Ex Parte Gallo et al

Board of Patent Appeals and Interferences

Aug 7, 2007

10644791 (B.P.A.I. Aug. 7, 2007)

This opinion is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte HENKEL CORPORATION
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Appeal 2007-2907
Application 10/644,791
Technology Center 1700
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Decided: 7 August 2007
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Before TORCZON, TIERNEY, and MOORE, Administrative Patent Judges.

TORCZON, Administrative Patent Judge.
DECISION ON APPEAL
The subject matter of the claims on appeal is flame-retardant molding
compositions. All of the pending claims have been rejected. The appellant
(Henkel) seeks review of the rejections. We affirm.
THE CLAIMS
Claims 1-15 and 25-27 are currently pending.1 Henkel has not argued
the separate patentability of any subgroups of the claims as provided by rule

1 Appeal Brief (20 April 2007) (Br.) 2.
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so we select claim 1 as representative.2 Claim 1 defines the subject matter of
the invention as follows:3
1. A flame retardant molding composition
substantially free of halogen, phosphorous and antimony,
comprising:
an epoxy resin;
melamine cyanurate; and
a transition metal oxide of a Group VIA element.

A claim before the Office is given its broadest reasonable construction
consistent with the specification.4 The meaning of "substantially free" varies
with context.5 If an applicant wishes to be more restrictive, other terms of
art are available such as "essentially free".6 Indeed, Henkel describes the
composition on appeal as "[t]ypically…essentially free of bromine and
antimony compounds."7 By contrast, Henkel teaches the use of small
amounts of triphenylphosphine (TPP) as a catalyst.8 This distinction makes
sense in terms of the problem to be solved since halogens and antimony
present safety hazards,9 while phosphorous compounds—when used in

2 37 C.F.R. § 41.37(c)(1)(vii).
3 Br. 12.
4 In re Icon Health & Fitness, Inc., App. No. 2006-1573, slip op. at 5 (Fed.
Cir. 2007).
5 Biotec Biologische Naturverpackungen v. Biocorp., Inc., 249 F.3d 1341,
1346-47, 58 USPQ2d 1737, 1740-41 (Fed. Cir. 2001) (construing
"substantially free" to include "less than 5%").
6 Glaxo Grp., Ltd. v. Ranbaxy Pharm., Inc., 262 F.3d 1333, 1336,
59 USPQ2d 1950, 1952 (Fed. Cir. 2001) (contrasting "substantially" in a
parent claim with "essentially free" in a dependent claim).
7 Specification (Spec.) ¶0015. We note that bromine is a halogen.
8 Spec. ¶¶0028 and 0031; Tables 1A and 2A.
9 Spec. ¶0004.
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amounts sufficient as fire retardants—introduce undesirable properties in the
molded product.10
In patent claims, "comprising" indicates that the listed items are
essential, but that the claim is also open to the inclusion of other items as
well.11 The specification explains that suitable transition metal oxides
include chromium oxides, molybdenum oxides, tungsten oxides, and
mixtures of these oxides.12
We construe claim 1 to encompass fire-retardant compositions
suitable for molding, in which very small amounts of phosphorous, halogen,
and antimony compounds may be included, but in which phosphorous,
halogen (especially bromine) and antimony compounds are to be avoided in
any substantial amounts. The composition must include an epoxy resin,
melamine cyanurate, and a chromium-family metal oxide, but may also
include other components.
THE REJECTIONS
The examiner has rejected the claims under 35 U.S.C. 103, contending
the subject matter of the claims was obvious in view of the Gallo patent13
and Japanese published applications14 of Fujii,15 Saito,16 and Yamaguchi.17

