Ex Parte O

Patent Trial and Appeal Board

Aug 2, 2017

12875640 (P.T.A.B. Aug. 2, 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.
12/875,640 09/03/2010 Robert J. O'Leary 27544.04763 9642
13538 7590 08/04/2017
Calfee, Halter & Griswold LLP
The Calfee Building
1405 East Sixth Street
Cleveland, OH 44114-1607
EXAMINER
KRYLOVA, IRINA
ART UNIT PAPER NUMBER
1764
NOTIFICATION DATE DELIVERY MODE
08/04/2017 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):
ipdocket @ c alfee .com
bmgipdept@owenscorning.com
wfrick @ c alfee. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERT J. O’LEARY
Appeal 2017-000170
Application 12/875,6401
Technology Center 1700
Before ROMULO H. DELMENDO, KAREN M. HASTINGS, and
JAMES C. HOUSEL, Administrative Patent Judges.
PER CURIAM.
DECISION ON APPEAL
1 The Applicant (hereinafter “Appellant”) states that the real party in interest
is “OCV Intellectual Capital, LLC.” Appeal Brief filed on October 26,
2015, hereinafter “Appeal Br.,” 3.
Appeal 2017-000170
Application 12/875,640
The Appellant appeals under 35 U.S.C. § 134(a) from the Primary
Examiner’s final decision to reject claims 44—66.2,3 We have jurisdiction
under 35 U.S.C. § 6(b).
We affirm.
A. BACKGROUND
The subject matter on appeal relates to spray foam compositions used
to fill cavities, cracks, and crevices to enhance the sealing and insulating
properties of buildings. Specification, hereinafter “Spec.,” 12. According
to the Appellant, the spray foam compositions (formulated as two-part spray
foams) are non-toxic, environmentally friendly, and capable of being applied
at low temperatures. Id. ^ 18.
Representative claim 44 is reproduced from page 26 of the Appeal
Brief (Claims Appendix), as follows (emphases added):
44. A two-part non-aqueous foamable composition for
forming a foam comprising:
2 Appeal Br. 13—25; Reply Brief filed on September 28, 2016, hereinafter
“Reply Br.,” 2—6; Examiner’s Answer (notice emailed on July 29, 2016),
hereinafter “Ans.,” 2—21; Final Office Action (notice emailed on January 26,
2015) hereinafter “Final Act.,” 3—24.
3 The Appellant states there are no related appeals, interferences, or trials at
page 4 of the Appeal Brief. However, Appeal 2016-008635 (Application
No. 12/688,951) and Appeal 2017-003603 (Application No. 13/113,785)
appear to be related to this application. See 37 C.F.R. § 41.37(c)(ii). This
application is a continuation-in-part of the application involved in Appeal
2016-008635. In addition, the application involved in Appeal 2016-008635
claims priority to a common provisional application as the application
involved in Appeal 2017-003603. The Appeal Brief for Appeal 2016-
008635 was filed on April 23, 2015, and the Appeal Brief for Appeal 2017-
003603 was filed on September 11, 2015. These filings occurred before the
Appeal Brief for this appeal was filed.
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Application 12/875,640
a first part including:
a lattice phase comprising a dry polymer present in
an amount of 40-70% by weight',
a liquid blowing agent present in an amount of 25—
50% by weight',
a multifunctional acid present in an amount of 2—
10% by weight', and
a surfactant; and
a second part including:
a polyfunctional aziridine present in an amount of
10—25% by weight',
a plasticizer having no acidic protons to react with
the polyfimctional aziridine;
wherein the first part and the second part are separated
until formation of the foam;
wherein the first part and the second part are substantially
free of isocyanate; and
wherein the composition forms a foam when the first part
and the second part are combined at a temperature below room
temperature.
