Ex Parte Hansen et al

Patent Trial and Appeal BoardSep 26, 2012

11816313 (P.T.A.B. Sep. 26, 2012)

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. 11/816,313 08/15/2007 Ralf Hansen 12810-00539-US 7768 23416 7590 09/26/2012 CONNOLLY BOVE LODGE & HUTZ, LLP P O BOX 2207 WILMINGTON, DE 19899 EXAMINER BROWN II, DAVID N ART UNIT PAPER NUMBER 1743 MAIL DATE DELIVERY MODE 09/26/2012 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 RALF HANSEN, PETER JACKISCH, and ELKE MARTEN ____________ Appeal 2011-003901 Application 11/816,313 Technology Center 2100 ____________ Before CATHERINE Q.TIMM, BEVERLY A. FRANKLIN, and MARK NAGUMO, Administrative Patent Judges. Opinion for the Board filed by Administrative Patent Judge FRANKLIN Opinion Dissenting filed by Administrative Patent Judge NAGUMO FRANKLIN, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134 from the Examiner's rejection of claims 11-20. We have jurisdiction under 35 U.S.C. § 6. STATEMENT OF THE CASE Claim 11 is representative of the subject matter on appeal and is set forth below: Appeal 2011-003901 Application 11/816,313 2 11. A process for preparing cellular polyurethane elastomers-based cylindrical moldings comprising reacting a prepolymer (i) comprising isocyanate groups with a crosslinking component (ii) in a mold, wherein said prepolymer (i) is based on methylenediphenyl diisocyanate and (bl) polyetherdiol having a molecular weight of from 1500 g/mol to 3000 g/mol and which is propylene oxide and/or ethylene oxide-based; wherein said crosslinking component (ii) comprises (b2) polyetheralcohol having a nominal functionality with respect to isocyanates of from 2 to 3, a molecular weight of from 1500 g/mol to 6000 g/mol and is propylene oxide and/or ethylene oxide-based, (c2) diol having a molecular weight of from 62 g/mol to 499 g/mol, (d) water, and (e) catalysts; wherein said prepolymer (i) and said crosslinking component (ii) are introduced into the mold by means of a high pressure machine which has a mixing head in which the components (i) and (ii) are mixed, wherein the output of said mixing head is from 15 to 60 g/s; and wherein said cellular polyurethane elastomers have a density, according to DIN EN ISO 1798, of from 350 to 800 kg/m3; a tensile strength, according to DIN EN ISO 1798, of greater than or equal to 2.0 N/mm2; an elongation, according to DIN EN ISO 1798, of greater than or equal to 200%; and a tear propagation resistance, according to DIN ISO 34-1 B, of greater than or equal to 8 N/mm. The prior art relied upon by the Examiner in rejecting the claims on appeal is: Rubens 3,662,043 May 9, 1972 Tilgner 4,218,203 Aug. 19, 1980 Clarke 4,390,644 Jun. 28, 1983 Wang 5,340,901 Aug. 23, 1994 Muller US 2004/0249107 A1 Dec. 9, 2004 THE REJECTIONS 1. Claims 11-18 are rejected as being obvious under 35 U.S.C. § 103(a) over Clarke and Wang in view of Tilgner. 2. Claim 19 is rejected as being obvious under 35 U.S.C. § 103 (a) over Clarke and Wang in view of Tilgner and further in view of Muller. Appeal 2011-003901 Application 11/816,313 3 3. Claim 20 is rejected as being obvious under 35 U.S.C. § 103(a) over Clarke and Wang in view of Tilgner and further in view of Rubens. ANALYSIS As an initial matter, Appellants have not presented separate arguments for all of the rejected claims. Rather, Appellants’ arguments are principally directed to independent claim 11. Any claim not separately argued will stand or fall with its respective independent claim. See 37 C.F.R. § 41.37(c)(1)(vii). We sustain the above rejections based on the findings of fact, conclusions of law, and rebuttals to arguments expressed by the Examiner in the Answer. We add that Appellants’ sole argument is that Wang is nonanalogous art because their invention is directed to making hollow moldings whereas Wang is directed to making an adhesive. Appellants argue that the Examiner’s characterization of the field of invention as being “polyurethane production” is therefore “unduly broad”. Br. 3-4. We are not convinced by such argument. Appellants’ Specification (p. 1, ll. 18-24) discloses that it is known that certain products for the automotive industry, such as shock absorbers, coil springs, and elastomer springs, are based on cellular, for example, microcellular polyisocyanate polyadducts, “usually