Ex Parte Liu

Board of Patent Appeals and Interferences

Aug 20, 2007

10309493 (B.P.A.I. Aug. 20, 2007)

The opinion in support of the decision being entered today is not binding
precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte MATTHEW T. LIU
__________

Appeal 2006-2774
Application 10/309,493
Technology Center 1700
__________

Decided: August 20, 2007
__________

Before TONI R. SCHEINER, DONALD E. ADAMS, and RICHARD M.
LEBOVITZ, Administrative Patent Judges.

LEBOVITZ, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal from the final rejection of claims 1 and 3-
5. We have jurisdiction under 35 U.S.C. § 6(b). We affirm.

STATEMENT OF CASE
“[T]he invention provides a fire protection coating composition that
will expand upon being exposed [to] fire or intense heat to provide a
protective layer for the substrate material for which protection [is] required”
(Spec. 1: [0001]).
Appeal 2006-2774
Application 10/309,493

Claims 1, 3-5, and 6-26 are pending (Br. 1). Claims 6-26 are
withdrawn from consideration as being directed to a non-elected invention
(Br. 1). Claims 1 and 3-5 stand rejected under 35 U.S.C. § 103(a) as
obvious over Erismann (US 2002/0171068) in view of Nienaber (US
6,352,770 B1) and Gee (US 4,620,878) (Answer 3).
All the claims stand or fall together because Appellant has not
provided separate reasons for the patentability of any individual claims in
the grouping. We select claim 1 as representative for the purpose of
deciding this appeal. See 37 C.F.R. § 41.37 (c)(1)(vii). Claim 1 reads as
follows:
l. A fire protection coating composition capable of being applied with
the ease of a conventional paint, comprising:

(a) a char forming material selected from the group of: a starch, a
sugar, a mono pentaerythritol, a di pentaerythritol, a tri pentaerythritol,
molybdenum, organometallocenes, or antimony trioxide;

(b) a char reinforcement material selected from the group of: a glass
flake, a glass fiber, a silica fiber, a silica powder, or a fumed silica;

(c) a catalyst or accelerator material selected from the group of: urea
phosphate, melamine phosphate, di ammonium polyphosphate, a monobasic
ammonium phosphate, di-basic ammonium phosphate, hemi-basic
ammonium phosphate, or a urea ammonium phosphate;

(d) a blowing agent selected from the group of: urea, p-toluene
sulfonyl hydrazide, dicyndiamide, azodicarbonamide, di aminophenizine,
cyanurotriamide, cyanoguanidine, borax, zinc carbonate, and chlorinated
paraffin;

(e) a binder selected from the group of: acrylics, vinyl acrylics, vinyl
chloride - ethylene copolymers, chlorosulfonated polyethylene,
polyvinylidene chloride, vinyl toluene - acrylic or acrylate copolymers,
ethylene vinyl chloride, vinyl acetate - vinyl chloride - ethylene terpolymers,
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vinyl acetate - vinyl chloride copolymers, modified alkyds, urethane -
acrylic copolymers, or cellulose ethers, that may be in the form of emulsion,
dispersion, solution of hybrid;

(f) a pigment selected from the group of: titanium dioxide, barium
sulfate, mica, calcium carbonate, iron oxide, zinc oxide, clay, kaolin,
calcium sulfate, or talc;

(g) a surfactant or wetting agent selected from the group of: a
polyalkylene oxide modified polydimethyl siloxane; an alkyaryl polyether
alcohol; an alkylaryl polyether alcohol; an alkylaryl polyether alcohol; a
fluoro aliphatic polymeric ester; a polyfunctional wetting agent for organic
and inorganic fillers or pigments; a carboxylic acid salt of polyamine
amides; and a ethoxylated 2,4,7,9 tetra methyl 5 decy-4,7 diol in water; and
a tetra methyl 5 decy-4,7 diol 2,4,7,9 methoxyl ethoxy propanol;

(h) a thickener selected from the group of: a sodium salt of
polyacrylate;

([i]) a defoamer or antifoam agent selected from the group of: a
polymethacrylate in xylene; an organo silicone; a mixture of hydrophobic
solides and a polysioxane in poly glycol; a poly alkylene glycol, diol ester in
paraffin; a polysiloxane in mineral oil; a methylated silica; a non ionic poly
acrylate; a copolymer of silicone and poyether; or a modified polydimethyl
silicone in xylene and/or toluene;

(j) water equaling a weight percentage of the total in the range of 10 to
35 weight percent;

(k) propylene glycol; and
(1) wherein the resulting composition is capable of being applied to a
surface with the ease of a conventional paint.

