Ex Parte Bright et al

Board of Patent Appeals and Interferences

Mar 21, 2003

08711134 (B.P.A.I. Mar. 21, 2003)

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The opinion in support of the decision being entered
today was not written for publication in a law journal
and is not binding precedent of the Board.
Paper No. 23
UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES

Ex parte DANIELLE A. BRIGHT, ALAN M. AARONSON
and RONALD L. PIRRELLI

Appeal No. 1998-1790
Application No. 08/711,134

ON BRIEF

Before KIMLIN, OWENS and JEFFREY T. SMITH, Administrative Patent
Judges.
KIMLIN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 1-9,
all the claims in the present application. Claim 1 is
illustrative:
1. A fluid flame retardant composition suitable for use in
forming flame retarded polymer composition which comprises a
normally viscous flame retardant and an effective amount of an
Appeal No. 1998-1790
Application No. 08/711,134
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alkylene-bridged diphosphate compound for viscosity reduction
thereof.
The examiner relies upon the following references as
evidence of obviousness:
Fesman 4,433,071 Feb. 21, 1984
Buszard et al. (Buszard) 4,565,833 Jan. 21, 1986
Duncan et al. (Duncan) 4,681,902 Jul. 21, 1987
Bright et al. (Bright) 5,041,596 Aug. 20, 1991
Stone 5,086,082 Feb. 4, 1992
Asahi Denka Kogyo K.K. JP 40342/74 Apr. 28, 1974
(Japanese Patent Publication)
Appellants’ claimed invention is directed to a fluid flame
retardant composition comprising a viscous flame retardant, such
as polybrominated diphenyl oxide, and an alkylene-bridged
diphosphate. The diphosphate reduces the viscosity of the
viscous flame retardant.
As acknowledged by appellants at page 1 of their principal
brief, the present application is related to U.S. Serial No.
08/586,442. An appeal was taken in the related application and,
in a decision dated April 20, 2000, a merits panel of this Board
sustained the examiner’s rejections of the appealed claims under
35 U.S.C. § 103 over the same prior art presently applied by the
examiner (Appeal No. 1997-3587).
Appealed claims 1-9 stand rejected under 35 U.S.C. 103 as
Appeal No. 1998-1790
Application No. 08/711,134
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being unpatentable over Fesman, considered alone, or in
combination with Buszard or Duncan or Bright. Claims 1-3 and 6-7
stand rejected under 35 U.S.C. § 103 as being unpatentable over
Stone, considered alone, or in view of JP ‘342 and Bright.
Appellants set forth four different groups of claims at page
3 of the principal brief. However, the Argument section of
appellants’ brief fails to advance any argument that is
reasonably specific to a particular claim on appeal.
Accordingly, all the appealed claims stand or fall together with
claim 1, and we will limit our consideration of this appeal to
the examiner’s rejections of claim 1. Ex parte Ohsumi, 21
USPQ2d 1020, 1023 (BPAI 1991). See also 37 CFR § 1.192 (C)(7)
and (C)(8).
We have thoroughly reviewed each of appellants’ arguments
for patentability presented in the principal and reply briefs on
appeal. However, we are in complete agreement with the examiner
that the claimed subject matter would have been obvious to one of
ordinary skill in the art within the meaning of § 103 in view of
the applied prior art. Accordingly, we will sustain the
examiner’s rejections for the reasons set forth in the answer,
which incorporates the final rejection of July 1, 1997 (Paper No.
15) and the reasons articulated in the Board’s decision on the
Appeal No. 1998-1790
Application No. 08/711,134
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related appeal referred to above. We add the following for
emphasis only.
There is no dispute that Fesman and Stone, the primary
references, each disclose flame retardant compositions for
polymers which comprise the presently claimed “normally viscous
flame retardant” and “an alkylene-bridged diphosphate.” While
neither reference exemplifies a flame retardant composition
comprising both of the claimed compounds, both Fesman and Stone
disclose the use of the compounds, and the mixtures thereof, in a
relatively small list of flame retardant compounds (see Fesman at
column 3, lines 3-17, and Stone at column 3, lines 20-30).
Accordingly, inasmuch as it is well settled that it is a matter
of obviousness for one of ordinary skill in the art to combine
two or more materials when each is taught by the prior art to be
useful for the same purpose, we must agree with the examiner that
it would have been prima facie obvious for one of ordinary skill
in the art to formulate a flame retardant composition for a
polymer comprising a mixture of the two presently claimed
compounds. In re Kerkhoven 626 F.2d 846, 850, 205 USPQ 1069,
1072 (CCPA 1980). While appellants emphasize that neither of the
primary references teaches or suggests that the alkylene-bridged
diphosphate reduces the viscosity of the normally viscous flame
Appeal No. 1998-1790
Application No. 08/711,134
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retardant, the examiner has properly explained that it is not
necessary for a finding of obviousness that the prior art
disclose the same purpose, or advantage, of an applicant’s
invention. See In re Dillion, 919 F.2d 688, 693, 16 USPQ2d 1897,
1901 (Fed Cir. 1990) (en banc), cert. denied, 500 U.S. 904
(1991). We fully concur with the examiner that both Fesman and
Stone provide ample motivation for one of ordinary skill in the
art to prepare a flame retardant composition for polymers
comprising a mixture of the recited compounds. We note that
appellants have proffered no objective evidence of
nonobviousness, such as unexpected results, which would serve to
rebut the inference of obviousness established by the applied
references.
In conclusion, based on the foregoing and the reasons well-
stated by the examiner, the examiner’s decision rejecting the
appealed claims is affirmed.
Appeal No. 1998-1790
Application No. 08/711,134
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No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED
EDWARD C. KIMLIN )
Administrative Patent Judge )
)
)
)
)
TERRY J. OWENS ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
)
JEFFREY T. SMITH )
Administrative Patent Judge )
EK/RWK
Appeal No. 1998-1790
Application No. 08/711,134
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RICHARD P FENNELLY
AKZO NOBEL INC
7 LIVINGSTONE AVENUE
DOBBS FERRY, NY 10522