Ex Parte Ahluwalia et al

Board of Patent Appeals and Interferences

Jan 25, 2011

10766654 (B.P.A.I. Jan. 25, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
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.
10/766,654 01/27/2004 Younger Ahluwalia 03398.000005. 3974
5514 7590 01/25/2011
FITZPATRICK CELLA HARPER & SCINTO
1290 Avenue of the Americas
NEW YORK, NY 10104-3800
EXAMINER
RUDDOCK, ULA CORINNA
ART UNIT PAPER NUMBER
1729
MAIL DATE DELIVERY MODE
01/25/2011 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________

Ex parte YOUNGER AHLUWALIA,
MATTI KIIK, and THOMAS D. KAROL
_________

Appeal 2010-004933
Application 10/766,654
Technology Center 1700
_______________

Before CHARLES F. WARREN, JEFFREY T. SMITH, and
KAREN M. HASTINGS, Administrative Patent Judges.

WARREN, Administrative Patent Judge.

DECISION ON APPEAL1
Applicants appeal to the Board from the decision of the Primary
Examiner finally rejecting claims 1-21 in the Office Action mailed
November 25, 2008. 35 U.S.C. §§ 6 and 134(a) (2002); 37 C.F.R.

1 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.
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Application 10/766,654
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§ 41.31(a) (2008).
An oral hearing was held January 12, 2011.
We reverse the decision of the Primary Examiner.
Claims 1 and 2 illustrate Appellants’ invention of a heat insulating
and fire resistant composite material, and are representative of the claims on
appeal:
1. A heat insulating and fire resistant composite material consisting
essentially of:
(a) a first layer which comprises a surfactant component, surfactant-
generated microcells, a filler component and a binder component; and
(b) a second layer comprising a metallic component adhered to the
first layer.
2. A heat insulating and fire resistant composite material comprising:
(a) a substrate;
(b) a first layer adhered to the substrate to provide a coated substrate,
said first layer comprising a surfactant component, surfactant-generated
microcells, a filler component comprising clay and a binder component,
wherein said binder bonds the filler material together and to the substrate
and wherein said first layer does not bleed through the substrate; and
(c) a second layer comprising a metallic component adhered to the
coated substrate.
Appellants request review of the ground of rejection under 35 U.S.C.
§ 103(a) advanced on appeal by the Examiner: claims 1-21 over Ahluwalia
(US 5,965,257) in view of Langer (US 4,600,634) and Weaver (GB
2 167 060 A) or Dugan (US 4,994,317) or Dombeck (US 6,228,497 B1).
App. Br. 3; Ans. 3.
Opinion
I.
Appellants submit that the Examiner erred in concluding that the
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Application 10/766,654
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combined teachings of Ahluwalia, Langer, Weaver, Dugan, and Dombeck
would have led one of ordinary skill in the art to the claimed heat insulating
and fire resistant composite material specified in representative claims 1 and
2. Appellants argue, among other things, the Examiner did not establish that
the prior art relied on would have led one of ordinary skill in the art to use
clay as a filler in a coating which can contain other fillers and contains
binder material for the filler and the substrate, in the expectation that the
addition of clay would result in a coating having essentially the same ionic
charge as the substrate such that the coating does not bleed through said
substrate which is “[o]ne principle of operation for” Ahluwalia, pointing out
that claim 2 specifies that the coating “does not bleed through the
substrate.”2 App. Br., e.g., 8-11 and 15-16; Reply Br., e.g., 5-7.
II.
The Examiner submits that a difference between the coated structural
articles of Ahluwalia is the absence of clay filler. The Examiner finds that
Ahluwalia’s articles have a substrate, such as fiberglass, coated with a
coating containing a filler and a binder that has essentially the same ionic
charge as the substrate, and can be used for, among other things, a fire wall
and facing sheets. Ans. 3-4. The Examiner finds that Weaver, Dugan, and
Dombeck would have disclosed to one of ordinary skill in the art that clay
filler provides increased fire resistance in composite materials for heat

