Ex Parte Flanigan et al

Patent Trial and Appeal Board

Jul 11, 2013

11160279 (P.T.A.B. Jul. 11, 2013)

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.
11/160,279 06/16/2005 Cynthia Flanigan 81104267 1278
28395 7590 07/12/2013
BROOKS KUSHMAN P.C./FGTL
1000 TOWN CENTER
22ND FLOOR
SOUTHFIELD, MI 48075-1238
EXAMINER
SALVITTI, MICHAEL A
ART UNIT PAPER NUMBER
1767
MAIL DATE DELIVERY MODE
07/12/2013 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 FORD GLOBAL TECHNOLOGIES, LLC
Inventors: Cynthia Flanigan, Deborah Mielewski
and Christine Perry
____________________

Appeal 2012-005688
Application 11/160,279
Technology Center 1700
____________________

Before FRED E. McKELVEY, HUBERT C. LORIN, and
SALLY GARDNER LANE, Administrative Patent Judges.

McKELVEY, Administrative Patent Judge.

DECISION ON APPEAL

Statement of the case
Ford Global Technologies, LLC (“applicant”), the real party in interest 1
(Brief, page 2), seeks review under 35 U.S.C. § 134(a) of a final rejection 2
dated 4 January 2011. 3
The application on appeal was filed in the USPTO on 16 June 2005. 4
The application on appeal claims priority of U.S. Provisional 5
Application 60/581,318, filed 18 June 2004. 6

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The application has been published as U.S. Patent Application 1
Publication 2005/0282921 A1. 2
In support of prior art rejections, the Examiner relies on the following 3
evidence. 4

Clatty

U.S. Patent Application Publication
2003/0083394 A1

01 May 2003

Kurth

U.S. Patent Application Publication
2003/0105178 A1

05 June 2003

Applicant does not contest the prior art status of the Examiner’s 5
evidence, all of which is prior art under 35 U.S.C. § 102(b). 6
Applicant relies on the following evidence. 7

Flanigan 1

Declaration under 37 C.F.R. 1.132

Dated:
12 Mar. 2009

Flanigan 2

Supplemental Declaration under
37 C.F.R. 1.132

Dated:
22 Oct. 2010

We mention the following additional evidence in this opinion. 8

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Saunders and
Frisch
“Saunders”

POLYURETHANES
CHEMISTRY AND TECHNOLOGY, PART II
page 4

1964

Stevens

POLYMER CHEMISTRY (2d ed.),
pages 444-445

1990

Szycher

SZYCHER’S HANDBOOK OF POLYURETHANES
pages 7-13 to 7-14

1999

Mielewski et al.
“Mielewski”

INDUSTRIAL BIOTECHNOLOGY
Soybean oil auto applications,
pages 32-34

Spring
2005

We have jurisdiction under 35 U.S.C. § 134(a). 1
Claims on appeal 2
Claims 21-26, 29-31, and 33-43 are on appeal. Brief, page 1. 3
The rejections 4
In the Answer, the Examiner has maintained the following rejections: 5
Rejection 1: Claims 21-26 stand rejected as being unpatentable 6
under § 103 over Kurth and Clatty. Answer, page 5. 7
In presenting the appeal, applicant does not argue the separate 8
patentability of Claims 22-26 apart from Claim 21. Accordingly, the 9
appeal of Rejection 1 will be decided on the basis of Claim 21. 37 C.F.R. 10
§ 41.37(c)(1)(vii) (2011). 11

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Rejection 2: Claims 29-31 and 33-40 stand rejected as being 1
unpatentable under § 103 over Kurth and Clatty. Answer, page 7. 2
In presenting the appeal, applicant does not argue the separate 3
patentability of claims 30-31 and 33-40 apart from Claim 29. Accordingly, 4
the appeal of Rejection 2 will be decided on the basis of Claim 29. 5
37 C.F.R. § 41.37(c)(1)(vii) (2011). 6
Rejection 3: Claims 41-43 stand rejected as being unpatentable 7
under § 103 over Kurth. Answer, page 10. 8
In presenting the appeal, applicant does not argue the separate 9
patentability of Claims 41-43 apart from Claim 41. Accordingly, the 10
appeal of Rejection 3 will be decided on the basis of Claim 41. 37 C.F.R. 11
§ 41.37(c)(1)(vii) (2011). 12
Invention 13
The invention relates to a method for making a soy-based flexible 14
polyurethane foam. The foam is said to be especially suited for automobile 15
interior applications. Specification, ¶ 0003.1 16
Flexible, polyurethane foams have been extensively used in the 17
auto industry for applications such as seating, soft instrument panels, 18
armrest and headrests and head liners. On average, 35 pounds of flexible 19
foam are used per vehicle. Specification, ¶ 0005. 20

