Ex Parte Braun et alDownload PDFPatent Trial and Appeal BoardJun 14, 201713322108 (P.T.A.B. Jun. 14, 2017) Copy Citation 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. 13/322,108 11/22/2011 Frank Braun 074014-0452-286587 8625 123223 7590 06/16/2017 Drinker Biddle & Reath LLP (WM) 222 Delaware Avenue, Ste. 1410 Wilmington, DE 19801-1621 EXAMINER DOLLINGER, MICHAEL M ART UNIT PAPER NUMBER 1766 NOTIFICATION DATE DELIVERY MODE 06/16/2017 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 FRANK BRAUN and FRANK PRISSOK Appeal 2016-004036 Application 13/322,1081 Technology Center 1700 Before WESLEY B. DERRICK, CHRISTOPHER C. KENNEDY, and JENNIFER R. GUPTA, Administrative Patent Judges. DERRICK, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134 from the final rejection of claims 14-19 and 21 under 35 U.S.C. § 103(a) as being unpatentable over Prissok2 in view of Loh.3 We have jurisdiction under 35 U.S.C. § 6. We AFFIRM. 1 Appellants identify BASF SE as the real party in interest. Appeal Br. 2. 2 Prissok et al., WO 2007/082838 Al, published July 26, 2007; the Office relies on corresponding English language US 2010/0222442 Al, published September 2, 2010, the use of which is not contested. 3 Loh et al., US 2007/0179205 Al, published August 2, 2007. Appeal 2016-004036 Application 13/322,108 THE INVENTION The subject matter of the claims on appeal relates to a process for production of an expandable thermoplastic polymer comprising water as blowing agent that includes the steps of storing the thermoplastic polymer in water so that water is absorbed to obtain the expandable thermoplastic polymer. Specification filed November 22, 2011 (“Spec.”), Abstract, 1, 11. 5-9. Claim 14—the sole independent claim—is representative. 14. A process for the production of an expandable thermoplastic polymer consisting of polyurethane comprising water as single blowing agent, comprising at least the step of: (A) immersing of a thermoplastic polymer consisting of polyurethane in water for a period of 1 to 300 hours, so that water is absorbed by the polyurethane, in order to obtain an expandable polyurethane, wherein after step (A), the water content of the expandable polyurethane is at least 5% by weight. DISCUSSION4 We have reviewed the ground of rejection set forth by the Examiner, Appellants’ arguments, and the Examiner’s response to the proffered arguments. See Final Act. 2-\\ Appeal Br. 3-9; Ans. 2-5. On this record, we are unpersuaded that the Examiner erred reversibly and we determine that a preponderance of the evidence supports the Examiner’s conclusion of obviousness. We add the following. 4 We refer to the Specification, the Final Office Action dated March 26, 2015 (“Final Act.”), the Appeal Brief filed August 24, 2015 (“Appeal Br.”), and the Examiner’s Answer dated December 14, 2015 (“Ans.”). 2 Appeal 2016-004036 Application 13/322,108 The Examiner relies on Prissok for its disclosure of a process for preparing expandable and expanded particles of thermoplastic polyurethane (TPU) including the impregnation of TPU pellets with 1 to 30 parts by weight of a blowing agent impregnated at a temperature of 100 to 150 °C for, generally, 0.5 to 10 hours. Ans. 2 (citing Prissok H 31, 38, 40^11). Prissok discloses that the TPU pellets are “heated with water, with a suspending agent, and with the blowing agent.” Prissok 131. The Examiner further finds Prissok discloses impregnating the TPU beads with water. Ans. 2. As found by the Examiner, Prissok discloses that the blowing agent can be a hydrocarbon. Ans. 2 (citing Prissok 135). Loh is directed to polymer expanded foams, including polyurethane foams, and discloses the use of water as an internal blowing agent. The Examiner relies on Loh for its teaching that “water provides a low-cost, environmentally friendly alternative to conventional hydrocarbon blowing agents.” Ans. 2-3 (citing Loh 13). The Examiner further finds Loh to “teach[] that the polymer beads may be expanded by means of hot air, supersaturated water steam or microwave heating.” Ans. 3 (citing Loh 17) (emphasis omitted). The Examiner concludes that it would have been obvious to one of ordinary skill armed with the knowledge of the cited art to have used water as the blowing agent in Prissok because Loh teaches that water is a low-cost, environmentally friendly alternative to conventional hydrocarbon blowing agents as used in Prissok. Ans. 3. Appellants contend that the Examiner has failed to establish a prima facie case of obviousness and further proffer evidence to rebut the prima facie case. 3 Appeal 2016-004036 Application 13/322,108 In arguing against the prima face case, Appellants concede that Prissok discloses heating TPU