Ex Parte Kurth et al

Patent Trial and Appeal Board

Feb 19, 2013

09944212 (P.T.A.B. Feb. 19, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
09/944,212 08/31/2001 Thomas M. Kurth URE002 P309 2406
277 7590 02/19/2013
PRICE HENEVELD LLP
695 KENMOOR SE
P O BOX 2567
GRAND RAPIDS, MI 49501
EXAMINER
COONEY, JOHN M
ART UNIT PAPER NUMBER
1765
MAIL DATE DELIVERY MODE
02/19/2013 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 THOMAS M. KURTH, RICHARD A. KURTH,
ROBERT B. TURNER, LES P. KREIFEIS and TODD A. VAN THOMME
______________

Appeal 2011-005934
Application 09/944,212
Technology Center 1700
_______________

Before CHARLES F. WARREN, HUBERT C. LORIN, and
JAMES C. HOUSEL, Administrative Patent Judges.

WARREN, Administrative Patent Judge.

DECISION ON APPEAL
Applicants appeal to the Board from the final rejection of claims
83-108, requesting review of the ground of rejection under 35 U.S.C.
§ 103(a) over Croft (US 5,688,860), Burke (US 4,185,146) and Trowell (US
4,720,571).1 Final Office Action mailed February 18, 2010 (Office Action)
6; Ans. 4; App. Br. 4. We have jurisdiction. 35 U.S.C. §§ 6 and 134(a)
(2002); 37 C.F.R. § 41.31(a) (2010).

1 The Examiner has withdrawn the grounds of rejection under 35 U.S.C.
§ 112, first paragraph, written description requirement. Ans. 3.
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Application 09/944,212
2
We affirm the decision of the Primary Examiner.
Claim 83 illustrates Appellants’ invention of a material comprising a
reaction product of, among other things, an isocyanate and a transesterified
polyol derived from, among other things, a blown vegetable oil, in the
presence of a urethane catalyst, and is representative of the claims on appeal:
83. A material comprising the reaction product of an A-side
comprising an isocyanate and a B-side comprising a transesterified polyol
and a urethane catalyst, wherein the transesterified polyol is produced by
combining components to form a mixture that forms the transesterified
polyol wherein the components of the mixture comprise a first polyol having
at least two hydroxyl groups, and a blown vegetable oil having fatty acid
chains, and wherein the mixture further comprises an esterification catalyst
or the mixture is heated to from about 198º F to 325º F, and wherein the
blown vegetable oil comprises from 70% by weight to 98.8% by weight of
the mixture and wherein the blown vegetable oil comprises a blown
vegetable oil chosen from the group consisting of a blown palm oil, a blown
safflower oil, a blown canola oil, a blown soy oil, a blown cottonseed oil,
and a blown rapeseed oil.
App. Br. 25, Claim App’x.
Appellants do not argue any particular claim and thus we decide this
appeal based on claim 83. App. Br. 19-24. 37 C.F.R. § 41.37(c)(1)(vii)
(2010).
OPINION
We cannot agree with Appellants’ contentions that the Examiner erred
in determining that one of ordinary skill in the art would have been led by
the combined teachings of Croft, Burke and Trowell to modify Croft’s
polyurethane/polyurea elastomer material comprising a reaction product of
an isocyanate and a polyol, which can be a polyester polyol, in the presence
of a catalyst, by using a blown vegetable oil in forming the polyester polyol
as disclosed in Burke, and using an esterification/transesterification in that
Appeal 2011-005934
Application 09/944,212
3
reaction as taught by Trowell, thus arriving at a material product
encompassed in product-by-process format in claim 83. Ans. 4-5, 6-9
(citing Croft col.3 l.53 et seq., col.10 l.60 to col.12 l.40, and entire
document; Burke col.1 ll.26-33, and entire document; Trowell col.3 ll.54-57,
and entire document) (see Office Action 6-10); App. Br. 19-22.2
We fail to find in the Answer where the Examiner made a finding that
Croft discloses or teaches “transesterification of a blown vegetable (soy) oil
with other multifunctional polyols” as Appellants contend. App. Br. 19-20.
Indeed, the Examiner relies on Burke’s disclosure of ‘blown oils including
soya oil” which are reacted with, among other things, castor oil, glycerin, an
arylene diisocyante and water in forming a cellular plastic. Burke col.1
ll.29-33 (citing Barthel (US 2,833,730) (‘730 patent) of record3).
We are unpersuaded by Appellants’ arguments that Croft teaches
away from using a blown vegetable oil by disclosing vegetable oil as an inert
material which does not become cross-linked with the polyurethane/polyurea
reaction product and is used as a plasticizer, and that such disclosure

