing an ethylene oxide
content of at least about 50 wt.%. The other 70 to 95 wt.% of the polyether is
the lower ethylene oxide content polyether. As pointed out by the Examiner,
Gansen does not place limits on the overall ethylene oxide content of the
polyurethane reaction product and the undisputed range of total ethylene
oxide content is 7.25 wt.% to 47.5 wt.%, a range overlapping the less than or
equal to 20 wt.% range of claim 14. Ans. 14–15.
The working examples do not persuade us that Gansen leads away
from the lower overlapping portion of the range resulting from Gansen’s
teachings. As further pointed out by the Examiner, a prior art reference is not
limited to its examples. Ans. 15. See In re Mills, 470 F.2d 649, 651, CCPA
1972) (“[A] reference is not limited to the disclosure of specific working
examples.”). We also agree with the Examiner’s analysis of the examples.
Ans. 15–16. The comparative examples omit polyether (b1) and, the
implication is that this omission causes the reduced resilience, not a higher
range of the total content of ethylene oxide.
The Examiner relies on Herrington as evidence that the ordinary
artisan would have had a reason to use the lower end of Gansen’s range of
ethylene oxide content to decrease the foam product’s sensitivity to
moisture. Final Act. 6. Herrington states that “increasing the ethylene oxide
content of the polymer increases the foam’s sensitivity to moisture.”
Herrington col. 1, ll. 53–55. Appellant’s argument that Herrington would not
provide proper motivation is based on the argument regarding Gansen’s
working examples that we found unpersuasive above. Appeal Br. 6. Thus,
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Application 14/646,411
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Appellant’s argument against the Examiner’s finding of a reason to use the
lower end of the range of Gansen based on the teachings of Herrington is
unpersuasive. Moreover, Gansen’s overlapping range is sufficient of itself to
support the Examiner’s conclusion of obviousness without the use of
Herrington.
As to the ratio of 4,4'-MDI to 2,4'-MDI, the Examiner finds that
Gansen’s Example 4, component B is a mixture having a ratio of 4,4'-MDI
to 2,4'-MDI of about 2.4, a value within the range of 1.6 and 2.7. Final Act.
6. Appellant does not dispute that the 4,4'-MDI/2,4'-MDI mixture Gansen
uses in Example 4 meets the requirements of claim 14. Instead, Appellant
points out that other working examples use other isocyanate components
with varying amounts of 4,4'-MDI to 2,4'-MDI and contends that “[a] logical
basis for selecting this narrow range of 4,4'-MDI to 2,4'-MDI content simply
does not exist. Nor is there a logical and/or reasonable basis for selecting
this narrow range and combining it with an oxyethylene content of 20 wt. %
or less in the foam.” Appeal Br. 6; Reply Br. 8. Given Gansen expressly
teaches using an isocyanate mixture with a 4,4'-MDI to 2,4'-MDI ratio
within the range of the claim to form a suitable flexible polyurethane foam,
we are unpersuaded of reversible error.
Claim 20
Appellant acknowledges that Gansen teaches or suggests in the broad
disclosure using a prepolymer as required by claim 20. Appeal Br. 8.
Appellant’s arguments against the rejection of claim 20 parallel those
already determined to be unpersuasive above. Appeal Br. 7–9. Further, we
agree with the Examiner’s response to those arguments. Ans. 17–18.
Appellant has not identified a reversible error in the Examiner’s rejection of
claim 20.
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Application 14/646,411
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Claim 21
Appellant repeats arguments against the Examiner’s findings
regarding Gansen (Appeal Br. 9–11), which we already addressed above.
For the reasons expressed above, those arguments are unpersuasive of
reversible error by the Examiner.
CONCLUSION
The Examiner’s decision to reject claims 14, 16–21, and 23–25 is
AFFIRMED.
DECISION SUMMARY
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
14, 16–19,
23–25
103(a) Gansen, Herrington 14, 16–19,
23–25

20 103(a) Gansen 20
21 103(a) Gansen, Elwell 21
Overall
Outcome
14, 16–21,
23–25

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). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED