*2 containing oxy- 17 to 19 ALMOND, RICH, Before BALDWIN ethylene oxy- units and 11 to 15 LANE, Judges. propylene units. parties agree RICH, Judge. Claim il- lustrative peal, narrow claims appeal This is from the decision of the principally differs from claim 23 Appeals Patent Office Board of affirm- following subgenus it recites the ing rejection the examiner’s of claims genus of silicone re- 8-11, 19-21, 23, and 26 in cited in claim 23: 758,890, Sep- serial No. filed prepar- tember for methods for polyurethane cellular foam. We af- part. firm in reverse THE INVENTION (CnH2nO)zcomponent in which the is a family of meth- claim mixture of 17 units and 13 preparing polyurethane ods cellular units. It also differs generally tertiary

foam what charac- claim 23 in that for a calls technique. water, terized as “one shot” amine neither of parties Claim il- which is recited in claim 23. n nal.) alternative, In the the examiner REJECTION THE held that upon are: relied The references (cid:127)x- ** grilled in the art would (35 103)

find it to re- obvious USC et et view al and Roberts *3 conjunction patent al with the dis- parent closure the of Hostettler plication making and in a re- such find use (Grandparent view would it obvious to 686,009, No. application Serial 1957) 1 25, filed Sept. a inter alia claimed surfactant those parent herein since Hostettler’s case application grandparent Bailey specifically refers to et al who “Hostettler”) is the (henceforth simply specifically in turn refers to Roberts teaches reference. basic et al. preparing polyure- for one-shot method reacting an comprising thane foams The examiner held the matter of polyalky- organic polyisoeyanate with a presence the which do claims call for the water, presence polyolin of the lene ether catalyst unpatentable of a under 35 U.S. catalyst, the of and a surfactant a tin Hostettler-Bailey- C. 103 because of the § general in claim formula shown Roberts reference when taken in view of clearly explicitly the teach does Hoppe, Harris, (Rochow and Britain be- the of use such surfactants merely cited “to the of the state component (CnH2nO)z mixture of “is a art”). Harris, Hoppe, and Britain all units and units tertiary teach the use of amines cata- containing oxyethylene units 19 17 to lysts general type reactions of the units,” much and 11 to 15 by employed appellants. family surfact- less the still smaller of rejection The board affirmed the However, it recited in claim 26. ants the ary do claims which not recite the terti- position that, “Since was the examiner’s catalyst amine the section 103 on [grand] application Hos- parent the ground reversing the 102 Bailey without specifically section et al mentions tettler ground, appeal on solicitor has Bailey specifically et al * * * ground press Bailey continued to 102 al, the section. mention Roberts et vigorously. However, incorporated the board stated et et al and al are Roberts go necessary “It is not fur- [grand]parent into ther al. find the back than et to make Hostettler.” teaches how specified portions appealed siloxane-oxyalkylene copolymers certain claims,” ignored and it Roberts ref- type surfact- Hostettler uses as appel- ants, including approximate- erence. Both the solicitor briefs, ly oxypropy- have done likewise and 13 lants too, we, units, the Hos- turn will consider lene Roberts in teaches starting The board tettler and references. materials how make certain rejection Treating Bailey. also affirmed section 103 used the three ref- reciting tertiary one, amine of the catalyst held claims erences as examiner “nothing ground [grand] parent application of Hos- “the 102) expected the or- (35 skill of anticipates than the more tettler USC required presence dinary technican would do not call tertiary catalysts origi- catalyst.” (Emphasis utilize the amine upon questioned relied 1. disclosure therein have not ed availability against the Patent was “as such of the Office them disclosure meaning grandparent ap invention” within contained in Hostettler’s plication, Lund, § U.S.O. argu- (1967), nor have error, lieu the tin Hostett- [used the court’s although informed sup- reminded us ler].” correcting plementary the error affidavit gave Both the examiner the board us. of the record before affidavits, consideration to the Rule 132 by appellants filed to rebut the inference implied, the deci As the solicitor arising from the fact that patent obviousness can sion court cases the surfactants used were struc- produced “on the evidence based turally very similar to the surfactants Office,” before the Patent 35 U.S.C. § by Hostettler, but both them found not include does unpersuasive of nonobviousness supplementary in this case. affidavit grounds (1) the affidavits com- parties for both hav counsel wrong pare things, most ing agreed error its correc that the *4 comparisons subjective in are made terms on tion are not issues material to the “good” “coarse,” like appeal, why see no reason we cannot objective comparisons indicated that proceed take note of the correction and changes “other in formulations known to without the resolution of those issues great greater the art have as or an remanding leaving the case and without change than