Ex Parte Krech et al

Board of Patent Appeals and Interferences

Jan 29, 2009

09990601 (B.P.A.I. Jan. 29, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JOHN E. KRECH, PAUL D. DRISCOLL,
JAMES R. HARRISON, DENIS M. MILING,
DOMASIUS NWABUNMA, MARIO A. PEREZ,
and DONALD F. REUTER
____________

Appeal 2008-4345
Application 09/990,601
Technology Center 1700
____________

Decided: January 29, 2009
____________

Before TERRY J. OWENS, PETER F KRATZ, and JEFFREY T. SMITH,
Administrative Patent Judges.

SMITH, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134 from the
Primary Examiner’s rejection of claims 30, 32-37, 46-53, and 55-65. We

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have jurisdiction pursuant to 35 U.S.C. § 6. 1
Appellants’ invention is directed to a plastic pallet comprising a
halogen free hydrocarbon polyolefin resin, a halogen free thermosetting
resin and a halogen free flame retardant. Claims 30 and 64 are
representative of the invention and is reproduced below:
30. A flame-retardant containing plastic pallet comprising a plastic
pallet composition comprising

a) one or more of polyolefin resins or blends thereof
comprising 51 to 99 parts by weight of at least one of a fully
prepolymerized uncrosslinked hydrocarbon polyolefin resin and
a fully pre-polymerized uncrosslinked functionalized polyolefin
resin, the parts by weight being based on the total composition,
wherein said hydrocarbon polyolefin is present in the range of
25 to 99 parts by weight of the total composition and said
functionalized polyolefin is present in the range of 0 to 50 parts
by weight of the total composition, and

b) one or more thermosetting resins comprising 1 to 49 parts
by weight of a curable thermosetting resin, the parts by weight
being based on the total composition, all of said resins being
free of halogen,

wherein said plastic pallet contains at least one flame retardant,
wherein all the flame retardant(s) in said plastic pallet are
selected only from the group consisting of non-halogenated
flame retardants.

64. A flame-retardant containing plastic pallet comprising a plastic
pallet composition comprising

1 In rendering this decision, we have considered the Appellants’ arguments
presented in the Appeal Brief dated May 31, 2007 and the Reply Brief dated
November 7, 2007
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a) one or more of polyolefin resins or blends thereof
comprising 51 to 99 parts by weight of an least one of a fully
prepolymerized uncrosslinked hydrocarbon polyolefin resin
and a fully prepolymerized uncrosslinked functionalized
polyolefin resins, the parts by weight being based on the
total composition, wherein said hydrocarbon polyolefin is
present in the range of 25 to 99 parts by weight of the total
composition and said functionalized polyolefin is present in
the range in the range of 0 to 50 parts by weight of the total
composition, and

b) one or more of epoxy resins comprising 1 to 49 parts by
weight of a curable epoxy resin, the parts by weight based
on the total composition,
all of said resins being free of halogen

wherein said plastic pallet is a molded pallet that contains at
least one flame retardant, where all of the flame retardant(s) in
said plastic pallet are selected only form the group consisting of
non-halogenated flame retardants, and wherein said molded
plastic pallet further comprises in-mold applied friction material
laminated adhesive-free to at least one surface of said pallet.

The following is a list of the evidence relied upon:

Angell 3,268,636 Aug. 23, 1966
Dyckman 3,979,354 Sept. 07, 1976
Ueeda 4,604,441 Aug. 05, 1986
Juhanson 4,655,360 Apr. 07, 1987
Perez 5,709,948 Jan. 20, 1998
Oishi 5,744,504 Apr. 28, 1998
Radican 6,148,291 Nov. 14, 2000
Endo 6,344,508 B1 Feb. 05, 2002

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Claims 30, 32-37, 46-53, and 55-65 stand rejected under 35 U.S.C.
§103(a) as follows:2

I. Claims 30, 32, 34-37, 47, 50-53, 55, and 57-61 over the combined
teachings of Oishi and Endo.

II. Claim 33 over the combined teachings of Oishi, Endo, Perez, and
Angell.

III. Claim 46 over the combined teachings of Oishi, Endo, and Radican.

IV. Claims 48 and 64 over the combined teachings of Oishi, Endo, and
Juhanson.

V. Claim 49 over the combined teachings of Oishi, Endo, Radican, and
Juhanson.

VI. Claims 56 and 63 over the combined teachings of Oishi, Endo, and
Perez.

VII. Claim 62 over the combined teachings of Oishi, Endo, Ueeda, and
Dyckman.

VIII. Claim 65 over the combined teachings of Oishi, Endo, and Juhanson.

For the reasons set forth below we affirm the rejections of claims 30, 32-
37, 46, 47-53, and 55-63; and we reverse the rejections of claims 64 and 65.
ISSUES ON APPEAL
The Examiner finds that Oishi discloses the formation of plastic
articles from blends of polyolefin and thermosetting resins including halogen
free polyolefin resin and halogen free thermosetting resin. (Ans. 3-4). The
Examiner recognizes that Oishi does not include a pallet in the list of

2 The rejection of claim 64 under 35 U.S.C. §112, first paragraph, has been
withdrawn by the Examiner. (Ans. 2).
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suitable plastic articles. (Ans. 4). The Examiner finds that Endo teaches
plastic pallets that comprise flame retardants and blends of halogen free
polyolefin and thermosetting resins. (Ans. 4). The Examiner concluded that
it would have been obvious to a person of ordinary skill in the art to utilize
the composition of Oishi to form a plastic pallet comprising a halogen free
polyolefin resin, a halogen free thermosetting resin, and a halogen free flame
retardant. (Ans. 3-5).
Appellants contend that Oishi describes three inventive groups and
does not teach or suggest that the compositions from one of those groups can
be used in an application recommended for another inventive group.
Appellants contend that despite that lack of teaching or suggestion, the
Examiner improperly combined teachings from Oishi’s second inventive
group compositions with uses intended for the third inventive group without
offering any rationale or motivation. (App. Br. 9). Appellants contend that
there is no disclosure in Oishi concerning how to select (from the many
resins listed) the halogen free polyolefin resins and the halogen free
thermosetting resins used in the claimed invention. Appellants further
contend that there is no disclosure in Oishi to select halogen free flame
retardants. (App. Br. 10). Appellants contend that Endo does not disclose,
teach, or suggest the use of blends of polyolefin ends in thermosetting resins
or the selection of the particular types of resins used in the claimed invention
and does not cure the deficiencies of Oishi. (App. Br. 10).
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For the first ground of rejection3, the principal issue presented is: 4
did Appellants identify reversible error in the Examiner’s rejection of claim
30 under § 103? We answer this question in the negative. The issue turns
on whether it would have been obvious to a person of ordinary skill in the art
to form a plastic pallet comprising a halogen free polyolefin resin, a halogen
free thermosetting resin, and a halogen free flame retardant.
We have thoroughly reviewed each of Appellants’ arguments for
patentability. However, we are in complete agreement with the Examiner
that the claimed subject matter is not patentable within the meaning of § 103
in view of the applied prior art. Accordingly, we will sustain the Examiner’s
rejection.
OPINION
We determine the following Findings of Fact (FF) from the record
presented in this Appeal:
(1) The Specification discloses that plastic shipping and storage
containers are known and widely used in national and
international commerce. (Spec. 1).

3 Claims 30, 32, 34-37, 47, 50-53, 55, and 57-61 stand rejected over the
combined teachings of Oishi and Endo.
4 Appellants, in addition to addressing independent claim 30, have addressed
several of the claims subject to the first ground of rejection separately. We
will first address independent claim 30 and will subsequently address the
other specific claims argued by Appellants. For this rejection any claim not
specifically argued by Appellants will stand or fall with independent claim
30.

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(2) The Specification discloses that one problem with plastic
pallets is that during fires they are subject to flowing, which
results in molten plastics spreading heat and fire. Thus, the
National Fire Protection Association has passed stringent
regulations for plastic pallets. (Spec. 1).
(3) The Specification reveals thermosetting resins, such as epoxy
resins, and thermoplastic resins are known to be suitable for
forming plastic pallets. (Spec. 1-2).
(4) The Specification discloses that the US patent 3,581,681
describes plastic pallet formed from polyolefin and epoxy
resins. However, the Specification discloses that no additives
are disclosed as being included in the described compositions.
(Spec. 2).
(5) The Specification discloses that the US patent 5,709,948
(Perez) describes molded foam parts formed from semi-
interpenetrating polymer networks of polyolefin and epoxy
resins. (Spec. 2; Perez, col. 11, l. 63- col. 12, l. 3).
(6) Oishi’s second inventive group is directed to diguanamines
and their derivatives and polymeric microspheres, which are
useful as flame retardants, heat stabilizers, compatibility
improvers for resins. (Oishi, col. 17, ll. 51-61).
(7) Oishi specifically describes the second inventive group as
follows:

This invention relates to modification of resin raw
materials, resins and rubbers — such as polymerizable
monomers, polyurethane resins, polyester resins, amino
resins, paint resins, adhesive resins, paper coating
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resins, fiber processing resins, foaming resins, molding
resins and laminates, and specifically to diguanamines
and their derivatives and polymeric microspheres,
which are useful as flame retardants, heat stabilizers,
compatibility improvers or the like for resins. This
invention is also concerned with applications of such
flame retardants, heat stabilizers and compatibility
improvers.