B. REJECTIONS ON APPEAL
On appeal, the Examiner maintains several rejections, which are as
follows (Ans. 2—21; Final Act. 3—24):
I. claims 44—66 under pre-AIA 35 U.S.C. § 112, second
paragraph, as being indefinite;
II. claims 44, 54, 63, 65 under pre-AIA 35 U.S.C. § 112,
first paragraph, as failing to comply with the written
description requirement;
III. claims 44—66 under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Osipow et al. (Osipow)4 in view of
4 US 4,328,329, issued May 4, 1982.
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Application 12/875,640
Gosiewski et al.5 (Gosiewski), Koshy,6 Yeo,7 and
Travis,8 as evidenced by Wikipedia;9
IV. claims 44—66 as being unpatentable under pre-AIA 35
U.S.C. § 103(a) over Osipow in view of Gosiewski,
Koshy, Yeo, and Kho et al.10 (Kho), as evidenced by
Wikipedia; and
V. provisionally, claims 44—66 on the judicially-created
doctrine of obviousness-type double patenting as being
unpatentable over claims 1, 2, 4, 8, 9, and 21—28 of
copending application 12/688,951 in view of Osipow and
Gosiewski.
C. DISCUSSION
Rejection I
Claims 44—66 are rejected under 35 U.S.C. § 112, second paragraph,
as being indefinite.
The Examiner finds independent claims 44 and 54 do not specify a
basis for the weight percentages of the dry polymer, the liquid blowing
5 US 5,945,461 A, issued Aug. 31, 1999.
6 US 6,451,876 Bl, issued Sept. 17, 2002.
7 US 6,537,934 Bl, issued Mar. 25, 2003.
8 US 3,874,914, issued Apr. 1, 1975.
9 Wikipedia entry for “Room temperature,”
http://www.en.wikipedia.org/wiki/Room_temperature (first publication date
unknown). The Appellant does not contest the prior art status of this
publication. See, e.g., Appeal Br. 20.
10 WO 2008/088116 Al, published July 24, 2008.
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Application 12/875,640
agent, the multifunctional acid, or the polyfunctional aziridine. Ans. 3. In
particular, the Examiner observes that “the weight percentages may be
interpreted as being based on either o[f] the first and second parts, or based
on the total composition” and that the weight percentages for these
components may vary depending on the basis selected. Id. at 3^4. As a
result, the Examiner concludes the scope of the claims is indefinite. Id. at 4.
The Appellant contends the weight percentages recited in claims 44
and 54 are definite in view of Appellant’s Specification, which discloses a
weight percentage basis for each of the dry polymer, the liquid blowing
agent, the multifunctional acid, and the polyfunctional aziridine. Appeal Br.
15-17; Reply Br. 5-6.
The Appellant’s arguments are not persuasive. We agree with the
Examiner’s finding that claims 44 and 54 do not specify a basis for the
weight percentages of the dry polymer, the liquid blowing agent, the
multifunctional acid, or the polyfimctional aziridine. Claims 44 and 54
merely recite “by weight” for each of these components without reciting
whether the weight percentage is based upon the weight of the first part, the
second part, or the total weight of the composition or the resulting foam.
Appeal Br. 26.
As argued by the Appellant, the Specification discloses different bases
for the weight percentages of the dry polymer, the liquid blowing agent, the
multifunctional acid, and the polyfunctional aziridine. Specifically, the
weight percentage basis for the dry polymer is the weight of the first part,
the weight percentage basis for the blowing agent is the weight of the first
part, the weight percentage basis for the multifunctional acid is the weight of
the dry foam composition, and the weight percentage basis for the
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Application 12/875,640
polyfunctional acid is the weight of the dry foam composition. Spec, 37—
39, 42. But these disclosures, which describe non-limiting embodiments, do
not inform one skilled in the relevant art that the bases selected for the
components should remain constant throughout the Specification (e.g., by
using definitive language such as “By ‘% by weight,” we mean . . . .”). In re
ICON Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007) (“[W]e
look to the specification to see if it provides a definition for claim terms, but
otherwise apply a broad interpretation.”).
Therefore, we decline to interpret claims 44 and 54 as including the
varying weight percentage bases disclosed in the Specification. Such an
interpretation would not be under the broadest reasonable interpretation of
the claims read in light of the Specification but instead would impermissibly
import features from the Specification into the claims. Although claims are
to be interpreted in light of the specification, limitations from the
specification are not to be read into the claims. See In re Van Geuns, 988
F.2d 1181, 1184 (Fed. Cir. 1993).
For these reasons and those discussed in the Examiner’s Answer, we
uphold the Examiner’s rejection of claims 44—66 as being indefinite.
The Examiner further finds independent claims 44 and 54 are
indefinite because the language “below room temperature” is not clearly
defined in Appellant’s Specification. Ans. 5.
The Appellant does not submit any arguments in response to this
rejection. Appeal Br. 14—25. Therefore, we summarily affirm the
Examiner’s rejection of claims 44—66 on the basis that the language “below
room temperature” is indefinite.
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Rejection II
Claims 44, 54, 63, 65 are rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
The Examiner finds independent claims 44 and 54 do not specify the
basis for the recited weight percentage ranges. Ans. 5. Therefore, the
weight percentages encompass various weight percentages bases (e.g., based
upon the weight of the first part or the second part or based upon the total
weight of the composition or resultant foam). The Examiner finds the
Appellant’s Specification provides support for a specific weight percentage
basis for each of the dry polymer, blowing agent, multifunctional acid, and
the polyfunctional aziridine, but this provides a more narrow range of
percentages than what is encompassed by the claims. Id. at 5—6. The
Examiner further finds dependent claims 63 and 65 have a similar issue
because claims 63 and 65 recite “by weight” but no basis for the weight
percentage. Id. at 6.
The Appellant asserts the Specification discloses only one basis for
each of the weight percentages recited in claims 44 and 54, and, in view of
this, the Appellant had possession of the claimed invention under § 112 at
the time the application was filed. Appeal Br. 17—18; Reply Br. 5—6.
The Appellant’s argument is unpersuasive. Claims 44 and 54 were
submitted as new claims on September 17, 2013 (i.e., after the application
was filed). As discussed above, we do not interpret claims 44 and 54 as
requiring the weight percentage bases disclosed in non-limiting
embodiments described in the Specification. As a result, claims 44 and 54
are broader and encompass weight percentage bases other than those
disclosed in the Specification. Because claims 63 and 65 respectively
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Application 12/875,640
depend from claims 44 and 54, claims 63 and 65 suffer from the same
deficiency, which is not remedied by the additional recitations of claims 63
and 65. Therefore, for these reasons and those discussed in the Examiner’s
Answer, we uphold the Examiner’s rejection under § 112, first paragraph,
for lack of written description support for the claimed weight percentages.
Additionally, the Examiner finds the Specification does not provide
support for the first and second parts forming a foam when they are
combined “at a temperature below room temperature,” as recited in claims
44 and 54. Ans. 6. In particular, the Examiner finds the Specification
discloses a foam that is suitable for use at low temperatures, such as
temperatures below freezing, but does not disclose combining the first and
second parts to form a foam at a temperature “below room temperature.” Id.
at 6—7 (citing Spec. H 33, 48). The Examiner also finds the Specification
discloses heating a spray gun above the boiling point of a blowing agent,
which supplies heat to the mixture of the first and second parts, and the
Specification discloses the use of blowing agents having boiling points
above room temperature (i.e., above 25 °C). Id. at 7, 25 (citing Spec. Tflf 38,
49).
The Appellant argues the Specification’s disclosure of using a heated
gun to heat foam composition components to a temperature above the
boiling point of a blowing agent does not necessarily mean the mixture of
foam composition components is heated above room temperature and one of
ordinary skill in the art would understand “that many blowing agents have
boiling points that are below room temperature.” Appeal Br. 18—19. The
Appellant also cites the Specification’s disclosure that the two-part spray
foams are suitable for use below freezing. Id. at 19.