effect a in surfactant.” open appellants attorneys a to charge having possible dealt future of OPINION complete this court less upon entering Before a discussion candor. case, prelimi- the substance of this one Rejection I. The Section nary matter some merits attention. A rejection in The section 102 heard, week before this case was counsel theory only can case be sustained appellants informing wrote us that expressly incorporates that Hostettler recently an (apparently, error had been particular part Bailey by reference. days previously) two in discovered combining require If would part it some of the Rule 132 affidavits in this case.2 by Bailey, clearly not to referred According letter, discovery to their Hostettler, the two references so error and the correction thereof used to show to obviousness appellants’ positions did not alter about ordinary art, one of skill the two court, issues be decided together simply references cannot con brought but the error was to the court’s “anticipation” stitute an technical in the duty attention “in possibly view of the patent sense of Pat. that term in law. imposed appellants by on Precision [In- (Nov. L.Persp., A.l[l], § Dev.A.l[l]-10 Mfg.] Company strument v. Automotive 1970]. Machinery] Company, [Maintenance large U.S. 806 [65 S.Ct. 89 L.Ed. 1381] the use of teaches (1945).” argument, At oral surfac- the solicitor number of classes siloxane tants, conceded that significantly the error was not material one of which differs objection stated had appellants’ he to from in that he states accompanied 2. An original affidavit which let- I used notebooks had explained ter catalyst the affiant was also the tin note- identified in the the nominal author of an affidavit books as ‘T-12’ which was stannous record in this goes case and while re- on to octoate.” The affidavit then viewing original exj)lain notebook entries error have been how the must previous from which decoding his had affidavit “T— made the nomenclature prepared by appellants’ been why then attor- 12” and notice the affiant did not ney, prepara- which review was made in the error be- when he read the affidavit tion for a signing (“because conference with fore it I used was so present lawyers, working octoate”). he had “noted for Ac- to cording with stannous affidavit, catalyst first time that references said to the new dilaurate, appearing actually dibutyl affidavit to stannous octoate tin used was paragraphs I, 26 Table Ta- the same Hostettler. my ble II thereof are erroneous in * * * integer (CnH2nO)z, n is is an from to 4 in- expression that in the denoting oxyalkylene cludes a mixture units.” integer from 2 to an Therefore, argues, oxyalky- the solicitor the sur- atoms in the carbon number of copolymer Example 1(a) integer factant group; and z is an lene “within the ambit” of Hostett- least 5 and value of at a length denotes Thus, formula, ler’s oxyalkylene surfactant chain.” (n=2), subsequent statement the “above- refers to Hostettler' siloxane-oxyalkylene oxybutylene (n=3), described block co- oxyprppylene polymers prepared” according can be specifically (n=4) disclose but does procedures is effective particular ratios of incorporate 1(a) Example groups into re- oxybutylene claims,3 Hostettler reference. nor does cited in chains can consist indicate that the even While we must concede that the oxy-' of different kinds of mixtures doubt, matter free bal alkylenes. ance we language that the later, pages integer after set- some “n 4” is an from to2 surfactants, ting ours), (emphasis coupled a number of other forth ref with the Bailey, Hostettler indicates that: erence to taken those skilled the art to indicate that *5 siloxane-oxy- The above-described Bailey taught how to make surfactants alkylene copolymers pre- can be block general type oxy of this alkylene in which the pro- pared with the in accordance composed entirely chains were and in the Bailey cedures described claimed type oxyalkylene of of and would not copending application D. L. of expressly indicate that the other com 417,- O’Conner, Serial No. F. M. pounds Bailey how also teaches filed December employed to make could also be as sur Bailey The et al. there refer- process. factants in Hostettler’s Com Bailey red to reference is now et al. pare supra Lund, fn. patent, 1(a) Bailey Example of dis- 988-90, at 54 CCPA at 1370-72. Ac siloxane-oxyalky- closes how to make a cordingly, we not the re will sustain copolymer type lene block of jection under 35 U.S.C. 102. § found, the board “On to a conversion basis,” approximately Rejection molar to contain The II. Section 103 oxyethylene oxypropy- units and 13 However, despite the fact that lene units. subject we that Bailey claiming have conceded that matter are now Example 1(a) copolymer anticipated by a Hostettler-Bailey “describe[s] com type by appellants,” reference, of the claimed but bination think they argue it strong is not one of Patent Office a has made show siloxane-oxyalky- ing prima because, “The obviousness, above-described of facie copolymers” lene block paraphrase referred to board, it would not Hostettler because necessary “does have been for one skilled copolymer gone disclose surfactants in which the art to have further