       NOTE: This disposition is nonprecedential.

  United States Court of Appeals
      for the Federal Circuit
              __________________________

                 (Serial No. 12/190,101)
  IN RE STEVEN SUTTON AND STEPHEN THORP
            __________________________

                      2012-1255
              __________________________

    Appeal from the United States Patent and Trademark
Office, Board of Patent Appeals and Interferences
               ___________________________

              Decided: November 20, 2012
             ___________________________

    ANTON J. HOPEN, Smith & Hopen, P.A., of Oldsmar,
Florida, for appellants.

    RAYMOND T. CHEN, Solicitor, Office of the Solicitor,
United States Patent and Trademark Office, of Alexan-
dria, Virginia, for Director of the United States Patent
and Trademark Office. With him on the brief were JAMIE
L. SIMPSON and NATHAN K. KELLEY, Associate Solicitors.
               __________________________

  Before PROST, MOORE, and O’MALLEY, Circuit Judges
Per Curiam
IN RE SUTTON                                               2




    Steven Sutton and Stephen Thorp (collectively “Sut-
ton”) appeal from the decision of the Board of Patent
Appeals and Interferences (“Board”) affirming the rejec-
tion of claims 7-9, 14, 19, and 30 of U.S. Patent Applica-
tion No. 12/190,101 (“the ’101 application”) as obvious
under 35 U.S.C. § 103(a). Because the Board’s conclusion
is supported by substantial evidence and not legally
erroneous, we affirm.
                              I
    On August 8, 2008, Sutton filed the ’101 application
entitled, “Flexible Reflective Composition,” which dis-
closes a flexible vinyl film with fluorescent coloring that
can withstand color degradation when exposed to
sunlight. The vinyl film is composed of ethylene, vinyl
acetate, and vinyl chloride, a “terpolymer,” and fluores-
cent dye(s) added to the polymer matrix for coloring. A
purported key inventive concept was the elimination of a
“plasticizer” as a necessary component of the formulation
while maintaining the flexibility and color stability of the
vinyl film.
    Sutton’s solution is to incorporate fluorescent dye(s) in
a polymer matrix consisting of the cited terpolymer,
absent a plasticizer normally added to provide flexibility.
Sutton purports to have discovered that the disclosed
terpolymer remains surprisingly flexible for use in a
variety of applications, without the need for plasticizers,
which increase flexibility but speed color degradation
when exposed to the outdoors. By eliminating plasticiz-
ers, the fluorescent dye(s) maintain their “[i]nherent long
useful life,” and overcome the shortcomings of prior art
flexible vinyl films. ’101 application at 00015. Sutton
also discloses that the useful life of the film may be ex-
tended through the use of ultraviolet (“UV”) light absorb-
3                                              IN RE SUTTON



ers, hindered amine light stabilizers (“HALs”), or overlay
film. A plasticizer, nevertheless, may be added to in-
crease flexibility as so desired.
     Claim 7 is representative of the claims on appeal: “a
vinyl film subject to outdoor weathering, comprising a
fluorescent dye and a terpolymer of ethylene—vinyl
acetate—vinyl chloride that imparts color stability and
flexibility to the film.” ’101 application, Claim 7. The
other five claims on appeal are variations of claim 7: (1)
claim 8 adds a generic plasticizer; (2) claim 9 adds polyvi-
nyl chloride (“PVC”); (3) claim 14 adds diisodecyl phtha-
late, a low molecular weight plasticizer; (4) claim 19 adds
an ethylene n-butyl acrylate carbon monoxide polymer, a
high molecular weight plasticizer; and (5) claim 30 explic-
itly excludes use of a plasticizer.
                             II
    The examiner at the United States Patent and
Trademark Office (“PTO”) rejected all of the claims cur-
rently on appeal as obvious pursuant to 35 U.S.C. §
103(a). The examiner found claims 7, 8, and 30 obvious
over U.S. Patent No. 5,055,515 (“Backderf”), in view of
U.S. Patent No. 6,526,588 (“White”), with further evi-
dence provided by JP 10-245519 (“Ibuki”) and U.S. Patent
Application Pub. No. 2009/0159691 (“Halbur”).        The
examiner relied on the same combination for claims 9, 14,
and 19, with further evidence provided by U.S. Patent No.
3,960,986 (“Heichele”) and U.S. Patent No. 5,346,755
(“Morse”). The Board adopted the examiner’s reasoning
and analysis as its own, and affirmed the examiner’s
rejections, both initially and upon reconsideration.
                       A. Backderf
    Backderf issued on October 8, 1991, and is entitled
“Flexible Overpolymers of Vinyl Chloride Polymers on
IN RE SUTTON                                                 4


