Ex Parte Zhang et al

Patent Trial and Appeal Board

Feb 25, 2019

14434247 (P.T.A.B. Feb. 25, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/434,247 04/08/2015
27160 7590 02/27/2019
KATTEN MUCHIN ROSENMAN LLP
(C/0 PATENT ADMINISTRATOR)
2900 K STREET NW, SUITE 200
WASHINGTON, DC 20007-5118
FIRST NAMED INVENTOR
Jing Zhang
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
213202-00711 1249
EXAMINER
COONEY, JOHN M
ART UNIT PAPER NUMBER
1765
NOTIFICATION DATE DELIVERY MODE
02/27/2019 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):
W ashington.PatentAdministrator@Kattenlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte JING ZHANG and DORATA ULMAN
Appeal 2018-003632
Application 14/434,247
Technology Center 1700
Before LINDA M. GAUDETTE, WESLEY B. DERRICK, and
JENNIFER R. GUPTA, Administrative Patent Judges.
GUPTA, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner's
final decision rejecting claims 1-3, 6, 13, 17, 21-23, 26, 27, 29, 30, 33-35,
38, 39, 43, 48, 49, and 54. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 In this Decision, we refer to the Specification filed April 8, 2015 ("Spec."),
the Final Office Action dated September 15, 2016 ("Final Act."), the Appeal
Brief filed August 17, 2017 ("Br."), and the Examiner's Answer dated
December 1, 2017 ("Ans.").
2 Appellant is the Applicant, Proprietect L.P., which, according to the
Appeal Brief, is the real party in interest. Br. 4.
Appeal 2018-003632
Application 14/434,247
The subject matter of the claims on appeal relates to a process for
producing a low density free-rise polyurethane foam having a density of less
than or equal to about 0.75 pcf (pounds per cubic foot). Spec. ,r 2. Claim 1,
reproduced below from the Claims Appendix of the Appeal Brief, is
illustrative of the claims on appeal.
1. A process for producing a free-rise polyurethane foam
having a density of less than or equal to about 0.75 pcf, the
process comprising the steps of:
(a) contacting: (i) an isocyanate, (ii) a first polyol
comprising a first polymer chain consisting essentially of
propylene oxide units and alkylene oxide units selected from
ethylene oxide, butylene oxide and mixtures thereof in a weight
ratio of propylene oxide units to alkylene oxide units in the
range of from about 90:10 to about 25:75, the polymer chain
being terminally capped with the ethylene oxide units, the first
polyol having a primary hydroxyl content of at least about 70%
based on the total hydroxyl content of the first polyol,
(iii) water (iv) a surfactant and (v) a catalyst to form a foamable
reaction mixture, the reaction mixture being substantially
completely free of metal catalyst and substantially completely
free of added organic blowing agents; and
(b) expanding the foamable reaction mixture to produce
the free-rise polyurethane foam.
Br. 12 (Claims App.).
REJECTIONS
The Examiner maintains the following rejections on appeal (Final
Act. 2-3; Ans. 2):
Rejection 1: Claim 17 under 35 U.S.C. § 112, second paragraph, as
indefinite; and
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Appeal 2018-003632
Application 14/434,247
Rejection 2: Claims 1-3, 6, 13, 17, 21-23, 26, 27, 29, 30, 33-35, 38,
39, 43, 48, 49, and 54 under pre-AIA 35 U.S.C. § I03(a) as unpatentable
over Stegt et al. (US 2012/0259029 Al, published October 11, 2012)
("Stegt") in view of Burdeniuc et al. (US 2012/0071576 Al, published
March 22, 2012) ("Burdeniuc").
DISCUSSION
After review of the cited evidence in light of Appellant's and the
Examiner's opposing positions, we determine that Appellant has not
identified reversible error in the Examiner's rejections. Accordingly, we
affirm the rejections for the reasons set forth below, in the Final Office
Action, and in the Examiner's Answer.
Rejection 1
Claim 17 depends from claim 1 and requires "the second polyol is
present up to 40 weight percent of the total polyol content in the reaction
mixture." Appeal Br. 13 (Claims App.).
The Examiner rejects claim 17 because there is no antecedent basis
for the recitation "the second polyol" in claim 1, the claim from which
claim 17 depends. Final Act. 2.
Appellant does not present arguments contesting the Examiner's
rejection of claim 17 under 35 U.S.C. § 112, second paragraph. Br. 7.