an oxyalkylene groups part Bailey a of speci are mixture of to find the proportions appealed units fied claims. * * argue, Therefore, appellants discerning eye hindsight, With the Example 1(a) part certainly is not it seems it would not have incorporated by required which is into Hostettler much skill in the art to realize solicitor, other, very reference. The hand, argues similar, siloxane-oxy on the other alkylene copolymers, that Hostettler’s disclosure block * * * (CnH2nO)zgroup taught make, “that ‘n’in also how to could also be oxybutylene groups appealed 3. There are no in the methods of recited claims. making process argue, used in Hostettler’s are evidence that the mat- polyurethane foams.4 ter of their claims was not obvious quent and subject though istics. sile also awith for the two ties were finer and often of reactions employing their surfactants rebut First, parent application which the siloxane-oxyalkylene copolymers tions of ^[*] 333-334) and both tion of the signee, 405) ent ane-oxyalkylene Appellants rely strengths A produced blowing agents” affidavits establish ^[*] celled foams to his application concerning they assert matter filed Hostettler is almost an plurality ^[*] Second, they that “the employing *6 ** compared, “consistently gave of the Hostettler ( CnH2nO)zgroups runs which these grandparent application improved foams with and * relatively et al. which relate to on two disclosure, elongation the Hostettler copolymers main exact et al. disclosure reactants, catalysts left out those facie obviousness. have the note better their surfactants height their two Rule compared portion copy improved small class arguments (1) that, appearance character- the silox- grandpar- have both smoother, same as- reactions (R-399- * * * proper- grand- of the subse- taken por- por- ten- (R- al- in polyol variations in both an amine kylene copolymers technique employing surfactants water divided into seven ler), from Hostettler siloxane-oxyalkylene copolymer urethane foams and 13 ing dilaurate, recited polyurethane foams shot them We do not deem those tables lengthy marshaled chains the time subject matter at least ical men of therefore are some evidence that Hostettler, “obvious” in the The pure oxypropylene oxypropylene four solely technique employing the surfactant briefly. Appellants have and consisting reactants, in their narrow relevant Rule 132 affidavits pages ordinary comparison fluorocarbon), catalysts very whom ordinary here, oxyethylene made their invention. specific catalyst produced effectively units legal portions blowing agent (i. e., appellants’ main brief. necessary skill groups, produced surfactants 6). skill in the sense units) chain diisocyanate dub “a we will claims was units chains siloxane-oxyal- The in tables allowing to the the one-shot by dibutyl surfactant, reproduce person compared art,” runs are or the two Hostett- describe the one- (i. e., a consist- having (i. art myth- (i. taken solely (i. poly- been and fill- for tin e., e., e., at precisely spe- pure directed chain to the use two different surfactants, physical cific surfactants in mixture of a defined the claims and a appeal.”5 oxyethy- facts, pure pure here on These and a totally methyl group 4. The in reference itself the same si- latter had a regarding copolymer place. lent not mention this use of its board did The argued poly- point, materials in that the manufacture has the solicitor urethane foams. runs in that affi- difference makes the comparable.” admit We must davit “not interest, though It be of has from the detract difference does that case, influenced our in decision that appellants’ weight affida- to be accorded denominated both of the suc- agree with vit. However we applications present cessor to the refer- appli- ly homology may an be used that continuations-in-part. ence against him and as well as cant suspect that 6. The examiner reason to noted surfactants absent some representing appellants’ structures in these invention and the small difference compound, properties representing surfactants affect Hostettler’s significantly teachings detract difference does not one of the affidavits differed compari- appellants’ strength ethyl group in that the former had an at- tached to the silicon sons. left-hand while adequate parte resulting an ex case ab- was for surfactant). foams The lene any' expect sent reason to a different appearance, cell compared to foam are set height result with some other of variables. in the re- appearance, and foam Compare Miller, and as one affidavit taken from sults (1971). Second, the board ob- appearance, foam appearance, cell skin jected subjective percent terms like strength, the use appearance, tensile “good” comparison and “coarse” in the elongation the results taken ultimate ground “susceptible every group, re- other. In from the Again, varying interpretations.” al- of though appellants’ surfactants employing sults agree objective compari- such words are characterized preferred generally sons are appearance) (for foam “Good” subjective comparisons, we cannot (for appear- Open” cell “Fine texture — comparisons made such terms employing ance),7 results while the completely ignored, can be are, nor