1 References to the Specification are to the Specification, as filed, and not
the Specification as published.

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Production of urethane foams is well known in the art. Urethanes are 1
made by reacting isocyanates (having ─NCO groups) and polyols (having 2
─OH groups). Specification, ¶ 0006. 3
Polyols used in making polyurethane foams commonly have been 4
made from petrochemicals. According to applicant, use of petrochemical 5
derived polyols is not desirable for a variety of reasons. First, 6
petrochemicals are a non-renewable resource. Second, production of a 7
polyol may require a great deal of energy and expense. Specification 8
¶ 0009. 9
According to applicant, long-term economic instability and limited 10
reserves of fossil fuels and oils have led to ongoing investigations into 11
using renewable resources as a source for foams. As part of that 12
investigation, soy-based polyols have been developed as an alternative to 13
petroleum-based polyols. Soy-based polyols are said to be considered a 14
good alternative to petroleum-based polyols for polyurethane production. 15
Soy-based polyols can offer cost advantages as well as alleviate the 16
environmental concerns associated with petroleum-based polyols. 17
Specification, ¶ 0010 (as amended). 18
While soy-based polyurethane foams are said to have made inroads 19
into various polyurethane foam markets, the use of soy-based polyurethane 20
foam has not gained acceptance in the auto industry. According to 21
applicant, the lack of acceptance is because soy-based polyurethane 22
foams have not been able to meet what applicant refers to as “the stringent 23

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specification requirements for use in automotive interior components.” 1
Specification, ¶ 0011.2 2
Among the automotive interior specification requirements that are 3
said to be necessary are: 4
(1) a density of at least 35 kg/m3, 5
(2) a compression set at 50 percent deflection of less 6
than 14%, 7
(3) a tensile strength greater than 110 kPa, 8
(4) an elongation of greater than 95 percent, and 9
(5) a tear resistance greater than 170 N/m. 10
Id. 11
The Specification does not reveal whether the noted requirements 12
are (1) industry standards, (2) Ford Motor Co. standards or (3) standards 13
which the inventors believe would be desirable. 14
The polyurethane foams of the invention can be prepared by reacting 15
(1) what is known in the art as an A-side reactant with (2) what is known as 16
a B-side reactant. The A-side reactant is generally considered to include 17
an isocyanate. Diisocyanates typically used are diphenylmethane 18
diisocyanate (MDI) or toluene diisocyanate (TDI). Applicant advises that 19
the particular isocyanates chosen will depend upon the particular final 20
physical properties desired in the urethane. Specification, ¶ 0056. 21

2 For more information regarding development of the invention, we refer
the reader to Mielewski.

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The B-side reactant generally comprises (1) an isocyanate-reactive 1
component, such as polyether polyol or polyester, (2) cross-linking agent 2
and (3) a blowing agent. Specification, ¶ 0057. 3
The Specification contains one example. ¶¶ 105-123. 4
In that example, an A-side reaction mixture is reacted with a B-side 5
reaction mixture to form soy-based polyurethane foam. The B-side 6
components are blended with a 2300 rpm [revolutions per minute] stirring 7
head mixer before adding the A-side components. After the A-side 8
components have been added, the stirring continues for 10 seconds 9
producing a viscous blend. The viscous blend is then poured into a heated 10
aluminum box, such as one that is 15 x 15 x 4 inches, and sealed with a lid 11
and clamps. The foam is cured at 70 ºC. for 10 minutes, followed by room 12
temperature curing for 48 hours before sectioning. Specification, ¶ 0105. 13
The A-side consists of: 14
Component Parts by weight
Mondur® MRS-20
(a diphenylmethane diisocyanate (MDI)
having an NCO content of 32.4 wt.%
available from Bayer)

100

Specification, ¶ 0109. 15

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The B-side consists of: 1
Component Parts by weight
SoyOyl® P38N
(a polyol made from unmodified soy bean
oil having a functionality of two available
from Urethane Soy Company (USSC)

