Ex Parte Burgess et al

Board of Patent Appeals and Interferences

Feb 27, 2008

10239964 (B.P.A.I. Feb. 27, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JAMES H. BURGESS
and SAMMIE J. GLORIOSO, JR.
____________

Appeal 2007-3834
Application 10/239,964
Technology Center 1700
____________

Decided: February 27, 2008
____________

Before CHUNG K. PAK, CHARLES F. WARREN, and
JEFFREY T. SMITH, Administrative Patent Judges.

PAK, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134 from the
Examiner's refusal to allow claims 1, 2, 4, 6, 10, 12, and 14 through 25, all
of the claims pending in the above-identified application. We have
jurisdiction pursuant to 35 U.S.C. § 6.

Appeal 2007-3834
Application 10/239,964

STATEMENT OF THE CASE
The subject matter on appeal is directed to foam products comprising
expandable graphite particles having an average particle size less than 200
microns (Spec. 1, para. 0003). According to pages 1 and 2, paragraphs 0007
through 008, of the Specification:
Foam products are generally highly flammable when made of
solely out of their basic components. A variety of materials
have been used in the past for imparting fire resistance to
foams…..Such additives can be used to produce Factory Mutual
Class 1 rated foam when organic halogenated hydrocarbons
…are used as the primary blowing agent. However, similar
foams made with non-halogenated hydrocarbons…used as the
primary blowing agent fail to produce Factory Mutual Class 1
rated foam.

The Appellants have discovered that employing expandable graphite having
an average particle size of less than 200 microns in foam products produced
with non-halogenated hydrocarbons as the primary blowing agents can meet
the burning test of Factory Mutual Standard for class 1 ratings (Spec. 1-2).
Further details of the appealed subject matter are recited in representative
claims 1, 14, and 19 reproduced below:
1. A rigid polyurethane and/or polyisocyanurate foam
having fire resistance comprising:
from 1 – 50 % by weight of evenly dispersed expandable
graphite particles having an average particle size less than 200
microns,
from 99 to 50 % by weight of a closed cell polyurethane
foam, and
a non-halogenated chemical or non-halogenated chemical
blend selected from the group consisting of pentane, butane,
hexane, heptane, diethyl ether, isopentane, n-pentane and
cyclopentane or blends of chemicals from said group as a
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Application 10/239,964

primary blowing agent such that the foam passes the burning
test of Factory Mutual Standard F.M. 4450, Underwriters
Laboratories standard UL 1256 and ASTM E84 for class 1
ratings under each test standard.

14. A method for facilitating the manufacturing of fire
resistant polyurethane and/or polyisocyanurate foam that passes
the burning test of Factory Mutual Standard F.M. 4450,
Underwriters Laboratories standard UL 1256 and ASTM E84
for class 1 ratings under each test standard comprising:
introducing 10.57 to 41.14 PBW expandable graphite
particles having an average particle size less than 200 microns
to the screw of an extruder;
introducing at least 2 PBW of a dispersing agent to the
screw of the extruder;
introducing 5 to 46 PBW of a non-halogenated chemical
or a non-halogenated chemical blend selected from the group
consisting of pentane, butane, hexane, heptane, diethyl ether,
isopentane, n-pentane and cyclopentane or blends of chemicals
from said group as a primary blowing agent to the srcew of the
extruder; and
using the screw of the extruder to mix the expandable
graphite particles, dispersing agent, and non-halogenated
chemical or non-halogenated chemical blend with either 191 to
500 PBW of a isocyanate or 75 to 125 PBW of a polyol.