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These arguments do not identify a reversible error in the Examiner’s
rejection. The Specification contemplates forming a foam at a temperature
above room temperature by disclosing the use of a spray gun that “is heated
to a temperature above the boiling point of the blowing agent”11 and the
Examiner finds it discloses the use of blowing agents having boiling points
above room temperature (i.e., above 25 °C).12 The Appellant does not refute
the Examiner’s finding for the latter. But the Specification does not provide
explicit support for combining the first and second parts to form a foam “at a
temperature below room temperature.” Nor does the Specification provide
implicit support. The Specification discloses a spray foam sealant “that may
be applied in cold temperatures, particularly at temperatures approaching
about 20 °F” and a “foam that is suitable for use at low temperatures (e.g.,
temperatures below freezing)” but the range recited in the claim encompass
other temperatures above and beyond those described. Spec. 5, 19, 33.
In re Wertheim, 541 F.2d 257, 263—264 (CCPA 1976) (“By pointing to the
fact that claim 1 reads on embodiments outside the scope of the description,
the PTO has satisfied its burden [of establishing lack of written
description]”).
Therefore, the Specification does not reasonably convey to those
skilled in the art that the Appellant had possession of a foam composition
that forms a foam at a temperature in the range of “below room
11 Spec. 149.
12 The Specification discloses use of a cross linking agent that crosslinks at
room temperature and that a resultant foam “should be fluid enough to be
sprayed either at room temperature or by heating.” Spec. H 21, 36. These
disclosures do not provide support for combining first and second parts of a
composition to form a foam at a temperature below room temperature, as
recited in claims 44 and 54.
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Application 12/875,640
temperature,” as recited in claims 44 and 54. For these reasons and those
discussed in the Examiner’s Answer, we uphold the Examiner’s rejection
under § 112, first paragraph, for lack of written description support for the
language “at a temperature below room temperature.”
Rejection III
Claims 44—66 are rejected as being unpatentable under 35 U.S.C.
§ 103(a) over Osipow in view of Gosiewski, Koshy, Yeo, and Travis, as
evidenced by Wikipedia. Because the claims are argued together, we select
claim 44 as representative of the issues discussed below.
The Examiner finds Osipow discloses a composition including a
synthetic polymer (e.g., polyvinyl acetate, carboxylated vinyl acetates,
acrylates, and vinyl toluene-butadiene copolymers), a liquid propellant, a
surfactant, a plasticizer, and a curing agent (i.e., a cross linking agent),
wherein the composition, when withdrawn from a container, forms a foam
when the propellant rapidly volatilizes. Ans. 7—8. The Examiner finds the
composition is free of isocyanates and is a non-aqueous composition but is
not a two-part composition in which the polymer, liquid propellant, and
surfactant are included in a first part and the plasticizer and curing agent are
in a second part, with the first part further including a multifunctional acid
and the curing agent is polyfunctional aziridine, as recited in claim 44. Id. at
8-9.
The Examiner finds Gosiewski discloses a two-part composition
comprising a first part including a polymer composition, a foaming agent,
and an acid (e.g., lactic acid), and a second part including a plasticizer. Id. at
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9. The Examiner finds Gosiewski discloses the use of a curing agent as an
additional component. Id.
The Examiner further finds Gosiewski discloses mixing the two-part
composition at 72°F, which the Examiner finds to be below room
temperature. Id. at 9—10 (citing the Wikipedia entry for “Room
temperature”). Alternatively, the Examiner finds the temperature disclosed
by Gosiewski is close to below room temperature such that one of ordinary
skill in the art would have expected the resultant foam of Gosiewski and one
formed below room temperature to have the same properties. Id. at 10.
