Ex Parte Creasy

Patent Trials and Appeals Board

May 31, 2013

11143333 - (D) (P.T.A.B. May. 31, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/143,333 06/02/2005 Larry D. Creasy JR. 9062-000007/US 8586
28997 7590 06/03/2013
HARNESS, DICKEY, & PIERCE, P.L.C
7700 Bonhomme, Suite 400
ST. LOUIS, MO 63105
EXAMINER
DESAI, ANISH P
ART UNIT PAPER NUMBER
1788
MAIL DATE DELIVERY MODE
06/03/2013 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 PATENT TRIAL AND APPEAL BOARD
________________

Ex parte LARRY D. CREASY, JR.1
________________

Appeal 2011-004478
Application 11/143,333
Technology Center 1700
________________

Before CHARLES F. WARREN, JEFFREY T. SMITH, and
MARK NAGUMO, Administrative Patent Judges.

NAGUMO, Administrative Patent Judge.

DECISION ON APPEAL
Larry D. Creasy, Jr. (“Creasy”) timely appeals under
35 U.S.C. § 134(a) from the final rejection2 of claims 1, 3-17, 23, 24, 27-29,
31-37, 39-41, and 44-57, which are all of the pending claims. We have
jurisdiction. 35 U.S.C. § 6. We reverse.

1 The real party in interest is listed as Laird Technologies, Inc. (Appeal
Brief, filed 16 July 2010 (“Br.”), 2.)
2 Office action mailed 20 January 2010 (“Final Rejection”; cited as “FR”).
Appeal 2011-004478
Application 11/143,333

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OPINION
A. Introduction3
The subject matter on appeal relates to electromagnetic interference
(“EMI”) shields made from environmentally friendly materials.
The 333 Specification explains that electronic devices generate
electromagnetic radiation that can interfere with the operation of other
nearby electronic devices. The claimed EMI shields comprise a resilient
core member that is adhesively bonded to an electrically conductive layer
that provides the EMI shielding. The core comprises at least one urethane
foam member that is free of flame retardant. The adhesive has a specified
bond strength between the core and the conductive layer, is free of halogen,
and includes 25% or more by dry weight of a halogen-free flame retardant.
Representative Claim 1 reads:
An electromagnetic interference (EMI) shield comprising
at least one resilient core member,
at least one electrically conductive layer, and
at least one adhesive bonding the electrically conductive
layer to the resilient core member with a bond strength of
at least ten ounces per inch width,
the adhesive being free of halogen and
including 25 percent or more by dry weight of at least
one halogen-free flame retardant,

3 Application 11/143,333, Flame Retardant EMI shields, 2 June 2005,
claiming the benefit of a provisional application filed 9 February 2005. The
specification is referred to as the “333 Specification,” and is cited as “Spec.”
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the shield having
a flame rating of V0 under Underwriter’s Laboratories
(UL) Standard No. 94,
wherein the electrically conductive layer comprises
at least one fabric material, and
wherein the resilient core member comprises
at least one urethane foam material that is free of
flame retardant.
(Claims App., Br. 25; indentation, paragraphing, and emphasis added.)
The Examiner maintains the following grounds of rejection:4
A. Claims 1, 3-17, 23, 24, 27-29, 31-37, 39-41, and 44-53 stand
rejected under 35 U.S.C. § 103(a) in view of the combined
teachings of Takagi,5 Nakano,6 Yukuta,7 and Novotny.8
B. Claim 15 stands rejected under 35 U.S.C. § 103(a) in view of
the combined teachings of Takagi, Nakano, Yukuta, Novotny,
and Musa.9

