Ex Parte Younes

Board of Patent Appeals and Interferences

Sep 24, 2010

11513764 (B.P.A.I. Sep. 24, 2010)

UNITED STA 1ES p A 1ENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111513,764 08/31/2006
157 7590 09/28/2010
BA YER MATERIAL SCIENCE LLC
100 BA YER ROAD
PITTSBURGH, PA 15205
FIRST NAMED INVENTOR
U sama E. Younes
UNITED STA TES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
P08859/MD04- l 7 4434
EXAMINER
EASHOO, MARK
ART UNIT PAPER NUMBER
1796
NOTIFICATION DATE DELIVERY MODE
09/28/2010 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
veronica. thompson@bayerbms.com
bmspatents@bayerbms.com
donna.veatch@bayerbms.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
Ex parte USAMA E. YOUNES
Appeal 2009-013578
Application 11/513,764
Technology Center 1700
Before EDWARD C. KIMLIN, BEVERLY A. FRANKLIN, and
MARK NAGUMO, Administrative Patent Judges.
FRANKLIN, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellants appeal under 35 U.S.C. § 134 from the Examiner's
rejection of claims 1-36. We have jurisdiction under 35 U.S.C. § 6(b).
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.
Appeal 2009-013578
Application 11/513,764
STATEMENT OF THE CASE
Claim 1 is representative of the subject matter on appeal and is set
forth below:
1. A low density fiber-reinforced polyurethane comprising the
reaction product of
(1) an isocyanate-reactive component comprising:
a) a polyol having a hydroxyl group functionality of from about
3 to about 8 and a hydroxyl number greater than 200,
b) a catalyst,
c) a surfactant,
d) optionally, a crosslinking agent,
e) optionally, water, and
f) optionally, dissolved carbon dioxide, and
(2) an isocyanate component comprising:
a) an organic polyisocyanate, and
b) optionally, dissolved carbon dioxide, and
(3) a) a fibrous reinforcing material,
in which dissolved carbon dioxide is present in at least one of the
isocyanate-reactive component or the isocyanate component and the total
amount of carbon dioxide present in the isocyanate-reactive and/or
isocyanate component is from 0.2 to 2.0 grams per liter.
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Appeal 2009-013578
Application 11/513,764
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Younes
Shidaker
6,458,861 Bl
6,887,911 B2
THE REJECTIONS
Oct. 1, 2002
May 3, 2005
1. Claims 1-17 are rejected under 35 U.S.C. 103(a) as being
unpatentable over Shidaker in view of Younes
2. Claims 18-19 are rejected under 35 U.S.C. 103(a) as being
unpatentable over Shidaker in view of Younes.
3. Claims 20-36 are rejected under 35 U.S.C. 103(a) as being
unpatentable over Shidaker in view of Younes.
ANALYSIS
As an initial matter, Appellant's arguments are essentially the same
for each of the above-listed rejections, and we select claim 1 as the
representative claim upon which our analysis will focus, and upon which the
outcome of our decision is based. See 37 C.F.R. § 41.37(c)(l)(vii),
We essentially adopt the Examiner's findings pertinent to the issue
raised by Appellants for this rejection. We, therefore, incorporate the
Examiner's position as set forth in the Answer. We add the following for
emphasis only.
Appellant asserts that the claimed invention is directed to a goal
(increasing the de-mold time of the composition) which is opposite of the
goal in Shidaker (reduced mold time). Br. 5. However, as pointed out by
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Appeal 2009-013578
Application 11/513,764
the Examiner on page 8 of the Answer, such a limitation is not set forth in
Appellant's claims. It is the claims that define the invention and, therefore,
the absence in the prior art of subject matter not included in the claims
cannot be a basis for patentability. See Constant v. Advanced Micro-
Devices, Inc., 848 F.2d 1560, 1571 (Fed. Cir. 1988); see In re Self, 671 F.2d
1344, 1348 (CCPA 1982) ("Many of appellant's arguments fail from the
outset because ... they are not based on limitations appearing in the
claims.").
Appellant also asserts that Shidaker does not teach to select carbon
dioxide as the blowing agent to increase de-mold times. Br. 6. However,
"[a]s long as some motivation or suggestion to combine the references is
provided by the prior art taken as a whole, the law does not require that the
references be combined for the reasons contemplated by the inventor." In re
Beattie, 974 F.2d 1309, 1312 (Fed. Cir. 1992). The Examiner has provided
proper motivation as set forth on pages 3-4 of the Answer.
Appellant also argues that Younes is directed to a completely different
type of polyurethane material than that disclosed by Shidaker such that it
would not be obvious to combine these two references. Br. 6. However, as
pointed out by the Examiner on page 9 of the Answer, Younes teaches that
the amount of carbon dioxide affects the density of the product. Younes,
col. 5, 11. 5-10. Appellant's aforementioned argument has not convinced us
that there would not have been a reasonable likelihood of success in
selecting the amount of carbon dioxide as taught by Younes to obtain a
desired density of the final product from the combination of Shitaker in view
of Younes. Also, it is well settled that where patentability is predicated upon
a change in a condition of a prior art composition or process, such a change
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Appeal 2009-013578
Application 11/513,764
in temperature, concentration or the like, the burden is on the Applicant to
establish with objective evidence that the change is critical, i.e., it leads to a
new, unexpected result. In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir.
1990); In re Aller, 220 F.2d 454, 456 (CCPA 1955).
Finally, Appellant repeats the position that the applied art is not
concerned with mold residence times, and in particular, is not directed to
increasing mold residence times. Br. 7-8. Reply Br. 2. As stated, supra, the
references need not be combined for the reasons contemplated by the
inventor. In re Beattie, at 1312.
CONCLUSIONS OF LAW AND DECISION
Each of the rejections is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(v).
AFFIRMED
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BAYER MATERIAL SCIENCE, LLC
lOOBAYERROAD
PITTSBURGH, PA 15205
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