Ex Parte 6359022 et al

Patent Trial and Appeal Board

Jun 19, 2014

90006824 (P.T.A.B. Jun. 19, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
90/006,824 10/20/2003 6359022 97-845-C 7651
23446 7590 06/20/2014
MCANDREWS HELD & MALLOY, LTD
500 WEST MADISON STREET
SUITE 3400
CHICAGO, IL 60661
EXAMINER
DIAMOND, ALAN D
ART UNIT PAPER NUMBER
3991
MAIL DATE DELIVERY MODE
06/20/2014 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 PATENT TRIAL AND APPEAL BOARD
____________

Ex parte STEPAN COMPANY
Appellant
____________

Appeal 2014-001754
Reexamination Control Nos. 90/006,824 and 90/007,619
Patent 6,359,022 B1
Technology Center 3900
____________

Before CHARLES F. WARREN, ROMULO H. DELMENDO, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

DELMENDO, Administrative Patent Judge.

DECISION ON APPEAL
Stepan Company (hereinafter “Appellant”), the record owner of
United States Patent 6,359,022 B1 (hereinafter the “’022 Patent”) issued to
F. Leo Hickey and Kevin L. Rooney on March 19, 2002,1 appeals under
35 U.S.C. §§ 134(b) and 306 from a final rejection of claims 1-10, 13-16,
19, 20, 23-25, 27-51, 53-55, 57-59, 61-66, and 68-89 in the Final Office

1 The Assignment of record for the ’022 Patent indicates that, although
“Stepan Company” is listed as the receiving party, “STEPAN
CORPORATION” (emphasis added) is the actual assignee. See Reel
010068/Frame 0484. Notwithstanding this discrepancy, we observe that the
Patent Assignment Abstract of Title entered November 14, 2003 indicates
that the assignee is “STEPAN COMPANY.”
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Action mailed December 14, 2012 (hereinafter “FR”). We have jurisdiction
under 35 U.S.C. §§ 6(b)(2), 134(b), and 306.
We AFFIRM.

STATEMENT OF THE CASE
Procedural History
This is a second appeal in this merged reexamination proceeding. The
90/006,824 reexamination proceeding (“’824 reexamination proceeding”)
was ordered on January 15, 2004 based on an ex parte reexamination request
filed by the Patent Owner/Appellant through its counsel, Steven J. Sarussi of
McDonnell Boehnen Hulbert & Berghoff on October 20, 2003. While the
’824 reexamination proceeding was pending, a third party request for ex
parte reexamination was filed by Henry M. Pogorzelski, then of Moser,
Patterson & Sheridan LLP on July 6, 2005, and given Control No.
90/007,619 upon grant of the request on September 26, 2005. The two
reexaminations were merged on Feb. 24, 2006.
In the first appeal, this Board affirmed the Examiner in a Decision
entered on December 18, 2009 (hereinafter “2009 Board Decision”).
Appellant appealed the Board decision to the United States Court of Appeals
for the Federal Circuit, which vacated the Board’s Decision on procedural
grounds and remanded the proceedings with instructions to designate the
Decision as including a new ground of rejection. In re Stepan Co., 660 F.3d
1341, 1346 (Fed. Cir. 2011).
In accordance with the Court’s mandate of November 29, 2011, the
Board designated the Decision as including a new ground of rejection
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pursuant to 37 C.F.R. § 41.50(b), and required Appellant to either reopen
prosecution or request rehearing with respect to the new ground of rejection
on the same record to avoid termination of the appeal as to the rejected
claims. Decision on Appeal entered April 19, 2012 at 2. On June 19, 2012,
Appellant requested that prosecution be reopened, submitting new claims
69-89, together with arguments and additional evidence. On November 14,
2012, claims 69-89 were amended. No further amendments appear to have
been submitted.
In the latest Final Office Action, the Examiner set forth six grounds of
rejection. FR 14-35. The Examiner also found that Appellant’s Rule 131
affidavits were insufficient to antedate the Singh reference,2 and that
Appellant’s Rule 132 affidavits were insufficient to establish non-
obviousness through a showing of commercial success. FR 61-76.
Appellant submitted a Brief on Appeal on May 13, 2013 (hereinafter “App.
Br.”). The Examiner mailed an Examiner’s Answer on June 7, 2013
(hereinafter “Ans.”). Appellant filed a Reply Brief on August 6, 2013
(hereinafter “Reply Br.”).
Oral argument in this second appeal was heard on April 23, 2014. See
Hrg. Tr. entered May 12, 2014.

The Invention
The subject matter on appeal is directed to: (A) polyol based resin
blends comprising (i) certain hydrophobic materials containing aromatic
polyester polyols which are free or substantially free of dimer acid, (ii) a

2 PCT International Publication WO 97/21764 published June 19, 1997.
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linear or branched C4-C7 hydrocarbon or pentane as a blowing agent, and
(iii) added water or water “excluding water found in the polyol component
as a byproduct of reaction”; (B) methods of preparing rigid closed-cell
foams by reacting a polyisocyanate with the polyol based resin blend; and
(C) the resulting polyurethane or polyisocyanurate foams. Claim 1 is
illustrative and reads as follows.
1. A polyol based resin blend comprising:
(a) a polyol component comprising:
(I) from about 20 to about 100 percent by
weight of an aromatic polyester polyol
reaction product formed by inter-
esterification of:
(i) from about 10 to about 70 percent by
weight of a phthalic acid based
material;
(ii) from about 20 to about 60 percent by
weight of a hydroxylated material
having a functionality of at least 2;
and
(iii) from about 1 to about 40 percent by
weight of a hydrophobic material
having:
(1) from one to six radicals, the
radicals being selected from the
group consisting of carboxylic
acid groups, carboxylic acid
ester groups, hydroxyl groups,
and mixtures thereof;
(2) hydrocarbon groups totaling at
least 4 carbon atoms for each
radical present; and
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(3) an average molecular weight of
from about 100 to about 1000;
wherein the hydrophobic
material is substantially free of
dimer acid; and
(II) from 0 to about 80 percent by weight of a
polyether polyol;
(b) from about 10 to about 35 parts per hundred parts of
polyol of a linear or branched pentane blowing agent; and
(c) from 1 to about 0.05 part of added water per hundred
parts of the polyol component.
App. Br. 58, 60-71 (Claims App’x).3
The Rejections
The Examiner has rejected the claims under 35 U.S.C. § 103(a) as
follows:
A. Claims 1-10, 13-16, 20, 24, 27-47, 49-51, 53-55, 57-59, 61-66, 68-83,
and 85-89 as obvious over Singh (Ans. 2-22, 38-45; FR 14-20);
B. Claims 19, 25, 48, and 84 as obvious over Singh, and further in view of
Fishback ’7424 and Barda5 (Ans. 2-22, 38-45; FR 21-22);
C. Claim 23 under 35 U.S.C. § 103(a) as obvious over Singh, and further in
view of Thorpe6 (Ans. 2-22, 38-45; FR 22-23);

3 Throughout this Decision, we reproduce clean copies of the claim without
any bracketed text and/or underlining that were required pursuant to
37 C.F.R. § 1.530(f).
4 U.S. Patent No. 5,837,742 A (issued November 17, 1998) (hereinafter
“Fishback ’742”).
5 U.S. Patent No. 4,468,482 (issued August 28, 1984).
6 U.S. Patent No. 4,797,429 (issued January 10, 1989).
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D. Claims 1-10, 13-16, 19, 20, 23-25, 27-51, 53-55, 57-59, 61-66, and 68-89
as obvious over Fishback ’742 in view of Nicola 1994 and Nicola 19957
(Ans. 22-30, 38-45; FR 23-28);
E. Claims 1-9, 14, 15, 19, 20, 23-25, 27-40, 43, 44, 46-51, 53-55, 57-59, 61-
66, 68-76, 79, 80, and 82-89 as obvious over Nicola 1994 and Nicola 1995
(Ans. 30-35, 38-45; FR 28-33); and
F. Claims 10, 13, 16, 41, 42, 45, 77, 78, and 81 as obvious over Nicola 1994,
Nicola 1995, and Fishback ’5018 (Ans. 35-45; FR 33-35).