19. A rigid polyurethane and/or polyisocyanurate foam
made with a non-halogenated hydrocarbon or diethyl ether
chemical or non-halogenated hydrocarbon or diethyl ether
chemical blend as a primary blowing agent having fire
resistance comprising:
from 99 to 50 % by weight of a closed cell polyurethane
foam, and
from 1 -50 % by weight of evenly dispersed expandable
graphite particles having an average particle size less than 200
microns, such that the foam passes the burning test of Factory
Mutual Standard F.M. 4450 per ASTM E84 testing procedures
for a class 1 rating.
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Appeal 2007-3834
Application 10/239,964

The Examiner has relied upon the following references:
Olstowski US 3,574,644 Apr. 13, 1971
Gluck US 4,795,763 Jan. 3, 1989
Vos US 5,519,065 May 21, 1996
Glorioso US 5,723,506 Mar. 3, 1998

The Appellants have relied upon the following reference:
Heitmann US 5,169,876 Dec. 8, 1992

The Examiner has rejected claims 1, 2, 4, 6, 10, 12, and 19 through 25
under 35 U.S.C. § 103(a) as unpatentable over the combined disclosures of
Vos, Olstowski, and Gluck. The Examiner has also rejected claims 14
through 18 under 35 U.S.C. § 103(a) as unpatentable over the combined
disclosures of Glorioso and Olstowski.
The Appellants appeal from the Examiner’s decision rejecting the
claims on appeal under 35 U.S.C. § 103(a).

FACTS, PRINCIPLES OF LAW, ISSUE, AND ANALYSIS
Under 35 U.S.C. § 103, the factual inquiry into obviousness requires a
determination of: (1) the scope and content of the prior art; (2) the
differences between the claimed subject matter and the prior art; (3) the level
of ordinary skill in the art; and (4) secondary consideration (e.g., unexpected
results). Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 17-18
(1966). “[A]nalysis [of whether the subject matter of a claim would have
been obvious] need not seek out precise teachings directed to the specific
subject matter of the challenged claim, for a court can take account of the
inferences and creative steps that a person of ordinary skill in the art would
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Application 10/239,964

employ.” KSR Int’l v. Teleflex, Inc., 127 S. Ct. 1727, 1740-41 (2007)
quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006); see also DyStar
Textilfarben GmBH & Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d
1356, 1361 (Fed. Cir. 2006)(“The motivation need not be found in the
references sought to be combined, but may be found in any number of
sources, including common knowledge, the prior art as a whole, or the
nature of the problem itself.”). The analysis supporting obviousness,
however, should “identify a reason that would have prompted a person of
ordinary skill in the [art] to combine the elements” in the manner claimed.
KSR, 127 S. Ct. at 1741.
In rejecting the claims on appeal under 35 U.S.C. § 103, the Examiner
has correctly found that:
Vos et al. discloses preparations of rigid urethane foams
prepared from urethane forming ingredients including non-
halogenated blowing agents and fire retardant materials (see the
entire document).
….
Glorioso et al. discloses methods for forming polyurethane
foams comprising feeding various powder filler and/or fire
retardant additives, blowing agents inclusive of non-
halogenated hydrocarbons, and dispersing agents to the screw
of an extruder and using the screw of the extruder to mix the
feed with isocyanate and/or polyol (see the entire document).
[Compare Ans. 3 and 5 with App. Br. 9-10 and 19-20.]

The Examiner has recognized that neither Vos nor Glorioso teaches
employing expandable graphite having an average particle size of less than
200 micron as a fire retardant to produce foams meeting the burning test of
the claimed Factory Mutual Standard (Ans. 4-5).
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Application 10/239,964

To remedy this deficiency, the Examiner has relied on the disclosure
of Olstowski (id).1 Specifically, the Examiner has found at pages 4 and 5 of
the Answer that:
Olstowski et al. discloses the employment of expandable
graphite as a fire retardant in urethane foam preparations having
ranges of mesh size values encompassing of the ranges of
values instantly claimed by appellants and shows motivation to
use smaller flakes for the purpose of realizing homogeneity and
better aesthetics (see column 1 lines 43-55, as well as, the entire
document).