36
Multranol 3901
(a polyoxypropylene triol modified with
ethylene oxide and having a functionality
of three available from Bayer)

22

Multranol 5168
(a polypropylene oxide diol modified with
ethylene oxide having a functionality of two
available from Bayer)

32
Water 3.35
DEOA
(diethanolamine having a functionality of
three3 available from Aldrich)

0.35
Tegostab 8715LF
(silicone surfactant available from
Degussa)

1.38
Dabco 59434
(a silicone glycol compolymer surfactant
available from Air Products)

0.06
NIAX A-1
(catalyst)

0.17
NIAX A-4
(catalyst)

0.5

3 Two of the functional groups are hydroxyl groups and the third is a
secondary amine group.

4 Dabco 5943, also identified as DC5934 (¶ 0116), listed twice (¶ 0108,
seventh and last item) in Table 1 of the Specification setting out the
components of the B-side. We suspect that the second listing is an
oversight and that applicant probably intended to list 5943 only one time.

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Dabco 33-LV
(catalyst)

0.75
Multranol 9199
(a polyol having an OH number of 37
and a functionality of three
available from Bayer)

3.44

The Specification reports that the foam produced is said to have the 1
following properties: 2

Density
(kg/m3)
Compression
Set at 50%
Deflection
Tensile
Strength kPa

Elongation (%)
Tear
Resistance
N/m
37 11 113 100 190

The listed properties fall within the scope of “suitable” “mechanical 3
properties” listed in Claim 1. Compression set, tensile strength and 4
elongation are determined using ASTM Standard D3574. Specification, 5
¶¶ 0100 – 0101. Insofar as we can tell, the Specification does not reveal 6
what standard is used to determined density or tear resistance. 7
Claim 21 8
Independent Claim 21, which we reproduce from the Claim Appendix 9
of the Brief (Appendix page 1), reads [matter in brackets and some 10
indentation added; limitations in dispute in italics]: 11
A process for producing a flexible, open cell, polyurethane 12
foam, the process comprising [the steps of]: 13

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[1] providing an A-side reactant including a TDI [toluene 1
diisocyanate] based isocyanate; 2
[2] providing a B-side reactant including [a] a blown soy 3
oil, [b] a petroleum based polyol, [c] a blowing agent, [d] a 4
cross-linking agent, and [e] a silicone surfactant or a 5
combination of silicone surfactants; and 6
[3] reacting the A-side reactant with the B-side reactant 7
under reaction conditions to produce a flexible, open cell, 8
polyurethane foam characterized by a number of mechanical 9
properties suitable for automotive applications, 10
the number of mechanical properties suitable for 11
automotive application includes: 12
[a] a suitable density range, 13
[b] a suitable compression set range, 14
[c] a suitable tensile strength range, 15
[d] a suitable elongation range and 16
[e] a suitable tear resistance range, 17
the suitable density range is greater than 35 kg/m3, 18
the suitable compression set range is less than 14% at 19
50 percent deflection, 20
the suitable tensile strength range is greater than 110 21
kPa, 22
the suitable elongation range is greater than 95%, and 23

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the [suitable] tear resistance range is greater than 1
170 N/m. 2
Claim 29 3
Independent Claim 29 is similar to Claim 21 with at least the following 4
differences being noted: 5
(1) In the corresponding to step [1], the isocyanate is identified 6
as “including an isocyanate” whereas in Claim 21 the isocyanate must 7
include a TDI isocyanate. 8
(2) Claim 29 adds the limitation “wherein a suitable isocyanate 9
index of 80 to 310 for the isocyanate yields the number of mechanical 10
properties suitable for automotive applications.” 11
Claim 41 12
Independent Claim 41 is similar to Claim 21 with at least the following 13
differences being noted. 14
(1) In the corresponding to step [1], the isocyanate is identified 15
as “including an isocyanate” whereas in Claim 21 the isocyanate must 16
include a TDI isocyanate. Claim 29 therefore includes the use of both TDI 17
and MDI (diphenylmethane diisocyanate). See dependent Claims 35-36. 18
Claim 41 adds the limitation “wherein the blown natural oil is present 19
in an amount of 5 – 75 % by weight, based on the total of the A-side and 20
B-side reactants” and calls for use of a surfactant. 21

