Ex Parte Heisler et alDownload PDFPatent Trial and Appeal BoardJul 15, 201612463600 (P.T.A.B. Jul. 15, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 12/463,600 05/11/2009 Ladislau Heisler 42248 7590 07118/2016 MOMENTIVE PERFORMANCE MATERIALS INC-Quartz c/o DILWORTH & BARRESE, LLP 1000 Woodbury Road Suite 405 Woodbury, NY 11797 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. 5072002-1 9940 EXAMINER RIOJA, MELISSA A ART UNIT PAPER NUMBER 1767 MAILDATE DELIVERY MODE 07/18/2016 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 LADISLAU HEISLER, GREGORY A. PICKRELL, and LEE F. LAWLER Appeal 2014-001148 Application 12/463,600 Technology Center 1700 Before LINDA M. GAUDETTE, KAREN M. HASTINGS, and MICHELLE N. ANKENBRAND, Administrative Patent Judges. GAUDETTE, Administrative Patent Judge. DECISION ON APPEAL Appeal 2014-001148 Application 12/463,600 Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's decision2 finally rejecting claims 1-22. See App. Br. 9. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. The invention relates to "silicone surfactants having dimethyl siloxane backbones with attached alkyl and polyether pendant groups that provide improved properties for flexible urethane foam compositions utilizing vegetable oil based polyols." Specification filed May 11, 2009 ("Spec."), ,-i 1. Of the appealed claims, claims 1, 12, and 22 are independent. Claims 1 and 22 each recite "[a] method of producing a flexible polyurethane foam." Claim 12 recites "[a] flexible polyurethane foam." For reference, claim 1 is reproduced below: 1. A method of producing a flexible polyurethane foam comprising: A) preparing a mixture comprising: or (1) a polyol comprising a vegetable oil derived polyol, (2) an organic polyisocyanate, (3) at least one catalyst for the production of polyurethane foams, (4) water, and (5) a surfactant; having the formula: R-Si(CH3)20-{Si(CH3)20-}x-{SiCH3R10-}a-{SiCH3R20-}b- {SiCH3R30-}c-{SiCH3R40-}ct-{SiCH3R50-}e-Si(CH3)2-R R6-Si(CH3)20-{SiCH3R60 }m-[SiCH3 {O-(SiCH3R60)m- Si(CH3)2R6}0]n-{SiCH3R60 }m-Si(CH3)2-R6, wherein: 1 Appellants identify the real party in interest as Momentive Performance Materials Inc. Appeal Brief filed May 21, 2013 ("App. Br."), 3. 2 Final Office Action mailed November 21, 2012 ("Final Act."). 2 Appeal 2014-001148 Application 12/463,600 R1, R2, and R3 are polyalkylene oxide polyethers of the formula: and where R1 has a blend average molecular weight in the range of from about 3000 to about 6000 grams/mole and ethylene oxide comprises from about 20 to about 60 weight percent of the alkylene oxide content of R1; R2 has a blend average molecular weight in the range of from about 800 to about 2900 grams/mole and ethylene oxide comprises from about 20 to about 60 weight percent of the alkylene oxide content ofR2; R3 has a blend average molecular weight in the range of from about 130 to about 800 grams/mole and ethylene oxide comprises from about 0 to about 100 weight percent of the alkylene oxide content of R3; R4 is a C1 to C12 substituted or unsubstituted alkyl group, an alkaryl group, or an aryl group; Rs is a C14 to C30 substituted or unsubstituted alkyl or alkaryl group; Bis a moiety capable of undergoing hydrosilation to form Si-C bonds, or a moiety capable of undergoing condensation to form Si-0-C bonds; Z is selected from the group consisting of hydrogen, C1 -Cs alkyl or alkaryl moieties, -C(O)Z1, -C(O)OZ1, and -C(O)NHZ1, wherein Z1 represents mono-functional C1-Cs alkyl or aryl moieties; each R is independently selected from the group consisting of R1, R2, R3 R4 ' ' each R 6 is independently selected from the group consisting of R1, R 2, R3, R4, and Rs but at least one R6 must be Rs; xis 40 to 150; y is 5 to 40 and equals a+b+c+d+e, where b or c, but not both, may be 0, d/(a+b+c+e) = 0 to 1, e> 0, and a+b > O; m = 10 to 100; n <4· and - ' f, g, and h can be independently selected to have any value such that the defined blend average molecular weights of the polyethers R 1, R 2, and R3 are met; and B) reacting components 1) - 5) of the mixture to form a flexible polyurethane foam. 3 Appeal 2014-001148 Application 12/463,600 The Examiner maintains the following grounds of rejection under 35 U.S.C. § 103(a): (1) claims 1--4, 6-15, and 17-21 over Hilker et al. (US 6,653,359 B2, issued Nov. 25, 2003) ("Hilker") in view of Hsiao et al. (US 2006/0229375 Al, published Oct. 12, 2006) ("Hsiao"); and (2) claims 1, 2, 5-13, and 16-22 over Hilker in view of Griggs (US 2006/0270747 Al, published Nov. 30, 2006). See Examiner's Answer mailed August 27, 2013 ("Ans."), 3-24. Appellants present separate arguments in support of patentability of dependent claim 6 over the combination of Hilker and Hsiao. See App. Br. 20. Appellants' arguments in support of patentability of the remaining claims on appeal are based on limitations common to independent claims 1, 12, and 22. See generally id. at 9-24. Accordingly, claims 2-5 and 7-22 will stand or fall with claim 1. The Examiner finds Hilker discloses a method of producing a polyurethane foam as claimed