Ex Parte 6521298 et al

Board of Patent Appeals and Interferences

Jan 30, 2012

90009289 (B.P.A.I. Jan. 30, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
90/009,289 09/29/2008 6521298 065333.00139 2568
64278 7590 01/30/2012
STEVEN L. SCHMID
1824 HICKORY TRACE DRIVE
FLEMING ISLAND, FL 32003
EXAMINER
JOHNSON, JERRY D
ART UNIT PAPER NUMBER
3991
MAIL DATE DELIVERY MODE
01/30/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte Isotec International, Inc.,
Patent Owner and Appellant
____________

Appeal 2011-013306
Reexamination Control 90/009,289
Patent 6,521,298 B1
Technology Center 3900
____________

Before RICHARD E. SCHAFER, RICHARD M. LEBOVITZ, and
JEFFREY B. ROBERTSON, Administrative Patent Judges.

ROBERTSON, Administrative Patent Judge.

DECISION ON APPEAL
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Reexamination Control 90/009,289
Patent 6,521,298 B1

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Isotec International, Inc., the owner of the patent under reexamination
(hereinafter the “‘298 Patent”), appeals under 35 U.S.C. §§ 134(b) and 306
from a final rejection of claims 1 and 3-10 (Appeal Brief filed March 8,
2011, hereinafter “App. Br.,” at 4; Final Office Action mailed September 30,
2010). We have jurisdiction under 35 U.S.C. §§ 134(b) and 306.
We AFFIRM.

STATEMENT OF THE CASE
This reexamination proceeding arose from a third-party request for ex
parte reexamination filed by David M. LaPrairie of Howard & Howard
Attorneys PC. (Request for Ex Parte Reexamination filed September 29,
2008). We also understand that the ‘298 Patent is the subject of litigation
styled TSE Industries, Inc. v. Isotec International, Inc., (M.D.FLA. Oct 07,
2008) (No. 8:08CY01991) and Isotec International, Inc. v. Dimension One
Spas, Inc., (N.D.GA. May 02, 2008) (no. 1:08CVO 1626), which we are told
have been stayed pending the outcome of this reexamination. (App. Br.,
Related Proceedings Appendix).
The ‘298 Patent states that the invention involves a process for
applying polyurethane to a substrate. (Col. 1, ll. 10-18.)
Claim 1 on appeal reads as follows (emphasis added):
1. A process of applying a polyurethane, comprising the
steps of:
a) providing an acrylic substrate;
b) heating said substrate to a selected temperature;
c) selecting a polyol resin reactant;
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d) selecting an isocyanate reactant in a stoichiometric
excess of said polyol resin reactant;
e) mixing said reactants in a spraying mechanism;
f) initiating reaction in said spraying mechanism effective
to form a sprayable mixture of said reactants;
g) spraying said mixture onto the surface of said substrate
wherein said substrate has a temperature of between 95°F to
about 110°F at the time of spraying said mixture onto said
substrate and forming a selected polyurethane from said
reactants on the surface of said substrate to a selected thickness;
and
h) curing said selected polyurethane adhered to said
substrate.

(Claims App’x, App. Br. 17.)

The Examiner relied upon the following as evidence of
unpatentability (Examiner’s Answer mailed June 1, 2011, hereinafter
“Ans.,” 6):
Perry, J.H., "Development in Structural Polyurethane Spray Systems"
Polyurethanes 92, Proceedings of the SPI 34th Annual Technical/Marketing
Conference, pp. 83-88.
Appellant relied on certain parts of the following Exhibits (App. Br.
20):
A: Supp. Decl. of Forest Knight dated January 13, 2010;
B: Decl. of Forest Knight dated November 19, 2009;
C: Decl. of Ryan Price dated November 20, 2009;
D: Decl. of Bill Meek dated November 19, 2009; and
E: Decl. of Dr. Robert Tieman dated November 20, 2009.

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The Examiner rejected claims 1, 3-6, and 8-10 as follows:
I. Claims 1, 3-5, 9, and 10 under 35 U.S.C. § 102(b) as
anticipated by Perry; and
II. Claims 6 and 8 under 35 U.S.C. § 103(a) as unpatentable over
Perry.

