Ex parte Dueber et al.

Board of Patent Appeals and Interferences

Jan 20, 1998

07914228 (B.P.A.I. Jan. 20, 1998)

Application for patent filed July 13, 1992. According1
to the applicant, the application is a continuation of
Application 07/594,244, filed October 9, 1990, now abandoned.
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered
today (1) was not written for publication in a law
journal and (2) is not binding precedent of the
Board.
Paper No. 33
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte ERNST O. DUEBER and LOUIS MULLER
____________
Appeal No. 95-0192
Application No. 07/914,2281
____________
ON BRIEF
____________
Before KIMLIN, PAK and OWENS, Administrative Patent Judges.
PAK, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner’s refusal
to allow claims 1 through 11, which are all of the claims
pending in the application. Claim 1 has been amended
subsequent to final rejection.
Appeal No. 95-0192
Application No. 07/914,228
2
The subject matter on appeal is directed to an
intermediate composition comprising a liquid organic
polyisocyanate containing dispersions of solid fire retardant
additives and polyurea particles. See specification, page 2.
This intermediate composition is useful for forming fire
resistant polymeric materials, such as fire resistant
polyurethanes. See specification, pages 1 and 13. This
appealed subject matter is adequately illustrated by claims 1
and 2, which read as follows:
1. A fire retardant composition having improved storage
stability comprising a dispersion of a solid fire retardant
additive in a liquid organic polyisocyanate which contains
dispersed polyurea particles.
2. A composition according to claim 1 wherein the solid
fire retardant additive is selected from the group consisting
of melamine, ammonium polyphosphate and guanidine carbonate.
The references of record relied upon by the examiner are:

Paige et al. (Paige) 3,666,692 May 30, 1972
Nissen et al. (Nissen) 4,469,653 Sep. 04, 1984
Gill et al. (Gill) 4,622,361 Nov. 11, 1986
Hess et al. (Hess) 4,716,182 Dec. 29, 1987
Hughes et al. (Hughes) 4,786,704 Nov. 22, 1988
Appeal No. 95-0192
Application No. 07/914,228
This is the only rejection before us. The examiner has2
not restated in the Answer all of the rejections based on
Hughes alone or Hughes, Nissen, Hess and Gill in the final
rejection dated April 26, 1993. Nor has the examiner disputed
appellants’ assertion that all of the rejections based on
Hughes alone or Hughes, Nissen, Hess and Gill have been
withdrawn. Compare page 1 of the Reply Brief with both the
Answer and the Supplemental Answer in their entirety.
3
Claims 1 through 11 stand rejected under 35 U.S.C. § 103
as unpatentable over the combined disclosures of Hughes,
Paige, Gill, Nissen and Hess.2
We have carefully reviewed the entire record before us,
including each of the arguments and comments advanced by the
examiner and appellants in support of their respective
positions. This review leads us to conclude that the
examiner’s § 103 rejection is well-founded. Accordingly, we
will sustain the examiner’s rejection for essentially those
reasons expressed in the Answer. We add the following
primarily for emphasis.
As a preliminary matter, we note that appellants have
initially grouped the appealed claims at page 4 of the Brief
as follows:
Group I - claim 1; and
Group II - claims 2 through 11.
Appeal No. 95-0192
Application No. 07/914,228
4
Appellants have not altered this grouping in their Reply
Brief. Accordingly, we will address only claims 1 and 2, the
broadest claims in each group. See 37 CFR §
1.192(c)(5)(1993); Ex parte Schier, 21 USPQ2d 1016, 1019 (Bd.
Pat. App. & Int. 1991).
As indicated supra, the claimed subject matter is
directed to an intermediate composition comprising a liquid
organic polyisocyanate containing dispersions of a fire
retardant additive and polyurea particles. The polyurea
particles are said to be added to reduce or prevent
sedimentation of the solid fire retardant in the
polyisocyanate, thereby improving the stability and pot-life
of the polyisocyanate.
As evidence of obviousness of the claimed subject matter,
the examiner relies on the combined disclosures of Hughes,
Paige, Gill, Nissen and Hess. As indicated by the examiner,
Hughes describes at column 1, lines 7-15 and column 4, lines
10-23, employing a liquid organic polyisocyanate containing a
dispersion of polyurea particles to produce polyurethanes
having improved physical characteristics. See page 4 of the
Appeal No. 95-0192
Application No. 07/914,228
5
Answer. Specifically, Hughes states (column 4, lines 16-19)
that:
Polyurethane products are
made by reacting a polyisocyanate
with a polyol. The
urea/polyisocyanate dispersions
of the present invention may be
used in the same manner as
conventional polyisocyanates.
Hughes further discloses employing conventional ingredients,
including a solid fire retardant (flame proofing agent, such
as phosphates) during production of polyurethanes having
improved physical characteristics. See column 4, lines 24-31.
However, as recognized by the examiner, Hughes does not
mention that its solid fire retardant is dispersed in its
polyisocyanate containing polyurea particles.
To remedy this deficiency, the examiner relies on the
disclosure of Paige. As acknowledge by appellants at page 9
of the Reply Brief, Paige specifically describes dispersing a
solid butene-based flame retardant in an isocyanate prior to
mixing the resulting isocyanate with a polyol to form a
polyurethane product in example 3 at lines 37-39, column 5.
In addition, Paige states (column 4, lines 46-64) that:
Appeal No. 95-0192
Application No. 07/914,228
6
The addition of the fire retardant to
the polyol or the isocyanate prior to the
preparation of the polyurethane is most
convenient and assures essentially uniform
distribution of the fire retardant
throughout the polyurethane. In the
preparation of the polyurethane, the fire
retardants do not interfere with the
reaction and are ordinarily incorporated
physically rather than chemically into the
urethane because most of the additives have
no functionally reactive sites . . .
. . .
Although the compounds of the
invention are effective fire retardants in
polyurethanes when used alone, other known
additives may be incorporated into the
polyurethane in addition to or partial
substitution for these fire retardants.
Representative examples of other compatible
additives include metal ammonium
phosphates,
antimony oxide, a peroxide or another
brominated substrate.
Given these teachings, we agree with the examiner that it
would have been prima facie obvious to disperse either a solid
butene-based flame retardant or other useful conventional
solid flame retardants in the isocyanate solution containing
polyurea particles described by Hughes with a reasonable
expectation of successfully imparting improved physical
characteristics and flame retardant property to the resulting
Appeal No. 95-0192
Application No. 07/914,228
7
polyurethane products. The conventional solid flame
retardants for polyurethane include those recited in claim 2.
See Answer, page 5, referring to Hess and Nissen. Although
none of these prior art references, as argued by appellants,
discloses appellants’ reason for combining polyurea particles
and a solid flame retardant with a liquid organic
polyisocyanate, i.e., solving a sedimentation problem, we note
that such reason need not be disclosed to establish a prima
facie case of obviousness as long as the prior art references
themselves provide a suggestion to combine polyurea particles
and a solid flame retardant with a liquid organic