4 Examiner’s Answer mailed 14 October 2010 (“Ans.”).
5 Susumu Takagi and Yukiyo Sakagawa, Flame resistant electromagnetic
wave shielding gasket, JP2003-243873 A (2003) (translation).
6 Toshihiko Nakano et al., Sheet for forming article having electromagnetic
wave shieldability, U.S. Patent 4,980,223 (1990).
7 Toshio Yukuta et al., Process for producing a flame- and smoke-retarded,
non-shrinkable, flexible polyurethane foam, U.S. Patent 4,076,654 (1978).
8 Joseph Novotny, Method and composition for corrosion inhibition of
carbon steel by ammonium sulfate, U.S. Patent 4,556,536 (1985).
9 Osama M. Musa and Harry Richard Kuder, Adhesion promoters
containing benzotriazoles, U.S. Patent Application Publication
2003/0098440 A1 (2003).
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C. Claims 54-57 stand rejected under 35 U.S.C. § 103(a) in view
of the combined teachings of Takagi, Nakano, Yukuta,
Novotny, and Bunyan.10
B. Discussion
Findings of fact throughout this Opinion are supported by a
preponderance of the evidence of record.
Critically, the Examiner finds that Yukuta describes a polyurethane
foam that is free of a flame retardant. (Ans., para. bridging 6-7, citing the
Yukuta abstract and claim 10.) The Yukuta abstract states that “a flame- and
smoke-retarded, non-shrinkable flexible polyurethane foam is produced” by
reacting ingredients A through D, D being an ammonium compound that
generates ammonia gas at a temperature below 100°C. The abstract is silent
as to the presence or absence of a flame retardant. Yukuta’s claim 10
depends from claim 1, “a process for producing a flame- and smoke-
retarded, non-shrinkable, flexible polyurethane foam, which comprises
reacting” components A through D, largely as recited in the abstract (Yukuta
col. 9, ll. 58-60), “wherein said polyurethane foam is free of any flame
retardant” (id. at col. 10, ll. 57-58).
Creasy (Br. 14) cites Yukuta column 4, line 59, through column 5,
line 11 as support for the argument that the ammonium compound acts as a
flame retardant and that “the ammonium compound does not completely
disappear from the end product of the Yukuta PU foam.” The Examiner
(Ans. 19, ¶ 39) cites the immediately preceding paragraph of Yukuta, which

10 Michael A. Bunyan, EMI/FRI shielding gasket, U.S. Patent 5,115,104
(1992).
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states that “the ammonium compound to be used in the present invention is
one which decomposes at a temperature below the foaming temperature”
(Yukuta col. 4, ll. 55-58), as evidence that there is no ammonium compound
present in the foamed polyurethane. Those two passages read:
As the ammonium compound (D) to be used in the
present invention, ammonium compounds which generate
ammonia gas at a temperature below 100°C are preferable to
attain the object of the present invention. The temperature at
the foaming of polyurethane foam is generally about 100° C,
that is, the ammonium compound to be used in the present
invention is one which decomposes at a temperature below
the foaming temperature.
As the ammonium compound described above, there may
be used ammonium carbonate, . . . . Among them, the
ammonium compounds other than sodium ammonium
hydrogenphosphate generate ammonia gas and carbon
dioxide gas or ammonia gas, carbon dioxide gas and water by
heating. Ammonia and water have active hydrogen atoms
and react with the polyisocyanate to take part in the chain
extending and the crosslinking reactions in the preparation of
polyurethane foam. Carbon dioxide gas generated by the
decomposition of the ammonium compound acts as a
blowing agent at the foaming step and also has an excellent
effect for preventing the resulting foam from shrinking.
Thus, the ammonium compound acts as a catalyst and a
blowing agent under an exothermic reaction condition of the
foaming step and also has an excellent effect for giving the
flame- and smoke-resistance to the resulting polyurethane
foam.
(Id. at col. 4, l. 50 to col. 5, l. 11.) This disclosure of Yukuta can arguably
be read as teaching ammonium compounds that can be completely
decomposed under the processing conditions or as providing for a residual
effective amount. However, it has not escaped our attention that Yukuta
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also teaches that “[i]t is well known to use an ammonium compound in the
preparation of polyurethane foam as a foaming catalyst, a filler, a stabilizing
agent and a flame retardant.” (Id. at col. 2, ll. 30-32; emphasis added.)
Yukuta teaches further that “[i]t is another aspect of the present invention to
provide flame- and smoke-retarded polyurethane foam without employing
any flame retardants, such as phosphorus-containing and halogen-containing
compounds.” (Id. at ll. 41-44.) In this regard, we find further that every
inventive Example uses an ammonium compound. The Examiner has not
directed our attention to teachings in Yukuta regarding an alternative origin
of the flame retardant properties of the polyurethane foams. Thus, the flame
retardant required to be absent by claim 10 appears to be the phosphorus-
and halogen-containing compounds mentioned expressly by Yukata as not
necessary to obtain flame-retardant polyurethane foams.
The weight of the evidence of record supports Creasy’s interpretation
that ammonium compounds function in the polyurethane foams as flame
retardants disclosed by Yukuta.11
Creasy has submitted Sakagawa12 as evidence that Takagi teaches
away from the claimed invention because Takagi does not disclose halogen-