dis- taken from Hostettler’s surfactants alone, for that reason entitled to such closure are characterized words weight (for little where the Patent Office “Poor, appear- Collapsed” as ance) foam objective suggested practicable has not “Large, (for cell Course” measuring the same and, groups standard vari- pearance), com- in the two Furthermore, appel- able. in this case paring appearance, the foams made skin specimens of cellular appellants’ to lants submitted surfactants are said with “Very smooth,” polyurethane made as described foams have been “Smooth” and respectively, affidavits, Of- the Patent while the foams made with opportunity to fice therefore had are said to verify appellants’ therein “Rough, assertions Potted” in cases. In been both possible the limited groups extent four foam of the five where there, height measured, technical facilities available the foams made suggested higher the char- appellants’ it has not been surfactants were Hostettler’s, do acterizations in affidavit than and, foams made with Third, groups not seem to accurate. the two which tensile objective strength percentage elonga- stated that what com- board ultimate parisons “other measured, were made indicated that tion were the foams made changes sig- art formulations may known in the surfactants were great nificantly greater stronger an have as or effect than the foams made change *7 than a in surfactant.” This last with Hostettler’s surfactants. misappre- think, objection, reflects we appellants’ Rule held that The board trying appellants were hension what “not demonstrative affidavits were 132 true, is prove by It to their affidavits. to we take for what of unobviousness” out, differ- pointed that the as the board First, they, separate reasons. three strength percentage in ences tensile compared thought appellants had that elongation ap- each between ultimate things, wrong primarily in pellants’ Hostettler foam foams and the groups comparison only were two compared were it was with which compared appellants’ surfactants greater tensile than the differences having the same surfactants elonga- strength percentage ultimate weight. appellants cer- molecular tainly While appel- the two runs ation between every possible not isolate did (which dif- two runs inter se lants’ foam that substitu- variable and demonstrate However, used). only polyol in the fered invariably led tion of their surfactants as accept appellants’ affidavits estab- we superior result, think their to a we show- showing unex- by appel- from the case, detracts this In the foam made advantageous pectedly which results process suffer is also said to lants’ agree made, pellants that do not appellants we Split,” have which ad- an “Internal change sufficiently result undesirable, it does so and the solicitor has mit is agree this case. that this. we made much of While lishing resulting al- choice of surfactant and amine foams were that the unexpected produce ways recited would results. when the surfactant better claims was narrow they However, “unexpected results” surfactants one of Hostettler’s when referring simply that Hostett- are to are same, used, everything else as ler’s method works with amine well though of varia- even some combinations argue catalysts; tin do not as including were their surfactant bles that their amine cata- their data show good varia- as combinations lysts produce better results than Hostett- bles, including their surfactant They catalysts. argue that do ler’s tin varia- one other also different at least * * * “the Hostettler disclosure enough, view, to be ble. This is our opposite in the direction [from [leads] in at “demonstrative of unobviousness” catalysts],” amine but least some claims. catalysts taught tin that Hostettler objec- that all their concede work, taught that he concerns tive evidence of non-obviousness catalysts amine would not. Under specific in their recited surfactants circumstances, the solici- we e., (i. 17 claims those narrow appellants rebutted tor that showing have not oxyproplyene and 13 prima facie obviousness ranges argue recit- units), respect to the Patent made with Office (i. e., ed in their claims those hav- broad catalysts. appellants’ amine case of units and to 19 11 argument, final There remains one units) great presses the solicitor which vigor * * * limited ex- are reasonable sup- and for he finds some pansions on the results of based why port opinion, as to board’s showings appellants protec- and afford appellants to their claims are not entitled appropriate tion under the non- if the claims are found even though the show- circumstances even ings prior This in view of the art. obvious rang- rigorously do not cover the argument appellants’ application is that es. particular states surfac- very strong in view of the appealed tants recited in the “preferred” claims showing made facie obviousness and does not indicate case, the Patent Office particular surfactants, the choice of these justified, would not feel basis opposed to others disclosed showing surfactants, their as to the sig- “critically formerly claimed, permitting appellants expand argument nificant.” He summarizes this beyond specific as follows: give unexpect- shown adjudications