polyisocyanate within the meaning of 35 U.S.C. § 103. See In
re Kemp, 97 F.3d 1427, 1430, 40 USPQ2d 1309, 1311 (Fed. Cir.
1996) (the suggestion to combine ingredients need not be
identical to that of appellants to establish a prima facie
case of obviousness);
In re Wiseman, 596 F.2d 1019, 1023, 201 USPQ 658, 661 (CCPA
1979)(the discovery of a problem does not necessarily result
in a patentable invention especially where the claimed
solution is obvious from the prior art).
Appeal No. 95-0192
Application No. 07/914,228
8
Appellants argue that the prior art references relied on
by the examiner are not relevant to each other and to the
claimed subject matter. This argument, however, is not
convincing. From our perspective, these prior art references
are relevant inasmuch as they are all directed to either the
same area of art as the claimed subject matter, or the problem
to be solved in the art. In re Clay, 966 F.2d 656, 659, 23
USPQ2d 1058, 1060-1 (Fed. Cir. 1992); In re Wood, 599 F.2d
1032, 1036, 202 USPQ 171, 174 (CCPA 1979). As is apparent
from the examiner’s discussion of the prior art in the Answer
and appellants’ own description of
the prior art in the Brief and the Reply Brief, the prior art
references in question, like the claimed subject matter,
discuss ingredients useful for forming polyurethane products,
i.e., the same area of art as the claimed subject matter.
Moreover,
they all discuss solving problems associated with improving
polyurethane products or improving processes for making
polyurethane products, i.e., the problem to be solved in the
art.
Appeal No. 95-0192
Application No. 07/914,228
9
Appellants rely on the showing in the 37 CFR § 1.132
declaration of Dueber, one of the inventors of the present
application, (hereinafter referred to as “the Dueber
Declaration”) to overcome the prima facie case of obviousness
established by the examiner. The showing in the Dueber
declaration is directed to a comparison between a mixture
containing particular amounts of a particular polyisocyanate
and a particular flame retardant supposedly representative of
the prior art subject matter and a mixture containing
particular amounts of a particular polyisocyanate, a
particular flame retardant and particular polyurea particles
supposedly representative of the claimed subject matter. The
comparison is said to show that the rate of sedimentation is
“fast” for the prior art mixture but “slow” for the claimed
subject matter. This showing, according to appellants,
demonstrates that the claimed subject matter imparts
unexpected results over that of the prior art.
In assessing the sufficiency of the showing in the Dueber
declaration, we are mindful that appellants have the burden of
proof. See In re Soni, 54 F.3d 746, 750, 34 USPQ2d 1684, 1687
(Fed. Cir. 1995); In re Klosak, 455 F.2d 1077, 1080, 173 USPQ
Appeal No. 95-0192
Application No. 07/914,228
10
14, 16 (CCPA 1972); In re Heyna, 360 F.2d 222, 228, 149 USPQ
692, 697 (CCPA 1966). Upon making a factual, evidentiary
inquiry, see
In re Johnson, 747 F.2d 1456, 1460, 223 USPQ 1260, 1263 (Fed.
Cir. 1984), we are convinced that appellants have not met
their burden.
Initially, we find that the showing in the Dueber
declaration is factually deficient. It fails to indicate the
types of analysis techniques employed to determine the rate of
sedimentation, the acceptability of the analysis techniques
employed in the art, the margin of error applicable to the
analysis techniques employed and the meaning of the “fast” and
“slow” results. Absent such evidentiary foundation, the
significance of the results demonstrated cannot be
ascertained.
Secondly, we find that the showing in the Dueber
declaration is not reasonably commensurate in scope with the
degree of protection sought by the appealed claims. See In re
Kulling, 897, F.2d 1147, 1149, 14 USPQ2d 1056, 1058 (Fed. Cir.
1990);
Appeal No. 95-0192
Application No. 07/914,228
11
In re Greenfield, 571 F.2d 1185, 1189, 197 USPQ 227, 230 (CCPA
1978). While the showing in the Dueber declaration is limited
to a mixture containing specific amounts of a specific
polyisocyanate, a specific flame retardant and a specific
polyurea, the appealed claims are not so limited. The
appealed claims include multifarious mixtures containing
varying amounts (including inert amounts) of chemically
different polyisocyanates, polyureas and flame retardants.
Appellants, however, have not offered any evidence to support
the conclusion that the demonstrated results based on a single
mixture can reasonably be extrapolated to the plethora of
multifarious mixtures embraced by the appealed claims.
Thus, having considered all of the evidence of record, it
is our determination that the evidence of obviousness
proffered by the examiner, on balance, outweighs the evidence
of nonobviousness offered by appellants. Hence, we agree with
the examiner that the claimed subject matter as a whole would
have been obvious to one of ordinary skill in the art.
Accordingly, we affirm the examiner’s decision to reject
claims 1 through 11 under 35 U.S.C. § 103.
The decision of the examiner is affirmed.
Appeal No. 95-0192
Application No. 07/914,228
12
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
EDWARD C. KIMLIN )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
CHUNG K. PAK ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
TERRY J. OWENS )
Administrative Patent Judge )
Appeal No. 95-0192
Application No. 07/914,228
13
John M. Sheehan
ICI Americas Inc.
Law Dept., Intl. Prop. Sec.
New Murphy Road & Concord Pike
Wilmington, DE 19897
Appeal No. 95-0192
Application No. 07/914,228
14
CKP/jrg
APPEAL NO. 95-0192 - JUDGE PAK
APPLICATION NO. 07/914,228
APJ PAK
APJ OWENS
APJ KIMLIN
DECISION: AFFIRMED
Typed By: Jenine Gillis
DRAFT TYPED: 12 JAN 98
FINAL TYPED: