Arkema Inc.

Patent Trials and Appeals Board

Aug 3, 2020

15164925 - (D) (P.T.A.B. Aug. 3, 2020)

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.
15/164,925 05/26/2016 Benjamin Bin CHEN IR4267NP 4123
31684 7590 08/03/2020
ARKEMA INC.
900 First Avenue
Bldg 4-2
King of Prussia, PA 19406
EXAMINER
COONEY, JOHN M
ART UNIT PAPER NUMBER
1765
NOTIFICATION DATE DELIVERY MODE
08/03/2020 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):
elizabeth.gilson@arkema.com
steven.boyd@arkema.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BENJAMIN BIN CHEN, JOSEPH S. COSTA,
SRI R. SESHADRI, and LAURENT ABBAS

Appeal 2019-006044
Application 15/164,925
Technology Center 1700
Before BEVERLY A. FRANKLIN, JEFFREY B. ROBERTSON, and
MONTÉ T. SQUIRE, Administrative Patent Judges.

FRANKLIN, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 4, 6, 9–13, and 16–26. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as Arkema Inc. Appeal
Br. 2.
Appeal 2019-006044
Application 15/164,925

2
CLAIMED SUBJECT MATTER
Claim 1 is illustrative of Appellant’s subject matter on appeal
and is set forth below:
A polyol pre-mix comprising:
a) at least one blowing agent which includes
HCFO-1233zd but no tetrafluorobutene; and
b) a polyol component comprised of at least one polyether
polyol and at least one polyester polyol;
wherein each polyol of the polyol component has an
apparent pH of at least 4 but no greater than 10.
Appeal Br.2 10 (Claims Appendix).

REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Williams et al.
(“Williams”)
US 2009/0099272 Al Apr. 16, 2009
Chen et al. (“Chen”) US 2013/0041048 Al Feb. 14, 2013

THE REJECTION
Claims 1, 4, 6, 9–13, and 16–26 are rejected under 35 U.S.C. §103 as
being unpatentable over Williams in view of Chen.
OPINION
Upon consideration of the evidence and each of the respective
positions set forth in the record, we find that the preponderance of evidence
supports the Examiner’s findings and conclusion that the subject matter of

2 We refer to the Appeal Brief mailed March 21, 2019.
Appeal 2019-006044
Application 15/164,925

3
Appellant’s claims is unpatentable over the applied art. Accordingly, we
sustain the Examiner’s rejection on appeal based on the fact-finding and for
the reasons set forth in the Final Office Action and in the Answer, and
affirm, with the following emphasis.
The Examiner’s statement of the rejection is set forth on pages 3–6 of
the Answer, which we adopt as our own.
Beginning on page 4 of the Appeal Brief, Appellant states that the
claimed subject matter of claim 1 is directed to a polyol pre-mix.
Independent claim 22 is directed to a method of making the polyol pre-mix.
Appellant states that the polyol pre-mix comprises at least one blowing agent
which includes HFCQ-1233zd, but no tetrafluorobutene, and a polyol
component comprised of at least one polyether polyol and at least one
polyester, wherein each polyol of the polyol component has an apparent pH
of at least 4 but no greater than 10. Appellant argues that selecting and
controlling the polyols in this manner (i.e., utilizing only polyols having
apparent pH values of 4 to 10) unexpectedly provides a polyol pre-mix
based on HFCO-1233zd as a blowing agent which, after being stored for six
months at 23°C, has improved shelf life stability. Appeal Br. 4.
Appellant states that the Inventors of the present application have
discovered that the storage stability of such pre-mixes may be significantly
improved by selecting and controlling the apparent pH value of each polyol
present in such pre-mixes. Appeal Br. 6.
Beginning on page 7 of the Appeal Brief, Appellant argues that Chen
does not appreciate the role that apparent pH values play in storage stability
of a polyol-pre-mix. Appellant refers to the Joseph Costa Declaration in
support thereof. Appeal Br. 7–8. Similarly, Appellant argues that Williams
Appeal 2019-006044
Application 15/164,925

4
fails to provide any guidance regarding the identity of polyol components
which will result in a shelf-stable polyol pre-mix as claimed. Appeal Br. 9.
We do not find Appellant’s arguments persuasive for the reasons
presented by the Examiner on pages 7–11 of the Answer. Therein, the
Examiner correctly points out that one skilled in the art need not see the
identical problem addressed in the prior art reference to be motivated to
apply its teachings. Ans. 7. Also, as correctly pointed out by the Examiner,
“the fact that appellant has recognized another advantage which would flow
naturally from following the suggestion of the prior art cannot be the basis
for patentability when the differences would otherwise be obvious.” Ex parte
Obiaya, 227 USPQ 58, 60 (BPAI 1985), aff’d mem., 795 F.2d 1017 (Fed.
Cir. 1986); cf. In re Cruciferous Sprout Litig., 301 F.3d 1343, 1349 (Fed.
Cir. 2002) (“Inherency is not necessarily coterminous with the knowledge of
those of ordinary skill in the art. Artisans of ordinary skill may not
recognize the inherent characteristics or functioning of the prior art.”)
(citations omitted). With regard to the declaration evidence, we also agree
with the Examiner that it is unpersuasive for the reasons provided by the
Examiner on pages 8–9 of the Answer. Appellant does not adequately
present an analysis of the data sufficient to establish unexpected results.
Manifestly, it is not within the province of the Board to independently
review Appellant’s data and ferret out possible evidence of unexpected
results. On the contrary, the burden of establishing unexpected results rests
squarely upon the party asserting them. In re Klosak, 455 F.2d 1077, 1088
(CCPA 1972).
Appellant’s reply in the Reply Brief does not adequately address
these points made by the Examiner (discussed above).
Appeal 2019-006044
Application 15/164,925

5
In view of the above, we therefore affirm the rejection.
CONCLUSION
We affirm the Examiner’s decision.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Bas
is
Affirmed Reversed
1, 4, 6,
9–13, 16–26
103 Williams, Chen 1, 4, 6,
9–13,
16–26

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED