Ex Parte Robinson et al

Patent Trial and Appeal Board

Dec 17, 2015

12600295 (P.T.A.B. Dec. 17, 2015)

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.
12/600,295 11/16/2009 Daphne N. Robinson 3735-01 7522
37535 7590 12/17/2015
THE LUBRIZOL CORPORATION
29400 LAKELAND BLVD
MAIL DROP 022B
WICKLIFFE, OH 44092-2298
EXAMINER
WASHVILLE, JEFFREY D
ART UNIT PAPER NUMBER
1766
MAIL DATE DELIVERY MODE
12/17/2015 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 LUBRIZOL ADVANCED MATERIALS, INC.
____________________

Appeal 2014-001420
Application 12/600,295
Technology Center 1700
____________________

Before FRED E. McKELVEY, ROMULO H. DELMENDO, and
DEBORAH KATZ, Administrative Patent Judges.

McKELVEY, Administrative Patent Judge.

DECISION ON REHEARING
37 C.F.R. § 41.52

I. Background
Lubrizol Advanced Materials, Inc., (“Appellant”), the real party in interest,1 1
requests rehearing of our Decision on Appeal dated 7 October 2015. 37 C.F.R. 2
§ 41.52. 3
Our Decision on Appeal was designated as a new rejection. 37 C.F.R. 4
§ 41.50(b). 5

1 Appeal Brief (“Br.”), page 2. According to the Appeal Brief, Lubrizol
Advanced Materials, Inc. is a wholly owned subsidiary of The Lubrizol
Corporation which in turn is a wholly owned subsidiary of Berkshire Hathaway
Inc. Br. 2.

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Appellant elected to request rehearing as opposed to reopening prosecution 1
before the Examiner. 2
II. Appellant’s Position 3
According to Appellant, “[i]n finding the [subject matter of the] claims 4
[would have been] obvious, the Board did not [properly] credit . . . evidence of 5
unexpected results [said to have been] provided in . . . [a] Rule 132 Declaration of 6
Inventor Daphne Robinson.” Request for Rehearing (“Request”), page 1. Further 7
according to Appellant, it is believed that the “Board’s dismissal of Appellant’s 8
data is based on a misinterpretation and misunderstanding of . . . [a] Table from 9
which the data was taken.” Id. 10
Based on a clarified explanation in the Request (pages 2–4), the Board now 11
understands that the data relied upon by Inventor Robinson is data from Example 3 12
and Example 4 of the Specification (pages 5–6). 13
Example 3 describes a reaction of (1) an ADI mixture of aliphatic 14
diisocyanates and (2) 1,4-cyclohexanedimethanol. Specification, page 5:28 15
through page 6:14. 16
A similar, but not identical, reaction is described by Foley. Page 1, ¶ 0011, 17
page 2, ¶ 0015, and page 3, ¶ 0026 (1,4-cyclohexanediol but not 1,4-cyclohexane-18
dimethanol). 19
Edwards suggests reaction of (1) 1,3-bis(isocyanatomethyl)-cyclohexane 20
with (2) 1,4-cyclohexanedimethanol. Col. 2:23 and 35–36. 21
Example 4 describes reaction of (1) an ADI mixture of aliphatic 22
diisocyanates and (2) UNOXOLTM, an isomeric mixture of 1,3-cis- and trans- 23

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cyclohexanedimethanol and 1,4-cis- and trans-cyclohexanedimethanol. 1
Specification, page 6:16 through page 7:3. 2
Foley describes the use of the isocyanates. Dow and PCI describe the use of 3
the diols. 4
The Specification emphasizes a need for thermoplastic polyurethanes that 5
are “weatherable.” Specification, page 1:12 and 18. The compositions of 6
Example 3 are said to have “improved weatherability due to its aliphatic structure.” 7
Id. at page 6:12–13. 8
In its Request (page 4), Appellant provides a useful table (Table A below) 9
comparing various properties of the Example 3 vis-à-vis the Example 4 10
thermoplastic polyurethanes: 11
Table A 12