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Application 10/309,493

FINDINGS OF FACT
Claim 1 Erismann Erismann,
[0053]
Example 1
(a) a char forming material
selected from the group of:
a starch, a sugar, a mono
pentaerythritol, a di
pentaerythritol, a tri
pentaerythritol, . . .
[0004] “a polyol having
2, 3 or 4 hydroxy groups
and a molecular weight
of from about 75 to
about 1,200”
[0022] “Useful polyols
include . . . e.g., ethylene
glycol, propylene glycol,
tripropylene glycol,
polyethylene glycol,
polypropylene glycol,
glycerol and
combinations thereof”
[0030] “The composition
can also include other
additives, e.g., . . . char
forming agents”
“polyethylene
glycol”
(b) a char reinforcement
material selected from the
group of: a glass flake, a
glass fiber, a silica fiber, a
[0008] “a composition
that includes granular
alkali metal silicate”
[0029] “Thickeners can
“amorphous fumed
silica”

“1.42 parts 80%
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silica powder, or a fumed
silica;
be included . . .
Examples of suitable
thickeners include . . .
fumed silica . . .”
[0030] “The composition
can also include other
additives, e.g., . . .
reinforcing fillers such
as glass fibers”
fiber wet-chopped
7.5 micron
diameter 1/8 in
fiberglass”
(c) a catalyst or accelerator
material selected from the
group of: . . ., melamine
phosphate, di ammonium
polyphosphate, a
monobasic ammonium
phosphate, di-basic
ammonium phosphate,
hemi-basic ammonium
phosphate, . . .
[0027] “The fire barrier
composition also
preferably includes a fire
retardant agent. . . .
Examples . . . include . . .
phosphorous compounds
including, e.g., . . .
melamine phosphate and
ammonium
polyphosphate”
“2-ethylhexyl
diphenyl
phosphate”
(d) a blowing agent
selected from the group of:
urea, . . . borax, zinc
carbonate, and chlorinated
paraffin,
“U.S. Borax”
(e) a binder selected from
the group of: acrylics,
[0004] “latex including a
polymer”
“acrylate-
vinylacetate-
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Application 10/309,493

vinyl acrylics, vinyl
chloride-ethylene co-
polymers, chloro-
sulfonated polyethylene,
polyvinylidene chloride,
vinyl toluene - acrylic or
acrylate copolymers,
ethylene vinyl chloride,
vinyl acetate - vinyl
chloride – ethylene
terpolymers, vinyl acetate
- vinyl chloride
copolymers, . . .
[0019] “The latex
includes water and
polymer. Suitable latex
polymers include . . .
acrylates, . . .
copolymers and
terpolymers thereof
including, e.g.,
ethylene/vinyl
acetate/acrylate
terpolymer.
ethylene
terpolymer latex”
(f) a pigment selected
from the group of:
titanium dioxide, . . . iron
oxide, zinc oxide, . . .
[0030] “The composition
can also include other
additives, e.g.,
pigments”
“iron oxide
pigment”
(g) a surfactant or wetting
agent selected from the
group of: …
[0020] “The latex can
also include other
additives including,
surfactants”
“Triton X-100”
(h) a thickener selected
from the group of a
sodium salt of
polyacrylate;
[0029] “Thickeners can
be included in the
composition”
[0004] “[T]he
invention features
an aqueous fire
barrier
composition”
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(i) a defoamer or antifoam
agent selected from the
group of . . .
[0030] “The composition
can also include other
additives, e.g., . . .
defoamers”
[0020] “The latex can
also include other
additives including,
defoamers”
“Foamaster 111
defoamer”
(j) water equaling a weight
percentage of the total in
the range of 10 to 35
weight percent;