Ethylene Copolymers.” Backderf is directed to plastic
compositions and discloses Sutton’s precise terpolymer as
a particular embodiment. See Backderf col.1 ll.17-21
(“[t]he invention generally relates to thermoplastic elas-
tomers [comprising] an ethylene copolymer overpolymer-
ized with one or more vinyl chloride or vinyl chloride type
monomers and optionally an arcylate comonomer”); id. at
col.2 ll.48-49 (“[s]pecifically preferred copolymers include
ethylene vinyl acetate”). Backderf discloses that the
claimed elastomers are flexible with or without the addi-
tion of a plasticizer. See id. at Abstract (“[i]n another
embodiment, the overpolymers are flexible without the
need for a plasticizer or blending agent”); id at col.1 ll.21-
33 (“[i]n a first embodiment, the elastomer is blended with
a plasticizer . . . [i]n another embodiment, the elastomer
is not blended with a plasticizer.”).
                          B. White
     White issued on March 4, 2003, and is entitled, “Sta-
bilization of Fluorescent Dyes in Vinyl Chloride Articles
Using Hindered Amine Light Stablizers.” White teaches
polyvinyl chloride articles combined with fluorescent
dye(s) and HALs. White at col.2 ll.33-55. White’s use of
HALS stabilizes the fluorescent color of the claimed
articles and ensures that the articles retain their fluores-
cent color when exposed to outdoor conditions. See id. at
col. 2 ll.33-41; col.3 ll.3-7 (“[t]he inventive articles retain
their color and are able to fluoresce for a longer time
period than is normally expected even when they are
exposed to direct sunlight.”).
                    C. Ibuki and Halbur
    The examiner used Ibuki and Halbur as “teaching ref-
erences” for the properties of ultraviolet light, plastics,
and fluorescent dyes. Ibuki is directed to vinyl resin film
used to coat metal sheets. See Ibuki at Abstract. Ibuki
5                                                 IN RE SUTTON



discloses, among other things, that UV light may cause
discoloration or degradation of vinyl chloride resin films.
Id. at 0025. Halbur discloses a plastic card formed by a
polymer resin mixed with fluorescent dye(s) such that the
edges of the card appear to “glow.” Halbur at Abstact.
Halbur teaches a particular embodiment where the fluo-
rescent dye absorbs UV light which “reflects” off the
claimed substrate, or in other words, is re-emitted as
visible light. Id. at [0024].
                   D. Heichele and Morse
    Heichele issued on June 1, 1976, and is entitled, “Im-
pact-Resistant Molding Compositions Containing Polyvi-
nyl Chloride.” The patent generally discloses a molding
composition made of PVC and other grafted copolymers
that demonstrates a high resistance to impact. Heichele
at col.1 ll.38-60. Heichele discloses an embodiment using
PVC in combination with a terpolymer of ethylene, vinyl
acetate, and vinyl chloride. Id. at col.2 ll.35-44; col.4 ll.34-
37, col.5 ll.40-42. Morse issued on September 13, 1994,
and is entitled “Stain Resistant Cleanable PVC Fabric.”
Morse is directed to plastic coated films that are stain
resistant, easily cleanable, and flexible. Morse at Ab-
stract. Morse teaches that certain additives, such as
ethylene-n-butyl acrylate carbon monoxide and diisodecyl
phthalate may be used to modify oil resistance or flexibil-
ity. Id. at col.3 ll.20-37.
                              III
     While the examiner rejected all pending claims of Sut-
ton’s application, Sutton only appealed the rejection of
claims 7-9, 14, 19, and 30 to the Board. The Board
adopted the examiner’s reasoning and analysis from the
examiner’s answer on appeal to the Board as its own, and
affirmed the obviousness finding. Beyond adopting the
IN RE SUTTON                                               6