10 Spec. ¶0005.
11 Genentech, Inc. v. Chiron Corp., 112 F.3d 495, 501, 42 USPQ2d 1608,
1613 (Fed. Cir. 1997).
12 Spec. ¶0027. While "Group VIA" is ambiguous in isolation, these
examples clarify that the chromium family group is intended.
13 Anthony A. Gallo, Flame retardant molding compositions, US 6,432,540
B1 (issued 13 August 2002) (Gallo patent). Gallo is named as a co-inventor
in the application on appeal.
14 We rely on and cite to the translations in the record rather than the
originals.
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The examiner has also rejected the claims relying on the Gallo patent and the
Fujii and Yamaguchi publications.
SCOPE AND CONTENT OF THE PRIOR ART
The Gallo patent
The Gallo patent is directed to flame-retardant molding composition.
It explains that epoxy resins are widely used for such compositions but that
antimony oxides and bromine (a halogen) used in such compositions present
safety concerns. Phosphorous containing compounds are noted to have
undesirable properties such as a high moisture absorption rate.18 The Gallo
patent proposes a composition substantially free of halogen, phosphorus, and
antimony that includes at least an epoxy resin and a transition metal oxide of
a Group VIA element.19
The Saito publication
Saito discloses an epoxy resin molding compound that is fire
retardant.20 Although bromine and antimony oxide were commonly used in
such compositions as fire retardants, Saito prefers to avoid halogens and

15 Masanobu Fujii et al., Epoxy resin composition for sealing semiconductor
and semiconductor device using the composition, JP H11-269347 A (pub'd 5
October 1999) (Fujii).
16 Hiroyuki Saito et al., Epoxy resin molding material for sealing electronic
component and electronic part item sealed therewith, JP H10-212396 A
(pub'd 11 August 1998) (Saito).
17 Yoshio Yamaguchi and Hiroko Yamamoto, Resin composition for sealing
semiconductor and semiconductor device using the same, JP H11-100492 A
(pub'd 13 April 1999).
18 Gallo patent 1:5-35.
19 Gallo patent 1:47-65.
20 Saito ¶0001.
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antimony as unsafe. Similarly, Saito notes that commonly used phosphoric
acid compounds cause problems.21 Saito solves the problem of replacing
these materials by using molybdenum or tungsten oxides instead.22 Saito
also recommends the use of a compound of melamine and isocyanuric acid
to assist in retarding flames.23
The Yamaguchi publication
Yamaguchi discloses a flame-retardant epoxy resin.24 Yamaguchi too
notes the disadvantages of using bromine and antimony as fire retardants,25
and considers its resin to be safer because the resin is free of halogens and
antimony.26 The problem is solved using an organic flame retardant as the
principal flame retardant.27 Yamaguchi prefers nitrogen or phosphorous
compounds, particularly heterocyclic compounds, specifically including
melamine, cyanuric acid, isocyanuric acid, and melamine cyanurate.28 Note
that Yamaguchi illustrates melamine cyanurate as an ionic composition with
a melamine moiety and an isocyanurate moiety. Other fire retardants,
including metal oxides, may also be used.29

21 Saito ¶¶0003-0005.
22 Saito ¶0006.
23 Saito ¶0014.
24 Yamaguchi ¶0001.
25 Yamaguchi ¶0002.
26 Yamaguchi ¶0042.
27 Yamaguchi ¶0005.
28 Yamaguchi ¶¶0016-0020.
29 Yamaguchi ¶0022.
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The Fujii publication
Fujii discloses a fire-retardant sealing agent.30 While epoxy resins
work well, they are insufficiently fire-retardant. Bromine and antimony are
commonly used fire-retardant additives, but they present safety concerns,
and phosphorous-based alternatives are unsatisfactory.31 Fujii's solution is a
fire-retardant epoxy resin that is free of bromine and antimony.32 Metal
oxides and hydrates could be used instead although they adversely affect the
material properties of the epoxy and the oxides might not be sufficiently fire
retardant. Fujii specifically names molybdenum trioxide (MoO3) as one
such metal oxide.33 Fujii uses a blend including magnesium hydroxide and
specific metal oxides.34 The specific metal oxides include oxides of zinc,
tin, molybdenum, and tungsten.35
DIFFERENCES BETWEEN THE PRIOR ART AND CLAIM 1
The Gallo patent does not teach or suggest the use of melamine
cyanurate.
Saito would anticipate the subject matter of claim 1 if Saito's
melamine/isocyanuric acid compound were melamine cyanurate as seems
likely in view of Yamaguchi's disclosure; otherwise, Saito lacks a teaching
of the use of melamine cyanurate.
Yamaguchi does not teach the use of a chromium-family metal oxide.
Fujii does not teach the use of melamine cyanurate.