ISSUE
The principal issue in this appeal is whether the Examiner erred in
finding that Perry discloses the limitation in the claims that the “substrate
has a temperature of between 95°F to about 110°F at the time of spraying”
of the reactant mixture.
The Examiner found that Perry discloses applying polyurethane to a
substrate that is heated to 104°F. (Ans. 7.)
Appellant contends that Perry only teaches pre-heating the substrate to
drive off moisture, and does not expressly state that the temperature of the
substrate is maintained after pre-heating and until application of
polyurethane. (App. Br. 6, 8.)

FINDINGS OF FACT (“FF”)
1. The ‘298 Patent discloses:
The substrate 12, FIG. 1 is heated to a selected
temperature such that the substrate is at a preselected
temperature at the lime of application of the
polyurethane. The selected heating temperature of the
substrate 12 is dependent of thermal properties of the
substrate. Typically, the acrylic substrates, as discussed
above, have a thermal deformation temperature of 110°
F. to about 120° F. In view of the typical thermal
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deformation properties of the substrate 12, the selected
beating temperature is heated to 90° F. to about 105° F.

(Col. 4, ll. 30-39.)
2. The ‘298 Patent discloses: “The substrate 12 may, if desired,
be preheated to a temperature of 90° F to 105° F before being
placed on the platform 13. Preheating helps to facilitate
adhesion of the polyurethane to the substrate 12.” (Col. 6, ll. 7-
10.)
3. Perry discloses under the heading “Part Preparation”:
When using a structural polyurethane spray system
as a backing for thermoformed plastics, the plastic
molding should be free of dust, solvents, oils, or other
types of dirt. Any contaminant will affect the adhesion at
the polyurethane-plastic interface, which could result in
delamination. The thermoformed plastic part should be
carefully supported because the exothermic reaction of
the polyurethane system will cause the plastic to soften.
The part should be allowed to cool for at least 15 minutes
before handling. As with molds, thermoformed plastic
parts should be heated to 104°F (40°C) for spraying.
(P. 84, 2nd column, 3rd full para.)
4. Perry discloses under the heading “Part Preparation”:
When using structural polyurethane spray systems
as a backing for in-mold polyester or polyurethane
coatings, the same basic procedures should be used.
However, time must be allowed between the application
of the in-mold coating and the application of the
polyurethane backing. This time is required to allow the
styrene and other solvents in the coatings to evaporate. If
the polyurethane backing is applied too soon after the
application of the coating, foaming and blistering will
occur. In most cases, an hour wait between application
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of the coating and the spraying of the polyurethane
system will produce a good bond between the two.
(P. 84, 2nd column, 2nd full para.)
5. Perry discloses that when properly applied, the adhesion of
sprayed unfilled polyurethane does not require surface
treatment or adhesion promoters. (P. 85, 2nd column, 4th full
para.)
6. Mr. Knight stated that in heating the substrate, it
quickly cools below the specified temperatures in the
process in less than 30 seconds after heating to 104°F due
to cooler plant air temperatures and the mechanical
exhaust in the spray booth required for spraying the
isocyanate component of the polyurethane. Cooler air is
moving over the part after positioning the spa in a spray
booth prior to spraying. Therefore, to achieve the claimed
selected temperatures at the time of spraying, customers
are advised to heat the shells to 120°F or higher to allow
for this cooling which occurs before spraying.

(Knight Declaration, para. 4.)

PRINCIPLES OF LAW
“Anticipation requires that every limitation of the claim in issue be
disclosed, either expressly or under principles of inherency, in a single prior
art reference.” Corning Glass Works v. Sumitomo Elec. U.S.A., Inc., 868
F.2d 1251, 1255-56 (Fed. Cir. 1989). “[E]ven if a piece of prior art does not
expressly disclose a limitation, it anticipates if a person of ordinary skill in
the art would understand the prior art to disclose the limitation and could
combine the prior art description with his own knowledge to make the
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claimed invention.” Arthrocare Corp. v. Smith & Nephew, Inc., 406 F.3d
1365, 1374 (Fed. Cir. 2005) (citing Helifix Ltd. v. Blok-Lok, Ltd., 208 F.3d
1339, 1347 (Fed. Cir. 2000)).