in claim 1 with the exception of: ( 1) an explicit description of producing a "flexible" polyurethane foam (Final Act. 5); (2) using a polyol component that comprises a "vegetable oil" (id. at 4); and (3) using a surfactant that includes the group "{SiCH3R50}e," where R5 is a C14 to C30 substituted or unsubstituted alkyl or alkaryl group (id. at 3). With respect to the requirement of a "flexible" foam, the Examiner finds the combination of Hilker and either Hsiao or Griggs inherently would result in a foam having this property. Id. at 5, 8-9; see also id. at 5 (finding Hilker teaches producing a polyurethane foam that is useful in applications typically requiring a flexible foam, such as cushions, mattresses, and carpet underlay). Appellants do not challenge this finding. See App. Br. 11. 4 Appeal 2014-001148 Application 12/463,600 Regarding the use of a "vegetable oil," the Examiner finds both Hsiao and Griggs disclose methods of making polyurethane foams in which vegetable oil comprises a portion of the polyol component. Final Act. 4, 8. The Examiner finds one of ordinary skill in the art would have been motivated to substitute Hilker's polyol component with that of Hsiao or Griggs because vegetable oil polyols "are derived from renewable resources and are consequently an environmentally conscious alternative to conventional petroleum-based polyols." Id. at 5, 8. With respect to the surfactant, the Examiner finds Hilker discloses the surfactant may comprised units of the group {SiCH3R40}, where R4 is a C1 to C12 substituted or unsubstituted alkyl group, alkaryl group, or an aryl group, and, therefore, the claimed surfactant and Hilker's surfactant "differ by the successive addition of the same chemical group, i.e. by -CH2- groups." Final Act. 3. The Examiner contends "a person of ordinary skill in the art would have been motivated to increase the number of CH2- groups present to provide a longer chain higher molecular weight surfactant," because compounds having similar structures are expected to have similar properties (id. at4 (citing Jn re Payne, 606 F.2d 303, 313 (CCPA 1979)) and "[h ]igher molecular weight surfactants are desirable, for example, in foams in which a larger cell size is desired, such as in foams used in insulation applications" (id.). Appellants raise the following issue for our consideration: Has the Examiner identified sufficient evidence to support a finding that one of ordinary skill in the art at the time of the invention would have been motivated to modify Hilker' s surfactant to increase the number of CH2- groups present? App. Br. 11. As further discussed below, we answer this 5 Appeal 2014-001148 Application 12/463,600 question in the negative and, therefore, conclude the Examiner has not met the PTO's burden to establish a prima facie case of obviousness. The Examiner cites In re Wilder, 563 F.2d 457 (CCPA 1977), in support of a finding that one of ordinary skill in the art at the time of the invention would have been motivated to use the claimed surfactant in Hilker's flexible polyurethane foam because "compounds which are homo logs, compounds differing regularly by the successive addition of the same chemical group, e.g. by -CH2- groups, are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties." Final Act. 4. Hilker's surfactant and the claimed surfactant are nonadjacent members of a homologous series. In In re Elpern, 326 F.2d 762, 767 (CCPA 1964), the predecessor to our reviewing court held that the legal presumption of obviousness for a compound adjacent a prior art member in a homologous series did not extend to nonadjacent members in the series. A prima facie case of obviousness also may be shown by identifying "adequate support in the prior art" for changing the structure of the prior art compound. Procter & Gamble Co. v. Teva Pharms. USA, Inc., 566 F.3d 989, 995 (Fed. Cir. 2009) (citing In re Grabiak, 769 F.2d 729, 731-32 (Fed. Cir. 1985)). We agree with Appellants (see App. Br. 18) that the Examiner failed to identify support for a finding that one of ordinary skill in the art would have been motivated to modify Hilker' s surfactant to obtain a higher molecular weight surfactant because such higher weight surfactants are preferable "in foams in which a larger cell size is desired, such as in foams used in insulation applications" (Final Act. 3). Hilker indicates "[ fJoam of fine cell structure is strongly desired." Hilker 4: 1 7-18. The Examiner has 6 Appeal 2014-001148 Application 12/463,600 not identified in Hilker or any other evidence of record, support for a contention that one of ordinary skill in the art would have been motivated to modify Hilker to achieve the opposite result, i.e., a large cell structure. In sum, because the Examiner has not identified persuasive evidence to support a finding that one of ordinary skill in the art would have been motivated to modify Hilker' s surfactant to achieve the claimed surfactant, we do not sustain the Examiner's rejections of claims 1-22. REVERSED 7 Copy with citationCopy as parenthetical citation