Ex Parte Bender et al

Patent Trial and Appeal Board

Dec 8, 2017

11451176 (P.T.A.B. Dec. 8, 2017)

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.
11/451,176 06/12/2006 Jared Denis Bender 2006P14005 US 9918
109357 7590 12/12/2017
Evonik Corporation
Intellectual Property Management
299 Jefferson Road
Parsippany, NJ 07054-0677
EXAMINER
RIOJA, MELISSA A
ART UNIT PAPER NUMBER
1768
NOTIFICATION DATE DELIVERY MODE
12/12/2017 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):
ipm-na@ evonik. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JARED DENIS BENDER, MARK LEO LISTEMANN, and
JAMES DOUGLAS TOBIAS
Appeal 2016-002965
Application H/451,1761
Technology Center 1700
Before BEVERLY A. FRANKLIN, CHRISTOPHER L. OGDEN, and
JENNIFER R. GUPTA, Administrative Patent Judges.
OGDEN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a)2 from the Examiner’s
final decision rejecting claims 11—13, 16, 17, 19, 20, 23, 24, 26, 27, 30—34,
36-42, 44, and 46—53 in the above-identified application.3 We have
authority pursuant to 35 U.S.C. § 6(b).
1 Appellants identify Jared Denis Bender, Mark Leo Listemann, James
Douglas Tobias, and Air Products and Chemicals, Inc. as the real parties in
interest. Appeal Br. 1, Aug. 5, 2015.
2 See Appeal Br.; see also Reply Br., Jan. 15, 2016.
3 Final Office Action 1, Mar. 9, 2015 [hereinafter Final Action]; Examiner’s
Answer, Nov. 18, 2015 [hereinafter Answer],
Appeal 2016-002965
Application 11/451,176
We AFFIRM-IN-PART.
BACKGROUND
Appellants’ invention relates to methods for making a flexible
polyurethane foam. Independent claim 11 is illustrative:
11. A method for making a flexible polyurethane foam which
comprises contacting a polyisocyanate, with a formulation
consisting essentially of:
Formulation pbw
Polyol 20-100
Silicone Surfactant 0.3-3
Water 1-6
Catalyst Composition 0.2-2
and at least one polymer polyol; at least one diluent selected
from the group consisting of dipropylene glycol, ethylene
glycol and diethylene glycol; and at least one cross-linker
selected from the group consisting of diethanolamine,
diisopropanolamine, triethanolamine and tripropanolamine;
wherein the catalyst composition is 2-methyl-1,3-propanediol
and one or more tertiary amine urethane catalysts wherein the
amount of 2-methyl-1,3-propanediol is sufficient to achieve a
catalyst composition viscosity of 100 to 2000 mPa and wherein
the polyol includes at least one of polyether and polyester
polyols and wherein the polyisocyanate and polyol are provided
in amounts such that the isocyanate index is in the range of 70
to 115.
Appeal Br. 25 (emphasis of key limitation added).
The Examiner maintains the following grounds of rejection:
1. Claims 11-13, 16, 17, 19, 20, 23, 24, 26, 33, 34, 36-A2, and 44
are rejected under 35 U.S.C. § 112, second paragraph, as being indefinite.
See Final Action 2—3.
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Application 11/451,176
2. Claims 11-13, 16, 17, 19, 20, 23, 24, 26, 31-34, 36-AO, and444
are rejected under 35 U.S.C. § 103(a) as being unpatentable over Mercando,5
Holechovsky,6 and Baskent.7 See id. at 4—10.
3. Claim 41 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Mercando, Holechovsky, Baskent, and Yoshimura.8 See
id. at 10—11.
4. Claim 42 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Mercando, Holechovsky, Baskent, and Milliren.9 See id.
at 11-12.
5. Claims 27 and 30 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Mercando and Holechovsky. See id. at 12—14.
6. Claim 46 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Mercando, Holechovsky, and Baskent. See id. at 15—16.
7. Claims 47^49 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Mercando, Holechovsky, and Baskent. See id. at 17—19.
8. Claims 50 and 51 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Mercando, Holechovsky, and Baskent. See id. at
19-21.