pellets with water and a blowing agent, but contend that water is not included in the listed blowing agents that are incorporated in the disclosed amounts of 0.1 to 40 parts by weight. Appeal Br. 5—6 (citing Prissok || 35-38). Appellants proffer further arguments directed in the main to the Examiner’s reliance on Loh. Appellants contend that one of ordinary skill in the art would not have had a reasonable expectation of success using water as a blowing agent because “Loh deals specifically with polystyrene foams” rather than polyurethane foams as in Prissok or the instant invention. Appeal Br. 6. Similarly, Appellants contend that if Loh were to disclose polyurethane, it “could only be considered a disclosure generally of polyurethane, not specifically thermoplastic polyurethane” and that for this reason as well there would be no reasonable expectation of success. Appeal Br. 7. Appellants also contend that Loh fails to “furnish the required suggestion for immersion of polyurethane in water” and does not “suggest a polyurethane immersed in water, where after the immersion the water content is at least 5% by weight.” Appeal Br. 6. Appellants also contend that Loh would not suggest a process in which water is used as the only blowing agent because water is disclosed “as a carrier and as a co-blowing agent.” Appeal Br. 6-7 (citing Loh || 13, 38). Appellants’ arguments as to Prissok not disclosing water as a blowing agent is wholly without persuasive merit because the Examiner relies on Loh, not Prissok, for the teaching that water can be used as an alternative to hydrocarbon blowing agents and one cannot show nonobviousness by attacking references of a combination individually. In re Keller, 642 L.2d 4 Appeal 2016-004036 Application 13/322,108 413, 425 (CCPA 1981) (The relevant obviousness analysis “is what the combined teachings of the references would have suggested to those of ordinary skill in the art.”). Appellants’ argument that one of ordinary skill would not have had a reasonable expectation of success in applying Loh’s teaching of water as a blowing agent because it specifically deals with polystyrene foam rather than polyurethane is not persuasive because Loh does, in fact, teach polyurethane beads. Ans. 3 (citing Loh 133); see also Loh 17. It is well established that a reference is good for all that it fairly teaches a person having ordinary skill in the art. See, e.g., Merck & Co., Inc. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989); In re Mills, 470 F.2d 649, 651 (CCPA 1972). Also, as reasonably set forth by the Examiner, and unrebutted in the absence of a Reply Brief by Appellants, “the foaming with water as a blowing agent is a mostly physical process, and the ordinarily skilled artisan would expect it to work in most non-reactive polymers.” Ans. 3. As to Appellants’ related argument grounded on Loh merely disclosing polyurethane and not of a thermoplastic polyurethane, it is unpersuasive for the reasons that set forth by the Examiner including thermoplastic polyurethane would be immediately envisaged by the ordinarily skilled artisan and, more importantly, that Prissok is relied on for the thermoplastic polyurethane (TPU). Ans. 4 (citing Prissok, Abstract). Further, Appellants have not asserted that the proposed modification to the process of Prissok would have been beyond the capabilities of a person of ordinary skill in the art at the time of the invention. Absent such an assertion, we “take account of the inferences and creative steps that a person of ordinary skill in the art would employ” and find a person of 5 Appeal 2016-004036 Application 13/322,108 ordinary skill in the art would have overcome those difficulties within their level of skill. KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). As to Loh not specifically disclosing the water immersion step recited in the claims or that the water content is at least 5%, the Examiner rightly sets forth both that the immersion step is disclosed in the primary reference Prissok and that Loh specifically recites a water content of 10% in polymers. Ans. 3—4 (citing Loh, Table 1). further, on this record, we are apprised of no particular meaning as to immersion that is contrary to that in Prissok in which TPU pellets were heated with, inter alia, water. See, e.g., Prissok 131. As to Appellants’ argument that Loh would not suggest use of water alone as a blowing agent, but only as a co-blowing agent with other blowing agents, on this record, we are unpersuaded of reversible error because Loh teaches that “[wjater provides a low-cost, environmentally friendly alternative to conventional hydrocarbon blowing agents” (Loh 113) and Appellants fail to direct