2 Appellants acknowledge that Ahluwalia’s composites do not have a
metallic component but do not argue whether one of ordinary skill in the art
would have been led by Langer to add an aluminum sheet to the coated
substrate of Ahluwalia as the Examiner contends. Ans. 4 and 7; App. Br.,
e.g., 9-10 and 16; Reply Brief, e.g., 6.
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Application 10/766,654
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insulating and fire resistance. Ans. 5. Thus, the Examiner concludes that it
would have been obvious to one of ordinary skill in the art to add clay filler
to Ahluwalia’s coating for increased flame resistance and maintains this
position in response to Appellants’ position in the Appeal Brief. Ans. 5, 6,
and 7.
III.
We agree with Appellants’ position. As an initial matter, we note
that contrary to Appellants’ arguments and as the Examiner holds, the
transitional phrase “consisting essentially of” in claim 1 does not preclude
the presence of a substrate which supports the claimed first layer because
Appellants have not shown that the presence of the substrate will affect the
basic and novel characteristics of the claimed heat insulating and fire
resistant composite material. Ans. 5-6; App. Br. 6-7; Reply Br. 2-3. Indeed,
when considered in light of the disclosure in the Specification, the
transitional phrase opens claim 1 to include embodiments in which “[t]he
composite materials may further include a substrate to which the first layer is
adhered to provide a coated substrate.” Spec. ¶ 0021. See, e.g., In re Herz,
537 F.2d 549, 551-52 (CCPA 1976) (“[I]t is necessary and proper to
determine whether [the] specification reasonably supports a construction”
that would exclude or include particular ingredients.); In re De Lajarte, 337
F.2d 870, 873-74 (CCPA 1964); see also PPG Indus. v. Guardian Indus.
Corp., 156 F.3d 1351, 1354-57 (Fed. Cir. 1998) (Patentees “could have
defined the scope of the phrase ‘consisting essentially of’ for purposes of its
patent by making clear in its specification what it regarded as constituting a
material change in the basic and novel characteristics of the invention. The
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question for our decision is whether PPG did so.”).
On this record, and with respect to claims 13 and 2, we are of the
opinion that the Examiner has not established that one of ordinary skill in the
art would have reasonably predicted that any clay that can function as an
endothermic filler for fire resistant composites as disclosed by Weaver,
Dugan, and Dombeck, would be a compatible filler in Ahluwalia’s coatings,
consisting essentially of any filler material and a binder material, on a
substrate, wherein the coating must have essentially the same ionic charge as
the substrate in order that the coating does not bleed through to the other
side of the substrate when applied thereto.4 See Ahluwalia, e.g., abstract,
col. 1, l. 66 to col. 2, l. 27, col. 3, ll. 41-43, col. 4, ll. 26-46, col. 5, ll. 19-24
and 39-50, col. 6, ll. 5-13, and col. 8, l. 61 to col. 9, l. 9; Weaver, e.g.,
abstract, 1:116-117, 2:5-63, 2:93-123, 3:2-11, 3:70-78, 4:15-21, and Fig. 2;
Dugan, e.g., abstract, col. 1, ll. 47-64, col. 2, ll. 24-37, col. 3, ll. 10-18 and
58-65; Dombeck, e.g., abstract, col. 1, ll. 19-21, col. 2, ll. 31-54, col. 2, l. 64
to col. 3, l. 21, col. 3, ll. 52-64, col. 4, ll. 27-36, and col. 5, ll. 4-19 and 25-
28; see also Langer, e.g., col. 2, ll. 5-32 and 53-49, col. 3, ll. 3-9, and col. 3,
l. 61 to col. 4, l. 7. Indeed, the Examiner has not shown that the clay fillers
of Weaver, Dugan, and Dombeck would be compatible with an anionic

3 We determine that appealed claim 1 does not specify that the coating
includes a clay filler. Even so, the Examiner included this claim in the
ground of rejection advanced on appeal on the basis that the claimed
composite material of claim 1 differed from Ahluwalia’s articles in the
absence of a clay filler in the coating thereon.
4 In this respect, Ahluwalia’s disclosure aligns with the limitation “coating
does not bleed through said substrate” of claim 2. Ahluwalia, e.g., col. 5,
ll. 19-24.
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coating composition containing, for example, Ahluwalia’s preferred “high
performance heat-reactive acrylic latex polymer” HycarTM 2679, which is
anionic in water, when applied to a fiberglass mat that is also anionic.
Ahluwalia discloses that HycarTM 2679 is compatible with a range of fillers
having different ionic charges. Ahluwalia, e.g., col. 3, ll. 5-9, col. 5, ll. 39-
50, col. 7, ll. 9-24, col. 8, ll. 43-45, and col. 8, ll. 65-67. We fail to find in
Ahluwalia any limitation(s) on the fillers employed other than the coatings
containing the same must comply with the “principals [sic] underlying the
present invention.” Ahluwalia, e.g., col. 9, ll. 41-46.
IV.
Accordingly, the Examiner has not in the first instance provided on
the record evidence or a scientific explanation establishing that one of
ordinary skill in the art would have modified Ahluwalia’s composite articles
by using clay as a filler in the coating thereon as disclosed by the teachings
of Weaver, Dombeck, and Dugan. Thus, in the absence of a case of
obviousness, we reverse the ground of rejection of claims 1-21 under
35 U.S.C. § 103(a). See, e.g., In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir.
1992); see also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (“[I]t
can be important to identify a reason that would have prompted a person of
ordinary skill in the relevant field to combine the elements in the way the
claimed new invention does.”).
The Primary Examiner’s decision is reversed.
REVERSED

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Appeal 2010-004933
Application 10/766,654
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1290 AVENUE OF THE AMERICAS
NEW YORK, NY 10104-3800