4 The Examiner does not list claims 17, 19, 23, 31, 32, and 37—39 in the main
heading to this rejection, but lists them in subheadings and discussed them in
the rejection. See Final Action 4—10.
5 Mercando et al., US 6,232,356 B1 (issued May 15, 2001).
6 Holechovsky et al., US 6,780,895 B2 (issued Aug. 24, 2004).
7 Baskent et al., US 4,379,757 (issued Apr. 12, 1983).
8 Yoshimura et al., US 5,591,781 (issued Jan. 7, 1997).
9 Milliren et al., US 5,874,485 (issued Feb. 23, 1999).
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Application 11/451,176
9. Claims 52 and 53 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Mercando, Holechovsky, and Baskent. See id. at
22-25.
DISCUSSION
Rejection 1 (Indefiniteness)
The Examiner rejects claim 11 and its dependent claims as indefinite
because “[i]t is unclear what ingredients ... are parts of the ‘formulation.’”
Final Action 2. We disagree. Claim 11 lists some of the ingredients of the
formulation in a table, and some in prose below the table. See Appeal
Br. 25. However, it is clear from the plain language of claim 11 which
components recited in the claim are part of the formulation. Consequently,
we reverse the Examiner’s rejection of claim 11 and its dependent claims on
that basis.
The Examiner also rejects claim 23 and its dependent claims as
indefinite because claim 23 expands the scope of claim 11, its parent claim.
See Final Action 3. According to the Examiner, claim 23
sets forth the catalyst composition consists essentially of one or
more tertiary amine urethane catalysts in combination with 2-
methyl-1,3-propanediol and at least one diluent. However, inde­
pendent Claim 11 sets forth the catalyst composition is 2-methyl-
1,3-propanediol and one or more tertiary amine urethane cata­
lysts and separately sets forth at least one diluent which is se­
lected from the group consisting of dipropylene glycol, ethylene
glycol, and diethylene glycol.
Id.
Appellants argue that “the Examiner’s position fails to take into
account all of the limitations of claim 23,” including limitations as to density
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Application 11/451,176
and tear strength, which are not present in claim 11. Appeal Br. 7. In the
Reply Brief, Appellants argue that “[t]he elements of claim 23, including
‘one or more tertiary amine urethane catalysts in combination with 2-
methyl-1,3-propanediol’ and ‘at least one diluent’ mirror those elements
recited in claim 11 and are not in conflict, nor improperly broaden the scope
of claim 11.” Reply Br. 3.
Appellants’ argument does not address, in more than a conclusory
manner, the Examiner’s determination that claim 23 broadens the scope of
the “catalyst composition” in claim 11 because of the “consisting essentially
of’ transitional phrase and the inclusion of the “at least one diluent” in the
catalyst composition. Because the Examiner’s rationale for why claim 23 is
unclear is well grounded and persuasive, and because Appellants do not
provide a satisfactory response, we affirm the Examiner rejection of
claim 23. See In re Packard, 751 F.3d 1307, 1311 (Fed. Cir. 2014) (“[W]hen
the USPTO has initially issued a well-grounded rejection that identifies ways
in which language in a claim is ambiguous, vague, incoherent, opaque, or
otherwise unclear in describing and defining the claimed invention, and
thereafter the applicant fails to provide a satisfactory response, the USPTO
can properly reject the claim as failing to meet the statutory requirements of
§ 112(b).”)
For the above reasons, we affirm the Examiner’s indefiniteness
rejection of claim 23.10 We reverse the Examiner’s indefiniteness rejection
of claims 11-13, 16, 17, 19, 20, 24,26, 33, 34, 36-A2, and 44.
10 Claims 31 and 32 depend from claim 23, but were not explicitly part of
the Examiner’s rejection. In any future proceedings, the Examiner may
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Application 11/451,176
Rejections 2—4 and 8—9
Claim 11 recites a catalyst composition that “is 2-methyl-1,3-
propanediol and one or more tertiary amine urethane catalysts wherein the
amount of 2-methyl-1,3-propanediol is sufficient to achieve a catalyst
composition viscosity of 100 to 2000 mPa.” Appeal Br. 25.