DISCUSSION
I. Rejections A – C
For a claim in a later filed application to be entitled to the benefit of
an earlier filing date of a previously filed application under 35 U.S.C. § 120,
the previously filed application must comply with the written description
requirement of 35 U.S.C. § 112, ¶1. In re Curtis, 354 F.3d 1347, 1351-52,
(Fed. Cir. 2004).
The ’022 Patent issued based on Application No. 09/289,043, filed on
April 9, 1999, which is a continuation-in-part of Application No.
08/949,239, filed on October 10, 1997, now U.S. Patent No. 5,922,779
(hereinafter “the ’779 Patent”). As stated in the 2009 Board Decision,

7 W.J. Nicola & H.U. Weber, Hydrocarbon Blown Foams for U.S.
Construction Applications, 1994 85TH ANN. POLYURETHANE
TECHNICAL/MARKETING CONF. 412-17 (hereinafter “Nicola 1994”) and W.J.
Nicola & Ulrich Weber, Improved Hydrocarbon Blown Foams for North
America, 1995 POLYURETHANE 156-62 (hereinafter “Nicola 1995”).
8 U.S. Patent No. 5,470,501 A (issued November 28, 1995) (hereinafter
“Fishback ’501”).
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Appellant conceded that independent claims 1, 55, and 68 were not
supported by the ’779 Patent, and thus are not entitled to the October 10,
1997 filing date of the ’779 Patent (i.e., these claims are entitled to the April
9, 1999 filing date). 2009 Board Decision at 7-8, n. 8. However,
independent claim 33 was found to be supported by the ’779 Patent, and
therefore entitled to the earlier filing date of the ’779 Patent. Id. at 11-12.
Citing the 2009 Board Decision, the Examiner found that claim 69-89 were
supported by the ’779 Patent, and therefore entitled to a filing date of
October 10, 1997. FR 11-12. Thus, Singh, which published on June 19,
1997, is available as prior art under 35 U.S.C. § 102(b) as to claim 1 and
under 35 U.S.C. § 102(a) as to claims 33 and 69.
With respect to the rejections based principally on Singh, Appellant
provides arguments under separate sections for: (i) claims 69-76, 79, 80, 82-
84, 86, 88, and 89; and (ii) claims 33-40, 43, 44, 46-48, 50, 53, and 54. App.
Br. 15-34. Additionally, Appellant argues all of the claims on appeal,
including the remaining claims that are subject to Rejections A through C
(i.e., claims 1-10, 13-16, 19, 20, 23-25, 27-32, 41, 42, 45, 49, 51, 55, 57-59,
61-66, 68, 77, 78, 81, 85, and 87), based on a showing of commercial
success. App. Br. 15, 48-56. Consistent with the manner in which
Appellant argues the three groups of claims, we confine our discussion of
Rejections A through C to claims 1, 33, and 69, which we select as
representative of each of the three groups of claims. See 37 C.F.R.
§ 41.37(c)(1)(vii). All other claims within each of the claim groups stand or
fall with one of claim 1, 33, or 69.

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A. CLAIM 1:
The Examiner found that Singh’s Examples 1, 2, 4, and 13-15
describe every limitation of claim 1, except the amount of “added water” in
these examples was determined to be 1.12 parts per hundred parts of the
polyol – an amount that falls slightly outside the range of “from 1 to about
0.05 part of added water per hundred parts,” as recited in claim 1. FR 14-17.
The Examiner determined, however, that Singh teaches a range of water
contents that overlaps the range recited in claim 1. Id. at 17-19. Based on
these findings, the Examiner concluded that a person of ordinary skill in the
art would have formulated a composition having a water content that falls
within the range recited in claim 1.
Appellant does not dispute the Examiner’s findings concerning the
scope and content of Singh and the difference between it and the subject
matter of claim 1. Nor does Appellant dispute the Examiner’s obviousness
conclusion with respect to the amount of added water. Rather, as we
indicated above, Appellant’s arguments in support of claim 1 are based on
the belief that it has made a showing of commercial success sufficient to
overcome the Examiner’s rejection. App. Br. 15, 48-56. Specifically,
Appellant relies on the Declaration of David Norberg filed June 19, 2012
(Ex. I) and the Declaration of Kevin J. Knutsen filed January 16, 2007
(Ex. B). App. Br. 48-56.
We do not find Appellant’s arguments and proffered evidence
persuasive to show reversible error on the part of the Examiner. In re Jung,
637 F.3d 1356, 1365 (Fed. Cir. 2011) (explaining that even if the examiner
had failed to make a prima facie case, the Board would not have erred in
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framing the issue as one of reversible error because it has long been the
Board’s practice to require an appellant to identify the alleged error in the
examiner’s rejections).
Our reviewing court provided guidance on secondary considerations
(e.g., commercial success) as follows:
[T]here is a more fundamental requirement that must be met
before secondary considerations can carry the day. “For
objective evidence of secondary considerations to be accorded
substantial weight, its proponent must establish a nexus
between the evidence and the merits of the claimed invention.”
Wyers v. Master Lock Co., 616 F.3d 1231, 1246 (Fed.Cir.2010)
(quotation omitted). Where the offered secondary
consideration actually results from something other than
what is both claimed and novel in the claim, there is no
nexus to the merits of the claimed invention. Tokai Corp. v.
Easton Enters., Inc., 632 F.3d 1358, 1369 (Fed.Cir.2011) (“If
commercial success is due to an element in the prior art, no
nexus exists.”); Ormco Corp. [v. Align Tech., Inc.], 463 F.3d
[1299,] 1312 [(Fed. Cir. 2006)] (“[I]f the feature that creates
the commercial success was known in the prior art, the
success is not pertinent.”); In re Woodruff, 919 F.2d 1575,
1578 (Fed.Cir.1990) (“The law is replete with cases in which
the difference between the claimed invention and the prior
art is some range or other variable within the claims.…
[and] in such a situation, the applicant must show that the
particular range is critical, generally by showing that the
claimed range achieves unexpected results relative to the prior
art range.” (citations omitted)).
In re Kao, 639 F.3d 1057, 1068 (Fed. Cir. 2011) (bolded emphases added).
We apply these principles to the facts of the current appeal to
determine whether Appellant established a nexus between the proffered
evidence and “what is both claimed and novel in the claim.” Id.
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Knutsen attested that he is an employee of Stepan Company. Ex. B
¶ 1. Knutsen further testified that the total sales of STEPANPOL® PS-2352,
a polyol that undisputedly falls within the scope of component “(a)” recited
in claim 1, increased from $1.855 million in 2000 to more than $96.597
million in 2006. Id. at ¶¶ 10, 25-30. During this same time period, market
share for total sales of STEPANPOL® PS-2352 rose from an estimated 0.8%
to well over 52.4% relative to the total market share for polyols purchased
by the “North American PIR Lamination Industry.” Id. According to
Knutsen, the North American PIR Lamination Industry has consisted of
seven companies from at least year 2000, four of which began using
STEPANPOL® PS-2352 in resin blends that also contained linear or
branched pentane blowing agent and added water by the end of 2002. Id. at
¶¶ 17, 24. Knutsen attests that the sales data show “the amount of
STEPANPOL® PS-2352 that has been purchased and used in resin blends
that also contained a linear or branched pentane blowing agent and added
water for the time period from 2000 to the end of November in 2006.” Id. at
¶ 25.
Norberg is also an employee of Stepan Company. Ex. I ¶ 1. Norberg
attests that “[t]he only significant use for STEPANPOL® PS-2352 by
Stepan’s customers since 2003 is making the claimed resins for use in the
claimed methods to make the claimed polyurethane foams.” Id. at ¶ 6. In
addition, Norberg provides testimonial evidence regarding addition sales
data. Id. at ¶¶ 33-39.
Consistent with the Examiner’s findings, Ans. 39, we find that
Appellant failed to demonstrate a nexus between the proffered evidence and
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“what is both claimed and novel in the claim.” Kao, 639 F.3d at 1068. The
sales data allegedly establishing commercial success relate to data for
STEPANPOL® PS-2352, a commercial product already in the public domain
and disclosed in Singh. See Singh’s Examples 1, 2, 4, and 13-15.
Therefore, the proffered evidence is ineffective to establish a nexus
sufficient to overcome the Examiner’s prima facie case of obviousness based
on Singh’s disclosure. Tokai Corp., 632 F.3d at 1369 (“If commercial
success is due to an element in the prior art, no nexus exists.”); Ormco
Corp., 463 F.3d at 1312 (“[I]f the feature that creates the commercial
success was known in the prior art, the success is not pertinent.”).
As stated by the Examiner, Ans. 39, “[t]here’s nothing of record to
show any sale of blend or foam.” That is, we have not been directed to any
information pertinent to any commercial success for the claimed polyol
blend (as distinguished from of STEPANPOL® PS-2352 per se) relative to
all other polyol blends available in the market (as distinguished from sales
data for a particular polyol purchased for use in blends or foams made by
select end users). The mere fact that Stepan Company does not manufacture
products covered by the claims on appeal is no excuse for the absence of
such relevant data, for Appellant seeks to obtain a patent on such products
and no explanation has been provided on why it failed to elicit testimonies
from competent witnesses who are knowledgeable about the sales and
market shares of all the polyol blends, especially similar polyol blends,
available in the market. Cf. In re Inland Steel Co., 265 F.3d 1354, 1357,
1366 (Fed. Cir. 2001) (affidavits summarizing sales information received
from competitors and patent owner regarding premium grade steels
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including antimony were probative, but unpersuasive, to demonstrate
commercial success of a claimed method for producing a cold rolled, temper
rolled strip of electrical steel including antimony).
Equally important, Appellant’s proffered showing fails to establish
that the commercial success is a direct result of the unique characteristics of
the claimed invention –i.e., the slight difference in added water amounts
between Singh’s polyol blend and the claimed polyol blend. In re Applied
Materials, Inc., 692 F.3d 1289, 1299-1300 (Fed. Cir. 2012) (“There must be
‘proof that the sales were a direct result of the unique characteristics of the
claimed invention—as opposed to other economic and commercial factors
unrelated to the quality of the patented subject matter.’”) (quoting In re
Huang, 100 F.3d 135, 140 (Fed. Cir. 1996)); Asyst Techs., Inc. v. Emtrak,
Inc., 544 F.3d 1310, 1316 (Fed. Cir. 2008) (“[T]here was no evidence that
the success of the commercial embodiment . . . was attributable to the . . .
only material difference between [the prior art] and the patented
invention.”); Kao, 639 F.3d at 1068 (“‘The law is replete with cases in
which the difference between the claimed invention and the prior art is some
range or other variable within the claims.… [and] in such a situation, the
applicant must show that the particular range is critical.’”) (quoting
Woodruff, 919 F.2d at 1578); In re Baxter Travenol Labs., 952 F.2d 388,
391-92 (Fed. Cir. 1991) (“Baxter also argues that commercial success and
unexpected results rebut a prima facie finding of obviousness. Since Baxter
has not effectively argued that these particular claims differ from what is
disclosed in [the prior art], this argument must fail.”).
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Because the evidence of secondary considerations in support of
nonobviousness does not outweigh the strong evidence of obviousness based
on Singh’s disclosure of a polyol blend containing STEPANPOL® PS-2352,
iso-pentane and/or n-pentane, and added water, we uphold the Examiner’s
rejection of claim 1. “[E]vidence of secondary considerations does not
always overcome a strong prima facie showing of obviousness.” Asyst
Techs., 544 F.3d at 1316.