ANALYSIS
Upon review of the record, we agree with the Examiner that Perry
anticipates the claimed limitation where the substrate has a temperature
between 95°F to about 110°F at the time of spraying. Perry expressly
discloses that that the substrate is heated to 104°F “for spraying.” (FF 3.)
Thus, we agree with the Examiner, that this statement would be understood
by one of ordinary skill in the art to mean that the substrate should have a
temperature of 104 °F when spraying commences or “at the time of
spraying.” (Ans. 9-10.) We are not persuaded by Appellant’s argument that
because Perry discloses heating the substrates to drive off moisture, a
temperature above 70°F would only be required, and therefore Perry would
not be concerned with maintaining a temperature of 104°F. (App. Br. 12,
15.) First, as discussed above, Perry expressly discloses a temperature
within the claimed range. In addition, as the Examiner points out, the
purpose of heating the substrate to improve adhesion as disclosed in the ‘298
Patent (FF 2) is not inconsistent with the purpose of heating the substrate as
disclosed in Perry (FF 3). (Ans. 13.) Specifically, Perry discloses that the
presence of contaminants affect the adhesion properties of the polyurethane
to the substrate. (FF 3.) Thus, the absence of water as a contaminant would
aid in the adhesion of polyurethane to the substrate.
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Appellant’s evidence that substrates cool quickly after heating (FF 6;
Meek Declaration, para. 2, Exhibit B), is similarly not persuasive. We do
not find the Declarants’ opinions that Perry only discloses pre-heating the
substrate (App. Br. 8, 12-13) persuasive because the express wording of
Perry does not support the opinions expressed therein. Perry discloses in the
“Part Preparation” section that when structural polyurethane spray systems
are used as backings, time must be allowed between the application of the
in-mold coating and the application of polyurethane backing. (FF 4.)
Subsequently, Perry discloses that the molds are heated to 104°F for
spraying. (FF 3.) We acknowledge that the Meek Declaration reported that,
because of cooling, the substrate would be under the claimed range in less
than a minute after being removed from the heating (Exhibit B). However,
Perry does not indicate that the substrates are simply pre-heated to 104°F,
and then left to cool, but rather indicates that the substrates should be at the
disclosed temperature for the spraying process. Accordingly, the
preponderance of the evidence does not support Appellant’s position that
Perry allows the substrate to cool below the recited temperature range in the
claims prior to spraying.
Last, we are not persuaded by the statements made in Mr. Knight’s
Declaration that in order for the temperature to be within the claimed range,
the acrylic substrates must be heated to higher temperatures of 120°F or
above. (App. Br. 12-13; FF 6.) We have not been directed to persuasive
evidence that one of ordinary skill in the art would have been incapable of
applying appropriate techniques in order to ensure that the temperature is at
104°F for spraying. Indeed, the ‘298 Patent itself is silent as to how the
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substrate is at the recited temperature range at the time of spraying. (See FF
1, 2.) Moreover, the temperatures allegedly required, 120°F or above, to
achieve a temperature range of 95°F to 110°F recited in the claims, appear to
be above the deformation temperatures of 110°F to about 120°F for acrylic
substrates disclosed in the ‘298 Patent. (FF 1, 6.) Appellant does not
explain this apparent inconsistency between the Declaration evidence and
the ‘298 Patent.
Regarding the rejection under 35 U.S.C. §103, Appellant relies on
similar arguments. (App. Br. 15.) Accordingly, we affirm the Examiner’s
rejection for the same reasons.

CONCLUSION
On this record, Appellant has failed to demonstrate any error in the
Examiner’s factual finding that Perry discloses the limitation in the claims
that the “substrate has a temperature of between 95°F to about 110°F at the
time of spraying” of the reactant mixture.

DECISION
The Examiner’s decision to reject claims 1 and 3-10 is affirmed.
Requests for extensions of time in this ex parte reexamination
proceeding are governed by 37 C.F.R. § 1.550(c). See 37 C.F.R. § 41.50(f).

AFFIRMED

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Appeal 2011-013306
Reexamination Control 90/009,289
Patent 6,521,298 B1

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PATENT OWNER:
STEVEN L. SCHMID
1824 HICKORY TRACE DRIVE
FLEMING ISLAND, FL 32003-65850

THIRD-PARTY REQUESTER:
HOWARD & HOWARD ATTORNEYS PLLC
450 WEST FOURTH STREET
ROYAL OAK, MI 48067-2557