examiner’s answer, the Board also explicitly rejected a
series of arguments advanced by Sutton.
    The Board first found claims 7, 8, and 30 obvious
based on the combination of Backderf and White. Accord-
ing to the Board, Backderf discloses a vinyl film composed
of the precise terpolymer used by Sutton which is flexible
with or without the addition of a plasticizer. The Board
noted that Backderf fails to disclose both the vinyl film
combined with fluorescent dye(s) and the color stability
that the terpolymer can provide when subjected to the
outdoors. White, however, discloses a durable and flexible
polyvinyl chloride film having fluorescent properties using
similar fluorescent dye(s) as disclosed by Sutton. The
Board found that Backderf and White together disclose an
identical terpolymer as Sutton claims, and that the ter-
polymer would “intrinsically” impart color stability to the
film when subjected to the outdoors.
    The Board found further motivation to combine Back-
derf and White based on the disclosures of Ibuki and
Halbur. The Board relied on Ibuki and Halbur to demon-
strate that a person of ordinary skill in the art would
understand that UV light causes degradation of vinyl
chloride resins, and that fluorescent dye(s) improve
outdoor “weatherability.” Ibuki and Halbur, therefore,
according to the Board, provide further evidence that a
person of ordinary skill in the art would be motivated to
combine the fluorescent dye(s) disclosed in White with the
vinyl film of Backderf to improve the useful life of the film
when subjected to the outdoors.
    The Board then relied on the combination of Backderf
and White, with further evidence of motivation provided
by Ibuki and Halbur, to reject claim 9. And the Board
relied on Backderf in view of White and Morse with
further evidence of motivation provided by Ibuki and
7                                               IN RE SUTTON



Halbur to reject claims 14 and 19. Regarding claim 9, the
Board noted that Heichele discloses a molding composi-
tion consisting of significant amounts of PVC combined
with the same terpolymer used by Sutton. The Board
additionally found that Backderf teaches that the ter-
polymer would be flexible and that, for the same reasons
as before, a person of skill would be motivated to combine
the teachings of Backderf, White, and Heichele. For
claims 14 and 19, the Board noted that Morse discloses
both of the plasticizers disclosed by Sutton in his claims
for use with flexible plastic films, and for much the same
reasons as before, a person of skill would be motivated to
apply Morse’s teachings to the Backderf and White com-
bination.
    The Board also rejected Sutton’s argument that the
claims on appeal exclude a plasticizer, and found that
Sutton’s use of the transitional phrase “comprising”
provided his claims broader scope, allowing for additional
unrecited elements. Next, the Board found that Sutton
had failed to provide any credible evidence to rebut the
examiner’s finding that the properties of color stability
and flexibility would be “intrinsically” present in the prior
art, which teaches the precise terpolymer and fluorescent
dye combination disclosed in Sutton’s claims. The Board
last rebutted Sutton’s argument that the empirical data
in his application refutes the examiner’s rationale as to
the motivation to combine Backderf and White, in further
view of Ibuki and Halbur, by noting that, even if correct,
the examiner additionally found that a person of skill
would be motivated to combine Backderf and White
without the teachings of Ibuki and Halbur.
    Sutton requested rehearing, raising four issues: (1)
the Board’s finding that the claimed invention may in-
clude a plasticizer ignores claim 30, which explicitly
disclaims use of a plasticizer; (2) the Board misappre-
IN RE SUTTON                                              8


hended White’s teaching that a vinyl-fluorescent dye
composition would have properties contrary to Sutton’s
claimed invention; (3) based on the doctrine of claim
differentiation, claims 7 and 30 should not be interpreted
to include a plasticizer, because claim 8 explicitly recites
use of one; and (4) the Board incorrectly framed the
invention as a flexible fluorescent vinyl film without a
plasticizer, when the purported breakthrough also in-
cludes the discovery that the flexible terpolymer provides
unique protection against photodegradation.
     The Board denied the request for rehearing, rejecting
each of Sutton’s points. First, the Board agreed that
claim 30 contains a “plasticizer free” limitation, but noted
that the examiner explicitly found that Backderf teaches
a flexible terpolymer without use of a plasticizer. Second,
the Board noted that Sutton’s description of White’s
teaching was based on the “background art” section and
that White is directly relevant to Sutton’s claims. Third,
the Board rejected Sutton’s so-called claim differentiation
argument that relies on Sutton’s purported motivation for
adding a plasticizer in claim 8. Namely, Sutton argued
that claim 8 was meant to capture any attempt by a
potential infringer to design around the invention by
adding trace amounts of plasticizer. In rejecting Sutton’s
contention, the Board noted that an applicant’s rationale
for adding a limitation does not provide adequate reason
to limit the scope of a broadly drawn claim. Last, the
Board found that it did not misapprehend the dispositive
issue because the examiner established that the combina-
tion of the flexible terpolymer of Backderf and the stable
fluorescent dye(s) of White would have been an obvious
combination; therefore, any advantages achieved by this
obvious combination would have been intrinsic to the final
composition.
9                                              IN RE SUTTON



