Ex Parte Rosthauser et alDownload PDFPatent Trial and Appeal BoardFeb 25, 201613238071 (P.T.A.B. Feb. 25, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/238,071 09/21/2011 157 7590 02/29/2016 Covestro LLC 1 Covestro Circle PITTSBURGH, PA 15205 FIRST NAMED INVENTOR James W. Rosthauser 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 ATTORNEY DOCKET NO. CONFIRMATION NO. BMS l l 2020/MD09-24 9252 EXAMINER RIOJA, MELISSA A ART UNIT PAPER NUMBER 1767 NOTIFICATION DATE DELIVERY MODE 02/29/2016 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): veronica. thompson@covestro.com US-IPR@covestro.com laura.finnell@covestro.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JAMES W. ROSTHAUSER, JAMES P. KOTAR, and USAMA E. YOUNES Appeal2014-003121 Application 13/238,071 1 Technology Center 1700 Before MICHAEL P. COLAIANNI, WESLEY B. DERRICK, and JEFFREY W. ABRAHAM, Administrative Patent Judges. COLAIANNI, Administrative Patent Judge. DECISION ON APPEAL 1 According to Appellants, the real party in interest is Bayer MaterialScience LLC. Br. 1. Appeal2014-003121 Application 13/238,071 Appellants appeal under 35 U.S.C. § 134 the final rejection of claims 1-18. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b). We AFFIRM. Appellants' invention is directed to medium density, highly filled polyurethane molded foams having good impact resistance and a process for their production (Spec. 1:10-12; claim l, claim 15). Claim 1 is illustrative: 1. A molded glass-reinforced, filled polyurethane foam having a density of from 10 to 50 pounds per cubic foot and having a notched Izod impact resistance between about 5 and about 14 foot-pounds/inch comprising a reaction product of: a) a polyurethane-forming reaction mixture, b) from 5 to 35% by weight, based on total weight of the foam, of glass fibers having a length of from 12.5 to 50 mm, c) from 25 to 60% by weight, based on total weight of the foam, of at least one filler which is different from b ), and d) a blowing agent comprising water formed in a mold. Appellants appeal the following rejections: 1. Claims 1, 2, 5, 7, and 9-13 are rejected under 35 U.S.C. § 103(a) as unpatentable over Deaver (US 4,005,035 issued Jan. 25, 1977). 2. Claims 3 and 4 are rejected under 35 U.S.C. § 103(a) as unpatentable over Deaver in view of Brown (US 2007 /0222105 Al published Sept. 27, 2007) and MUL TRANOL® 3900 Product data sheet from Bayer (Bayer MaterialScience, Multranol® 3900 Polyether Polyol (2006)). 3. Claims 1, 2, 5, 13-15, and 17 are rejected under 35 U.S.C. § 103(a) as unpatentable over Shutov (US 2007/0027227 Al published Feb. 1, 2 Appeal2014-003121 Application 13/238,071 2007) in view of Recker et al. (US 4,251,428 issued Feb. 17, 1981 (hereinafter "Recker")). 4. Claim 6 is rejected under 35 U.S.C. § 103(a) as unpatentable over Shutov in view Recker and Genz et al. (US 6,310, 114 B 1 issued Oct. 30, 2001 (hereinafter "Genz")). 5. Claim 8 is rejected under 35 U.S.C. §103(a) as unpatentable over Shutov in view of Recker and Hom et al. (US 6,169,124 Bl issued Jan. 2, 2001 (hereinafter "Hom")). 6. Claim 16 and 18 are rejected under 35 U.S.C. § 103(a) as unpatentable over Shutov in view of Recker and Lammeck (US 6,156,811 issued Dec. 5, 2000 (hereinafter "Lammeck")). FINDINGS OF FACT & ANALYSIS REJECTIONS (1) AND (2) Regarding rejection (1 ), Appellants argue the subject matter of claim 1 only (Br. 4---6). Appellants' arguments regarding rejection (2) rely solely on arguments made regarding claim 1 with an emphasis that Brown does not cure the deficiencies argued with respect to claim 1 (id. at 6-7). Therefore, the claims under rejections (1) and (2) will stand or fall with our analysis of the rejection of claim 1. We have fully considered Appellants' arguments and find ourselves in agreement with the Examiner that Deaver alone and Deaver in view of Brown would have rendered obvious the subject matter of claim 1 for the reasons advanced by the Examiner on pages 4--8 and 18-23 of the Answer. We add the following analysis primarily for emphasis. 3 Appeal2014-003121 Application 13/238,071 The Examiner finds that Deaver teaches the subject matter of claim 1, except for the length of the glass fibers used as reinforcement and the notched Izod impact resistance property (Ans. 4--5). The Examiner finds that Deaver teaches ranges of amounts of glass fiber and filler that overlap with those amounts of glass fiber and filler required by the claims (id. at 5). The Examiner finds that Deaver teaches glass fibers having a length that ranges from 1/32 of inch to 1 inch (roughly 1 to 25 mm), which overlaps the claimed glass fiber length range (12.5 mm to 50 mm). The Examiner concludes that it would have been obvious to select glass fibers having a length at the upper end of the range disclosed by Deaver that overlaps with the claimed glass fiber length range (id.). The Examiner finds that though Deaver discloses that using longer glass fibers resulted in a higher viscosity for the foam composition, Deaver