B. CLAIMS 33 & 69:
Claims 33 and 69 are reproduced as follows:
33. A polyol based resin blend comprising:
(a) from 0 to 30 percent of a nonionic surfactant,
(b) a polyol component comprising:
(I) from about 70 to 100 percent by weight of
an aromatic polyester polyol reaction
product formed by inter-esterification of:
(i) from about 20 to about 55 percent by
weight of a phthalic acid based
material;
(ii) from about 30 to about 60 percent by
weight of a hydroxylated material
having a functionality of at least 2;
and
(iii) from about 1 to about 35 percent by
weight of a hydrophobic material having:
(1) from one to six radicals, the
radicals being selected from the
group consisting of carboxylic
acid groups, carboxylic acid
ester groups, hydroxyl groups,
and mixtures thereof;
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(2) hydrocarbon groups totaling at
least 4 carbon atoms for each
radical present; and
(3) an average molecular weight of
from about 100 to about 1000;
wherein the hydrophobic material is free of
dimer acid; and
(II) from 0 to 49 percent by weight of any other
types of polyols;
(c) from about 10 to about 35 parts per hundred parts
of polyol of a linear or branched pentane blowing
agent; and
(d) from 1 to 0.05 part of added water per hundred
parts of the polyol component;
wherein the percentages of the nonionic surfactant, the
aromatic polyester polyol reaction product, and the any other
types of polyols are based on the combined weight of the
aromatic polyester polyol reaction product and nonionic
surfactant; and
wherein the percentages of the phthalic acid based
material, the hydroxylated material, and the hydrophobic
material are based on the total weight of the aromatic polyester
polyol reaction product.

69. A polyol based resin blend comprising:
(a) from 0 to 30 percent of a nonionic surfactant,
(b) a polyol component comprising:
(I) from about 70 to 100 percent by weight of
an aromatic polyester polyol reaction
product formed by inter-esterification of:
(i) from about 20 to about 55 percent by
weight of a phthalic acid based
material;
(ii) from about 30 to about 60 percent by
weight of a hydroxylated material
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having a functionality of at least 2;
and
(iii) from about 1 to about 35 percent by
weight of a hydrophobic material
having:
(1) from one to six radicals, the
radicals being selected from the
group consisting of carboxylic
acid groups, carboxylic acid
ester groups, hydroxyl groups,
and mixtures thereof;
(2) hydrocarbon groups totaling at
least 4 carbon atoms for each
radical present; and
(3) an average molecular weight of
from about 100 to about 1000;
wherein the hydrophobic material is
free of dimer acid; and
(II) from 0 to 49 percent by weight of any other
types of polyols;
(c) from about 10 to about 35 parts per hundred parts
of polyol of a linear or branched pentane blowing
agent; and
(d) from 1 to 0.05 part of water per hundred parts of
the polyol component, excluding water found in
the polyol component as a byproduct of reaction;
wherein the percentages of the nonionic surfactant, the
aromatic polyester polyol reaction product, and the any other
types of polyols are based on the combined weight of the
aromatic polyester polyol reaction product and nonionic
surfactant; and
wherein the percentages of the phthalic acid based
material, the hydroxylated material, and the hydrophobic
material are based on the total weight of the aromatic polyester
polyol reaction product.

App. Br. 62-63, 69-70 (Claims App’x).
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Claim Construction
Before we address the rejection of claims 33 and 69, we turn to the
critical issue in this case: whether the proper claim constructions of “added
water” (claim 33) and “water . . . excluding water found in the polyol
component as a byproduct of reaction” (claim 69) read on a form of water
that is “contained” (App. Br. 19) in the DABCO® K-15 catalyst. That
construction is critical to a determination whether Appellant’s relied-upon
earlier reduction to practice (Inventors’ Declaration pursuant to 37 C.F.R.
§ 1.131, Ex. E), which includes the DABCO® K-15 catalyst as the only
“water” source, shows possession of the invention recited in these claims,
including the water limitations at issue, to effectively antedate the Singh
reference pursuant to 37 C.F.R. § 1.131. In re NTP, Inc., 654 F.3d 1279,
1293 (Fed. Cir. 2011).9
“During reexamination, as with original examination, the PTO must
give claims their broadest reasonable construction consistent with the
specification.” In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379
(Fed. Cir. 2007). Thus, “we look to the specification to see if it provides a
definition for claim terms, but otherwise apply a broad interpretation.” Id.