    Sutton timely appealed the Board’s decision. We have
jurisdiction pursuant to 28 U.S.C. § 1295(a)(4)(A).
                            IV
     Whether an invention would have been obvious to one
of ordinary skill in the art is a legal determination based
on underlying findings of fact. KSR Int’l Co. v. Teleflex,
Inc., 550 U.S. 398, 417 (2007). “The presence or absence
of a motivation to combine references in an obviousness
determination is a pure question of fact.” In re Gartside,
203 F.3d 1305, 1316 (Fed. Cir. 2000). The PTO first must
first carry its burden of demonstrating a prima facie case
of obviousness. In re Mayne, 104 F.3d 1339, 1341 (Fed.
Cir. 1997). Should the PTO succeed, the applicant must
then rebut the PTO’s showing. Id. at 1323.
     We review the Board’s legal conclusions de novo and
its factual findings for substantial evidence. In re Gart-
side, 203 F.3d at 1316. Substantial evidence is “such
relevant evidence as a reasonable mind might accept as
adequate to support a conclusion.” Id. at 1312 (quoting
Consol. Ed. Co. v. NLRB, 305 U.S. 197, 229-30 (1938)).
                            A.
     We first turn to two claim scope issues that must be
resolved. Sutton asserts that the Board should have
interpreted claims 7 and 9 to exclude plasticizers through
application of the doctrine of claim differentiation. Sutton
next argues that that the Board erred by not interpreting
all the claims on appeal to exclude use of HALs. We find
no error with the Board’s reading of the claims on appeal.
                             1.
    Sutton contends that, because claims 8, 14, 19, and 23
all explicitly disclose a plasticizer, claims 7 and 9 should
be interpreted to exclude a plasticizer. During examina-
IN RE SUTTON                                             10


tion, the PTO and the Board give claims “their broadest
reasonable interpretation consistent with the specifica-
tion.” In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359,
1364 (Fed. Cir. 2004) (citation omitted). Claims 7 and 9
both use the transitional term “comprising” prior to
reciting the required elements of the claimed composition.
While the recited elements in claims 7 and 9 are neces-
sary to form the claimed composition, by using the open-
ended phrase “comprising,” the claims may include other
unclaimed elements, such as a plasticizer. See Genentech,
Inc. v. Chiron Corp, 112 F.3d 495, 501 (Fed. Cir. 1997)
(“‘Comprising’ is a term of art used in claim language
which means that the named elements are essential, but
other elements may be added and still form a construct
within the scope of the claim.”).
    The ’101 application explicitly teaches that the
claimed invention may be combined with plasticizers to
enhance flexibility. Reading claims 7 and 9 in light of the
specification reveals that, while they must include the
recited elements, the claimed compositions may also
include plasticizers. As such, Sutton’s attempt to limit the
scope of claims 7 and 9 to exclude plasticizers, absent
specific claim language, must be rejected. Sutton could
have limited the scope of claims 7 and 9 by adding an
explicit “no plasticizer” limitation, much like he did in
claim 30. For whatever reason, Sutton did not choose to
impose such a limitation on these claims.
    In addition, claim 8 requires a generic plasticizer and
claims 14 and 19 require different forms of plasticizers.
These claims are narrower than claim 7 because they
each require a particular type of plasticizer, while claims
7 and 9 simply permit the use of one. Limiting claims 7
and 9 as Sutton urges would require improperly import-
ing limitations into the claims from the specification
which those claims do not recite. Contrary to Sutton’s
11                                            IN RE SUTTON



position, moreover, a straight-forward application of the
doctrine of claim differentiation actually confirms, rather
than undermines, this reading of the claims. Claim 30,
which expressly excludes a plasticizer, would be superflu-
ous were claims 7 and 9 read to exclude plasticizers.1
                            2.
    Sutton also appears to contend that all the claims on
appeal should be interpreted to exclude the use of HALs.
All of the claims use the transitional phrase “comprising”
prior to reciting the required elements to compose the
claimed vinyl film. Sutton’s specification further suggests
the use of HALs, and all but one disclosed experimental
embodiment include light stabilizers. Even when discuss-
ing the experimental embodiment that did not use any
light stabilizer, Sutton disclosed that light stabilizers
were generally needed for long term flexibility, even if
limited color stability might be achieved without the
stabilizer. Reading Sutton’s open-ended claims in light of
the specification and disclosed embodiments reveals that
their scope is broad enough to include the use of HALs
absent explicit claim language to the contrary. Having
resolved the claim scope issues, we now turn to Sutton’s
arguments regarding the prior art.
                            B.
    Sutton contends that claims 7-9, 14, and 30 are all
patentable over the prior art. Sutton presents a series of
arguments, many repetitive of one another, attacking the
Board’s findings of obviousness.      Having thoroughly

