Ex Parte Bales

Board of Patent Appeals and Interferences

Jan 24, 2008

10681497 (B.P.A.I. Jan. 24, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte STEPHEN G. BALES
____________

Appeal 2008-0559
Application 10/681,497
Technology Center 1700
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Decided: January 24, 2008
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Before EDWARD C. KIMLIN, THOMAS A. WALTZ, and
KAREN M. HASTINGS, Administrative Patent Judges.

KIMLIN, Administrative Patent Judge.

DECISION ON APPEAL

This is an appeal from the final rejection of claims 1-6, 8-12, 14, and
15. Claim 1 is illustrative:
1. In a method for forming lignocellulosic thermoplastic composite
products such as to increase their resistance to surface visual impairment
caused by mold attack, the improvement which comprises incorporating an
amount of boron-containing fungicide prior to forming said composite
product.

Appeal 2008-0559
Application 10/681,497

The Examiner relies upon the following references in the rejection of
the appealed claims:
Aida 5,221,781 Jun. 22, 1993
Lloyd 6,368,529 B1 Apr. 9, 2002

Appellant's claimed invention is directed to a method for forming
lignocellulosic thermoplastic composite products. The process entails
incorporating a boron-containing fungicide into the composition prior to
forming the composite product. The presence of the boron-containing
fungicide increases resistance to mold attack and the surface visual
impairment caused thereby.
Appealed claims 1, 4, 5, 11, 14, and 15 stand rejected under 35 U.S.C.
§ 102(b) as being anticipated by Aida. Claims 2 and 3 stand rejected under
35 U.S.C. § 102(b) as anticipated by or, in the alternative, under 35 U.S.C.
§ 103(a) as being unpatentable over Aida. Claims 6 and 8-12 stand rejected
under 35 U.S.C. § 103(a) as being unpatentable over Aida in view of Lloyd.
We have thoroughly reviewed Appellant's Principal and Reply Briefs
and the Examiner's Answer in reaching our decision.
We will not sustain the Examiner's § 102 rejection of claims 1, 4, 5,
11, 14, and 15 over Aida. Aida discloses a thermoplastic resin composition
that may contain an inorganic filler and/or a flame retardant. Aida discloses
that the filler may be inorganic or organic, or combinations thereof, and
flame retardants (col. 5, ll. 61-63). Many examples of inorganic fillers are
disclosed (para. bridging cols. 5-6), while a smaller list of examples of
organic fillers is provided, most of which are lignocellulosic materials (col.
6, ll. 18-21). For flame retardants Aida discloses halogen-based materials,
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phosphorus-based compounds and other inorganic flame retardants (col. 6,
ll. 30-33). A substantial number of inorganic flame retardants are disclosed,
including zinc borate, zinc metaborate, and barium metaborate (see para.
bridging cols. 6-7). Hence, it can be seen that in order to arrive at the
claimed lignocellulosic thermoplastic material a number of selections from
the lists of materials disclosed by Aida must be made, namely, the filler must
be a combination of organic and inorganic fillers, the organic filler must be a
lignocellulosic material, and the inorganic filler must be a particular flame
retardant in an extensive list, specifically, one of the three listed borates
among the list of inorganic flame retardants. Significantly, Aida provides no
example of a composition comprising a lignocellulosic material and a boron-
containing compound. Accordingly, we find that the degree of selection
required to arrive at the claimed invention cannot support a finding that Aida
describes the claimed subject matter within the meaning of 35 U.S.C. §
102. In our view, Aida fails to describe the claimed subject matter
sufficiently to have placed a person of ordinary skill in the art in possession
of the claimed invention. In re Coker, 463 F.2d 1344, 1348 (CCPA 1972).
The judicious selection required to result in the claimed composite product
from the Aida disclosure is substantial and outside the scope of a rejection
under § 102. In re Sivaramakrishnan, 673 F.2d 1383 (CCPA 1982).
The rejection of claims 2 and 3 under § 103 over Aida is another
matter. In our view, one of ordinary skill in the art, cognizant of the Aida
disclosure, would have found it obvious to prepare a thermoplastic
composite product comprising a lignocellulosic material and a boron-
containing compound in the recited amount. As pointed out by the
Examiner, Aida expressly discloses that the organic filler may be wooden
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powder, cellulose powder, pulp, etc. (col. 6, ll. 18-21), and Aida specifically