(Oishi, col. 17, ll. 51-61).

(8) Oishi discloses that halogen containing flame retardants have
known drawbacks such as poor heat resistance, sublimation,
bleeding, and give off extremely noxious halogen containing
gas in a large volume in a fire. (Oishi, col. 18, ll. 30-40).
(9) Oishi discloses “these diguanamines have better heat
resistance than melamines, sublimation, bleeding and/or the
like is not observed, formation of char is excellent, and
sagging or dripping of oil droplets or melt is substantially
minimized, thereby making it possible to provide an excellent
method for making resins retardant to flame.” (Oishi, col. 19,
ll. 6-11).
(10) Oishi discloses the flame retardant diguanamines are suitable
for thermoplastic resins and thermosetting resins including
blends. (Oishi, col. 29, ll. 1-6).
(11) Oishi discloses additives which are suitable for incorporation
in plastic articles formed from thermoplastic resins and
thermosetting resins blends. (Oishi, col. 30, ll. 11-17).
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(12) Oishi discloses that non-halogenated and halogenated
thermoplastic and thermosetting resins are known to be used
in combination to make various articles. (Oishi, col. 29).
Section 103 forbids issuance of a patent when “the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.” KSR Int'l Co. v. Teleflex Inc., 127 S. Ct. 1727,
1734 (2007) (citing 35 U.S.C. § 103 (a)). The legal question of obviousness
is resolved on the basis of underlying factual determinations including (1)
the scope and content of the prior art, (2) any differences between the
claimed subject matter and the prior art, (3) the level of skill in the art, and
(4) secondary considerations, if any. Graham v. John Deere Co., 383 U.S.
1, 17-18 (1966). See also KSR, 127 S. Ct. at 1734.
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR, 127 S. Ct. at 1739. The question to be asked is “whether the
improvement is more than the predictable use of prior art elements according
to their established functions.” KSR, 127 S. Ct. at 1740.
“[I]f a technique has been used to improve one device, and a person of
ordinary skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless its actual
application is beyond his or her skill.” KSR, 127 S. Ct. at 1740-41. 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
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sources, including common knowledge, the prior art as a whole, or the
nature of the problem itself.”); In re O’Farrell, 853 F.2d 894, 903-04 (Fed.
Cir. 1988) (“For obviousness under § 103, all that is required is a reasonable
expectation of success.” (citations omitted));.
Applying the preceding legal principles to the Factual Findings (FF)
in the record of this appeal, we determine that the Examiner has established
a prima facie case of obviousness, which prima facie case has not been
adequately rebutted by Appellants’ arguments. The present record reveals
that deficiencies with plastic pallets were known to persons of ordinary skill
in the art. (FF (1-2)). The present record reveals that the process of forming
plastic articles from blends of thermoplastic and thermosetting resins was
known to persons of ordinary skill in the art. (FF (3-4)). The Specification
discloses that during fires plastic pallets are subject to flowing, which results
in molten plastics spreading heat and fire. Oishi discloses that halogen
containing flame retardants have known drawbacks such as poor heat
resistance, sublimation, bleeding, and that they give off an extremely
noxious halogen containing gas in a large volume in a fire. (FF (8)). Oishi
sought to eliminate halogen containing flame retardants from plastic articles.
(FF (9)). A person of ordinary skill in the art would have reasonably
expected any halogens in plastic resins to have emitted noxious halogen
containing gas in a fire. Thus, a person of ordinary skill in the art would
have excluded halogen containing components from plastic articles that were
subject to extreme heat and possible fire conditions. In other words, a
person of ordinary skill in the art would have found it desirable to form
plastic articles, including plastic pallets, from thermosetting and
thermoplastic polymer resins and flame retardants that excluded halogens.
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Appellants contend the claimed invention, that comprises polyolefin
and halogen free thermosetting resins and non-halogenated flame retardants,
overcomes the deficiencies of plastic pallets (e.g., melting and flowing under
high heat or fire resulting in molten plastic spreading heat, fire, and
hazardous or toxic gases). (App. Br. 7-8). The deficiencies identified by
Appellants were also recognized by Oishi and the subject of regulation by
the National Fire Protection Association. (FF (2 and 8)). As stated above, a
person of ordinary skill in the art would have determined that plastic articles
subject to extreme heat and possible fire conditions should not have halogen
containing components. Moreover regarding the use of only non-
halogenated resins, Oishi discloses a variety of thermoplastic and
thermosetting resins are known to be used in combination to make various
articles. (FF (11)). A person of ordinary skill in the art would have
reasonably expected that any of the described resins could have been used in