9 Appellant makes no argument based on a showing that the differences
between the relied-upon reduction to practice and the claimed subject matter
would have been obvious to a person of ordinary skill in the art. See In re
Spiller, 500 F.2d 1170, 1176-77 (CCPA 1974) (CCPA evaluated each of
the claim limitations that were not included in the actual reduction to
practice shown in the § 1.131 affidavit and held each would have been
obvious to one having ordinary skill in the art). Because such an
argument was not raised before the Examiner, it is not before us.
37 C.F.R. § 41.37(c)(1)(vii).
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“As [our reviewing] court has discussed, this methodology produces claims
with only justifiable breadth.” Id. Nevertheless, our reviewing court
repeatedly cautioned that the construction must be reasonable in the context
of the claim as a whole and read in light of the totality of the written
description. See, e.g., In re Suitco Surface, Inc., 603 F.3d 1255, 1259-60
(Fed. Cir. 2010) (The PTO’s “construction [must] be ‘consistent with the
specification, . . . and . . . claim language should be read in light of the
specification as it would be interpreted by one of ordinary skill in the art.’”
(second emphasis added) (internal citations omitted)); In re Baker Hughes,
Inc., 215 F.3d 1297, 1303 (Fed. Cir. 2000) (the PTO cannot adopt a
construction that is “beyond that which was reasonable in light of the totality
of the written description”); In re Morris, 127 F.3d 1048, 1054 (Fed. Cir.
1997) (“[I]t would be unreasonable for the PTO to ignore any interpretive
guidance afforded by the applicant’s written description.”).
With respect to claim 33, the Examiner found that “the ’022 [P]atent
. . . does not explicitly define what is meant by ‘added water’ . . . .” Ans. 8.
Relying on the finding in the 2009 Board Decision at page 15 that “the plain
language of the claims is ‘added’ water, not ‘reaction-generated’ water or
‘hydration’ water,” the Examiner maintained that the disputed claim
limitation does not read on the form of inherent water provided by the
DABCO® K-15 catalyst. Ans. 5-7. Specifically, the Examiner found that
“the ’022 [P]atent considers the composition known as ‘Dabco K-15
Catalyst’ to be a catalyst component in the ’022 [P]atent, not catalyst plus
water.” Id. at 7. As for the “water . . . excluding water found in the polyol
component as a byproduct of reaction” limitation in claim 69, the Examiner
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found that “the water is any water found in the composition, except the
water that is a byproduct of the reaction forming the recited polyol.” FR 7.
With respect to claim 33, Appellant argues that “‘added water’
includes both water added to the composition as plain water and water added
in the form of an admixture with another ingredient added to the
composition (excepting only residual water of reaction in the polyol).” App.
Br. 23. With respect to claim 69, Appellant argues that “water . . . excluding
water found in the polyol component as a byproduct of reaction” includes
“water as a component of the complete polyol based resin composition.” Id.
at 16-17. According to Appellant, “the finished composition must contain
the ingredients recited in the claim; it does not matter how they got there.”
Id. at 17. From Appellant’s standpoint, the water content in the final
composition of the polyol resin blend must contain the claimed amount of
water, except for the water from the polyol reaction. Id.
We disagree with Appellant that the disputed claim limitations of
claims 33 and 69 have been shown to read on inherent water “contained” (id.
at 19) in the DABCO® K-15 catalyst used in the relied-upon reduction to
practice. The ’022 Patent discloses the optional presence of water in the
resin blend, the water taking two forms: reaction-generated water that occurs
in the polyol; and “water that may [optionally] be added to the resin blend
. . . .” See ’022 Patent, col. 16, ll. 17-24. As noted in the 2009 Board
Decision, there is an apparent inconsistency between the reference to water
in the ’022 Patent and the testimonies of Mr. Hickey and Mr. Rooney. See
2009 Board Decision, Findings of Fact 12, 14, 15. Mr. Hickey and
Mr. Rooney testify to the water content of Run 2033-4 (the relied-upon
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reduction to practice) by identifying the source of the water as the catalyst,
DABCO® K-15, and by stating that the water content of this run is 0.15 php
water. Ex. E ¶ 30. However, in the ’022 Patent, additional water as a
blowing agent is discussed in a section (“Blowing Agent”) that is separate
from the section (“Other Optional Ingredients”) which discusses catalysts
such as DABCO® K-15. See ’022 Patent, col. 13, l. 14 – col. 16, l. 37; col.
16, ll. 21-24; col. 17, ll. 11-37. There is no mention in the ’022 Patent of
DABCO® K-15 inherently contributing any water to the composition.
Furthermore, as pointed out by the Examiner (Ans. 7), Tables 3-5 of the
’022 Patent list water separately from the other components including the
DABCO® K-15 catalyst and none of the other components of the blend, with
the exception of the polyol, is described as containing free water.
Thus, giving the claim terms “added water” (claim 33) or “water . . .
excluding water found in the polyol component as a byproduct of reaction”
(claim 69) their broadest reasonable construction in the context of the entire
patent, we conclude that one having ordinary skill in the art at the time of the
invention would not have interpreted the claim terms as including water that
is “contained” (App. Br. 19) in DABCO® K-15 catalyst.
The proper claim construction has not been shown to include
hydration water, because we understand hydration water to be chemically
bonded to an ingredient and therefore is not water in free or unassociated
form that can be considered as a separate component in the claimed
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compositions, as would be understood by one skilled in the relevant art
given the totality of the ’022 Patent disclosure.10
Appellant contends that the facts found by the Board and the issues
raised in the 2009 Board Decision do not lead to a different claim
construction than that proffered by Appellant. App. Br. 27-28. In
responding to the Board’s statement that “the plain language of the claim is
‘added’ water, not ‘reaction-generated’ water or ‘hydration’ water,” App. Br.
30 (quoting 2009 Board Decision at 15), Appellant contends that
“‘[h]ydration water’ has not been shown or argued to be at issue, so there is
no need to discuss whether that counts as ‘added water.’” Id.
To the contrary, this is a key issue. Again, in the 2009 Decision, this
Board noted the inconsistencies between Appellant’s position and the
description of “added water” in the ’022 Patent. The Board further found
that Appellant “provided . . . no explanation or testimony regarding what one
of ordinary skill in the art would have understood ‘added water’ to
encompass . . . .” 2009 Dec. at 15. The Examiner reiterated the importance
of these findings. See, e.g., FR 54; Ans. 6-7. Despite numerous
opportunities to address this key issue since the reopening of prosecution,
Appellant chose to ignore the issue – offering no credible and meaningful
expert testimony explaining why one skilled in the relevant art would have
considered that the disputed claim limitations, taken in the context of the
totality of the written description in the ’022 Patent, would read on water

10 Water in ingredient A would be A and free water, whereas hydration
water—water bonded to A—would be A·H2O. The former includes water as
a separate component in the composition, whereas the latter is not a separate
component in the composition.
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“contained” (App. Br. 19) in the DABCO® K-15 catalyst. Instead, Appellant
chose to rely on the Declaration of John C. Traylor, an employee at Air
Products and Chemicals, Inc. (“Air Products”), filed June 19, 2012 (Ex. J),
and an Inventors’ Declaration executed June 16, 2012 and July 3, 2012 and
filed June 19, 2012 (Ex. K). App. Br. 19-20. Specifically Traylor attests
that Air Products manufactures the DABCO® K-15 catalyst and that the
“water specification” for the catalyst in 1992 and 1997 were “a minimum of
3.1 weight percent and a maximum of 3.5 weight percent.” Ex. J ¶¶ 5, 6.
The inventors further attest that they “have no reason to believe that the
water specification of Dabco® K-15 Catalyst changed between 1996 [the
alleged date of reduction to practice] and the present time.” Ex. K ¶ 32. But
these relied-upon attestations do not explain the form of the water
“contained” (App. Br. 19) in the DABCO® K-15 catalyst – i.e., whether
water is in free form as described for the water component in the ’022 Patent
or is hydration water. Because the relied-upon testimonial evidence fails to
address this key issue, we do not find it persuasive.
Appellant makes several points in support of its claim construction.
Appellant cites Exxon Chem. Patents Inc. v. Lubrizol Corp., 64 F.3d 1553
(Fed. Cir. 1995), in support of its claim construction. App. Br. 17-18,
However, Appellant’s reliance on Exxon is misplaced. In Exxon, the
ingredients used in the composition claim had reacted, and thus the
ingredient list was not the same as the final composition. Exxon, 64 F.3d
1558-89. Here, the water ingredient of the polyol resin blend has not reacted
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with the pentane or polyol components of the polyol resin blend.11 In view
of Exxon, water as the recited component in the polyol resin blend is water
that is added alone or with other ingredients, but not water that has reacted
with an ingredient and forms hydration water. Therefore, under Exxon, the
“added water” or “water . . . excluding water found in the polyol component
as a byproduct of reaction” is the additional amount of water existing
separately in the polyol resin blend, regardless of the source of the water, but
the recited water component does not include hydration water or reaction-
generated water.
Citing Hoechst Celanese Corp. v. BP Chems. Ltd., 78 F.3d 1575 (Fed.
Cir. 1996) and Modine Mfg. Co. v. U.S. Int’l Trade Comm’n, 75 F.3d 1545
(Fed. Cir. 1996), Appellant states that the Examiner’s claim construction is
contrary to Federal Circuit precedent because the Examiner’s claim
construction eliminates certain preferred embodiments (i.e., the Examiner’s
construction “puts all but one of the working examples [Example 10] outside
all of the claims”). App. Br. 26-27. That argument is misplaced because the
’022 Patent describes water as an optional ingredient. See, e.g., ’022 Patent,
col. 13, ll. 64-67 (“Water can be classed and used as a chemically active
blowing agent . . . .”) (emphasis added). As filed, the application that
matured into the ’022 Patent did not require water to be present in the polyol
blend. Indeed, the original claims of the ’022 Patent claims do not recite
water at all. See generally ’022 patent, claims 1-16. As written, the open-