The Examiner cites Koshy as an additional disclosure of a two-part
foam composition in which a first part includes a resin, a rubber, a filler, and
a blowing agent and a second part includes a curative system, with mixture
of the two parts resulting in curing and foaming of the composition in a
remarkably controlled fashion. Id. Based on this disclosure and
Gosiewski’s, the Examiner concludes it would have been obvious to modify
the composition of Osipow so it is separated into two parts, with the first
part including the polymer, the acid, the blowing agent, and surfactant and
the second part including the curing agent, plasticizer, and filler so
premature reaction of the components is prevented. Id. at 10—11.
The Appellant contends the Examiner has failed to establish a reason
to modify Osipow in view of Gosiewski and has engaged in impermissible
hindsight. Appeal Br. 20—22; Reply Br. 2-A. Specifically, the Appellant
argues there would have been no reason to modify Osipow’s composition to
become a two-part composition because this “would likely increase both
complexity and cost to change from a one-part to a two-part composition.”
Appeal Br. 22.
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The Appellant’s argument based on increased complexity and cost is
unpersuasive because the Appellant provides no evidence or technical
reasoning to support it. Moreover, the Examiner provides a rationale for
modifying the composition of Osipow that is supported by the disclosures of
Gosiewski and Koshy. Gosiewski discloses that a foam composition can be
prepared by providing a first part and a second part so the two parts may be
mixed together to cause polymerization and foaming just prior to use.
Gosiewski 10:33—41. Similarly, Koshy discloses a foam composition in
which a first part includes a polymer, a blowing agent, and other constituents
and a second part includes a curative system and other components. Koshy
2:43—62. Koshy discloses that combining the two separate parts causes
curing and expansion (i.e., foaming) to proceed in a remarkably controlled
fashion. Id. at 2:62 to 3:1.
The Appellant further argues13 the Examiner has not provided support
for the finding that the composition of Osipow is free of isocyanates.
Appeal Br. 23—24. The Appellant contends the composition of Osipow
would include isocyanates because Osipow discloses “urethane
prepolymers” as being suitable for use in its composition. Id. at 24.
This argument is also unpersuasive. Osipow discloses various
polymers can be used in its composition, such as polyvinyl acetate or
carboxylated vinyl acetate, besides urethane prepolymers. Osipow 8:42—
13 At page 4 of the Reply Brief, the Appellant argues against the Examiner’s
additional rationale of optimization via routine experimentation as basis for
providing a composition having the various component amounts recited in
claims 44 and 54. Because this argument is new and the Appellant does not
provide a showing of good cause for the delay in presenting the argument,
we need not consider it. 37 C.F.R. § 41.41(b)(2).
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9:11. Thus, the disclosure of Osipow supports the Examiner’s findings and
is not limited to a urethane prepolymer.
With regard to the particular curing agent recited in claim 44, the
Examiner finds Osipow, as modified by Gosiewski and Koshy, does not
disclose the use of a polyfimctional aziridine. Ans. 11. The Examiner finds
Yeo discloses the use of polyfimctional aziridine as a cross linking agent for
acrylic and vinyl acetate-based adhesive compositions. Id. The Examiner
also finds Travis discloses an adhesive composition in which polyfimctional
aziridine is used to improve the adhesion to a substrate. Id. at 11—12. The
Examiner concludes it would have been obvious to modify Osipow, as
modified by Gosiewski and Koshy, to use polyfimctional aziridine as a cross
linking agent to provide excellent adhesive properties and because it would
have involved the substitution of one equivalent for another. Id. at 12—13.
The Appellant argues the Examiner’s rationale for substituting
aziridine for the curing agent of Osipow, as modified by Gosiewski and
Koshy, is insufficient because the Examiner has failed to establish that the
art has recognized aziridine and the curing agent of Osipow as equivalents.
Appeal Br. 22; Reply Br. 6. To support this argument, the Appellant asserts
Gosiewski discloses a particular curing agent that is responsible for the
properties desired in its foam and this curing agent is a catalyst, which one
of ordinary skill in the art would have recognized to be different from
aziridine in bonding, structure, and expected mode of reactivity. Appeal Br.