combination with one another. Appellants have not asserted that it was
unknown prior to this invention to utilize only non-halogenated resins in
combination with one another to form plastic articles. As set forth above, FF
(1-4), the formation of plastic pallets comprising blends of thermosetting and
thermoplastic resins was known to persons of ordinary skill in the art. A
person of ordinary skill in the art would have selected resins that excluded
halogens based on the known properties of various resins and a desire to
avoid the known properties and characteristics of halogenated resins.
Appellants’ arguments regarding the exclusivity of various
embodiments of Oishi are not persuasive. The underlying issue presented
for review in the present Appeal was whether it would have been obvious to
a person of ordinary skill in the art to form a plastic pallet comprising a
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halogen free polyolefin resin, a halogen free thermosetting resin, and a
halogen free flame retardant. As stated above, a person of ordinary skill in
the art would have determined that plastic articles that were subject to
extreme heat and possible fire conditions should have excluded halogen
containing components.
Regarding claims 32 and 50, Appellants contend the Examiner has
offered no reason for the conclusion that it would have been obvious to
select an epoxy resin from the thermosetting resins described in Oishi. (App.
Br. 12 and 14). Appellants' argument is not persuasive. Appellants have not
contended that Oishi does not describe an epoxy resin as a suitable
thermosetting resin for the formation of plastic articles. A person of
ordinary skill in the art would have reasonably expected that any component,
including an epoxy resin, described as suitable for the invention of the cited
reference would have been suitable for the invention described therein.
Regarding claims 34, 35, 37, 47, 51 and 60, Appellants contend the
Examiner has offered no reason for the conclusion that it would have been
obvious to include the described additives, e.g., filler, anti-microbial agents
and flame retardants as described in the rejected claims. (App. Br. 13-15). A
person of ordinary skill would have reasonably expected that known
additives would have been suitable for use in the invention of Oishi for their
known purpose. Appellants have not asserted that these additive
components are not known to be utilized in plastic articles. Appellants have
not asserted that these components, when used in the claimed invention,
produce an unexpected result when utilized in combination with a
thermoplastic and thermosetting resin. A person of ordinary skill in the art
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would have sufficient skill to determine the appropriate levels to incorporate
these components in a plastic article.
Regarding claim 59, appellants contend that Oishi and Endo do not
describe, teach, or suggest the use of a semi-interpenetrating polymer
network. (App. Br. 14-15). The issue presented for review is whether a
person of ordinary skill in the art would have found it obvious to utilize a
semi-interpenetrating polymer network in the formation of plastic articles
including a plastic pallet. As set forth above, FF (5), it was known by
persons of ordinary skill in the art to form molded articles from semi-
interpenetrating polymer networks of polyolefin and epoxy resins. A person
of ordinary skill in the art would have reasonably expected that these
components could have been utilized to form plastic pallets.
Regarding the rejection of claim 33 under 35 U.S.C. § 103(a) over the
combined teachings of Oishi, Endo, Perez, and Angell and the rejection of
claim 56 and 63 over the combined teachings of Oishi, Endo, and Perez., we
affirm these rejections advanced by the Examiner. The Examiner cited the
Perez and Angell references for describing molded polymer networks and
the properties associated therewith. (Ans. 7-8). Appellants contend that
Perez and Angell do not cure the deficiencies of Oishi and Endo. Appellants
further contend that Perez does not disclose that polymer networks are
structural and can be applied to plastic pallets. (App. Br. 16-17). The issue
presented for review is whether a person of ordinary skill in the art would
have found it obvious to utilize polymer networks in the formation of plastic
articles including a plastic pallet. We answer this question in the
affirmative.
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As set forth above, the combined teachings of Oishi and Endo
describe blends of thermoplastic and thermosetting resins suitable for the
formation of plastic articles, including pallets, as specified by the claimed
invention. Appellants have not asserted nor directed us to evidence that
thermoplastic and thermosetting polymer networks, such as those described
in Perez and those of Angell, are not suitable for the formation of plastic
articles. Perez expressly discloses that the polymer networks are suitable for
the formation of molded foam parts. (FF (5)). Appellants have failed to
argue that a person of ordinary skill in the art would not have reasonably
expected that a plastic pallet could have been formed from a molding
process. Appellants have failed to argue that the molded polymer networks