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Analysis 1
Rejection 1 2
Prima facie obviousness 3
The Examiner found (Answer, page 5) that Kurth describes a process 4
for making a flexible polyurethane foam (¶ 0021) with open cells having a 5
density of 1-45 lb/ft3 (equivalent to 16 -720 kg/m3) (¶¶ 0033-0034). 6
The foam is made by combining an A-side reactant, comprising an 7
isocyanate, and a B-side reactant (¶¶ 0024 and 0034). 8
The B-side reactant may include (1) blown soy oil (¶¶ 0026-0027), 9
(2) a petroleum-based polyol (¶ 0036), (3) a cross-linking agent (¶ 0026), 10
(4) a blowing agent (¶ 0026), a silicone surfactant (¶ 0031) and (6) a 11
catalyst (¶ 0030). 12
Addressing a first difference between the subject matter of Claim 21 13
and Kurth, the Examiner found that Kurth does not explicitly describe the 14
use of an A-side comprising TDI isocyanate. Answer, page 5. Kurth 15
teaches the following with respect to the isocyanate (¶ 0024) (italics 16
added): 17
The A-side isocyanate reactant of the urethane . . . is 18
preferably comprised of an isocyanate chosen from a number 19
of suitable isocyanates as are generally known in the art. 20
Different isocyanates may be selected to create different 21
properties in the final product. The A-side reactant of the 22
urethane of the invention comprises diisocyanate; 23
4,4' diphenylmethane diisocyanate (4,4’-MDI) ; 24

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2,4 diphenylmethane diisocyanate; and modified 1
diphenylmethane diisocyanate. Preferably, a modified 2
diphenylmethane diisocyanate is used. It should be understood 3
that mixtures of different isocyanates may also be used. 4
The Examiner turned to Clatty to establish that one skilled in the art 5
would have known that TDI isocyantes can be used to make polyurethane 6
foams. Answer, pages 5-6; Clatty, ¶¶ 0066-0068. 7
Based on the known use of TDI isocyanates to make polyurethane 8
foams, the Examiner reasoned that one skilled in the art would have found 9
it obvious to use TDI isocyantes in the process described by Kurth. 10
Applicant believes otherwise bottoming its case on the fact that Clatty 11
describes rigid foams (¶ 0025), whereas the claimed invention relates to 12
flexible foams. Brief, page 6. Applicant also notes that Kurth is not 13
restricted to flexible foams, but instead describes flexible, semi-flexible and 14
rigid foams. Id., Kurth, § 0021. Accordingly, applicant argues that one 15
skilled in the art “would not be motivated to combine Kurth and Clatty to 16
produce a flexible, open cell foam . . .” Brief, page 6 (italics in original). In 17
this post-KSR5 era, we construe applicant’s argument to be that one skilled 18
in the art would not have had a reason to use TDI in the Kurth process. 19
We agree with the Examiner. The fact that Kurth describes flexible, 20
semi-flexible and rigid foams does not mean one skilled in the art would not 21
have appreciated that portion of Kurth describing flexible foams. See 22

5 KSR Int’l Co. v. Teleflex Co., 550 U.S. 398 (2007).

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Example 20 describing a flexible foam having good properties. Nor does 1
the fact that Clatty relates generally to rigid foams minimize the fact that 2
Clatty describes TDI as a known isocyanate. Kurth reveals that known 3
isocyanates can be used in its method. 4
We find applicant’s TDI difference argument curious in view of 5
inventor Flanigan’s involvement in the development of flexible polyurethane 6
foams for nine (9) years as of 22 October 2010 (Flanigan Declaration 2 7
dated 22 October 2010, ¶ 1). We assume based on her extensive 8
experience in the field that Flanigan, as well as those skilled in the art, 9
would have known that TDI is an isocyanate has been used to make 10
flexible foams. See (1) Saunders and (2) Stevens. Saunders reveals that 11
as early as 1964, flexible foams and that “for all practical purposes tolylene 12
diisocyanate [TDI] enjoys a preponderant position in this field.” Stevens in 13
1990 teaches that TDI is ‘[m]ost commonly used” to make flexible foams 14
(page 445). In 1999, Szycher reveals the use of TDI to make flexible 15
foams. 16
The TDI limitation of Claim 21 does not render the subject matter of 17
that claim non-obvious over the prior art. Applicant is using a known 18
diisocyanate for one of its intended purposes—to make a flexible 19
polyurethane foam. 20
The Examiner recognized another difference: Kurth does not 21
explicitly describe the claimed compression set, tensile strength, elongation 22
and tear resistance. Answer, page 6. The Examiner found that Kurth 23
teaches the use of the ingredients and process conditions claimed by 24