does not disclose that the higher viscosity is undesirable (id.). Regarding the notched Izod impact resistance, the Examiner finds that because Deaver's reinforced polyurethane foam has the same materials and is made by a similar process, the foam has the required notched Izod Impact resistance (id. at 5---6). Appellants argue that a person of ordinary skill in the art reading Deaver would not have any reason to expect that selection of glass fibers having a particular length, much less the lengths required in Appellants' claimed invention, would be advantageous for any reason (Br. 5). Appellants contend that Deaver teaches to avoid fiber lengths greater than 1 inch (25.4 mm) and that the best results are achieved using fibers of Y4 inch (i.e., 6 mm), which is outside the scope of Appellants' claims. Id. Appellants contend that Example IX in Deaver is the only example that uses 1 inch glass fibers, but the amount of filler is outside of Appellants' claimed 4 Appeal2014-003121 Application 13/238,071 range for filler. Id. Appellants further contend that Deaver describes the result achieved by Example IX as only "[f]air" surface quality and cell uniformity with unacceptably high viscosity which would not have led one of ordinary skill in the art to use the 1 inch glass fibers (id.). Appellants' arguments fail to address the fact that Deaver includes a broader disclosure that discloses a polyurethane foam composition having amounts of glass fiber and filler, and glass fiber lengths that overlap with those claimed by Appellants. Where ranges of a claimed composition overlap ranges disclosed in the prior art, a prima facie case of obviousness typically exists. In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003). Accordingly, the overlap of the claimed amounts of glass fiber and filler and the lengths of the glass fibers with the amounts of glass fiber and filler and lengths of glass fibers disclosed by Deaver establishes a prima facie case of obviousness. Deaver's preference for fibers about Y4 of an inch does not detract from Deaver's broader disclosure of compositions having filler amounts, glass fiber amounts, and glass fiber lengths that overlap with the amounts and lengths claimed (Deaver, col. 6, 11. 8-10, 65---68). All disclosures of the prior art, including unpreferred embodiments, must be considered. In re Lamberti, 545 F.2d 747, 750 (CCPA 1976). Regarding Appellants' argument that Deaver teaches that longer glass fibers cause an undesirable increase in viscosity, this is an overstatement. Rather, Deaver teaches that when glass fibers exceeding 1 inch are used the increases in viscosity of the starting materials becomes undesirable (col. 7, 11. 4-6). In other words, glass fiber lengths of 1 inch (i.e., 25.4 mm) are suitable in Deaver' s polyurethane foam and do not produce an undesirable increase in viscosity. 5 Appeal2014-003121 Application 13/238,071 Appellants argue that Deaver uses chlorofluorocarbon blowing agents, not water, as required by the claims. This argument is not persuasive in light of the Examiner's finding that Deaver teaches at column 7, lines 50-51 that the blowing agent contains water in addition to the chlorofluorocarbon. In other words, the claim recitation of a blowing agent "comprising water" does not exclude Deaver's blowing agent that includes water and chlorofluorocarbons (Ans. 5, 22). Regarding rejection (2) of claims 3 and 4, Appellants argue that Brown does not cure the deficiencies of Deaver (Br. 6-7). Appellants argue that Brown teaches using glass fibers having lengths from 3 .2 mm to 25 .4 mm but does not disclose suitable amounts of such glass fibers greater than the 5% minimum required in Appellants' claimed invention (id. at 7). Appellants' arguments fail to address the Examiner's stated rejection that relies on Brown only to teach the particular polyols required by claims 3 and 4. Indeed, as noted above, we do not find any failings in Deaver with regard to the subject matter of claim 1. Accordingly, Appellants' arguments are not persuasive. We affirm the Examiner's § 103 rejections (1) and (2). REJECTIONS (3) TO (6) Appellants' arguments focus on the subject matter of claim 1 (Br. 8- 25). Appellants' arguments regarding rejections (4) to (6) are the same as those made regarding claim 1 (id. at 11-25). Accordingly, the claims under rejections (4) to (6) will stand or fall with our analysis of the rejection of claim 1 under rejection (3). 