According to the Specification (page 10:1–3), “[t]he data . . . show[s] 13
improved properties of the rigid thermoplastic urethane[] of the . . . invention in 14
relation to the rigid thermoplastic urethane[] of the prior art.” (Italics added). 15
According to the Robinson Rule 132 testimony “I would not have expected the 16
specific isomeric mixture of CHDM[2] taught . . . [in PCI] to provide superior 17

2 CHDM means cyclohexanedimethanol.

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properties . . . over non-isomeric CHDM.” (Italics added). Robinson Declaration, 1
page 3, third full paragraph. Further according to the Robinson Rule 132 2
testimony, “[t]he results from Examples 3 and 4 were surprising and would not 3
have been expected based on the teachings of PCI.” Id. at pages 3–4. (Italics 4
added). 5
III. Discussion 6
A. Unexpected Results Argument 7
Appellant on rehearing challenges the weight we have assigned to Inventor 8
Robinson’s Rule 132 testimony. 9
We have broad discretion to assign the weight to be accorded witness 10
testimony. In re Inland Steel Co., 265 F.3d 1354, 1366 (Fed. Cir. 2001); Velander 11
v. Garner, 348 F.3d 1359, 1370–71 (Fed. Cir. 2003); In re Am. Acad. of Sci. Tech. 12
Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004). An applicant has the burden of 13
establishing “superior,” “surprising,” and unexpected results. In re Geisler, 116 14
F.3d 1465, 1469–1470 (Fed. Cir. 1997) (whether evidence shows unexpected 15
results is a question of fact and party asserting unexpected results has the burden of 16
proving that the results are unexpected). An examination for unexpected results is 17
a factual, evidentiary inquiry. In re Inland Steel, 265 F.3d at 1366. It is not 18
enough to show that results obtained differ from those obtained in the prior art—19
any difference must be shown to be an unexpected difference. In re Klosak, 455 20
F.2d 1077, 1080 (CCPA 1972). 21
While data based on Examples 3 and 4 is provided in the record, what is not 22
provided is an explanation of why the data represents “improved properties,” 23
(Specification, page 10:1), “superior properties” (Rule 132 testimony, page 3, third 24

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full paragraph), “surprising” properties (Rule 132 testimony, page 3, last line), or 1
why the properties “would not have been expected” (id.). 2
Inventor Robinson has not testified as to what would have been expected 3
and why the results obtained are sufficiently different to qualify as “improved,” 4
“superior,” “surprising” or unexpected. The mere fact that the product of 5
Example 4 had increased flexural strength, flexural modulus, tensile strength, and 6
glass transition temperature (Tg) does not per se make out a case of unexpected 7
results. In effect, what Appellant has done (1) was to point to results, (2) fail to 8
explain why those results are unexpected, and (3) shift the burden to the Examiner 9
to explain why the results are not unexpected or are otherwise not entitled to much, 10
if any, weight. Until an applicant explains why results are unexpected, the 11
Examiner is under no burden to find that the results are expected. 12
A review of the evidence demonstrates several reasons why the data is not 13
entitled to controlling weight. 14
First, no testimony or other evidence has been specifically called to our 15
attention to establish the error rate in the testing of the properties as set out in 16
Table A. 17
Second, no testimony or other evidence has been specifically called to our 18
attention as to whether testing was based on a single sample or several samples. 19
We have not overlooked Appellant’s references to ASTM test method D790, 20
ASTM test method D638, and the discussion concerning measurement of glass 21
transition temperatures. Specification, page 10:11–15. However, Appellant has 22
not referred to the ASTM test methods in its argument nor has Appellant pointed in 23
its argument to specific information in those test methods. 24