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applicant. Id. In the Examiner’s opinion, it followed that the properties 1
“would implicitly be achieved by carry out the . . . process [described by 2
Kurth]. Id. In responding to applicant’s arguments, the Examiner points out 3
that if the prior art describes a structure identical to that claimed, then the 4
prior art structure would be expected to have the same properties as the 5
claimed structure, citing In re Spada, 911 F.2d 705, 709 (Fed. Cir. 1990). 6
Answer, page 16. 7
Kurth was concerned with achieving a satisfactory balance of 8
properties and recognized that polyurethane foams are used in the 9
automobiles. ¶ 0002. While somewhat unusual in an ex parte context, 10
Kurth provides considerable evidence on the level of skill in the art. 11
Desired properties are a function inter alia of the formulation used to make 12
a foam. ¶ 0003. Variables include the type and amounts of each of the 13
reactants. Id. The molecular weight and functionality of the polyol and 14
isocyanate are relevant. ¶ 0018. Cell opening is a function of the 15
surfactant used. ¶ 0031. However, the evidence related to the level of skill 16
in the art which we regard as significant appears in the Kurth examples. 17
While we refer the reader to all of those examples, we one skilled in the art 18
is taught that experimentation often is needed to determine optimal 19
properties. Note the progress of improvements as one starts with 20
Example 1 working up to Example 20: 21
(1) Example 1 (foam remained tacky), 22
(2) Example 4 (foam was weak in tensile strength), 23
(3) Example 7 (low tensile strength but a better density), 24

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(4) Example 13 (good properties), 1
(5) Example 17 (good foam with good flexibility, high density, 2
but still needs tensile improvements), 3
(6) Example 20 (foam was very good foam having uniform cell 4
size, good flex, moderate density, good rebound and higher 5
tensile strength). 6
Additional evidence teaching one skilled in the art the relevance of 7
starting material variables for making flexible foams appears in Kurth 8
¶ 0037. 9
Kurth shows that one skilled in the art is capable of experimentation, 10
and actually experiments, to make foams with desired properties. 11
The Kurth evidence is not inconsistent with what we have been told 12
by applicant. In describing the background, applicant advised that the final 13
foam density and rigidity may be controlled by varying the amount or type 14
of blowing agent. Specification, ¶ 7. Cross-linking agents promote 15
chemical cross-linking to result in a structured foam. ¶ 0008. Catalysts 16
controlled reaction kinetics to help tailor the final product qualities. Id. 17
To make a long story short, a person in this art has considerable skill 18
to manipulate variables to achieve desired results. 19
Applicant has not shown that the examples embodying Kurth’s 20
ultimate object fail to achieve the properties set on in Claim 21. The PTO, 21
of course, has no means to repeat the Kurth examples and measure 22
properties. In re Spada, supra. 23

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We hold that a prima facie case of obviousness has been 1
established. 2
Evidence of commercial success 3
Applicant has submitted Rule 132 testimony of inventor Cynthia M. 4
Flanigan. Flanigan 1 and Flanigan 2. 5
As of 2010, Inventor Flanigan had been involved in the development 6
of flexible polyurethane foams for about nine (9) years. Flanigan 2, ¶ 1. 7
Inventor Flanigan testified that she (along with her co-inventors) 8
“devised a process for producing a flexible, open cell, soy-based 9
polyurethane foam possession mechanical properties suitable for 10
automotive applications.” Flanigan 2, ¶ 2. The process is said to be 11
“recited in the currently pending claims . . .” Id. 12
Based on her experience, “there has been a long-felt need for a 13
process for producing a flexible open cell, soy-based polyurethane foam 14
possessing mechanical properties suitable for automotive applications.” 15
Flanigan 2, ¶ 3. We decline to give much weight to the long-felt need 16
testimony because there is no convincing explanation of the factual basis in 17
support of the long-felt need for soy-based foams. Likewise, there is no 18
detailed explanation of why “[s]oy-based polyols had not been used” and 19
precisely what “stringent specification requirements” were not being met 20
with foams produced from soy-based polyols. In particular, we note that 21
Inventor Flanigan does not discuss any foam described by Kurth—including 22
for example the foam of Kurth Example 20. We recognize that Inventor 23
Flanigan testified that there is a desire to lessen dependence on fossil fuel 24