prior advantageous In view of Compare ed and results. Court, law it is well established Landgraf, F.2d features, proportions or that claimed 929, (1971), Byce, and In re *8 disclosed as criti- are not 945, values which 1454, 942, F.2d 54 CCPA 1458-1459 significant critically are (1967). or cal and/or only application as in the described argue Appellants also that all claims being merely con- “cannot be referred catalayst which recite should the amine critical”, e., patentability i. sidered as patentable be held because re predicated In thereon. cannot be Gardiner, 313, secondary 36 C.C.P.A. 171 F.2d The fact that the references 191, 751; Honnig, 748, F.2d In re 193 amines in various describe the use of Bourdon, 743; systems 740, In re C.C.P.A. polyurethane 39 foam 743; 740, In significance 358, 44 C.C.P.A. particular 240 F.2d since none 194, Shepard, F.2d 50 C.C.P.A. provides re 319 secondary the references 1439, concluding basis for

607 non-obviousness, that, both we and the tribu as the result Appellants concede give they nals of the must are Patent full prosecution, Office the vicissitudes orig- applicant’s consideration to the claiming evidence less than much now question and reach a decision on the fact, inally what did only originally non-obviousness on the the claiming basis of rela the was are now strength showing applicant’s tive much broader preferred within class prima and the argue facie case made the claims, the essential Orfeo, Patent Office. In re 440 F.2d sort is whether question of this in cases 439, 441, (1971); fact, 58 has, Graham v. rebutted the inventor 17-18, 1, Co., Deere objective John 383 U.S. 86 S. facie obviousness 684, (1966). Appel Ct. 15 L.Ed.2d 545 and not evidence of non-obviousness disregarded lants’ original application happens may not evidence whether his simply modifying adjectives because the manner “correct” use the “preferred”) processes (i. e., the now claimed were denomi rather “critical” eventually original subject application. nated the To rule matter to describe the triumph otherwise would let form over claimed. substance, eliminating substantially the Actually, In re Bourdon this court right applicant of an to an to retreat oth only: Shepard and In said re patentable merely species erwise Gardiner, As in In re 171 held was thought erroneously he he was first with 748, 313, (patents) 36 F.2d C.C.P.A. genus Ruff, the In when he filed. Cf. re appli- described in an values 1037, 256 F.2d 45 CCPA preferred cannot cation as (1958). patent provides Since the law ordinarily to be critical. be held during prosecution amendment 1445; at 50 C.C.P.A. at F.2d claims, specification sup as well as the 360, 44 at 743. [Em- F.2d at C.C.P.A. porting 132, it claims, 35 is clear U.S.C. § phasis ours.] point “particularly reference Furthermore, claiming distinctly out sub argument regards ject applicant matter paragraph Shepherd as his in the second invention” quite It from clear prohibit 112 does cited U.S.C. § and other decisions [sic] n changing applicant from what “re did not Commissioner Court gards e., (i. subject give appropriate as his invention” or refuse to consider protec patent matter on weight essen- which he seeks to affidavits because tion) applica during pendency his subject mat- novelty tial of the claimed Brower, tion. Cf. application ter disclosed (fact “preferred.” CCPA 724 Bather after application claims in complete study continuation were the facts Court appel directed to matter which found that the differences between regarded prior lants had not of their es- art and the claimed invention showings application invention parent when the tablished made were prevent was filed held not to the contin not sufficient to establish unobvious- receiving uation patentability. benefit ness In other parent’s showings date). words, were found to inadequate. DECISION regardless of what past, court have said in foregoing For the reasons, rejec- *9 our that, now view those cases tion of claims 11 and 26 is reversed and applicants attempted

where the rejection of claims 8-10,19-21, and showing rebut a facie obvi is23 affirmed. ousness of the matter claimed objective the introduction of Modified. evidence Judge (concurring). there is reason to believe BALDWIN, skill, reading ordinary dis- to the bulk I adhere While closure, know how to make would my express opinion, dis- I wish court’s copolymers. of the critical block Accord- agreement finds section ingly, mythical man whether or rejection 6, 20 of claims error presume pri- from Hostettler’s would reciting any catalyst) (not under mary oxyal- disclosure that mixtures anticipated the Hos- 102 as U.S.C. § kylenes copolymers were not con- I would affirm tettler reference. going templated, upon in- rejection I believe whole conclusively find out structed relating disclosure also included. were such mixtures siloxané-oxyalkylene preparation block therefore, indicated, As the board here copolymers incorporated reference disclosure the effective into Hostettler. clearly utilization includes reference 1(a) Example copolymer described approach majority logic The in the Hos- surfactant believe, consideration take into fails, I record, process. tettler adequately fact