22-23.
These arguments do not identify a reversible error in the Examiner’s
rejection. As noted above, Osipow discloses various polymers can be used
in its composition, such as polyvinyl acetate and carboxylated vinyl acetate.
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Osipow 8:42—9:6. Osipow further discloses its composition can include a
curing agent (i.e., cross linking agent) for its polymer. Id. at 10:21—27. Yeo
discloses polyfimctional aziridine is a crosslinker that “is reactive with
carboxy and hydroxyl groups.” Yeo 2:10-15. Therefore, the polyfimctional
aziridine of Yeo would have been reasonably expected to be suitable for use
as a cross linking agent with at least the carboxylated vinyl acetate of
Osipow, which includes carboxy groups, and is functionally equivalent to
the curing agent (i.e., cross linking agent) disclosed by Osipow for use with
its polymers. Moreover, Travis discloses polyfimctional aziridine is useful
for promoting adhesion to a substrate. Travis 4:67—5:3. Therefore, the
disclosures of the applied references support the Examiner’s findings and
provide reasons to modify Osipow, as modified by Gosiewski and Koshy, to
use polyfimctional aziridine as the curing agent for Osipow’s polymer.
Moreover, the Appellant’s arguments regarding the catalyst of
Gosiewski do not direct us to a reversible error because the Examiner relies
on Osipow as disclosing a curing agent. Ans. 8. In addition, the catalyst of
Gosiewski functions as a polymerization catalyst that triggers
polymerization of its monomers so the composition will polymerize when it
foams. Gosiewski 2:43^48; 5:19-23. The disclosure of Gosiewski
demonstrates the difference between the catalyst and a cross linking agent by
disclosing a curing agent (i.e., cross linking agent) may be used in addition
to the other components of its foam composition, including the
polymerization catalyst. Id. at 9:61—64.
The Appellant does not argue claims 45—66 separately from claim 44.
Appeal Br. 20-24.
For these reasons and those discussed in the Examiner’s Answer, we
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uphold the Examiner’s § 103(a) rejection of claims 44—66.
Rejection IV
Claims 44—66 are rejected as being unpatentable under 35 U.S.C.
§ 103(a) over Osipow in view of Gosiewski, Koshy, Yeo, and Kho, as
evidenced by Wikipedia.
In the rejection of claims 44—66, the Examiner makes findings and
conclusions similar to those set forth in the rejection over Osipow in view of
Gosiewski, Koshy, Yeo, and Travis, as evidenced by Wikipedia, except the
Examiner relies upon Kho instead of Travis for an additional disclosure
aziridine as a cross linking agent. Ans. 15—21.
The Appellant cites the arguments set forth above for Rejection IV
and further argues the Examiner has failed to provide a reason for modifying
Osipow in view of Gosiewski, Koshy, or Yeo. These arguments are
unpersuasive for the same reasons set forth above for Rejection IV.
Therefore, we uphold the Examiner’s § 103(a) rejection of claims 44—66 for
these reasons and those discussed in the Examiner’s Answer.
Rejection V
Claims 44—66 are provisionally rejected on the ground of non-
statutory obviousness-type double patenting as being unpatentable over
claims 1, 2, 4, 8, 9, and 21—28 of copending application 12/688,951 in view
of Osipow and Gosiewski.
Appellant requests that the rejection be held in abeyance. Appeal Br.
24. Appellant further states a terminal disclaimer has been submitted. Id. at
24—25. We agree with the Examiner’s finding that no terminal disclaimer
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has been filed. Ans. 34. We therefore summarily affirm the Examiner’s
provisional non-statutory obviousness-type double patenting rejection of
claims 44—66.
D. SUMMARY
Rejections I—V are affirmed. Therefore, the Examiner’s final decision
to reject claims 44—66 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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