Ex Parte Brown et al

Patent Trial and Appeal Board

Mar 13, 2013

11900374 (P.T.A.B. Mar. 13, 2013)

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.
11/900,374 09/11/2007 William L. Brown 1302-470 2292
52774 7590 03/13/2013
MOMENTIVE PERFORMANCE MATERIALS INC.
c/o Dilworth & Barrese, LLP
1000 Woodbury Road
Suite 405
Woodbury, NY 11797
EXAMINER
BOYLE, KARA BRADY
ART UNIT PAPER NUMBER
1766
MAIL DATE DELIVERY MODE
03/13/2013 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 WILLIAM L. BROWN, PAUL L. MATLOCK,
LOUIS MULLER, and FABRICE PONTHET
__________

Appeal 2011-013620
Application 11/900,374
Technology Center 1700
____________

Before BRADLEY R. GARRIS, CHUNG K. PAK, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

COLAIANNI, Administrative Patent Judge.

DECISION ON APPEAL

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Application 11/900,374

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Appellants appeal under 35 U.S.C. § 134 the final rejection of claims
1, 3-10, 13, 15-22, and 25-34. We have jurisdiction over the appeal pursuant
to 35 U.S.C. § 6(b).
We REVERSE.
Appellants’ invention is directed to open-cell polyurethane foams and
methods for their production where the stability of the foams are improved
by using a polyether-polysiloxane ABA’-type polymer surfactant (Spec.
paras. [0001], [0006]).
Claim 1 is illustrative:
1. A predominantly open-cell rigid, stable polyurethane
foam obtained from a predominantly open-cell rigid
polyurethane foam-forming reaction medium which comprises:
a) at least one polyol;
b) at least one polyisocyanate;
c) at least one catalyst;
d) water;
e) a predominantly open-cell rigid, stable polyurethane
foam-forming amount of at least one surfactant which is a
balanced, substantially linear polyether-polysiloxane ABA’
block copolymer represented by the general formula:

wherein:
each R6 independently is alkyl or aryl of up to 18 carbon
atoms; and,
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each R7 independently is a non-hydrolyzable, hydroxyl-
terminated polyether moiety of either random or blocked
structure -CHR1CHR2CR3R4-(R5)-pO-(C2H4O)x(CyR82yO)zH in
which R1, R2, R3 and R4 each independently is hydrogen or a
monovalent hydrocarbon group of up to 8 carbon atoms which
is free of aliphatic carbon-to-carbon multiple bonds, R5 is a
divalent hydrocarbon group of up to 12 carbon atoms which is
free of aliphatic carbon-to-carbon multiple bonds and p has a
value of 0 or 1, each R8 independently is hydrogen, alkyl of up
to 18 carbon atoms, phenyl or alkyl-substituted phenyl in which
the alkyl substituent(s) independently contain up to 4 carbon
atoms, x is from 5 to 50, Y is from 2 to 6, z is from o to 25, and
x + z is from 5 to 50, and,
m is from 10 to 40; and,
f) optionally, at least one additional component selected
from the group consisting of other polymer and/or copolymer,
chain extender, crosslinker, non-aqueous blowing agent, filler,
reinforcement, pigment, tint, dye, colorant, flame retardant,
antioxidant, antiozonant, UV stabilizer, anti-static agent,
biocide and biostat.
Appellants appeal the following prior art rejections:
1. Claims 1, 3-10, 13, 15-22, and 25-34 are rejected under 35 U.S.C.
§ 102(b), as being unpatentable over Schlak (US 5,112,874 issued
May 12, 1992).
2. Claims 1, 3-10, 13, and 15-22 are rejected under 35 U.S.C. § 103(a),
as being unpatentable over GB ‘784 (GB 1,006,784 published Oct. 6,
1965).

Appeal 2011-013620
Application 11/900,374

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REJECTION (1): § 102
ISSUE
Did the Examiner reversibly err in finding that Schlak anticipates the rigid,
stable polyurethane foam of claim 1? We decide this issue in the
affirmative.