mentions zinc borate as an example of an inorganic flame retardant. Since
Aida teaches that the amount of flame retardants, such as zinc borate, can be
present in an amount of 5 to 200 parts by weight of the resin (col. 7, ll. 12-
15), we agree with the Examiner that Aida provides a fair teaching of
employing the boron-containing compound in the claimed amount of about 2
to 12% by weight of the composite product. Although Appellant stresses
that Aida does not teach that the boron-containing compound increases
resistance to mold attack, it is not necessary for a finding of obviousness that
a reference appreciate all the advantages of using the disclosed invention.
We find that it is reasonable to conclude that the amounts of boron-
containing compounds taught by Aida would also bring about resistance to
mold attack.
As for the § 103 rejection of claims 6 and 8-12 over Aida in view of
Lloyd, we fully concur with the Examiner that Lloyd evidences the
obviousness of utilizing calcium borate in a lignocellulosic composite
product for the purpose of improving resistance to fungus and insects, and
such use would necessarily result in Appellant's recited benefit of resistance
to mold attack.
We note that Appellant bases no argument upon objective evidence of
nonobviousness, such as unexpected results, which would serve to rebut the
prima facie case of obviousness established by the Examiner.
Under the provisions of 37 C.F.R. § 41.50(b), we enter the following
new ground of rejection. Claims 1, 4, 5, 11, 14, and 15 are rejected under
35 U.S.C. 103(a) as being unpatentable over Aida in view of Lloyd. For the
reasons set forth above with respect to the § 103 rejections, we are
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convinced that it would have been prima facie obvious for one of ordinary
skill in the art to produce a lignocellulosic thermoplastic composite by
incorporating a boron-containing fungicide in the composite material with
the reasonable expectation of achieving flame retardance for the product, as
well as resistance to insects and fungus, as taught by Lloyd. Even though it
is not necessary for a finding of obviousness that the prior art teach the
additional advantage espoused by Appellant, namely, resistance to mold
attack, Lloyd does explicitly teach this advantage. As noted above,
Appellant has proffered no objective evidence which establishes that
methods within the rather broad scope of the claims produce results that
would have been considered truly unexpected to one of ordinary skill in the
art.
In conclusion, based on the foregoing, the Examiner's decision is
affirmed-in-part. A new ground of rejection has been entered.
Regarding the affirmed rejection(s), 37 C.F.R. § 41.50(b)(1) provides
"[a]ppellant may file a single request for rehearing within two months from
the date of the original decision of the Board."
In addition to affirming the Examiner's rejection(s) of one or more
claims, this decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b) (effective September 13, 2004, 69 Fed. Reg. 49960
(August 12, 2004), 1286 Off. Gaz. Pat. Office 21 (September 7, 2004)).
37 C.F.R. § 41.50(b) provides "[a] new ground of rejection pursuant to this
paragraph shall not be considered final for judicial review."
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37 C.F.R. § 41.50(b) also provides that the appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the proceeding
will be remanded to the examiner. . . .

(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record. . . .

Should the Appellant elect to prosecute further before the Examiner
pursuant to 37 C.F.R. § 41.50(b)(1), in order to preserve the right to seek
review under 35 U.S.C. §§ § 141 or 145 with respect to the affirmed
rejection, the effective date of the affirmance is deferred until conclusion of
the prosecution before the Examiner (or, until after a request for rehearing of
the new ground) unless, as a mere incident to the limited prosecution, the
affirmed rejection is overcome.
If the Appellant elects prosecution before the Examiner and this does
not result in allowance of the application, abandonment or a second appeal,
this case should be returned to the Board of Patent Appeals and Interferences
for final action on the affirmed rejection, including any timely request for
rehearing thereof.
AFFIRMED-IN-PART
37 CFR § 41.50(b)

cam
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Appeal 2008-0559
Application 10/681,497

STEPHEN G. BALES
17 HART LANE
SEWELL, NJ 08080
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