     1  Even if Sutton was correct regarding the scope of
the claims 7 and 9, it would not affect the Board’s finding
of obviousness given that both the examiner and Board
found that the combination of Backderf, which disclosed
embodiments that exclude the use of plasticizers, and
White, renders claim 30 obvious.
IN RE SUTTON                                               12


reviewed Suttons’ briefing and the record in this case, we
can divine four primary arguments. First, Sutton argues
that the combination of Backderf and White requires both
plasticizers and HALs as primary components and, thus,
they fail to render the claimed invention obvious. Sutton
further asserts that there was no motivation to combine
Backderf and White at the time of the invention. Sutton
also makes two broad arguments that the Board erred by
finding that color stability and flexibility are intrinsically
present in the combination of Backderf and White, and
that the Board did not consider the invention as a whole.
We address each issue in turn.
    Sutton explicitly argues that claims 7, 8, 14, 19, and
30 are patentable over the cited prior art because the
prior art combinations require use of plasticizers and/or
HALs, while his purported invention does not. As previ-
ously explained, the scope of Sutton’s claims, read in light
of the specification, do allow for both plasticizers and/or
HALs, with one exception: Claim 30 is the only claim that
explicitly eliminates plasticizers.     The Board found,
however, that Backderf discloses embodiments both with
and without plasticizers, rendering all of Sutton’s claims,
including claim 30, obvious. Backderf, for example,
teaches that the claimed elastomers remain flexible
without the need for a plasticizer.2 Backderf at Abstract

    2    Sutton also argues, for the first time on appeal,
that Backderf does not teach that the claimed terpolymer
is “sufficiently” flexible. The examiner and the Board did
not have an opportunity to provide any factual findings on
Sutton’s new argument; therefore, we consider this argu-
ment waived. In re Watts, 354 F.3d 1362, 1368 (Fed. Cir.
2004) (“[W]e decline to consider the appellant’s new
argument regarding the scope of [the prior art] raised for
the first time on appeal. Because the appellant failed to
argue his current interpretation of the prior art below, we
do not have the benefit of the Board’s informed judgment
13                                              IN RE SUTTON



(“In another embodiment, the overpolymers are flexible
without the need for a plasticizer or blending agent.”).
Backderf also discloses specific embodiments that omit
plasticizers from the composition, yet retain their flexibil-
ity. Id at col. 1 ll.21-33 (“In a first embodiment, the
elastomer is blended with a plasticizer . . . [i]n another
embodiment, the elastomer is not blended with a plasti-
cizer.”). The Board’s rejection of Sutton’s claims is sup-
ported by substantial evidence.
    Sutton further argues that the Board’s findings are
flawed because there was no motivation to combine the
fluorescent dye(s) of White with the composition of Back-
derf at the time of the invention. Sutton’s arguments are
mostly directed to the examiner’s citation to the teachings
of Ibuki and Halbur. After a review of the record, we
conclude that substantial evidence supports the Board’s
findings regarding the motivation to combine Backderf
and White in light of the well-known principles regarding
how plastics and dyes work as taught in Ibuki and Hal-
bur. The Board found, for example, that Ibuki and Hal-
bur demonstrate that UV light will degrade the vinyl
chloride component of Backderf’s film, and that fluores-
cent dyes absorb UV light. Based on these references, the
Board readily concluded that a person of ordinary skill
would have been motivated to add fluorescent dyes to a
plastic film to provide protection from UV light. The
Board thus looked to Ibuki and Halbur as teaching refer-
ences to highlight the knowledge a person of ordinary
skill in the art would have had regarding plastics and
dyes when reading White.3

on this issue for our review.”); see also Berman v. Housey,
291 F.3d 1345, 1354 (Fed. Cir. 2002); Sage Prods., Inc. v.
Devon Indus., Inc., 126 F.3d 1420, 1426 (Fed. Cir. 1997).
    3   To the extent Sutton asserts that the examiner
improperly found that Backderf and White inherently
IN RE SUTTON                                              14


    Sutton finally argues that the Board did not consider
the claimed invention as a whole, and, instead, used
hindsight to combine the prior art. The Board made
specific factual findings from the explicit teachings in the
prior art, however. The Board did not use Sutton’s pur-
ported invention as a roadmap to cobble together dispa-
rate prior art references for an obviousness combination
and we see no reason to disagree with them. As such,
substantial evidence supports the Board’s findings.
                             V.
    We find that the Board’s interpretations of the claim
scope on appeal are correct, and that its factual determi-
nations are supported by substantial evidence. The
Board’s rejection on obviousness grounds is affirmed.
                       AFFIRMED
                           COSTS
    No costs.




provide color stability without the use of stabilizers, that
assertion is irrelevant since, as explained earlier, Sutton’s
claims do include the use of HALs.
