Ex Parte Sasaki et al

Board of Patent Appeals and Interferences

Oct 13, 2009

10869931 (B.P.A.I. Oct. 13, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte TAKAYUKI SASAKI, YUUJI KIMURA,
and KATSUJI KURIBAYASHI
____________

Appeal 2009-006773
Application 10/869,931
Technology Center 1700
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Decided: January 26, 2010
____________

Before EDWARD C. KIMLIN, BRADLEY R. GARRIS, and
CHARLES F. WARREN, Administrative Patent Judges.

GARRIS, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

Appellants request rehearing (filed December 2, 2009) of our
Decision (issued October 13, 2009) wherein we affirmed each of the
Examiner’s § 102, § 103, and obviousness-type double patenting rejections
of claims 1-3, 11, 14, 18, and 20-26.
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Appellants’ arguments in their request are limited to the rejections
based on Sugiyama and Wada. The request contains no arguments directed
to our Decision to affirm the obviousness-type double patenting rejection of
all appealed claims as being unpatentable over the claims of Application
11/385,933, now U.S. Patent 7,388,037.
The Rejections Based On Sugiyama
Appellants disagree with our finding that Sugiyama’s polyol
formation technique would necessarily yield a polyol having an oxyalkylene
random chain based on our rationale that this technique corresponds to the
polyol formation technique disclosed by Appellants as yielding an
oxyalkylene random chain (Req. 1-2). According to Appellants, “any
polymer chemist of ordinary skill would appreciate that in order to obtain an
oxyalkylene random chain, there must be a mixture of at least two different
precursor alkylene oxides which form oxyalkylene groups upon reaction”
(Req. 2). Appellants argue that “the only embodiment disclosed [by
Sugiyama] for making resilient polyurethane foams involves reacting a
single alkylene oxide, i.e., propylene oxide, in the presence of a polyol
initiator and the inventive double metal cyanide complex catalyst, followed
by reacting this intermediate product with ethylene oxide in the presence of
an alkali catalyst, as pointed out at the last paragraph of page 11 of the
Appeal Brief” (id.).
In their request (and likewise in the last paragraph on page 11 of the
Appeal Brief), Appellants fail to identify any disclosure of Sugiyama which
supports the above quoted argument. For this reason alone, the argument
fails to reveal error in our Decision to sustain the rejections based on
Sugiyama.
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Furthermore, Sugiyama’s disclosure contradicts Appellants’ argument
that Sugiyama reacts only a single alkylene oxide in the presence of a double
metal cyanide complex catalyst. This is because Sugiyama teaches a ring-
opening polymerization which comprises subjecting alkylene oxides to ring-
opening polymerization with double metal cyanide complex catalyst (paras.
[0051]-[0052]). Sugiyama also teaches that these alkylene oxides may
include “[t]wo or more [which] . . . may be mixed with each other for
reaction” (para. [0053]). In addition, Sugiyama discloses that, “[i]n the case
of using the catalyst for alkylene oxide ring-opening polymerization [i.e.,
double metal cyanide complex] of the present invention, ethylene
oxide…may undergo reaction by mixing with an alkylene oxide having a
carbon number of at least 3” (para. [0054]). Finally, Sugiyama teaches that
“[p]articularly preferred alkylene oxide is…a combination of propylene
oxide with ethylene oxide” (para. [0055]).
In this latter regard, we observe that Appellants expressly teach that
their “oxyalkylene random chain is preferably an oxyethyleneoxypropylene
random chain obtainable by reacting ethylene oxide and propylene oxide”
(Spec. 10, ll. 15-17). Therefore, contrary to Appellants’ argument,
Sugiyama not only discloses performing ring-opening polymerization with
double metal cyanide complex in the presence of plural alkylene oxides but
preferably in the presence of the same combination of propylene oxide with
a ethylene oxide as preferred by Appellants.
Appellants also disagree with our determination that they had failed to
show error in the Examiner’s finding that Sugiyama’s flexible polyurethane
foam inherently possesses the claimed core impact resilience of at most 30%
(Req. 2-3; cf., Dec. 4, first two paras., 6, last para., 7, first para.). However,
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as stated in our Decision, the record contains no support for Appellants’
argument that Sugiyama’s foams, even when formed by an open or slab
system, “will not decrease to a level of 30% or less” (Dec. 6, last para.
(quoting App. Br., para. bridging 10-11), 7, first para.). Accordingly, we
remain convinced that the record evidence weighs in favor of the Examiner’s
determination that Sugiyama’s flexible polyurethane foams would inherently
possess Appellants’ claimed core impact resilience values.
The Rejections Based on Wada
Appellants advance the following argument concerning our Decision
to sustain these rejections:
Like in the erroneous finding above with regard to
Sugiyama, Wada’s polyurethane foam is not derived from a
polyol having an oxyalkylene random chain formed by using a
double metal cyanide complex catalyst, because Wada does not
disclose a mixture of at least two alkylene oxide precursors, as
erroneously found by the Board (Dec. at 5-6).
(Req. 4).