The Examiner finds that the combined prior art teaches a method of
making a flexible polyurethane foam by a method corresponding to claim 11,
using a catalyst composition with 44—80 wt.% tertiary amine and 20-
66 wt.% 2-methyl-1,3-propanediol (“MPDiol”). Final Action 6. The
Examiner states that Appellants’ Specification “teaches the catalyst
composition is especially desired to be 25 to 80 weight percent tertiary
amine and 75 to 20 weight percent MPDiol to achieve a viscosity in the
claimed range.” Id. (citing Spec.* 11132). The Examiner determines that
“[t]he relative amounts of MPDiol and tertiary amine catalyst thus fall
within the range disclosed by applicant, such that it would be expected that
the amount of MPDiol would be sufficient to achieve a catalyst viscosity of
100 to 2000 mPa.” Id.
Appellants argue that the cited part of the Specification does not
establish that the viscosity of the catalyst composition would necessarily be
within the range 100—2000 mPa solely because the composition ranges
overlap the examples in the Specification. See Appeal Br. 10.
Appellants’ argument is persuasive. In particular, the Specification
only refers to a catalyst composition of 25—80% tertiary amine and 20-75%
consider whether these claims are indefinite because of their dependency
from claim 23.
11 Specification, June 12, 2006.
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MPdiol in which “the tertiary amine catalyst is a solid or liquid with
viscosity > 2000 mPa (cps) at 25C.” Spec. 132. In another example with
60—90% tertiary amine and 10—30% MPDiol, “the tertiary amine catalyst is a
liquid with viscosity <100 mPa (cps) at 25C.” Id.
The Examiner has not addressed the effect of the properties of the
tertiary amine, such as its viscosity, on the catalyst composition viscosity
recited in claim 11. Although Mercando mentions some of the tertiary
amines listed in Appellants’ pending claim 12, see Answer 22 (citing
Mercando 5:32—52), Mercando is silent about the viscosity of the tertiary
amines.
A limitation is inherent in a prior art combination only when it is (a)
necessarily present, or (b) the natural result of the combination of elements
explicitly disclosed by the prior art. Par Pharmaceutical, Inc. v. TWI
Pharmaceuticals, Inc., 773 F.3d 1186, 1195—96 (Fed. Cir. 2014). Given that,
according to the Specification, the viscosity of the tertiary amine is a factor
affecting the catalyst composition viscosity, the evidence on this appeal
record does not give us reason to expect that the prior art composition would
necessarily, or as a natural result, have the viscosity recited in claim 11.
For the above reasons, we reverse the Examiner’s rejections of
claim 11. Because claims 12, 13, 16, 17, 19, 20, 23, 24, 26, 31—34, 36-42,
44, and 50—53 either depend from claim 11 or contain the same viscosity
limitation, we reverse the rejection of those claims on the same basis.
Rejections 5—7
In the Appeal Brief, Appellants argue claims 27 and 30 as a group in
response to rejection 5, and claims 47-49 as a group in response to rejection
7. See Appeal Br. 17—21. Therefore, consistent with 37 C.F.R.
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Application 11/451,176
§ 41.37(c)(l)(iv) (2016), we limit our discussion regarding rejections 5—7 to
claims 27, 46, and 47. Claim 30 stands or falls with claim 27, and claims 48
and 49 stand or fall with claim 47.
Independent claim 27 is reproduced below:
27. A method for making a molded flexible polyurethane
foam the method consisting essentially of:
introducing a composition consisting essentially of water,
at least one toluene diisocyanate, at least one polyether polyol,
at least one polymer polyol, at least one silicone surfactant, at
least one crosslinker selected from the group consisting of
diethanolamine, diisopropanolamine, triethanolamine and
tripropanolamine, at least one tertiary amine catalyst, and 2-
methyl-1,3-propanediol, into a mold,
foaming the composition in the mold, and;
removing the foam from the mold wherein the foam has a
tear strength of greater than 200N/m and a density of about
16 to about 65 kg/m3.
Appeal Br. 27. Independent claim 46 is similar to claim 27, with a different
diisocyanate and the inclusion of glycol diluents. See id. at 29. Independent
claim 47 is similar to claim 46, with no limitation on the type of isocyanate
and with no recited tear strength or density. See id.