30 Fujii ¶0001.
31 Fujii ¶0002.
32 Fujii ¶¶0004 and 0013.
33 Fujii ¶0004.
34 Fujii ¶¶0005 and 0019.
35 Fujii ¶0011.
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ORDINARY LEVEL OF SKILL IN THE ART
We look to the evidence of record—the applicant's disclosure, the
cited references, and any declaration testimony—in resolving the ordinary
level of skill in the art.36 From Henkel's Background of the Invention37 and
the four cited reference, we have an unusually clear view of what a person
having ordinary skill in the art knew and could do. Those skilled in the fire-
retardant epoxy resin art knew how to make and use epoxy resins with a
broad range of fire-retardant additives, including melamine cyanurate and
chromium-family metal oxides. They understood the need to eliminate
bromine and antimony for safety reasons. They understood that alternative
additives presented various advantages and disadvantages. They understood
and made various combinations of known additives to maximize the
advantages while minimizing the disadvantages. Combinations included
using molybdenum and tungsten oxides with melamine/isocyanuric acid
compositions. One skilled in the art would have expected chromium-family
metal oxides to work with melamine cyanurate as substitute fire retardants in
place of bromine, antimony, and phosphorous compositions.
SECONDARY CONSIDERATIONS: UNEXPECTED RESULTS
Henkel relies on the declaration of Dr. Anthony A. Gallo, one of the
inventors named for the application on appeal, to provide evidence of

36 Ex parte Jud, 2006 WL 4080053 at *2 (BPAI) (rehearing with expanded
panel). Dr. Gallo, a named inventor for the application on appeal, filed a
declaration, but it does not directly address the question of the level of skill
in the art.
37 Spec. ¶¶0003-0006.
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unexpectedly good results.38 When the prior art teaches away from
combining certain known elements, discovery of a successful means of
combining them is more likely to be nonobvious. The fact that the elements
worked together in an unexpected and fruitful manner supports a conclusion
of nonobviousness.39 Expected results, on the other hand, support a
conclusion of obviousness.40
Unexpected results must be based on comparison with the closest
prior art and must represent a difference in kind rather than a difference of
degree.41 Dr. Gallo compared three samples: (A) a composition with both
tungsten trioxide and melamine cyanurate, (B) a composition with tungsten
trioxide but no melamine cyanurate, and (C) a composition with melamine
cyanurate but no tungsten trioxide.42 According to Dr. Gallo, Sample B
totally burned in a flame test, while Sample C was unworkable and could not
be used. Consequently, Sample A, which only burned for 3-7 seconds, was
clearly better.43 Dr. Gallo states that the results of his test could not have
been predicted from the prior art.
We accord little weight to Dr. Gallo's testimony. His comparative
samples of only tungsten oxide and only melamine cyanurate are not