11 As noted elsewhere, water is generated during the formation of the
aromatic polyester polyol reaction product, but this water is not included in
the “added water” or “water . . . excluding water found in the polyol
component as a byproduct of reaction.”
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ended original claims did not require water, although the claims read on
compositions that included it. But later during prosecution, Appellant
deliberately chose to put forward narrowing claims that eliminate what they
now describe as preferred embodiments and the relied-upon reduction to
practice. Therefore, Appellant’s argument on this point is not persuasive.
Furthermore, the Examiner noted an inconsistency between
Appellant’s arguments relating to the claim construction relating to water
and Mr. Hickey’s 1989 article.12 Ans. 10, 20. The Examiner noted an
example given in the paper, which describes a composition including a CFC-
11 blowing agent and DABCO® K-15, but no water, and being described as
“totally CFC-11 blown.” Id. (emphasis added). The Examiner contrasted
this description with another example from the same paper, which describes
a composition including a CFC-11 blowing agent, DABCO® K-15, and
additional water, and being described as “co-blown,” or partially water
blown, using a combination of CFC-11 and the added water. Id. Appellant
states that the article has no bearing on the construction to be given to the
present patent, which does not refer to “totally CFC-11 blown” or “co-
blown” compositions. Reply Brief filed August 6, 2013 at 6. Additionally,
Appellant asserts that an argument based on a prior art document is not even
a proper basis to counter a construction such as that used by the present
Patent Owner based on the Specification and claims of the ’022 Patent. Id.
To the contrary, the 1989 article is relevant because it raises questions as to
the inventors’ attestations and constitutes some evidence on whether one

12 Ex. P of Ex. C (Hickey 2006 Decl.).

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skilled in the relevant art would have considered any water “contained”
(App. Br. 19) in the DABCO® K-15 catalyst to be water described as part of
the blowing agent in the ’022 Patent. In the 1989 article, Mr. Hickey had
different descriptions for tests when additional water was added to the polyol
resin blend (“co-blown”) and when no additional water was added (“totally
CFC-11 blown”). See, e.g., Ex. P of Ex. C at 65 (bottom of page). Now,
Appellant argues that a formulation containing DABCO® K-15, but not
additional water, inherently contains water and meets the claimed water
limitation. Appellant’s arguments are inconsistent with the normal usage of
the terms used in the ’022 Patent, as evidenced by the 1989 publication, and
therefore are relevant.
For these reasons, we conclude that Appellant has not shown that the
proper construction of the disputed claim limitations includes water
“contained” (App. Br. 19) in DABCO® K-15.

Rule 131 Affidavit and Singh
Legal principles
Appellant seeks reversal of the Examiner’s determination that
Appellant’s Rule 131 affidavit is insufficient to remove Singh as a reference.
In order to remove Singh as a reference, Appellant must “establish invention
of the subject matter of the rejected claim prior to the effective date of the
reference or activity on which the rejection is based.” 37 C.F.R. § 1.131(a)
(emphasis added). Nevertheless, according to 37 C.F.R. § 1.131, a
declaration submitted to establish invention of the subject matter of the
rejected claim prior to the effective date of the reference on which the
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rejection is based (unless the rejection is based on a statutory bar), shall
present a showing of facts such, in character and weight, as to establish
reduction to practice prior to the effective date of the reference, or
conception of the invention prior to the effective date of the reference
coupled with due diligence from prior to said date to a subsequent reduction
to practice or to the filing of the application.

Appellant’s position
To overcome the rejections of independent claims 33 and 69 based on
the Singh reference, Appellant provided Rule 131 affidavits from Hickey
and Rooney jointly in 2006 (Ex. E), from Hickey individually in 2006 (Ex.
C), from Hickey and Rooney in 2012 (Ex. K), and from Traylor in 2012 (Ex.
J), all in an attempt to establish an earlier reduction to practice. Appellant
argues that the Rule 131 affidavits establish dates of invention for claims 33
and 69 preceding March 24, 1997, thereby antedating Singh, which was
published June 19, 1997. App. Br. 18-22.
In the affidavits, Hickey and Rooney attest that they are the joint
inventors of the ’022 Patent and reduced the claimed inventions to practice
before March 24, 1997. Ex. E ¶¶ 1, 7. They attest that “Run 2033-4 P4” in
Exhibit A and Run 155 in Exhibits H-M in their 2006 Declaration show
reduction to practice of claim 33 before March 24, 1997. Id. at ¶¶ 119-125.
They further attest in the 2012 Declaration that Exhibit A and Exhibits H-M
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show reduction to practice of claims 33, 69, “and others” in 1996. Ex. K ¶
3.13
In their 2012 Declaration, Hickey and Rooney attest that “Run 2033-4
P4” included 0.15 php of “added” water. Id. at ¶ 30. The source of this
water is said to be the DABCO® K-15 catalyst. Id. Mr. Hickey and
Mr. Rooney attest that their estimate is based on a 2003 Specification
provided in Exhibit F to their 2006 Declaration, and attest that they believed
the 2003 Specification to accurately reflect the water content of DABCO®
K-15 as supplied before March 24, 1997. Id. As we discussed above, this is
supported by a separate Declaration from Mr. Traylor. Ex. J ¶¶ 5, 6, who
stated that the “water specification” for DABCO® K-15 is a minimum of 3.1
weight percent and a maximum of 3.5 weight percent. Id. As we found
above, however, none of the declarants address whether the water present in
DABCO® K-15 is hydration water chemically bonded to the catalyst, or
water that exists in free form in the catalyst. Run 2033-4 P4 does not
indicate any water added or accounted for as a blowing agent. See “Exhibit
A” of Ex. E.
In support of Appellant’s arguments relating to water content,
Mr. Hickey and Mr. Rooney attest that “[t]he specification also explicitly
recognizes that any water from any source in the B component acts as a
blowing agent. The specification states:
Preferred auxiliary chemically active blowing agents are those which
react with isocyanate to liberate a gas such as CO2. Suitable

13 In its Appeal Brief, Appellant focuses on Run 2033-4 P4 instead of Run
155. Run 155 has a polyol resin blend that has 1.06 php water, Ex. E ¶ 99,
which now falls outside the claimed range.
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chemically active blowing agents include, but are not limited to, water
. . . .
022 Patent, col. 13, ll.56-60.” Ex. K ¶ 5 (emphasis added). In the next
paragraph, Mr. Hickey and Mr. Rooney attest that “[t]he above-quoted
passages make clear that all the water in the B component will function as a
chemical blowing agent, including water that is added as part of the polyol
and water that is added or otherwise present independent of the polyol.” Id.
at ¶ 6 (emphasis added).