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polyols. However, that recognition is also taught by Kurth (¶ 0008). Lastly, 1
the evidence will not credibly support a finding that those attempting to 2
solve the long-felt need were aware of the prior art and failed to do so. 3
Toledo Pressed Steel Co. v. Standard Parts, Inc., 307 U.S. 350, 356 (1939) 4
("[b]ut it does not appear that either was familiar with the relevant prior 5
art"); In re Allen, 324 F.2d 993, 997 (CCPA 1963) (while appellant's 6
arguments imply that there may be been an unsolved problem in the art, an 7
allegation to this effect is not evidence of unobviousness unless it is shown, 8
as was not done here, that [1] the widespread efforts of [2] skilled workers 9
[3] having knowledge of the prior art [4] had failed to find a solution to the 10
problem). Kurth seems to have addressed and solved at least part, if not 11
all, of the problem. 12
Inventor Flanigan’s employer, identified as “Ford”, contracted with 13
Lear Corp., characterized as a “tier one auto supplier,” to make soy-based 14
flexible polyurethane foam for seat cushions, which are said to be 15
“consistent with the claimed invention, for the model year 2008 Ford 16
Mustang vehicle.” Flanigan 2, ¶ 4. We give little weight to this testimony. 17
Inventor Flanigan does not describe the ingredients or the process 18
conditions used to make the Lear foam. Moreover, any testimony by 19
inventor Flanigan as to what was done at Lear facially is hearsay. 20
Accordingly, we are in no position to determine whether the Lear-made 21
foam falls within the scope of the invention described in the Specification or 22
covered by Claim 21. For example, Inventor Flanigan does not state the 23

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density, compression set, tensile strength, elongation range or tear 1
resistance of the foam purchased from Lear. 2
Commercial success is a relevant consideration in evaluating 3
obviousness. Commercial success can be accorded weight in an ex parte 4
case when it can be shown that there is a nexus between a commercial 5
article sold and the invention sought to be patented. In re GPAC, Inc., 6
57 F.3d 1573, 1576 (Fed. Cir. 1995) (prima facie case of nexus is generally 7
made out when the inventor shows both that there is commercial success 8
and that the thing (product or method) that is commercially successful is 9
the invention disclosed and claimed in the application). In this case, it has 10
not been shown that the “thing” made by Lear is the claimed invention. 11
Also of concern is whether commercial success of the precise Lear-12
made foam, assuming it had been established, would justify broad claims. 13
Commercial success of foam embodiment in this ex parte case would not 14
appear to establish commercial success commensurate in scope with the 15
breath of Claim 21. In re Tiffin, 448 F.2d 791 (CCPA 1971); In re Law, 16
303 F.2d 951, 954 (CCPA 1962). 17
Inventor Flanigan testified that Ford purchased about 2.4 million 18
pounds of soy-based foam (presumably from Lear) for using in making 19
120,000 Ford Mustangs. Flanigan 2, ¶¶ 6- 7. However, as discussed 20
above, we do not feel comfortable finding based on the testimony that the 21
soy-based foam purchased was made by a process failing within the scope 22
of Claim 21. 23

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In Inventor Flanigan’s opinion, “[t]he claimed process steps are 1
responsible for the commercial success of the soy-based foam . . .” the 2
opinion apparently is based on the sale of the 2.4 million pounds of soy-3
based foam previously mentioned. 4
The Examiner found that applicant has not established a nexus 5
between the soy-based product sold and the method sought to be 6
patented. Applicant argues that commercial success of the product can 7
enure to the benefit of a claimed method for making the product. We will 8
assume that applicant is correct. Demaco Corp. v. F. Von Langsdorff 9
Licensing, Ltd., 851 F.2d 1387, 1392 (Fed. Cir. 1988) (in infringement 10
context); In re GPAC, Inc., supra at 1580 (ex parte examination context). 11
Commercial success based on sales of soy-based foam may be a 12
basis for establishing commercial success of the method used for making 13
the foam. Cf. Tec air, Inc. v. Denso Mfg. Mich. Inc., 192 F.3d 1353, 1360-14
1361 (Fed. Cir. 1999). However, as noted earlier, we do not have sufficient 15
details concerning the method used by Lear to make soy-based foams to 16
evaluate whether that method falls within the scope of Claim 21 or how in 17
this ex parte context that method would be commensurate in scope with the 18
breadth of Claim 21. 19
The Examiner was also concerned about “market share”. Answer, 20
page 19. “The fact that the assignee [Ford] used the foam, in a vacuum 21
[perhaps a market test run in 2008 Mustangs] provides little illumination as 22
to the foams success in the broader market.” There is no credible evidence 23
that use of foams allegedly made by the claimed method were ever used 24