The Examiner, however, has not provided any fact finding or reason as to
why one of ordinary skill in the art would have reasonably expected to form
foams meeting the burning test of Factory Mutual Standard for class 1 rating
as required by claims 1, 14, and 19 (Ans. 3-10)
The Appellants contend that there is no reason or suggestion in the
applied prior art to expect the formation of foams meeting the burning test of
Factory Mutual Standard for class 1 rating upon adding expandable graphite
having an average particle size of less than 200 microns (Br. 10, 12, and 20).
The Appellants contend that one of ordinary skill in the art would have, in
fact, been taught away from employing expandable graphite having the
claimed average particle size of less than 200 microns as a flame retardant to
produce a class 1 rated foam under Factory Mutual Standard as recited in
claims 1, 14, and 19 as evidenced by Heitmann (id).
The dispositive question is therefore whether the Examiner has
demonstrated that one of ordinary skill in the art would have been led to

1 The Examiner has relied on Gluck to show the limitations set forth in
dependent claims 4 and 22 only (Ans. 4).
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Application 10/239,964

employ such expandable graphite in the polyurethane foams of the type
described in Vos or Glorioso with a reasonable expectation of successfully
forming class 1 rated foams under the claimed Factory Mutual Standard
within the meaning of 35 U.S.C. § 103(a). On this record, we answer this
question in the negative
As correctly pointed out by the Appellants (Spec. 2, para 0008, App.
Br. 11-12 and 20, and Reply Br. 4-5), Heitmann discredits the teachings of
Olstowski and discourages one of ordinary skill in the art from employing
expandable graphite having an average particle size of less than 200 microns
in polyurethane foams to obtain the claimed high flame retardant property.
We observe that Heitmann mentions the clumping problem associated with
Olstowski’s use of its expandable graphite (Heitmann, col. 1, ll. 39-50). We
observe that Heitmann teaches at column 1, lines 15-30, that:
[I]f the expanded graphite particles are too small, the flame
retardant and expansion properties are markedly
diminished…resulting in inadequate flame retardation.
Moreover, the serviceability of the foam is reduced [as a result
of the cell structure of the expanding foam being destroyed.]
[Emphasis added.]

We observe that Heitmann then goes onto test different particle size
expandable graphite materials shown at Tables I and IV and indicate at
column 6, line 65 to column 7, line 4, that:
As the results of these tests clearly show, the worst fire
performance was exhibited by the recipes having expanded
graphite powder in a graduated size of less than 0.2 mm [200
microns], which even at higher concentrations had virtually no
adequate effect. Only the recipe with a proportion of 50 parts
by weight of expanded graphite yielded a better result, but it
still did not pass the kerosene burner test.
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Appeal 2007-3834
Application 10/239,964

We observe that Heitmann teaches that expanded graphite having a particle
size of 0.3 to 1 mm (300 to 1000 microns) provides desired flame retardation
and serviceability to foam products (Heitmann, Tables I and IV, together
with col. 7, ll. 5-12 and col. 2, ll. 49-55).
Despite the Appellants’ teaching away arguments and evidence
discussed above, the Examiner has not explained why Heitmann would not
have taught away from employing expandable graphite having an average
particle size of less than 200 microns as a flame retardant in the
polyurethane foams of the type described in Vos or Glorioso (Ans. 3-10).
Nor has the Examiner explained why one of ordinary skill in the art would
have had a reasonable expectation of successfully forming the claimed class
1 rated polyurethane foams under the Factory Mutual Standard upon
employing an ineffective flame retardant, i.e., expandable graphite having an
average particle size of less than 200 microns (id).
Under the above circumstances, we are constrained to agree with the
Appellants that the Examiner has not provided an adequate basis for
establishing obviousness within the meaning of 35 U.S.C. § 103(a).

ORDER
In view of the foregoing, the decision of the Examiner is reversed.

REVERSED

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Appeal 2007-3834
Application 10/239,964

PL Initial
sld

VOLPE AND KOENIG, P.C.
UNITED PLAZA, SUITE 1600
30 SOUTH 15TH STREET
PHILADELPHIA, PA 19103

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