(k) propylene glycol; [0010] “In one
embodiment, the polyol
is selected from the
group consisting of . . .
propylene glycol”

DISCUSSION
Claim 1 is directed to a fire protection coating composition which is
“capable of being applied with the ease of conventional paint.” The
composition has 11 different classes of components, labeled (a) through (k)
in claim 1.
The Examiner contends that Erismann describes an aqueous
intumescent fire barrier composition which comprises at least one
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Application 10/309,493

representative of each class (“all basic components”) recited in claim 1
(Answer 3-4). The Examiner acknowledges that the Erismann does not
describe the specific polyol (a), surfactant (g), and defoamer (i) which are
recited in claim 1 (Answer 4-6). However, the Examiner contends that it
would have been obvious to a person of skill in the art to have selected
compounds within the scope of components (a), (g), and (i) of claim 1.
For component (a), the Examiner asserts that it would have been
obvious to one of ordinary skill in the art to have selected a mono
pentaerythritol, having four hydroxy groups and a molecular weight of 136,
as the poly of (a) because Erismann “teach[es] that useful polyols include a
combination of (any) compounds containing 2,3,4 hydroxy groups and a
molecular weight of 100-500, e.g. a combination of propylene glycol with
other polyols” (Answer 5).
For component (g), the Examiner asserts that it would have been
obvious to have replaced the surfactant Triton X-100 disclosed in Example 1
of Erismann for the surfactant Triton X-451 in claim 1 because “one of
ordinary skill in the art at would have reasonable expectation of success in
using Triton X45 instead of Triton X100 in Erismann et al since Triton X100
is similar to Triton X45 in structure and composition except for an amount
of ethanol” (Answer 6).
The Examiner also contends that “[i]t would have been obvious to one
of ordinary skill in the art at the time the invention was made to have used
Surfynol DF58 [component (i) of claim 1] instead of Foamaster 111[ ]2 . . .
[as described] in Erismann et al since Nienaber et al teach that Surfynol