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Third, we note an upgrading of the characterization of the results from pre-1
litigation “improved” (which may or may not be unexpected) in the Specification 2
as filed (page 10:1) to post-litigation “superior” in the Rule 132 testimony (page 3, 3
third full paragraph) to “surprising” (later in the Rule 132 testimony) and 4
ultimately to “would not have been expected” (later in the Rule 132 testimony). 5
The shifting basis upon which Appellant relies demonstrates the need for an 6
applicant to provide an explanation as to why results in the record should be 7
considered to be unexpected. 8
Fourth, PCI teaches that the use of UNOXOL Diol “lead[s] to excellent 9
reactivity during . . . preparation of condensation polymers.” Page 1, col. 1, first 10
full paragraph. Further according to PCI, “[a]s a result of its cycloaliphatic 11
structure, UNOXOL Diol also imparts excellent . . . weatherability. Id. Reactivity 12
is always a concern in making a polyurethane. Weatherability is a property of 13
interest to Appellant. Specification, page 1:11–12. Appellant’s use of a 2006 14
product for its intended purpose is consistent with the prior art. Thermoplastic 15
polyurethanes made from UNOXOL Diol would have been expected to have a 16
flexural strength, a flexural modulus, a tensile strength and a glass transition 17
temperature. These properties would have been the natural result of the obvious 18
use of UNOXOL Diol to make polyurethanes having improved weatherability. 19
As noted by PCI, polyurethane “coatings based on UNOXOL Diol have the best 20
overall balance of hardness and flexibility (tougher coatings), [as] compared [to] 21
NPG.” (Page 3, col. 2, first full paragraph). Appellant’s findings with respect to 22
the properties set out in Table A are consistent with the teaching of PCI. 23

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Fifth, to the extent that the properties set out in Table A represent an 1
unexpected result, we note that claim 1 on appeal does not recite any particular 2
degree of flexural strength, flexural modulus, tensile strength, and glass transition 3
temperature (Tg). Thus, the claims on appeal are not limited to the unexpected 4
result upon which Appellant bases its case. 5
Sixth, apart from the possible exception of claim 6, the showing of alleged 6
unexpected results is not commensurate in scope with the breadth of the claims. In 7
re Greenfield, 571 F.2d 1185, 1189 (CCPA 1978) (showing of unexpected results 8
must be commensurate in scope with breadth of claim). See also In re Kulling, 897 9
F.2d 1147, 1149 (Fed. Cir. 1990); In re Lindner, 457 F.2d 506, 508 (CCPA 1972). 10
The record does not contain a cogent explanation as to why one can extrapolate the 11
Example 3 vis-à-vis Example 4 results beyond those shown for Example 4. 12
B. Other Arguments 13
Appellant acknowledges that it would have been obvious to try the use of 14
UNOXOL Diol to make polyurethanes. Request, pages 4–5. However, Appellant 15
maintains that because of unexpected results, an obvious to try rationale 16
evaporates. Id. at 5. 17
We view the record from a somewhat different perspective. Edwards and 18
Foley represent the status quo in the polyurethane art as of no later than the 19
publication date of Foley (2004). UNOXOL Diol came along in 2006. Logical 20
development in the polyurethane art would have suggested to one having ordinary 21
skill in the art the use of UNOXOL Diol to make polyurethanes even assuming 22
arguendo that a primary emphasis of PCI may be making polyesters. As noted in 23
our Decision on Appeal, since day one polyurethanes have been made by reacting 24

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diisocyantes and diols. When a new diol is developed, it is difficult to imagine that 1
one skilled in the polyurethane art would not have a reason to make a new 2
polyurethane from the new diol. What Appellant seems to insist upon is a 3
reference anticipating its claims. In other words, Appellant would restrict one 4
skilled in the art to being an automaton. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 5
398, 421 (2007), counsels otherwise. KSR also notes that “[w]hen a work is 6
available in one field of endeavor [(making polymers with good weatherability in 7
accordance with PCI)], design incentives and other market forces . . . [(achieving 8
polyurethanes with good weatherability properties)], either in the same field or a 9
different one.” Id. at 417. “If a person of ordinary skill can implement a 10
predictable variation [(a polyurethane with good weatherability properties)], § 103 11
likely bars its patentability.” Id. Selecting a known compound (UNOXOL Diol) 12
to meet known requirements (weatherability requirements in polyurethanes) is not 13
more ingenious than selecting the last piece to put into the last opening in a jig-saw 14
puzzle. It is not a patentable invention. Sinclair & Carroll Co. v. Interchemical 15
Corp., 325 U.S. 327, 335 (1945). 16
IV. Order 17
Upon consideration of the Request for Rehearing, and for the reasons given, 18
it is 19
ORDERED that the Request for Rehearing is denied. 20
FURTHER ORDERED that nothing in our Decision on Appeal or this 21
Decision on Rehearing should be construed as precluding further prosecution in a 22
continuing application. 23
REHEARING DENIED 24