FINDINGS OF FACT & ANALYSIS
The Examiner finds, in relevant part, that Schlak does not expressly
teach the foams are rigid (Ans. 6). Nevertheless, the Examiner finds that,
based on Schlak, it would have been inherent to produce a “rigid” foam
because Schlak teaches that depending on the choice of starting compounds
and mixing ratios, Schlak’s process is suitable for producing hard
microcellular moldings or for the production of hard integral moldings (id.).
The Examiner finds that rigid and flexible are relative terms such that
Schlak’s foam, which may be hard, is considered rigid within the meaning of
the claims (id. at 7-8).
Appellants argue that Schlak does not teach rigid, open cell
polyurethane foam (App. Br. 13-14). Appellants contend that the
Declaration of William L. Brown (hereinafter the “Brown Declaration”)
establishes that Schlak’s Example 4 composition produces a flexible foam,
not a rigid foam and the open cell content is less than that required for a
flexible, open cell foam as defined in paragraph 10 of the Specification (id.
at 15-16). Appellants argue that the Examiner’s anticipation rejection is
impermissibly based on picking and choosing the various discrete
disclosures from Schlak and fails to address where Schlak teaches the
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claimed foam composition arranged in the manner specified in the claims
(Reply Br. 4-6).
The preponderance of the evidence favors Appellants’ argument and
evidence of novelty. The Examiner’s rejection fails to direct us to a teaching
in Schlak where the claim elements, including the inherently disclosed rigid
feature, are arranged as in the claims. Therasense Inc. v. Becton, Dickinson
& Co., 593 F.3d 1325, 1332 (Fed. Cir. 2010). Rather, the Examiner picks
and chooses various discrete and distinct teachings of the Schlak reference to
arrive at the claimed rigid, open cell polyurethane foam. Picking and
choosing various distinct disclosures may be entirely proper in formulating
an obviousness rejection, but is not appropriate for an anticipation rejection
which requires identical disclosure or description. In re Arkley, 455 F.2d
586, 587-88 (CCPA 1972).
Schlak’s disclosure, that whether a “hard” (i.e., “rigid” according to
the Examiner (Ans. 5)) foam is achieved depends upon the choice of starting
materials and their mixing ratios without further explanation, underscores
that Schlak fails to teach a rigid, open cell polyurethane foam within the
meaning of § 102. Indeed, contrary to the Examiner’s finding (id. at 9),
paragraph 7 of the Brown Declaration provides factually based evidence that
the foam produced by Schlak’s Example 4 embodiment is a flexible foam.
The Examiner does not explain why the Brown Declaration’s evidence that
the foam is flexible should be discounted.
On this record and for the above reasons, we reverse the Examiner’s
§ 102 rejection over Schlak.

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REJECTION (2): § 103
ISSUE
Did the Examiner reversibly err in failing to specifically address the claim
limitation that element (e) of the foam composition includes “a
predominately open-cell rigid, stable polyurethane foam-forming amount of
at least one surfactant which is a balanced, substantially linear polyether-
polysiloxane ABA’ block copolymer” (emphasis added) as recited in claim
1? We decide this issue in the affirmative.

FINDINGS OF FACT & ANALYSIS
The Examiner’s findings and conclusions may be located on pages 6-7
of the Answer.
Appellants argue that GB ‘784 does not teach or suggest using the
hydroxyl-terminated polysiloxane in “an open-cell polyurethane foam-
forming amount” as defined by Appellants in paragraph 14 of the
Specification (App. Br. 22). The Specification defines “open-cell
polyurethane foam-forming amount” as:
an amount of this surfactant that in a particular open-cell
polyurethane foam-forming reaction medium and under a
particular set of polyurethane foam-forming reaction conditions
will effect the stabilization of the foam as it forms thereby
resulting in a predominately open-cell polyurethane foam and
excludes those amounts of surfactant (e), either too small or too
large, which fail to achieve such stabilization
(Spec. para. [0014]).
Appellants correctly point out that the Examiner never explained
whether GB ‘784 teaches that the surfactant (e) is present in the composition
in an “open-cell polyurethane foam-forming amount” as that phrase is
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defined in the Specification. The Examiner’s stated rejection does not
specifically address the argued limitation. The Examiner does find that
GB ‘784 teaches “identical amounts of identical materials as disclosed in the
instant claims” (Ans. 14). However, the Examiner does not explain or
provide a comparison of how the cited GB ‘784 disclosures correspond to
identical amounts of the claimed materials. The Examiner has not provided
any evidence to substantiate the unsupported assertion that the foam
composition of Appellants’ claims and GB ‘784 use identical amounts of the
same materials. Moreover, the Examiner does not make any findings that
GB ‘784 teaches or suggests an open-cell foam structure.
On this record, we reverse the Examiner’s § 103 rejection over
GB ‘784.

DECISION
The Examiner’s decision is reversed.

ORDER
REVERSED

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