described by Perez would not possess the properties of an integral skin and
cellular core.
Regarding the rejection of claim 46 under 35 U.S.C. § 103(a) over the
combined teachings of Oishi, Endo, and Radican; we affirm this rejection
advanced by the Examiner. Claim 46 specifies that the pallet comprises at
least one radio frequency identification (RFID) tag. The Examiner found
that Radican discloses how RFIDs are utilized for the purpose of identifying
containers for rapid acquisition and updating a container location. We agree
with the Examiner that a person of ordinary skill in the art would have
reasonably expected that a RFID would have been suitable for application to
plastic pallets for similar purposes. “[I]f a technique has been used to
improve one device, and a person of ordinary skill in the art would recognize
that it would improve similar devices in the same way, using the technique is
obvious unless its actual application is beyond his or her skill.” KSR, 127 S.
Ct. at 1740-41. Appellants’ arguments of the contrary are not persuasive.
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Regarding the rejections of claim 48 under 35 U.S.C. § 103(a) over
the combined teachings of Oishi, Endo, and Juhanson; and the rejection of
claim 49 under 35 U.S.C. § 103(a) over the combined teachings of Oishi,
Endo, Radican, and Juhanson; we affirm these rejections advanced by the
Examiner. As set forth above, a person of ordinary skill the art would have
found it obvious to incorporate a RFID on a plastic pallet for the purpose of
identifying the pallet for rapid acquisition and updating the pallet location.
The Examiner cited Juhanson for describing the application of a friction
material to the bottom of plastic containers. (Ans. 12). A person of ordinary
skill in the art would likewise have found it obvious to add a friction
material to the bottom of the plastic pallet. Appellants have not refuted this
determination. Rather to overcome the rejection of claim 49, Appellants rely
on the arguments presented for claim 35. (App. Br. 20). To overcome the
rejection of claim 48, Appellants assert that the claim depends on claim 30.
(App. Br. 18).
Regarding the rejection of claim 62 under 35 U.S.C. § 103(a) over the
combined teachings of Oishi, Endo, Ueeda and Dyckman, the Examiner
cited Ueeda and Dyckman for describing the blending of anti-microbial
additives with resin compositions. (Ans. 17-18). Appellants contend that
the Examiner has offered no reason for the conclusion that it would have
been obvious to include the described anti-microbial additives in the
composition of Oishi and Endo. (App. Br. 21). We do not agree. A person
of ordinary skill would have reasonably expected that known additives
would have been suitable for use in the invention of Oishi for their known
purpose. Appellants have not asserted that these additive components are
not known to be utilized in plastic articles. Appellants have not asserted that
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these components, when used in the claimed invention, produce an
unexpected result when utilized in combination with a thermoplastic and
thermosetting resin.
Regarding the rejections of claims 64 and 65 under 35 U.S.C. § 103(a)
over the combined teachings of Oishi, Endo, and Juhanson; we reverse this
rejections advanced by the Examiner. Appellants contend that Juhanson
does not cure the deficiencies of Oishi and Endo previously discussed and
does not descried an in-mold applied friction material laminated to at least
one surface of a plastic pallet. (App. Br. 18-19, 22). The Specification
states that “‘in-mold lamination’ means placed in the mold and becomes
laminated to subsequently added resin without added adhesive.” (Spec. 5).
The Examiner has indicated that the claimed terminology “in-mold applied”
has not been given patentable weight in determining the patentability of the
subject matter of claim 64. (Ans. 10). The Examiner bears the initial burden
of presenting a prima facie case of obviousness. In re Oetiker, 977 F.2d
1443, 1445 (Fed. Cir. 1992). In order to establish a prima facie case of
obviousness, the Examiner must show that each and every limitation of the
claim is described or suggested by the prior art or would have been obvious
based on the knowledge of those of ordinary skill in the art. The Examiner
has failed to assert that the technique of laminating a high friction material to
a plastic article was obvious to a person of ordinary skill in the art. In light
of the foregoing, we cannot sustain the Examiner’s §103 rejections of claims
64 and 65.
For the foregoing reasons and those stated in the Answer, we affirm
the rejections of claims 30, 32-37, 46, 47-53, and 55-63 presented in this
appeal. However we reverse the rejections of claims 64 and 65.
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ORDER
The rejections of claims 30, 32-37, 46, 47-53, and 55-63 under 35 U.S.C.
§ 103(a) are affirmed. The rejections of claims 64 and 65 under 35 U.S.C. §
103(a) are reversed.

No time period for taking any subsequent action in connection with
this Appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED-IN PART

ssl
3M INNOVATIVE PROPERTIES COMPANY
PO BOX 33427
ST. PAUL, MN 55133-3427

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