Again, Appellants have failed to identify any disclosure in Wada
which supports their argument. For this reason alone, Appellants’ argument
fails to reveal error in our Decision sustaining the Examiner’s rejections
based on Wada.
In addition, Appellants’ argument is contrary to the teachings of
Wada. Specifically, Wada discloses a polyol formation technique which
corresponds to Appellants’ technique as explained in our Decision (Dec.
para. bridging 5-6). Furthermore, contrary to Appellants’ argument that
Wada’s technique involves only a single alkylene oxide, Wada expressly
teaches, like Appellants, a preference for the combined use of ethylene oxide
with propylene oxide (col. 3, ll. 4-42, especially ll. 35-38).
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Appellants also argue that our Decision erroneously refused to
consider Appellants’ new arguments in the Reply Brief concerning their
claim for priority filing date benefits in order to remove Wada as prior art
(Req. 4-5; cf., Dec. 8-9).
According to Appellants:
The Examiner never made any specific or non-vague
findings against which Applicants could rebut, simply finding
that some non-specific “value points” do not support claimed
ranges. It was only out of an abundance of caution that
Applicants pointed out in the Reply Brief where the priority
applications supported the claims. Applicants submit that the
above satisfies the “good cause” requirement of 37 CFR
41.37(c)(1)(vii)(2007).
(Req., para. bridging 4-5).
We do not agree.
As explained in our Decision (Dec. 8), at the time Appellants’ Appeal
Brief was filed on October 8, 2007, the Examiner had denied Appellants’
priority claim repeatedly for the same reasons (e.g., see the Final Office
Action of March 13, 2007 and the Non-Final Office Action of August 10,
2006). The record is silent as to why Appellants repeatedly declined to
respond to the Examiner’s reasons for denying their claim of priority. Under
these circumstances, we cannot agree with Appellants that they have shown
good cause for why their Reply Brief rebuttal of the Examiner’s reasoning
had not been earlier presented in the Appeal Brief as required by 37 CFR §
41.37(c)(1)(vii)(2007).
Finally, Appellants argue that, even disregarding their Reply Brief
rebuttal of the Examiner’s reasoning, our Decision erred in not granting their
claim of priority in order to thereby remove Wada as prior art. Appellants’
rationale in support of this argument follows:
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[T]he issue of the prior art status of Wada as prior art was
joined below and raised in the Appeal Brief. Yet the Board
made no specific finding on the prior art status of Wada, simply
finding that “the record properly before us in this appeal simply
[sic, amply] supports the Examiner’s determination that
Appellants’ claim of priority should be denied” (Decision at 9.)
(Req., para. bridging 4-5).
This argument is unpersuasive.
As indicated above and fully explained in our Decision (Dec. 8), the
Examiner provided the record of this appeal with specific reasons for
denying Appellants’ claim for priority date benefits (see Ans. 11). Prior to
their Reply Brief, Appellants had never filed a response explaining why the
Examiner’s reasons were not well taken. Therefore, the record of this
Appeal, which excludes the new Reply Brief argument, consists of a priority
claim denial by the Examiner for reasons never rebutted by Appellants.
Accordingly, we adhere to the view point expressed in our Decision that “the
record properly before us in this appeal amply supports the Examiner’s
determination that Appellants’ claim of priority should be denied” (Dec. 9).
Order
Appellants’ Request For Rehearing is denied.

DENIED

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