1 Recited in claim 1 by its chemical formula, rather than trade name.
2 Id.
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DF58 is functionally equivalent to Foamaster 111 for their use as a defoamer
in a composition comprising a binder such as acrylics (See column 5, lines
27-47), pigments, filler, dispersants and surfactants, and the selection of any
of these known materials as [a] defoamer in Erismann . . . would be within
the level of ordinary skill in the art” (Answer 5).
Finally, with regard to the limitation in claim 1 reciting a water
content “in the range of 10 to 35 weight percent,” the Examiner presents
calculations showing that Erismann’s composition contains a content of
water which falls within the claimed range (Answer 4).
Appellant contends that the rejection is improper. Appellant argues:
(1) The Examiner has failed to identify all elements of claim 1 in the prior
art; (2) The Examiner has used Appellant’s application as a blueprint to
reproduce the claimed invention (Br. 11); (3) Erismann’s composition is a
caulking material, not a composition that can be “applied with the ease of
conventional paint” as recited in claim 1 (Br. 7, 12-14): (4) “Applicant’s
claim 1 DOES NOT include any latex from chemical standpoint” (Br. 14);
and (5) Erismann does not disclose a water content that meets the claimed
limitation (Reply Br. 3).
We begin by addressing Appellant’s contention that the Examiner has
not identified all elements recited in the claim. As summarized in the table
in the Findings of Fact, we find support in Erismann for all eleven ((a)
through (k)) classes of components recited in claim 1. Apparently, errors
were made during prosecution by the Examiner in referencing the paragraph
numbers in Erismann where support for the components could be found
(Answer 3). However, these errors were corrected in the Answer and we
find the Examiner’s conclusion to be supported by the evidence. Thus, the
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Examiner is not using the Appellant’s application as a blueprint. Erismann
contains a description of all classes of components recited in the claimed
invention.
We also agree with the Examiner’s conclusion that it would have been
obvious to have picked the specific compounds recited in claim 1(a), (g),
and (i). Obviousness requires a teaching that all elements of the claimed
invention are found in the prior art and “a reason that would have prompted
a person of ordinary skill in the relevant field to combine the elements in the
way the claimed new invention does” KSR Int’l Co. v. Teleflex Inc., 127 S.
Ct. 1727, 1741, 82 USPQ2d 1385, 1396 (2007). In this case, the Examiner
has provided logical reasons to explain why a person of ordinary skill in the
art would have chosen Triton X-45 as the surfactant of (g) and Surfynol
DF58 as the defoamer of (i) (Answer 5; see supra at p. 8-9). Thus, we
conclude that the Examiner provided sufficient evidence to establish prima
facie obviousness of claim 1.
Appellant contends that Nienaber’s teaching of Surfynol DF58 and
Nee’s teaching of Triton X-45 “do not seem to help the Examiner’s rejection
much since Nienaber seeks to make a correction tape and Gee seeks to make
a polyorganosiloxane emulsion having small particle sizes” (Br. 11). We are
not persuaded. The Examiner relies on Nienaber and Nee as evidence of the
chemical properties of the named compounds, not the particular use to which
they are put. As evidenced by Nienaber, these properties, as well as the
interchangeability of the compounds, were known.
Appellant asserts that “[n]either of Claim 1 elements (a) [char forming
material] nor (b) [char reinforcement material] are disclosed by Erismann
and certainly not disclosed in combination to form the approach of
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Applicant’s claims on appeal in this case. Nowhere in the prior art is a char
forming and a char reinforcing approach of Applicant disclosed” (Reply Br.
1).
We do not agree. Erismann expressly says that its composition can
include “char forming agents” and “reinforcing fillers such as glass fibers”
(Erismann, at [0030]). Glass fiber is listed as a “char reinforcement
material” in part (b) of claim 1. Therefore, we find Appellant’s statement
“[n]owhere in the prior art is a char forming and a char reinforcing approach
of Applicant disclosed” to be incorrect and a mischaracterization of the prior
art (Reply Br. 1).
Appellant also contends that “the Examiner equates Applicant’s Claim
1, elements (e) and (i) with the term LATEX as explained in Erismann
P0010 and P0019. This is chemically wrong! Every polymer scientist knows
that since the 1870’s that latex refers to the latex gathered for natural rubber
trees and includes natural rubber particles, protein, water, sterol glycosides,
resins, ash, and sugars. The use of latex in Erismann P0010 say that the latex
includes a polymer, a polyol, and an intumescent agent” (Reply Br. 1).
This argument has no merit. Erismann in paragraph [0019] refers to
“latex polymers” which are described by the same nomenclature recited in
element (e) of claim 1. Based on the same chemical nomenclature recited in
both instant claim 1 and Erismann, the Examiner reasonably presumed that
the chemical compounds were the same. Appellant has not rebutted this
reasonable presumption with evidence that Erismann’s polymers are
chemically different from those which are claimed. Arguments of counsel