The Examiner finds that Mercando teaches the method recited in
claim 27, except that it “does not expressly teach the formulation further
comprises 2-methyl-1,3-propanediol” (MPDiol), Final Action 13, and “is
silent regarding the tear strength and elongation of the foam produced,” id.
at 14.
The Examiner finds that Mercando “does teach chain extenders may
be included in the composition.” Id. at 13 (citing Mercando 3:56—58). The
Examiner finds that “Holechovsky et al. also teaches a method of making a
polyurethane foam in which 2-methyl-1,3-propanediol is provided as chain
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Application 11/451,176
extender.” Id. (citing Holechovsky 5:41—57). The Examiner determines as
follows:
At the time of invention, it would have been obvious to a person
of ordinary skill in the art to choose 2-methyl-1,3-propanediol in
the amount taught by Holechovsky et al. as a chain extender in
the composition taught by Mercando et al. The motivation would
have been that 2-methyl-1,3-propane diol functions as an excel­
lent chain extender and yields increases in elongation (Holechov­
sky et al.: Column 4, Lines 54 — 57). Increases in elongation in
a flexible foam, such as that of Mercando et al., are desirable to
provide a foam with increased resistance to breakage when
stretched.
Id. The Examiner makes substantially the same findings and conclusions
regarding claims 46 and 47. See id. at 16—18.
Appellants argue that the Examiner has improperly combined
Mercando and Holechovsky by erroneously picking and choosing features
from the two references, without considering the differences in the
references as a whole. Appeal Br. 8. For example, Appellants argue that
Holechovsky is directed to an adhesive composition that is irrelevant to
Mercando’s foams, that the Examiner has not shown Mercando’s polyols are
equivalent to those required by Holechovsky so that MPDiol is suitable for
usage with Mercando, and that the use of MPDiol in Mercando would
change its principle of operation, rendering it unsatisfactory for its intended
purpose. Id. at 8—9; see also id. at 17—21; Reply Br. 3^4. Appellants also
argue that Holechovsky achieves elongation results that are typically inferior
to those achieved by Mercando. Appeal Br. 11—12; see also Reply Br. 5—6.
These arguments are unpersuasive of reversible error in the
Examiner’s rejection. “The combination of familiar elements according to
known methods is likely to be obvious when it does no more than yield
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Application 11/451,176
predictable results.” KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007).
The Examiner has persuasively found that Holechovsky teaches that MPDiol
is an excellent chain extender that yields increases in elongation in the
context of making a flexible polyurethane foam, and that a person of
ordinary skill in the art would have been motivated to select MPDiol from
among various available chain extenders in order to increase resistance to
breakage. Final Action 13.
To the extent that Holechovsky’s compositions achieve inferior
elongation to Mercando, it is not pertinent to compare the results of
Holechovsky with those of Mercando, because the Examiner cites
Holechovsky not for its entire composition, but for its teaching to select
MPDiol as a suitable chain extender to improve elongation values of
polyurethane foams. See Answer 22—23; see also In re Keller, 642 F.2d 413,
425 (CCPA 1981) (“The test for obviousness is . . . what the combined
teachings of the references would have suggested to those of ordinary skill
in the art.”)
Appellants do not point to sufficient persuasive factual evidence that a
person of ordinary skill in the art would have understood that using MPDiol
(as opposed to other chain extenders such as, e.g., ethylene glycol or
butanediol, see Mercando 3:56—58) would render Mercando unsuitable for
its intended purpose. A preponderance of the evidence on this record
supports the Examiner’s rationale for combining Mercando and
Holechovsky, and Appellants have not pointed to persuasive evidence that
the art teaches away from this combination.
Claims 27 and 46 recite “wherein the foam has a tear strength of
greater than 200N/m and a density of about 16 to about 65 kg/m3.” Appeal
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Br. 27, 29. The Examiner finds that Mercando teaches a density of 16—
48 g/m3, which is encompassed by the recited range. Final Action 13 (citing
Mercando 3:63—64). While the Examiner finds that Mercando is silent
regarding the tear strength, the Examiner finds that the prior art “teaches a
process using the claimed steps, claimed processing conditions, and the
claimed ingredients.” Final Action 14. Therefore, the Examiner determines
with respect to claim 27 that “the claimed effects and physical properties—
i.e. a foam with the claimed tear strength and elongation[12]—would
implicitly be achieved.” Id. (citing In re Spada, 911 F.2d 705, 709 (Fed. Cir.