Rather, Appellant contends that claim 17 will be amended when the
application returns to prosecution. Appeal Br. 7. Consequently, we
summarily sustain the rejection. See Ex parte Frye, 94 USPQ2d 1072, 1075
(BP AI 2010) (precedential) ("If an appellant fails to present arguments on a
particular issue - or, more broadly, on a particular rejection - the Board will
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Appeal 2018-003632
Application 14/434,247
not, as a general matter, unilaterally review those uncontested aspects of the
rejection."), and Manual of Patent Examining Procedure (MPEP) § 1205.02
(9th ed., August 2017) ("If a ground of rejection stated by the examiner is
not addressed in the appellant's brief, appellant has waived any challenge to
that ground of rejection and the Board may summarily sustain it, unless the
examiner subsequently withdrew the rejection in the examiner's answer.").
Rejection 2
The Examiner finds Stegt discloses a method for making low density
polyurethane foam that meets all the limitations of claim 1 's process,
including contacting an isocyanate with water. Final Act. 3 ( citing Ste gt
,r,r 5-36). Stegt discloses using water in its production method to react with
isocyanate groups to release carbon dioxide, which forms the blowing agent.
Stegt ,r 5. Although Stegt teaches including from 4 to 7 parts by weight of
water per 100 parts by weight of the ethylene oxide-capped polypropylene
oxides (id. ,r 10), the Examiner finds that Ste gt fails to specifically disclose a
polyurethane foam having a density of less than or equal to about 0.75 pcf
(corresponding to about 16.02 kg/m3). Final Act. 3. To account for this, the
Examiner relies on Burdeniuc.
The Examiner finds that Burdeniuc, like Stegt, discloses methods for
producing polyurethane foams by using water, typically in a range from
about 1.0 part per one hundred parts (pphp) to about 10 pphp, to form carbon
dioxide as a blowing agent, and produce a very low density foam. Final
Act. 3 ( citing Burdeniuc ,r 26). The Examiner concludes that it would have
been obvious for one of ordinary skill in the art to use higher amounts of
water, as taught by Burdeniuc, to produce more blowing agent in Stegt's
method and achieve a low density foam. Final Act. 3--4.
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Appeal 2018-003632
Application 14/434,247
Appellant does not argue that use of higher amounts of water would
not lead to the low density foam, but rather argues that absent impermissible
hindsight, one of ordinary skill in the art would not have been led to use
higher amounts of water, as taught by Burdeniuc, in Stegt's method to
produce low density polyurethane foams. Br. 8-9.
Appellant's argument is not persuasive of reversible error. As the
Examiner explains, Stegt teaches producing resilient, flexible polyurethane
foam using a high water process to provide foams having a low density (i.e.,
up to 42 kg/m3 (up to 2.62 pcf)). Ans. 7 ( citing Stegt ,r 7). Thus, Stegt
teaches a free-rise polyurethane foam having a density that encompasses the
density range recited in claim 1. In re Peterson, 315 F.3d 1325, 1329 (Fed.
Cir. 2003) ("A prima facie case of obviousness typically exists when the
ranges of a claimed composition overlap the ranges disclosed in the prior
art.").
Additionally, as the Examiner finds, one of ordinary skill in the art
would have been led, based on Burdeniuc' s teachings, to use higher amounts
of water in Stegt's method to produce polyurethane foams having a density
in the lower end of the range disclosed by Ste gt. Ans. 8. A preponderance
of the evidence supports the Examiner's finding. Burdeniuc, Abstract, ,r 26.
Accordingly, we sustain the rejection of claims 1-3, 6, 13, 17, 21-23,
26, 27 29, 30, 33-35, 38, 39, 43, 48, 49, and 54 under 35 U.S.C. § 103(a).
DECISION
The rejection of claim 17 under 35 U.S.C. § 112, second paragraph, is
affirmed.
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Appeal 2018-003632
Application 14/434,247
The rejection of claims 1-3, 6, 13, 17, 21-23, 26, 27, 29, 30, 33-35,
38, 39, 43, 48, 49, and 54 under pre-AIA 35 U.S.C. § 103(a) over Stegt and
Burdeniuc 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).
AFFIRMED
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