us to any persuasive argument or persuasive evidence that this teaching would not reasonably suggest to a skilled artisan the substitution of water for Prissok’s conventional hydrocarbon blowing agent (Prissok 135). See In re Preda, 401 L.2d 825, 826 (CCPA 1968) (“[I]n considering the disclosure of a reference, it is proper to take into account not only specific teachings of the reference but also the inferences which one skilled in the art would reasonably be expected to draw therefrom.”). Moreover, the “prior art reference must be ‘considered together with the knowledge of one of ordinary skill in the pertinent art.’” In re Paulsen, 30 L.3d 1475, 1480 (Led. Cir. 1994) (quoting In re Samour, 571 L.2d 559, 562 (CCPA 1978)). As to Appellants’ reliance on paragraph 38 of 6 Appeal 2016-004036 Application 13/322,108 Loll, the passage merely states that “the polymer beads may be co-foamed” and not that they must be co-foamed. On this record, for the reasons above, we are not persuaded that the Examiner erred reversibly in determining the claims would have been prima facie obvious over Prissok in view of Loh. We now turn to the proffered evidence of unexpected results. Appellants contend that there are advantages that would not have been expected by a person of ordinary skill in the art. Appeal Br. 7-9. In support, Appellants rely on the differences between Examples 1 and 2, particularly as to the amount of water taken up by granules upon soaking and then on the expansion upon treatment with steam. Spec. 17,1. 35-18,1. 24. Under the single set of conditions used, granules of the thermoplastic polyurethane A in Example 1 take up water—increasing in weight by 60%— and expand when treated with steam while granules of the thermoplastic polyurethane B in Example 2 do not take up much water—increasing in weight by 2%—do not expand when treated with steam. Appeal Br. 7-9; Spec. 17,1. 35-18,1. 24. Appellants contend that “if immersion does not result in an amount of water of at least 5% by weight [the amount of water recited in claim 14], no polyurethane foam can be obtained at all.” Appeal Br. 8. Appellants further contend that “the example and the comparative example clearly show the advantage of the present invention.” Appeal Br. 8. On this record, having considered the proffered evidence, cited portions of the Specification, we find it wholly insufficient to rebut the prima facie case. It is well established that Appellants bear the burden of showing the claimed invention imparts unexpected results. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); In re Klosak, 455 F.2d 1077, 1080 7 Appeal 2016-004036 Application 13/322,108 (CCPA 1972). To meet the burden, Appellants must establish that the results actually would have been unexpected, and that the unexpected results are reasonably commensurate with the scope of protection sought by the claims on appeal. In re Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983); In re Clemens, 622 F.2d 1029, 1035 (CCPA 1980); Klosak, 455 F.2d at 1080. As to the results being unexpected, Appellants direct us to no persuasive evidence, but only proffer repeated contentions that fail even to cite to any portion of the Specification that includes an assertion that the results were unexpected. Appeal Br. 7-9. That is insufficient because “[attorney’s argument. . . cannot take the place of evidence.” In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974). Further, as highlighted by the Examiner, there is a reasonable basis for the results to be expected as explained in response to the proffer (Ans. 4-5), as well as in the relied on teachings of Loh using water as a blowing agent (Ans. 2—4). We also find Appellants’ position that the proffered data is commensurate with the scope of the claims ill-founded because there is no persuasive evidence, or even cogent argument, as to the similarity of what was used in testing—thermoplastic polyurethane A in Example 1 that took up 60 wt. % water—with what is encompassed by claim 14 which merely requires it be a thermoplastic polyurethane that can take up at least 5 wt. % water upon immersion for a specified period of time. In re Harris, 409 F.3d 1339, 1344 (Fed. Cir. 2005) (“Even assuming that the results were unexpected, Harris needed to show results covering the scope of the claimed range. Alternatively Harris needed to narrow the claims.”). On balance, the evidence of record weighs most heavily in favor of the Examiner’s conclusion of obviousness. 8 Appeal 2016-004036 Application 13/322,108 DECISION The Examiner’s decision rejecting claims 14-19 and 21 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 9 Copy with citationCopy as parenthetical citation