38 Br. 8 and Evidence Appendix item 1.
39 KSR Int'l v. Teleflex Inc., 127 S. Ct. 1727, 1739-40, 82 USPQ2d 1385,
1395 (2007).
40 In re Skoll, 523 F.2d 1392, 1397, 187 USPQ 481, 484 (CCPA 1975).
41 In re Harris, 409 F.3d 1339, 1344, 74 USPQ2d 1951, 1955 (Fed. Cir.
2005).
42 Declaration Under 37 C.F.R. §1.132 (Gallo decl.) ¶4 and Table 1.
43 Gallo decl. ¶5. Totally burned in this test meant burned for more than
20 seconds. The relevant standard is said to require both an average and
maximum burn time of no more than 10 seconds. ¶6.
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representative of the closest prior art.44 As discussed above, Fujii explained
that metal oxides alone are insufficient as fire retardants (which is why Fujii
combines them with magnesium hydroxide). Yamaguchi, which
recommended the use of melamine cyanurate, also recommended adding
metal oxides. Finally, Saito recommended using molybdenum or tungsten
oxides with a melamine/isocyanuric acid composition. Fujii predicted the
failure of Sample B, while Sample C does not represent the closest
embodiment of either Yamaguchi or Saito.
Dr. Gallo's test falls well short of a comparison with the closest prior
art. Moreover, the results are not unexpected. They are consistent with the
teachings of Fujii, Yamaguchi, and Saito, all of whom would have counseled
combining the metal oxides with another retardant. The test does not
establish unexpected results. If anything, the results are consistent with the
teachings of the prior art to prefer blends of fire retardants, including blends
of metal oxides and melamine-related retardants.
ANALYSIS
In analyzing obviousness, the scope and content of the prior art must
be determined, the differences between the prior art and the claims
ascertained, and the ordinary level of skill in the art resolved. Objective
evidence of the circumstances surrounding the origin of the claimed subject
matter (so-called secondary considerations) may also be relevant. Such

44 Cf. Harris, 409 F.3d at 1344, 74 USPQ2d at 1955 (selection of
comparative example can severely affect the weight accorded to test).
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secondary considerations guard against the employment of impermissible
hindsight.45 Anticipation is the epitome of obviousness.46
Saito alone teaches the use of molybdenum or tungsten trioxide with a
melamine/isocyanuric acid composition that appears to be melamine
cyanurate. Saito is pursuing the same goal as the present inventors of
eliminating halogens and antimony from the epoxy resin. Saito also
recognizes the problems of using phosphoric acid compounds as fire
retardants. Even if Saito does not teach melamine cyanurate, one skilled in
the art would readily apprehend that melamine cyanurate could be used in
place of Saito's mystery composition after reading Yamaguchi. Fujii
reinforces the desirability of using blends of fire retardants and counsels
against using metal oxides alone.
The claimed composition combines familiar elements of the prior art
according to known methods to yield predictable results, which is sufficient
to establish obviousness.47 Blending an oxide of chromium, molybdenum,
or tungsten with melamine cyanurate as fire retardants for an epoxy resin
substantially free of halogens, antimony, and phosphorous is well within the
scope of what the cited references would have taught or suggested to a
person having ordinary skill in the art.

45 Graham v. John Deere Co., 383 U.S. 1, 17, 36 (1966), cited with approval
in KSR Int'l v. Teleflex Inc., 127 S. Ct. 1727, 82 USPQ2d 1385 (2007). The
record on appeal does not contain objective evidence of secondary
considerations.
46 In re Paulsen, 30 F.3d 1475, 1481, 31 USPQ2d 1671, 1675 (Fed. Cir.
1994)
47 Leapfrog Enter., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1161,
82 USPQ2d 1687, 1690-91 (Fed. Cir. 2007), citing KSR Int'l, 127 S. Ct.
at 1739, 82 USPQ2d at 1395.
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CONCLUSION
The subject matter of claim 1 was obvious when the application was
filed and is thus unpatentable under § 103. The examiner's rejection of
claim 1 is affirmed. The rejections of claims 2-15 and 25-27 have not been
separately challenged, so these rejections are also affirmed.
AFFIRMED

Julie W. Meder
WEBB ZIESENHEIM LODSDON ORKIN & HANSON, P.C.
700 KOPPERS BUILDING
436 SEVENTH AVENUE
PITTSBURGH, PA 15219-1818