Analysis
The Inventors’ Declarations do not present a showing of facts
sufficient to establish reduction to practice of the subject matter of claims 33
and 69 prior to the effective date of Singh. Mr. Hickey and Mr. Rooney
attest that when catalyst is added to the resin blend, a minor amount of water
is added as well. Ex. K ¶¶ 29-33. Although the Board and the Examiner
raised the issue regarding hydration water, Appellant has failed to address it
specifically. Mr. Hickey and Mr. Rooney attest that the specification
“explicitly” supports their contention that any water from any source in the
B component can act as a blowing agent, and that the water in the polyol
resin blend includes “water that is added or otherwise present independent of
the polyol.” Id. at ¶¶ 6, 7 (emphasis added). However, when the cited
portions of the Specification are read in the context of the entire
Specification, water in the polyol resin blend is limited to two sources: water
present in the polyol due to the reaction; and water added as a separate
ingredient. The references to water added to the polyol resin blend are in the
“Blowing Agent” section of the Specification, col. 13, ll. 57-60; col. 13,
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l. 64-col. 14, l. 4; col. 14, l. 66-col. 15, l. 3; col. 16, ll. 17-25; or in a portion
of the Specification where the water is referred to as being “an additional
blowing agent,” ’022 Patent, col. 1, ll. 27-28; or “the amount of water
added,” col. 20, l. 65-col. 21, l. 2; Tables 3-5 (see separate line item for
“Water”). The DABCO® K-15 catalyst is always discussed separately from
water, is identified in the “Other Optional Ingredients section” (“C.
Catalysts”) of the Specification, and has a separate line item from water in
Tables 3-5. As discussed in the Claim Construction section, Appellant did
not establish that the test run described in the affidavit used “added water” or
“water . . . excluding water found in the polyol component as a byproduct of
reaction,” as opposed to hydration water. Therefore, Appellant’s Rule 131
affidavits are insufficient to demonstrate a reduction to practice effective to
antedate the Singh reference.
For these reasons, we affirm the Examiner’s rejection of claims 33
and 69.

II. Rejection D
As noted previously, claims 1-10, 13-16, 19, 20, 23-25, 27-51, 53-55,
57-59, 61-66, and 68-89 are rejected under 35 U.S.C. § 103(a) as obvious
over Fishback ’742 in view of Nicola 1994 and Nicola 1995.
Appellant argues the claims together. App. Br. 35-43, 48-56.
Therefore, we confine our discussion to claim 1, which we select as
representative pursuant to 37 C.F.R. § 41.37(c)(1)(vii). Claims 2-10, 13-16,
19, 20, 23-25, 27-51, 53-55, 57-59, 61-66, and 68-89 stand or fall with
claim 1.
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Legal Principles
In evaluating whether claims are obvious,
the scope and content of the prior art are to be determined;
differences between the prior art and the claims at issue are to
be ascertained; and the level of ordinary skill in the pertinent art
resolved. Against this background, the obviousness or
nonobviousness of the subject matter is determined. Such
secondary considerations as commercial success, long felt but
unsolved needs, failure of others, etc., might be utilized to give
light to the circumstances surrounding the origin of the subject
matter sought to be patented.

Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). Furthermore, a prior
art range or value may overlap or be close enough to the claimed range that
one having ordinary skill in the art would have expected the prior art range
or value and the claimed range to have similar properties. In re Harris, 409
F.3d 1339, 1343-44 (Fed. Cir. 2005). To rebut a presumption of
obviousness relating to the overlapping ranges, Appellant can show
“(1) [t]hat the prior art taught away from the claimed invention . . . or
(2) that there are new and unexpected results relative to the prior art.” Iron
Grip Barbell Co. v. USA Sports, Inc., 392 F.3d 1317, 1322 (Fed. Cir. 2004).

Appellant’s Position
In its Appeal Brief, Appellant argues that the combination of Fishback
’742 in view of Nicola 1994 and Nicola 1995 fails to render obvious claim 1
because Fishback ’742 does not disclose the claimed polyol, and the
Fishback ’742 examples cited in the Final Rejection rely upon a
cyclopentane blowing agent instead of linear of branched pentane blowing
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agent. App. Br. 35. Appellant further argues that Nicola 1994 and Nicola
1995 are not proper secondary references because, according to Appellant,
Nicola 1994 and Nicola 1995 contradict the amount of water required as a
blowing agent and because the Nicola tests were unsuccessful. Id. at 35-36.

Analysis
As the Examiner found, Fishback ’742 teaches all claim limitations,
including the water limitation, except for the specified polyol component
and, in a cited example, Fishback ’742 teaches cyclopentane instead of
n-pentane or isopentane. FR 23-25. Fishback ’742 teaches several alternate
polyol resins that are also taught in the ’022 Patent, including TERATE®
2541, but these alternate polyol resins do not constitute a description of
Appellant’s limitations for the claimed polyol resin. Id. at 25. Fishback
’742 does not teach STEPANPOL® PS-2352, which Appellant admits falls
within the scope of the claim limitations relating to the polyol resin. Id.
Fishback ’742 also teaches the use of cyclopentane, n-pentane, and
isopentane, and their technical grades, in amounts that overlap the claimed
range. See id. at 24. The Examiner found that, according to Fishback ’742,
n-pentane or isopentane are alternate blowing agents that can be used in
place of cyclopentane. Id. at 25. Once substituted, the n-pentane or
isopentane met the claim limitations for the hydrocarbon blowing agent. See
id.
For the polyol resin, the Examiner turned to the Nicola 1994 and
Nicola 1995 references, which disclose successfully making foams using
either TERATE® 2541 or STEPANPOL® PS-2352, using a pentane blowing
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agent. Id. at 25-28. The Examiner stated that the Nicola 1994 and Nicola
1995 references teach the alternative use of STEPANPOL® PS-2352 and
TERATE® 2541 in preparing blown foams. Id. at 25.
In arguing against the combination, Appellant focuses on the claim
limitations that Fishback ’742 alone (or its examples) do not disclose. App.
Br. 35-36. Appellant then focuses on the Nicola 1994 and Nicola 1995
references, discussing the water amounts added to the polyol resin blends,
and describing the tests that the resulting foams failed. Id. at 37-38.
However, one cannot show nonobviousness by attacking references
individually when the rejection is based on a combination of references. In
re Keller, 642 F.2d 413, 425 (CCPA 1981). Each reference cited by the
Examiner must be read, not in isolation, but for what it fairly teaches in
combination with the prior art as a whole. See In re Merck & Co., 800 F.2d
1091, 1097 (Fed. Cir. 1986). All the features of the secondary reference
need not be bodily incorporated into the primary reference, see Keller, 642
F.2d at 425, and one having ordinary skill in the art is not compelled to
blindly follow the teaching of one prior art reference over the other without
the exercise of independent judgment, see Lear Siegler, Inc. v. Aeroquip
Corp., 733 F.2d 881, 889 (Fed. Cir. 1984). See also KSR Int’l v. Teleflex
Inc., 550 U.S. 398, 421 (2007) (“A person of ordinary skill is also a person
of ordinary creativity, not an automaton.”).
Here, the Examiner has identified the missing limitations, and
provided “articulated reasoning with . . . rational underpinning to support the
legal conclusion of obviousness,” KSR, 550 U.S. at 418 (citing In re Kahn,
441 F.3d 977, 988 (Fed. Cir. 2006)), in drawing from the Fishback ’742
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specification to substitute n-pentane or isopentane for cyclopentane used in
the Fishback ’742 examples. FR 25. The Examiner identified polyol resins
in Fishback ’742 that have been identified as suitable, and noted that
Appellant’s ’022 Patent has also identified these polyol resins as suitable.
Id. Then the Examiner turned to the two Nicola references to show that the
subject matter is similar in that Fishback ’742 reference and the two Nicola
references are making isocyanate blown foams. Id. at 25-26. The Examiner
noted that the Nicola references use TERATE® 2541, identified in Fishback
’742 and the ’022 Patent as a suitable polyol resin, and STEPANPOL® PS-
2352, which the ’022 Patent identifies as a suitable polyol resin for making
isocyanate blown foams. Id. The Nicola references may disclose that the
foams made during their tests did not pass certain manufacturing
requirements, but the fact remains that the Nicola references reported that
cyclopentane and n-pentane blown foams, using water as an auxiliary
blowing agent, were successfully made, a point that Appellant’s counsel
conceded at argument.14 In re Fulton, 391 F.3d 1195, 1200 (Fed. Cir. 2004)

14 Page 15, line 20 to page 16, line 4 of the transcript reads:

JUDGE DELMENDO: But where is the evidence that we
have that these are useless, you know, unusable foam
compositions?
MR. WHEELER: Okay. Well, my position is not that
they are absolutely useless, that you could never do this,
and you couldn’t, as the examiner put it at one point, you
couldn’t successfully make foam if that is your standard of
success.
They all make foam. I mean, I have no doubt about
that. [….]