polyurethanes and/or polyisocyanurates”, that are obtainable by “reacting isocyanates with compounds reactive toward isocyanates”. Reacting isocyanates with compounds reactive towards isocyanates is reasonably characterized by the Examiner as for “polyurethane production”, for the reasons expressed in the Appeal 2011-003901 Application 11/816,313 4 Answer, such that the characterization is not “unduly broad” as asserted by Appellants. Moreover, the question of whether the Wang is in the field of Appellants’ endeavor is secondary to the ultimate question of concern. The question that the nonanalogous art test seeks to answer is what is “prior art” as that term is used in 35 U.S.C. § 103(a). The scope and content of the prior art is one of the underlying factual inquiries of the obviousness determination. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). Those references that are nonanalogous art, i.e. “too remote to be treated as ‘prior art’,” are excluded from the obviousness analysis. In re Sovish, 769 F.2d 738, 741, 226 (Fed. Cir. 1985). The non-analogous art test provides helpful insight on the ultimate question of what is “prior art” within the meaning of the statute, however, we should not be blind to the reality of the circumstances of the case before us. Wood, 599 F.2d at 1036. Nor should we adhere to rigid and mandatory formulas that overly limit the inquiry. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 419 (2007). Here, the Examiner has relied upon Clarke as teaching a polyurethane formed from isocyanate and polyol that may be crosslinked. Clarke is silent with regard to the composition of useful crosslinking agents. One of ordinary skill in the art would necessarily have looked elsewhere to determine known crosslinking agents, and Wang teaches known crosslinking agents for crosslinking the type of polyols used in Clarke. One is merely using a known agent for its known function of crosslinking for its predictable result of forming crosslink bonds in a polyurethane composition. It is not disputed that the result of the combination is within the scope of Appellants’ claims. Appeal 2011-003901 Application 11/816,313 5 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 Appeal 2011-003901 Application 11/816,313 1 NAGUMO, Administrative Patent Judge, dissenting. I respectfully dissent. The Majority finds that Appellants’ “sole argument” is that Wang is nonanalogous art relative to the claimed invention. The Majority and the Examiner find that the commonality of the condensation reaction chemistry involved in making polyurethanes is sufficient to establish Wong as analogous art. These findings, however, fail to address the objection (Br. 4) that the claims require the production of a cellular polyurethane elastomer foam, whereas “Wong is directed to a two-component primerless modified urethane adhesive” that, “when cured, tend[s] to be highly crosslinked and, thus, quite stiff and inelastic.” (Br. 4, ll. 4-6; emphasis added.) To put the matter concretely, the claimed process is for preparing cellular polyurethane elastomers-based cylindrical moldings said to be useful for overload springs in automobile shock absorbers. (Spec. 1, ll. 18-24.) The required elastic property is express in representative claim 11, which states in most relevant part, “an elongation, according to DIN EN ISO 1798, of greater than or equal to 200%.” (Claims App., Br. 7.) In contrast, the adhesives disclosed by Wang are said to be useful for bonding automotive fiberglass reinforced parts (Wang col. 1, ll. 24-26), where elasticity would be detrimental. The problem addressed by Appellants is not merely crosslinking polyurethanes, generally, but crosslinking elastomeric polyurethanes. The overly broad focus of the Majority and the Examiner fails to explain why the artisan, when seeking to obtain highly elastic polyurethanes, would have Appeal 2011-003901 Application 11/816,313 2 looked to crosslinkers disclosed solely to be useful for obtaining highly inelastic polyurethane. Thus, there is on the present record no reasonable explanation of a reasonable expectation of obtaining improved elastomeric polyurethanes based on the teachings of the applied prior art references. On the present record, I would reverse the rejection for obviousness. sld