Ex Parte Burgess et alDownload PDFBoard of Patent Appeals and InterferencesFeb 27, 200810239964 (B.P.A.I. Feb. 27, 2008) Copy Citation 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 2 Appeal 2007-3834 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. 3 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 4 Appeal 2007-3834 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). 5 Appeal 2007-3834 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). 6 Appeal 2007-3834 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. 7 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 8 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 9 Copy with citationCopy as parenthetical citation