2 We have not considered Appellants’ additional arguments submitted in the
Reply Brief because the Examiner’s statement of the ground of rejection and
response to Appellants’ contentions in the Office Action are essentially
reproduced verbatim at pages 4-6 and 8-9 of the Answer, and Appellants
have not presented in the Reply Brief a good and sufficient reason why the
additional arguments were not presented in the Appeal Brief. Reply Br.
4-10. See Ex parte Borden, 93 USPQ2d 1473, 1475 (BPAI 2010)
(informative decision) (“[T]he reply brief [is not] an opportunity to make
arguments that could have been made in the principal brief on appeal to
rebut the Examiner’s rejections, but were not.”); cf. Cross Med. Prods., Inc.
v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1320-21 n3 (Fed. Cir.
2005) (new arguments raised for first time in reply brief are not considered).
3 Form PTO-1449, sheet 12 of 12, filed June 13, 2005.
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Application 09/944,212
4
establishes that the use of a blown vegetable oil in preparing Croft’s product
would render the product unsatisfactory for its intended purpose. App. Br.
20-21 (citing Croft col.3 ll.38-40, col.11 ll.45-47). We find Croft would
have disclosed to one of ordinary skill in the art that a plasticizer, such as
plasticizers that include “vegetable oils (such as linseed oil, soybean oil,
sunflower oil and the like),” can optionally be contained by preferred
polyurethane/polyurea elastomer reaction products, and is preferably
essentially inert with the products. Croft col.11 ll.44-52.
We find that one of ordinary skill in the art would have found Croft’s
disclosure to pertain to the use of the vegetable oil with the elastomer
reaction product prepared as disclosed, and not that the vegetable oil would
be “inert” if included in preparing that product by the disclosed process, as
Appellants contend. Furthermore, contrary to Appellants’ position, Croft
teaches that plasticizer systems are optional and thus not necessary for the
intended use of the elastomer products. Thus, we find that Croft would not
have taught away from using vegetable oil or blown vegetable oil in the
formation of a polyester polyol for use in Croft’s process for preparing a
polyurethane/polyurea reaction product. Croft col.8 l.60 to col.9 l.26. See,
e.g., Para-Ordnance Mfg., Inc. v. SGS Importers Int’l, Inc., 73 F.3d 1085,
1090 (Fed. Cir. 1995) (to teach away, a reference must state that it “should
not” or “cannot” be used in combinations with the other reference); In re
Gurley, 27 F.3d 551, 552-53 (Fed. Cir. 1994) (“The degree of teaching away
will of course depend on the particular facts; in general, a reference will
teach away if it suggests that the line of development flowing from the
reference’s disclosure is unlikely to be productive of the result sought by the
applicant.” (citations omitted)). Indeed, Croft’s preference for particular
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“Examples of suitable” materials for forming the polyester polyols does not
constitute a teaching away from other material, such as vegetable oil and
blown vegetable oil, which one of ordinary skill in the art would have
recognized as being useful for that purpose from Burke’s disclosure. Cf.,
e.g., In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (explaining “[t]he
prior art’s mere disclosure of more than one alternative does not constitute a
teaching away from any of these alternatives because such disclosure does
not criticize, discredit, or otherwise discourage the solution claimed”).
Appellants’ contention with respect to In re Aller, 220 F.2d 454,
456-58 (CCPA 1955), does not explain why the Examiner’s reliance thereon
constitutes error. App. Br. 22-23.
We further cannot subscribe to Appellants’ contention that the
evidence in the Peldonia Declaration4 which, according to Appellants, shows
that “[w]hen the procedures disclosed in Example 4 of the ‘730 patent are
followed, the intermediate result is a solid mass that cannot be mixed with
water and a diethanol amine catalyst as called for by the final steps of the
procedure disclosed therein,” establishes that the ‘730 patent “has proven to
be a nonenabling reference.” App. Br. 22 n.3. We, like the Examiner, find
that evidence of the failure to obtain one illustrative product taught by the
‘730 patent based on a single run of the procedure in Example 4 of the ‘730
patent is insufficient to establish that the ‘730 patent is non-enabling. This is
because, as the Examiner points out, the reported test does “not include
variations and adaptations from the [‘730 patent] disclosure which any
competent worker in the art would be expected to make in order to make the

4 Declaration of John G. Peldonia under 37 C.F.R. § 1.132, executed
“8-18-2003” and filed November 3, 2009.
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reference disclosure operative.” Ans. 8; Office Action 9. See, e.g., In re
Fried, 329 F.2d 323, 327 (CCPA 1964) (applicant has the burden to
establish that a process described in a patent to produce claimed product is
inoperative and could not be made operative by the use ordinary skill in the
art). Thus, Appellants have not overcome the strong presumption based on
the evidence in ‘730 patent that the process disclosed in the ‘730 patent,
including that of Example 4, if employed by one skilled in the art, will
produce the results taught by the ‘730 patent. See, e.g., In re Lamberti, 545
F.2d 747, 751 n.2 (CCPA 1976) (“At best, appellants have merely shown
that it is possible to follow the process in one example each of MacGregor
and Cisney without success. And even then, there is no showing that one of
ordinary skill in the art, making adaptations within the skill of the art, could
not have successfully carried out each process.” (citation omitted)); In re
Weber, 405 F.2d 1403, 1407 (CCPA 1969) (“We do not think that
appellants’ mere showing that it is possible to operate within Mautner’s
disclosure without obtaining his results is sufficient to overcome the strong
presumption that the process of a patent if used by one skilled in the art will
produce the results alleged by the patentee.” (citation omitted)).
Accordingly, based on our consideration of the totality of the record
before us, we have weighed the evidence of obviousness found in the
combined teachings of Croft, Burke and Trowell with Appellants’
countervailing evidence of and argument for nonobviousness as submitted in
the Appeal Brief and Peldonia Declaration, and conclude, by a
preponderance of the evidence and weight of argument, that the claimed
invention encompassed by claims 83-108 would have been obvious as a
matter of law under 35 U.S.C. § 103(a).
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Application 09/944,212
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The Primary Examiner’s decision 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)(1)(iv).
AFFIRMED

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