1990)).
The Examiner does not repeat the above discussion with respect to the
tear strength limitation under the heading for claim 46. Final Action 15—16.
However, the tear strength limitation in claim 46 is identical to that in claim
27, and the two claims are sufficiently similar that Appellants were on notice
of the Examiner’s rationale with respect to that limitation and its
applicability to claim 46 as well as claim 27.
Appellants argue that the tear strength value in Mercando is for a
composition in which MPDiol is absent. See Appeal Br. 18, 20. In
response, the Examiner states that Mercando teaches chain extenders in
general, and that “[t]he density of foam disclosed by Mercando et al. is
therefore achieved even when chain extenders, e.g., MPDiol, are included in
the formulation.” Answer 27. The Examiner’s rationale is persuasive, and
12 Claim 30 depends from claim 27 and recites “wherein the foam has an
elongation of greater than 100%.” Appeal Br. 27. While Appellants do not
specifically argue claim 30, see id. at 18—19, the Examiner’s rejection
determines (and we agree) that the prior art motivates the tear strength and
elongation limitations based on the same rationale. See Final Action 14.
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Appellants do not point to contrary evidence specifically addressing this
rationale in the Reply Brief.
Regarding Claims 27, 46, and 47, Appellants also argue that
Holechovsky’s process and composition are incompatible with the steps of
molding and removing from a mold. See Appeal Br. 18, 20, 21. However,
as the Examiner persuasively explains in the Answer, the rejection does not
cite Holechovsky for its process and composition, but for the teaching of
selecting MPDiol as a suitable chain extender. Answer 28 (citing In re
Keller, 642 F.2d at 425).
Claims 46 and 47 recite a glycol diluent, see Appeal Br. 29, and the
Examiner finds that Mercando does not teach the recited diluent, but
“Baskent et al. teaches tertiary amine catalysts may be provided to
polyurethane foam forming composition in carrier solvents such as
dipropylene glycol.” Final Action 6 (citing Baskent 8:50-55). The
Examiner determines that
[a]t the time of invention, it would have been obvious to a person
of ordinary skill in the art to provide the tertiary amine catalyst
in Mercando et al. in a carrier solvent, such as dipropylene gly­
col, as taught by Baskent et al. The motivation would have been
that providing the catalyst in carrier solvent would provide ad­
vantages such as ensuring homogenous blending of the catalyst
with the other components of the pre-mix.
Id. at 6—7.
Appellants argue that “[although Baskent does disclose certain
solvents, such solvents are taught for usage with a hydroxyalkylpiperazine
containing catalyst,” and not a catalyst using MPDiol. Appeal Br. 12.
Appellants also argue that the Examiner has not shown Baskent’s carrier
solvent is suitable or would provide the alleged benefit, and that Baskent’s
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method does not disclose a method for making pre-mix. Id. at 12—13; see
also id. at 19—21.
This argument is not persuasive of reversible error, because the test for
obviousness does not require Baskent to disclose all the benefits or features
of the claimed invention. See In re Keller, 642 F.2d at 425. The Examiner
cites Baskent for what it would have taught a person of ordinary skill in the
art regarding the use of a carrier solvent such as dipropylene glycol in a
method as taught by the combination of Mercando and Holechovsky. See
Answer 23. We find the Examiner’s rationale for combining Baskent with
Mercando and Holechovsky persuasive.
For the above reasons, we affirm the Examiner’s rejections of
claims 27, 30, and 46-49.
DECISION
We affirm the Examiner’s rejection of claim 23 under 35 U.S.C. § 112,
second paragraph, and reverse the Examiner’s rejection of claim 23 under
35 U.S.C. § 103(a).
We affirm the Examiner’s rejections of claims 27, 30, and 46-49.
We reverse the Examiner’s rejections of claims 11—13, 16, 17, 19, 20,
24, 26, 31—34, 36-42, 44, and 50-53 on all grounds.
No time period for taking any subsequent action in connection with
this appeal maybe extended. See 37 C.F.R. § 1.136(a)(l)(iv) (2016).
AFFIRMED-IN-PART
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