11 In reaching this conclusion, we have not considered the declaration
submitted by Larry D. Creasy Jr., executed 15 July 2010, as Exhibit 2, and
the UL-94 documentation submitted as Exhibit 3 from a website apparently
visited on 15 July 2010, which the Examiner has refused entry as untimely.
(Ans. 15.)
12 Sachiyo Sakagawa, Flame-retardant metal-coated fabric and gasket
comprising the same for electromagnetic wave shielding, U.S. Patent
Application Publication 2009/0068907 A1 (12 March 2009), based on an
international application filed 19 April 2006), Evid. App. Exh. 4. The
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free flame retardant shielding gaskets that can achieve UL-94 fire ratings
of V0. (Br. 15, citing Sakagawa [0004].) In the same vein, Creasy argues
that Nakano also teaches away from obtaining V0 ratings in the absence of
halogenated flame retardants in adhesive layers. (Br. 15-16.) This
argument, like the Examiner’s argument that the V0 rating is reasonably
presumed to be “necessarily present in the EMI shielding of Takagi as
modified by Nakano and Yukuta” (Ans. 8, ¶ 12; cf. 9, ¶ 14), is overstated.
On the one hand, a teaching away requires that a reference state that
an embodiment “should not” or “cannot” be used in combinations with
embodiments of another reference. Para-Ordnance Manufacturing, Inc. v.
SGS Importers International, Inc., 73 F.3d 1085, 1090 (Fed. Cir. 1995). In
the present case, the examples provided by Takagi and by Nakano tend to
suggest that V0 flame retardance is not likely to be achieved without the
presence of halogen flame retardants. On the other hand, an obviousness
rejection that depends on the alleged inherency of some property as arising
out of the combination of references (rather than an allegedly inherent
property that arises completely from an element provided by a single
reference, independently of the other references), is highly suspect. In re
Rijckaert, 9 F.3d 1531, 1534 (Fed. Cir. 1993) (“That which may be inherent
is not necessarily known. Obviousness cannot be predicated on what is
unknown.”) In the present case, Creasy disputes the Examiner’s finding that
Yukuta discloses a fire-retardant-free polyurethane foam. Creasy also

Examiner has not refused entry of this Exhibit. According to PTO records,
Sakagawa is assigned to Seiren Co., Ltd., the listed assignee of Takagi.
Sakagawa is therefore probative evidence of what Takagi teaches.
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argues that there would not have been a reasonable expectation of
successfully combining the teachings of the references to achieve an EMI
shield having a V0-level of flame retardance. On both points, the weight of
the evidence supports Creasy.
The Examiner does not rely on the remaining references as evidence
that cures these defects of Takagi, Nakano, and Yukuta, alone or in
combination.
C. Order
We reverse the rejection of claims 1, 3-17, 23, 24, 27-29, 31-37,
39-41, and 44-57.
REVERSED

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