Ex Parte Eling et al

Patent Trial and Appeal BoardJan 6, 2017

13311777 (P.T.A.B. Jan. 6, 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. 13/311,777 12/06/2011 Berend Eling 074014-0454-286589 2462 123223 7590 01/10/2017 Drinker Biddle & Reath LLP (WM) 222 Delaware Avenue, Ste. 1410 Wilmington, DE 19801-1621 EXAMINER TRAN, THAO T ART UNIT PAPER NUMBER 1787 NOTIFICATION DATE DELIVERY MODE 01/10/2017 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): IPDocketWM @ dbr.com penelope. mongelluzzo @ dbr. com DB RIPDocket @ dbr. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte BEREND ELING, STEFAN AUFFARTH, and SHANE MCDONNELL Appeal 2015-007073 Application 13/311,777 Technology Center 1700 Before KAREN M. HASTINGS, N. WHITNEY WILSON, and AVELYN M. ROSS, Administrative Patent Judges. HASTINGS, Administrative Patent Judge. DECISION ON APPEAL Appellants1 seek our review under 35 U.S.C. § 134(a) of the Examiner’s decision rejecting claims 1, 6-8, 10-13, 18, and 19 under 35 U.S.C. § 103(a) over Reischl (US 4,843,105, pat. Jun. 27, 1989) with Vorlop (US 5,015,448, pat. May 14, 1991).2 We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We AFFIRM. 1 The real party in interest is stated to be BASF SE. (Br. 1). 2 The Examiner applies additional prior art to dependent claims 6—9, 13 and 21—26 (e.g., Ans. 6, 7; see also, Br. 1 for a full listing of the rejections). Appeal 2015-007073 Application 13/311,777 Independent claim 1 is illustrative of the subject matter on appeal (emphasis added to highlight key limitation in dispute): 1. A composite material comprising a binder and an aerogel, wherein the binder is the reaction product of a water- emulsifiable polyurethane-based prepolymer having free isocyanate groups with an aqueous system wherein the prepolymer is obtained by reacting a) an isocyanate with b) at least one polyol, optionally c) in the presence of an emulsification auxiliary or of a surfactant and the at least one polyol used is a mixture of at least a polyalkylene glycol and an alkoxylatedpolyalkylene glycol. ANALYSIS Upon consideration of the evidence on this record and each of Appellants’ contentions, we find that the preponderance of evidence supports the Examiner’s conclusion that the subject matter of Appellants’ claims is unpatentable over the applied prior art. We sustain the Examiner’s § 103 rejection essentially for the reasons set out by the Examiner in the Answer. We add the following primarily for emphasis. Appellants state that “all claims stand or fall with claim 1” (App. Br. 3). It has been established that “the [obviousness] analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR Int 7 Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). Likewise, it is also well settled that a reference stands for all of the specific teachings thereof as well as the 2 Appeal 2015-007073 Application 13/311,777 inferences one of ordinary skill in the art would have reasonably been expected to draw therefrom. See In reFritch, 972 F.2d 1260, 1264—65 (Fed. Cir. 1992). Appellants admit that Reischl describes the use of an alkoxylated polyoxyalkylene glycol as a type of polyol to prepare an isocyanate prepolymer (App. Br. 10). Nonetheless, Appellants then contend that there is no teaching or suggestion in Reischl of using an alkoxylated polyalkylene glycol without use of hindsight because a person of ordinary skill must select this from a list in Reischl and form a mixture of polyols (App. Br. 11; Reply Br. 3). Appellants’ argument is not persuasive of reversible error. Merely because a prior art reference discloses a multitude of effective compositions does not render any particular formulation less obvious. Merck & Co., Inc. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (affirming obviousness of composition selected from among more than 1200 compositions disclosed in patent). Furthermore, one of ordinary skill in the art would have readily inferred that the use of a mixture of two known polyols would have also been suitable. Cf. In re Kerkhoven, 626 F.2d 846, 850, (CCPA 1980) (“[i]t is generally considered prima facie obvious to combine two compounds each of which is taught by the prior art to be useful for the same purpose, in order to form a composition which is to be used for the very same purpose.”). In any event, Appellants have not shown reversible error in the Examiner’s reliance (if needed) on Reischl’s optional component (d) so as to render the use of a mixture of polyols obvious, noting the claims do not preclude the use of sulfonate functional groups (Ans. 5, 6; 3 Appeal 2015-007073 Application 13/311,777 Reply Br. 4 (Appellants argue for the first time that “no sulfonate functional groups are present” in their alkoxylated polyalkylene glycol)). One or ordinary skill would have also readily inferred that Reischl’s composite material may include aerogel from its disclosure that it may include silica/aerosil and silica sols (e.g., Ans. 6 (discussing Reischl col. 16, 11. 44—58 and Vorlop col. 7,11. 10-20 that states an aerogel is commercially available under the name Aerosil R 805 ®)). Indeed, Appellants admit that the use of aerogels in polyurethane foam was known (Spec. 2:1—7). An applicant cannot defeat an obviousness rejection by asserting that the cited references fail to teach or suggest elements which the applicant has acknowledged are taught by the prior art. Constant v. Advanced Micro- Device, Inc., 848 F. 2d 1560, 1570 (Fed. Cir. 1988) and In re Nomiya, 509 F.2d 566, 571 n.5 (CCPA 1975) (A statement by an applicant that certain matter is prior art is an admission that the matter is prior art for all purposes). Thus, Appellants’ arguments that the applied prior art does not teach or suggest the use of an aerogel filler is not persuasive (App. Br. 12— 14; Reply Br. 33). KSR Inti Co., 550 U.S. at 417 (“the predictable use of prior art elements according to their established functions” is normally prima facie obvious). 3 To the extent the Reply Brief argues for the first time that the claims require the aerogel to be fixed within the polyurethane, it is noted that any new arguments and new facts relied upon in the Reply Brief which were not raised or relied upon in the Appeal Brief will not be considered by the Board unless good cause is shown. 37 C.F.R. § 41.37(c)(l)(iv) (“Except as provided for in §§ 41.41, 41.47 and 41.52, any arguments or authorities not included in the appeal brief will be refused consideration by the Board for purposes of the present appeal.”). In any event, we fail to see where claim 1 requires the aerogel to be fixed within the polyurethane. 4 Appeal 2015-007073 Application 13/311,777 Accordingly, we affirm the Examiner’s prior art rejection of the claims under 35 U.S.C. § 103(a) for the reasons given above and presented by the Examiner. DECISION The Examiner’s § 103 rejection is affirmed. TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1). AFFIRMED 5