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again. On the record before us, use of the Lear foam in 2008 Mustangs 1
may have been a “one time” use. 2
Obviousness determination 3
In resolving obviousness, we consider all the evidence to determine, 4
as a matter of law, whether the claimed subject matter would have been 5
obvious. In re Cyclobenzaprine Hydrochloride Estended-Release Capsule 6
Patent Litigation, 676 F.3d 1063, 1075-1080 (Fed. Cir. 2012) (long-felt 7
need and commercial success should be considered in making ultimate 8
decision made on obviousness). In this case, the Examiner has made out 9
a prima facie case of obviousness. While applicant has submitted 10
evidence which it says demonstrates a long-felt need and commercial 11
success, we find that the evidence does not support either a credible 12
long-felt need or commercial success. Under the facts of this case we are 13
left essentially with only a prima facie case of obviousness. 14
Rejection 1 is affirmed. 15
Rejection 2 16
Claim 29 is broader than Claim 21 in that it is not limited to the use of 17
TDI. Rather, it calls for use of “an isocyanate”. 18
It adds a limitation calling for an isocyanate index of 80 to 130. Clatty 19
describes the claimed isocyanate index. ¶ 0071. 20
Applicant argues that one skilled in the art would not have had a 21
reason to use any teaching of Clatty (directed to rigid foam) to modify 22
Kurth. Brief, page 7. 23

Appeal 2012-005688
Application 11/160,279

22

An isocyanate index expresses a ratio A-side isocyanate to B-side 1
hydroxyl containing elements. Specification, ¶ 0093. Not addressed by 2
applicant is Kurth Example 20. Both applicant and Kurth report obtaining 3
good flexible foams. On that basis, applicant has not shown that one 4
skilled in the art would not believe the ratio of isocyanate to polyol of Kurth 5
Example 20 meets the claimed isocyanate index. Moreover, Kurth teaches 6
that the ratio of A-side to B-side reactants can vary from 35 to 85 parts of 7
A-side for each 100 parts of B-side reactants. ¶ 0036. Based on Kurth, 8
one skilled in the art would have been able to determine an appropriate 9
isocyanate index to be used to make good foams. 10
Rejection 2 is affirmed. 11
Rejection 3 12
Claim 41 calls for (1) the blown natural oil to be present in an amount 13
of 5-75% by weight based on the total weight of the A-side and B-side 14
reactants and (2) the use of a surfactant. Use of surfactants to make 15
flexible polyurethane foams is well-known. Kurth, ¶ 0031. 16
The Examiner has addressed the amount of blown natural oil to be 17
used. Answer, pages 11-12. In addressing Claim 41, applicant does not 18
set out any cogent “basis” explaining why the Examiner erred. 37 C.F.R. 19
§ 41.37(c)(1)(vii) (2011) (in an appeal brief, applicant should set out the 20
“contentions . . . with respect to each . . . rejection . . . and the basis 21
therefor . . .”) (italics added). 22
Rejection 3 is affirmed. 23

Appeal 2012-005688
Application 11/160,279

23

Other arguments 1
We have considered applicant’s remaining arguments and find 2
none that warrant reversal of the Examiner’s rejections. Cf. In re Antor 3
Media Corp., 689 F.3d 1282, 1294 (Fed. Cir. 2012). 4
Decision 5
Upon consideration of the appeal, and for the reasons given herein, it 6
is 7
ORDERED that the decision of the Examiner rejecting the 8
claimed on appeal under § 103 over the prior art is affirmed. 9
FURTHER ORDERED that no time period for taking any 10
subsequent action in connection with this appeal may be extended under 11
37 C.F.R. § 1.136(a)(1)(iv). 12
AFFIRMED 13
14
cam 15