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(“[C]ase law does not require that a particular combination must be the
preferred, or the most desirable, combination described in the prior art in
order to provide [the] motivation [or reason] for the current invention.”); In
re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994) (“Even reading Yamaguchi’s
description as discouraging use of epoxy for this purpose, Gurley asserted no
discovery beyond what was known to the art.”).
Citing W.L. Gore & Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540,
1552 (Fed. Cir. 1983), Appellant argues that “a person of ordinary skill in
the art is expected to consider the teachings of the prior art taken as a whole,
and does not pick and choose selected teachings that are offered to defeat
patentability while ignoring others that show patentability.” App. Br. 41.
W.L. Gore involved a process for stretching highly crystalline, unsintered,
PTFE. 721 F.2d at 1545. Prior attempts to stretch highly crystalline,
unsintered, PTFE resulted in breakage. Id. The new patented process
resulted in a porous waterproof/breathable film that has a variety of uses,
and was noted by other companies as “magical,” “bewitching,” and “a
remarkable new material.” Id. In an infringement trial, the district court
ruled the claims to be obvious over prior art. Id. at 1546. In reversing the
district court’s finding of obviousness, the Federal Circuit held:
Nowhere, in any of the references, is it taught or suggested that
highly crystalline, unsintered PTFE could be stretched at a rate
of about 100% per second as required by asserted claim 3. Nor
is it anywhere suggested that by rapid stretching a PTFE article
be stretched to more than five times its original length as
required by asserted claim 19. On the contrary, the art as a
whole teaches the other way.

Id. at 1551.
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Unlike in W.L. Gore, the prior art here specifically teaches that foams
can be successfully made using water “in amounts of 0.05 to 5 php,
preferably from 0.25 to 1.0 php.” Fishback ’742, col. 11, ll. 40-43. Nicola
1994 makes foams using 2.1 to 2.4 php, Nicola 1994 Tables 4-6, and Nicola
1995 makes foams using 1.5 php for n-pentane and 1.0 php for
cyclopentane, Nicola 1995 Tables 4-6. Both Nicola references acknowledge
the need to use less water. Nicola 1994, at 414, 415, 416; Nicola 1995, at
156. Nicola 1995 states “our data clearly indicates that n-pentane and
cyclopentane are viable candidates for use as the third generation blowing
agent in polyisocyanurate foams.” Nicola 1995 at 158. Nicola 1995 also
states “[w]e will continue our efforts to improve the performance and
properties of the hydrocarbon foams, especially regarding k-Factors.” Id.
Thus, Fishback ’742 plainly discloses a basis for water amounts in the
claimed range, and the two Nicola references provide motivation or reason
for further attempts to reduce the water content.
Appellant’s argument based on commercial success is unpersuasive
for many of the same or similar reasons given above in Section I above.
Appellant failed to establish a nexus between the commercial success and
the differences between the claimed subject matter and the prior art.
For these reasons, we affirm the rejection of claim 1 over Fishback
’742 in view of Nicola 1994 and Nicola 1995.

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III. Rejection E
As noted previously, claims 1-9, 14, 15, 19, 20, 23-25, 27-40, 43, 44,
46-51, 53-55, 57-59, 61-66, 68-76, 79, 80, and 82-89 are rejected under 35
U.S.C. § 103(a) as obvious over Nicola 1994 and Nicola 1995 (Ans. 30-35).
Again, Appellant argues the claims together (App. Br. 44-47, 48-56),
so we confine our discussion to claim 1. All other claims subject to this
rejection stand or fall with claim 1.
The legal principles are the same as in the discussion of the Fishback
’742 in view of Nicola 1994 and Nicola 1995 rejections, and thus, will not
be repeated.

Appellant’s position
Appellant reiterates its position regarding the Nicola references, and
adds further that
[s]ince Nicola obtained worse results as the water content in his
experiments went below 1.5 php, Nicola et al. do not teach the
person of ordinary skill in the art to go in that direction; they
concluded that their 1.5 php work in Tables 4 and 5 represented
“the lowest possible water levels.”
App. Br. 44.15 Appellant also argues that the Examiner engaged in
impermissible hindsight in referring to the ’022 Patent’s Specification, when
the Examiner, citing the ’022 Patent’s Specification, said that Appellant had
admitted that water was an optional component for which there was no

15 Appellant’s reference to the “lowest possible water levels” does not
include a citation to either Nicola reference. However, Nicola 1995 contains
the following: “We also increased the foam densities about 10% compared
to past studies, in order to use the lowest possible water levels.” Nicola
1995, 158.
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disclosed criticality, and that the Nicola references’ water content was in the
’022 Patent’s Specification larger water content range of about 0.05 to about
5.0 php. Id. at 44-45; FR. 30.

Analysis
The Examiner found that Nicola 1994 and Nicola 1995 disclose
examples which meet the claim limitations, except for a slight difference in
the water content. See generally FR 45-50. The Examiner cited the ’022
Patent’s Specification as including an admission — not hindsight — that
water was an optional ingredient, which could range from about 0.05 php to
about 5 php, and noted that the range recited in claim 1 was a smaller
portion of this disclosed range. See id. at 48. The Examiner held that the
Nicola references disclosed that water was “a results-effective variable and
slightly lower water content would have been obvious.” Id.
Nicola 1994 describes the market need in the United States to make
essentially halogen-free foams, and states that a similar market need exists in
Europe. Nicola 1994, 412. These market pressures drove Nicola to consider
hydrocarbon blowing agents. Id. Water is used as an additional blowing
agent, but Nicola states that water content affects the k-factors of the
resulting foam. Id. at 414. Nicola 1994 describes the motivation or need to
reduce water amounts in foam-making formulations. Id. at 414 (effect on
k-factors), 415 (same), 416 (effect on R-factors). Thus, water content is a
result-effective variable. “Although optimized PIR foam formulations have
not been presented here, our data clearly shows that pentane-based foams
can be developed that will pass U.S. flammability requirements.
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Optimization will require formulation and processing experiments to
improve foam properties, especially k-factors.” Id. at 416 (Conclusions
section).
The following year, Nicola 1995 was published, with further results.
Nicola 1995 reduced water content from the 2.1-2.4 php range used in
Nicola 1994 to 1.5 php for n-pentane and 1.0 php for cyclopentane. Nicola
1995, Tables 4-6. Although Nicola’s foams did not pass certain
manufacturer’s tests, the fact remains that the Nicola 1994 and the Nicola
1995 references reported that foam had been successfully made. At the end
of the Nicola 1995 reference, Nicola reports that:
We have demonstrated that hydrocarbon blown foams
can be developed that meet the stringent requirements of the
North American construction industries. Although the
formulations and processing techniques are still not optimized,
our data clearly indicates that n-pentane and cyclopentane are
viable candidates for use as third generation blowing agents in
polyisocyanurate foams.