6 Appeal2014-003121 Application 13/238,071 We have fully considered Appellants' arguments and find ourselves in agreement with the Examiner that Shutov in view of Recker would have rendered obvious the subject matter of claim 1 for the reasons advanced by the Examiner on pages 9-11 and 24--35 of the Answer. We add the following analysis primarily for emphasis. The Examiner finds that Shutov teaches the subject matter of claim 1, except for the length of the glass fibers and the claimed filler range (i.e., 20 to 60%). Ans. 9 (acknowledging that the amount of filler in Shutov's example 1 is slightly outside (i.e., 62% fly ash) Appellants' claimed range). The Examiner finds that one of ordinary skill in the art would have optimized the amount of filler in Shutov to achieve a foam having desired strength and impact resistance, which properties Shutov teaches are tied to the amount of filler and fibers (id.). The Examiner finds that Shutov uses glass fiber reinforcement but does not teach the lengths of the fibers. Id. The Examiner finds that Recker teaches a polyurethane foam composite having glass fiber lengths from 20 to 60 mm (id. at 9-10). The Examiner finds that Recker and Shutov are analogous art as they are from the same field of endeavor: fiber-reinforced polyurethanes (id. at 10). The Examiner concludes that it would have been obvious to use glass fibers having a length within the range disclosed by Recker to reinforce the foam of Shutov in order to provide suitable length reinforcement fibers for a polyurethane foam (id.). Appellants argue that the Examiner's rejection based on Shutov requires picking and choosing from the various teachings in Shutov to arrive at the claimed invention (Br. 8). Picking and choosing from the teachings of a prior art reference, however, is acceptable for a rejection under 35 U.S.C. 7 Appeal2014-003121 Application 13/238,071 § 103. In reArkley, 455 F.2d 586, 587(CCPA1972) ("Thus, for the instant rejection under 35 U.S.C. § 102(e) to have been proper, the Flynn reference must clearly and unequivocally disclose the claimed compound or direct those skilled in the art to the compound without any need for picking, choosing, and combining various disclosures not directly related to each other by the teachings of the cited reference. Such picking and choosing may be entirely proper in the making of a 103, obviousness rejection .... "). Appellants argue that Shutov does not provide guidance for selecting 5 to 35% of glass fibers having a length from 12.5 to 50 mm and from 25 to 60% by weight filler for the production of a molded foam having a density of from 10 to 50 pounds per cubic foot as required by claim 1 (Br. 10). Contrary to Appellants' argument, Shutov teaches that the filler may be present in an amount from 30 weight% to 85 weight% and the glass fiber reinforcement may be present in an amount from 1.0 weight % to 15 weight % (i-fi-f 15, 16). These ranges overlap the filler and glass fiber reinforcing ranges required by the claims. Shutov further exemplifies polyurethane composite densities from 43.6 to 52.1 lb/ft3 (i-f 22). The Examiner concedes that Shutov does not teach glass fiber length and turns to Recker to teach a suitable polyurethane glass fiber reinforcing length (Ans. 9-10). Regarding Recker, Appellants contend that Recker' s material is not a foam and Recker' s material has a density much higher than Shutov' s foams (Br. 9). Appellants contend that because Recker' s polyurethane composite is not a foam, one of ordinary skill in the art would not have looked to Recker to improve Shutov's polyurethane foam (i.e., no reason to combine the teachings of the references). (Id. at 9-10.) Appellants argue that were 8 Appeal2014-003121 Application 13/238,071 one of ordinary skill to combine Reeker's teachings with Shutov's foam, the result would be foam with a much higher density. (Id. at 9.) We are not persuaded by Appellants' argument. In the present case, Shutov teaches that glass fibers are used in amounts ranging from 1.0 weight % to 15 weight % to reinforce polyurethane foam, but is silent about the glass fiber length. Recker teaches a polyurethane composite that uses glass fibers having a length from 20 mm to 60 mm to improve the mechanical properties of the composite (col. 11, 35---60). Recker teaches that the amount of glass fibers used in the composite ranges from 5 to 60% depending upon the level of desired improvement in the mechanical properties (col. 11, 11. 49-54). Given the overlap in glass fiber amounts between Recker and Shutov, and that each discloses a polyurethane composite with glass fiber reinforcements to improve mechanical properties of the composite, we agree with the Examiner that it would have been obvious to use Reeker's teachings regarding suitable fiber lengths for achieving desired mechanical improvements in a polyurethane composite to determine the suitable glass fiber lengths to use in Shutov's polyurethane foam composite to improve mechanical properties of the foam. Thus, Appellants' arguments that one of ordinary skill in the art would be led to a foam of much higher density and not to the claimed invention (Br. 9) are without persuasive merit (see In re Keller, 642 F.2d 413, 425 (CCPA 1981)). For the above reasons, we affirm the Examiner's§ 103 rejections (3) to (6). DECISION The Examiner's decision is affirmed. 9 Appeal2014-003121 Application 13/238,071 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). ORDER AFFIRMED 10 Copy with citationCopy as parenthetical citation