Ex Parte Miller

Board of Patent Appeals and Interferences

Sep 28, 2010

10672363 (B.P.A.I. Sep. 28, 2010)

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.
10/672,363 09/26/2003 John William Miller 06459 USA 3026
23543 7590 09/29/2010
AIR PRODUCTS AND CHEMICALS, INC.
PATENT DEPARTMENT
7201 HAMILTON BOULEVARD
ALLENTOWN, PA 181951501
EXAMINER
COONEY, JOHN M
ART UNIT PAPER NUMBER
1796
MAIL DATE DELIVERY MODE
09/29/2010 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 JOHN WILLIAM MILLER
____________________

Appeal 2009-013405
Application 10/672,363
Technology Center 1700
____________________

Before CATHERINE Q. TIMM, BEVERLY A. FRANKLIN, and
KAREN M. HASTINGS, Administrative Patent Judges.

TIMM, Administrative Patent Judge.

DECISION ON APPEAL1
I. STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
decision to reject claims 1, 6-17, and 21-30 under 35 U.S.C. § 103(a) over
Blum (US 4,581,432, issued Apr. 8, 1986) in view of Bogdan (US

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
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Application 10/672,363

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6,086,788, issued Jul. 11, 2000).2 We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.
Appellant’s invention relates to compositions and processes for
making polyurethane foams (Spec. ¶ [0001]). The composition includes a
compound, such as ethylene glycol monobutyl ether, that is characterized as
a blowing agent enhancer (i.e., said to enhance the effectiveness of the
hydrohalocarbon blowing agent also included in the composition).
Appellant claims compositions including the blowing agent and enhancer
along with a polyol and/or polyisocyanate (see independent claims 1, 15, 22,
and 24), a method of making a polyurethane foam by combining a polyol
and a polyisocyanate in the presence of the blowing agent and blowing agent
enhancer (claim 16), and the resulting polyurethane product (claim 21).
All of the claims except for claim 22 require that the blowing agent
enhancer be present in an amount of at least 4 pphp (parts by weight per 100
parts polyol).
II. DISCUSSION
The dispute in this appeal centers on the concentration requirement of
the claims. The Examiner finds that Blum teaches including ethylene glycol
monobutyl ether, one of Appellant’s claimed “blowing agent enhancers,” but
acknowledges that Blum does not teach including it in concentrations within
the claimed range (Ans. 3). The Examiner, however, further finds that only

2 The Examiner maintains a rejection of claims 1, 6-17, and 21-30 on the
ground of nonstatutory obviousness-type double patenting (Ans. 2). As this
rejection has not been presented for our review, we do not reach it (Br. 8).
We note that Appellant has indicated an intent to file a terminal disclaimer to
obviate this rejection (Br. 4).
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Application 10/672,363

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routine experimentation is required for discovering the optimum value of the
concentration, and bases the obviousness conclusion on this finding (Ans. 3-
6). Appellant contends that the Examiner has failed to establish that one of
ordinary skill in the art would have been led to include at least 4 pphp of
ethylene glycol monobutyl ether in compositions suggested by that reference
(Br. 10-11).
The issue is: Does the evidence support a prima facie case of
obviousness such that the burden has been shifted to Appellant to show non-
obviousness by, for instance, showing the claimed range is critical for
obtaining unexpected results?
We answer this question in the affirmative.
There is no dispute that, according to Examples 3 and 5, Blum adds
ethylene glycol monobutyl ether to dissolve a catalyst (Examples 3 and 5;
Compare Br. 9; Ans. 3-4). Nor is there any dispute that the amounts used in
Examples 3 and 5 (1.2 pphp in Example 3 and 3.2 pphp in Example 5,
according to Appellant) are not within the claimed range of at least 4 pphp
(Compare Br. 10 with Ans. 5-6).
As pointed out by the Examiner, Examples 3 and 5 evince that the
amount of ethylene glycol monobutyl ether used is dependent on the amount
of catalyst (triethylenediamine) to be dissolved (Ans. 5-6). It is apparent
that as the amount of catalyst increases, the amount of ethylene glycol
monobutyl ether needed to dissolve the catalyst will also increase. But the
question remains, as correctly identified by Appellant: would one of
ordinary skill in the art have been led to include at least 4 pphp of the
ethylene glycol monobutyl ether in a composition suggested by Blum? (Br.
11.)
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Blum teaches the type of variation leading one of ordinary skill in the
art to perform routine experimentation to determine the workable or optimal
concentration of the ethylene glycol monobutyl ether catalyst solvent.
Example 3 teaches dissolving 1 part of triethylenediamine catalyst in 2 parts
of ethylene glycol monobutyl ether. Example 5 indicates that a greater
amount of catalyst, 1.5 parts triethylenediamine, requires a higher amount of
the ether, i.e., 4.5 parts. We also point out that the pphp value (Appellant’s
mode of measuring concentration) is dependent further on the amount of
polyol in the composition, and tertiary amine catalysts, such as
triethylenediamine, may be present in Blum in amounts up to 5 parts (Blum,
col. 12, ll. 39-40). These facts support a determination that one of ordinary
skill in the art would have been led to add at least 4 pphp ethylene glycol
monobutyl ether to dissolve the catalyst; particularly, when adding the
higher amounts of catalyst suggested by Blum’s broader disclosure. Thus,
the evidence is sufficient to support a prima facie case of obviousness under
the facts of this case. See In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir.
1990) (discussing cases with concentration and variable differences, and
stating that “in such a situation, the applicant must show that the particular
range is critical, generally by showing that the claimed range achieves
unexpected results relative to the prior art range.”).
Appellant has advanced a thoughtful and well crafted argument.
However, after reviewing all the evidence on record, we determine that the
evidence is sufficient to support a prima facie case of obviousness such that
the burden has shifted to Appellant to provide evidence sufficient to show
non-obviousness by, for instance, showing the claimed range achieves
unexpected results. There is no such evidence relied upon in this appeal.
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We further note that claim 22 does not require that the blowing agent
enhancer be present in the amount of at least 4 pphp. Therefore, even if the
evidence supported Appellant’s contention, we could not say that Appellant
has sufficiently overcome the Examiner’s rejection of this claim or claims 23
and 29, which depend from it.
III. CONCLUSION
On the record before us, we sustain the rejection maintained by the
Examiner.
IV. DECISION
The decision of the Examiner is affirmed.
V. 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).

AFFIRMED

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AIR PRODUCTS AND CHEMICALS, INC.
PATENT DEPARTMENT
7201 HAMILTON BOULEVARD
ALLENTOWN PA 18195-1501