Id. at 158. Nicola concludes by stating, “We will continue our efforts to
improve the performance and properties of the hydrocarbon foams,
especially regarding k-Factors.” Id.
Courts will not read into a reference a teaching away where no such
language exists. DyStar Textilfarben GmbH v. C.H. Patrick Co., 464 F.3d
1356, 1364 (Fed. Cir. 2006). A prior art reference must be considered in its
entirety. W.L. Gore, 721 F.2d at 1550. Here, the Nicola references teach the
need for reduced water content, and for n-pentane blown foams, the water
content is reduced from the range of 2.1-2.4 php to 1.5 php between 1994
and 1995. Compare Nicola 1994 Tables 4-6 with Nicola 1995 Table 4.
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Nicola acknowledges that foams have been made successfully, but that
further optimization is required. Nicola 1994, 416; Nicola 1995, 158.
Nowhere in the Nicola references do they state that amounts less than 1.5 for
n-pentane will result in failure. Thus, a teaching away will not be read into
the Nicola references that does not exist.
A prior art range or value may overlap or be close enough to the
claimed range that one having ordinary skill in the art would have expected
the prior art range or value and the claimed range to have similar properties.
Harris, 409 F.3d at 1343-44. Although Nicola 1995 states that “[w]e also
have increased the foam densities about 10% compared to past studies, in
order to use the lowest possible water levels,” Nicola 1995, 158, this does
not mean that foam densities could not be increased further so that even
lower water levels could be used, or that other optimization may be used to
improve the test formulations. Taking into consideration the need to reduce
water levels, and that Nicola does not disclose avoiding water levels below
1.5 php for n-pentane blown foams, we agree with the Examiner that a
slightly lower water content that falls in the range of 1 php to 0.05 php
would have been obvious. See In re Aller, 220 F.2d 454, 456 (CCPA 1955).
Appellant’s commercial success evidence is unpersuasive for many of
the same or similar reasons discussed in Section I above. Appellant failed to
show a nexus between the commercial success and the slight difference in
water content between the claimed subject matter and the prior art.
For these reasons, we affirm the rejection of claim 1 over Nicola 1994
and Nicola 1995.

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IV. Rejection F
As noted previously, claims 10, 13, 16, 41, 42, 45, 77, 78, and 81
under 35 U.S.C. § 103(a) are rejected as obvious over Nicola 1994, Nicola
1995, and Fishback ’501.
The legal principles are the same as in the discussion of the Fishback
’742 in view of Nicola 1994 and Nicola 1995 rejection, and the Nicola 1994
and Nicola 1995 rejection, and thus, will not be repeated.
Appellant argues the claims together. App. Br. 47-56. Therefore, we
confine our discussion to claim 10. The other claims subject to this rejection
stand or fall with claim 10.
For convenience, we reproduce claim 10 (and the claims from which
it depends) below:
1. A polyol based resin blend comprising:
(a) a polyol component comprising:
(I) from about 20 to about 100 percent by
weight of an aromatic polyester polyol
reaction product formed by inter-
esterification of:
(i) from about 10 to about 70 percent by
weight of a phthalic acid based
material;
(ii) from about 20 to about 60 percent by
weight of a hydroxylated material
having a functionality of at least 2;
and
(iii) from about 1 to about 40 percent by
weight of a hydrophobic material
having:
(1) from one to six radicals, the
radicals being selected from the
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group consisting of carboxylic
acid groups, carboxylic acid
ester groups, hydroxyl groups,
and mixtures thereof;
(2) hydrocarbon groups totaling at
least 4 carbon atoms for each
radical present; and
(3) an average molecular weight of
from about 100 to about 1000;
wherein the hydrophobic
material is substantially free of
dimer acid; and
(II) from 0 to about 80 percent by weight of a
polyether polyol;
(b) from about 10 to about 35 parts per hundred parts of
polyol of a linear or branched pentane blowing agent; and
(c) from 1 to about 0.05 part of added water per hundred
parts of the polyol component.

2. A blend according to claim 1, wherein the amount of
the phthalic acid based material relative to the amount of the
hydroxylated material is selected such that the aromatic
polyester polyol (I) has a hydroxyl number of between 100 and
600.

6. A blend according to claim 2, wherein the
hydroxylated material is selected from the group consisting of
ethylene glycol, diethylene glycol, triethylene glycol, propylene
glycol, dipropylene glycol, trimethylene glycol, butylene
glycols, 1,2-cyclohexanediol, poly(oxyalkylene)polyols derived
by the condensation of ethylene oxide, propylene oxide, or any
combination thereof, glycerol, 1,1,1-trimethylolpropane, 1,1,1-
trimethylolethane, 2,2-dimethyl-1,3-propane diol,
pentaerythritol, and mixtures thereof.

7. A blend according to claim 6, wherein the hydrophobic
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material is selected from the group consisting of castor oil,
coconut oil, corn oil, cottonseed oil, linseed oil, olive oil, palm
oil, palm kernel oil, peanut oil, soybean oil, sunflower oil, tall
oil, tallow, and mixtures thereof.

8. A blend according to claim 7, wherein the phthalic
acid based material is selected from the group consisting of
phthalic acid, isophthalic acid, terephthalic acid, methyl esters
of phthalic, isophthalic, or terephthalic acid, phthalic anhydride,
dimethyl terephthalate, polyethylene terephthalate, trimellitic
anhydride, and mixtures thereof.

10. A blend according to claim 8, wherein the phthalic
acid based material is phthalic anhydride and the hydroxylated
material is a mixture of diethylene glycol and 1,1,1-
trimethylolpropane.

App. Br. 58-60 (Claims App’x).

Appellant’s position
Appellant reiterates its arguments relating to Nicola 1994 and Nicola
1995. Appellant also argues that TERATE® 2541 described in Fishback
’501 is not the claimed polyol resin. Finally, Appellant argues that
diethylene glycol and trimethylolpropane in Fishback ’501 are not properly
combinable in a single formulation. App. Br. 47-48.

Analysis
As the Examiner points out, TERATE® 2541 is not the claimed polyol
resin, but Nicola 1994 and Nicola 1995 use STEPANPOL® PS-2352, which
Appellant has admitted is the claimed polyol resin. FR 50. STEPANPOL®
PS-2352 is prepared using a phthalic anhydride/diethylene glycol adduct that
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is inter-esterified, and Fishback ’501 teaches that other alcohols may be used
to prepare the polyester polyol. Id. at 51. Diethylene glycol and
trimethylolpropane are two of the 20 alcohols that Fishback ’501 lists. Id.
The Examiner argued that if any one of the alcohols is useful to make the
polyol, then a combination of two of the alcohols is also useful, a result that
“flows logically from their each having been individually taught as useful to
form the polyester polyol.” Id. Appellant argues that “[j]ust because the
two isolated needles are in the same haystack does not suggest their specific
combination.” App. Br. 48. However, this does not show that a mix of the
two alcohols will not work. In re Kerkhoven, 626 F.2d 846, 850 (CCPA
1980) (explaining that the idea of combining two compositions, each known
to be used for the same purpose, “flows logically from their having been
individually taught in the prior art.”).
As the Examiner has “articulated reasoning with . . . rational
underpinning to support the legal conclusion of obviousness,” KSR, 550 U.S.
at 418 (citing Kahn, 441 F.3d at 988), we affirm the rejection of claim 10.
At page 53 of its Appeal Brief, Appellant states that it “no longer
asserts that claim 10 per se is commercially successful” and relies on the
commercial success evidence as to claim 1. For the same or similar reasons
discussed above, we find the evidence unpersuasive.

SUMMARY
We sustain the rejections under 35 U.S.C. § 103(a) of: (i) claims 1-10,
13-16, 20, 24, 27-47, 49-51, 53-55, 57-59, 61-66, 68-83, and 85-89 as
obvious over Singh; (ii) claims 19, 25, 48, and 84 as obvious over Singh,
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and further in view of Fishback ’742 and Barda; (iii) claim 23 as obvious
over Singh and Thorpe; (iv) claims 1-10, 13-16, 19, 20, 23-25, 27-51, 53-55,
57-59, 61-66, and 68-89 as obvious over Fishback ’742, Nicola 1994, and
Nicola 1995; (v) claims 1-9, 14, 15, 19, 20, 23-25, 27-40, 43, 44, 46-51, 53-
55, 57-59, 61-66, 68-76, 79, 80, and 82-89 as obvious over Nicola 1994 and
Nicola 1995; and (vi) claims 10, 13, 16, 41, 42, 45, 77, 78, and 81 as
obvious over Nicola 1994, Nicola 1995, and Fishback ’501.
No time periods for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED
Patent Owner:
McANDREWS, HELD & MALLOY
500 West Madison Street,
Suite 3400
Chicago, IL 60661

Third Party Requester:

Henry M. Pogorzelski
PATTERSON & SHERIDAN LLP
3040 Post Oak Boulevard,
Suite 1500
Houston, TX 77056

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