cannot take the place of evidence lacking in the record. Estee Lauder Inc. v.
L’Oreal, S.A., 129 F.3d 588, 595, 44 USPQ2d 1610, 1615 (Fed. Cir. 1997).
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Moreover, we find Appellant’s argument inconsistent with his own
Specification. On page 6 of the Specification, it is stated that “[t]he present
invention is a latex based, high solid content, thin film fire protection”
(Spec. 6: [0017]) – suggesting that the claimed “binders” of element (e) were
properly characterized as “latex polymers” by the Examiner.
With respect to the Examiner’s calculation on page 4 of the Answer as
to the amounts of water present in Erismann, we are of the opinion that an
error was made, but not the error stated by Appellant (Reply Br. 3). A
composition comprising 45 wt% of latex having 30-75 wt% of polymer
(discussed by the Examiner on page 4 of the Answer) – assuming that the
other component is water – would contain 25 wt% to 70% wt% water.
Based on these values, the total amount of water would be about 11 gm in
100 gm total weight (0.45 x 0.25 = 0.1125 or about 11/100) to 31.50 gm in
100 gm total weight (0.45 x 0.70 = 0.315 or 31.50/100) which falls within
the claimed range of 10 to 35 weight percent. Thus, although the Examiner
erred in the calculation, the amounts of water disclosed by Erismann still
meet the claimed limitation. Because of our reasoning differs from the
Examiner, we designate this as a new ground of rejection under 37 C.F.R. §
41.50(b).
Although we find that the Examiner established that the prior art
suggested a composition with all components recited in claim 1, we do not
agree with the Examiner (Answer 6-7) that such composition “is capable of
being applied to a surface with the ease of a conventional paint” as recited in
claim 1. Erismann quite clearly describes an intumescent calking
composition that is used to fill voids (see, e.g., Erismann, at [0014], [0016]).
Nonetheless, for different reasons, we shall affirm this rejection.
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Appellant admits in the Specification that “fire retardant coatings or
paints have been used for many years” (Spec. 1: [0002]).
For example, Liu (US 5,968,669), cited in the Specification at [0003],
describes a fire retardant intumescent coating which can be spread on
particle board (Liu, at col. 8, Example 17). The coating composition
comprises seven of the same components recited in claim 1, including
pentaerythritol (a), ammonium polyphosphate (c), chloroparaffin (d),
polyvinylacetate latex (e), titanium dioxide ((f) of claim 1), surfactant ((g) of
claim 1), and water in amount which overlaps with (j) of claim 1 (Liu, at col.
6, Table III and Example 2).
In addition to Liu, Wainwright (US 5,532,292) also describes an
intumescent coating composition that can be spread like paint (Wainwright,
Abstract). The composition comprises seven of the same components
recited in claim 1, including a charring agent such as pentaerythritol (a)
(Wainwright, at col. 4, ll. 28-30), a char reinforcement material, such as
glass frits and other inorganic fibrous material (b) (Wainwright, at col. 1, l.
62 to col. 2, l. 20), ammonium phosphate (c) (Wainwright, at col. 4, ll. 25-
28), a blowing agent (d) (Wainwright, at col. 4, ll. 30-31); water borne
binder such as vinyl acrylic copolymer (e) (Wainwright, at col. 5, ll. 23-32),
pigment such as zinc oxide (f) (Wainwright, at col. 4, ll. 41-42), and water
(j) (Wainwright, at col. 5, l. 7 and 23; at col. 7, ll. 5-21).
Wainwright also discloses that its composition can be in the form of
either a paint or a putty (Wainwright, Abstract and at col. 9, ll. 31-45).
Thus, persons of skill in the art at the time the invention was made would
have recognized that a fire barrier composition could be produced as a paint
or in a more solid form, such as a putty or caulking, as described by
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Erismann. Furthermore, persons skilled in the art would have reason to
prepare fire protection coatings. “[A]rchitectural specifications of steel
based structures now specify the requirement for fire protective coatings to
the steel structural members in order to preserve the integrity of the structure
in the event of fire” (Spec. 1: [0002]). Thus, the skilled worker would have
reason to have modified Erismann’s caulking to meet the industry’s needs
for fire protective coatings.
The scope of and content of the prior art establish that formulating fire
retardant compositions was commensurate with the level of skill in the art.
Each of Erismann (e.g., at [0030]), Liu (e.g., compare differences in the
compositions set forth in Tables I –III at cols. 5-6), and Wainwright provide
evidence that the skilled worker routinely produced fire retardant
compositions by selecting components for their known benefits.
Wainwright also explicitly states that its formula could be used as either a
putty or paint coating (Wainwright, at col. 9, ll. 31-45), indicating that the
same basic formula could be routinely adapted to either need.
Furthermore, McGinnis (US 5,989,706) describes the chemical
reactions between char forming agents, such as pentaerythritol ((a) of claim
1), ammonium phosphate ((c) of claim 1), a blowing agent, such as urea or
chlorinated paraffin ((d) of claim 1), and char reinforcement materials, such
as glass fibers ((b) of claim 1) (McGinnis, at col. 10, l. 20 to col. 11, l. 4),
explaining why components (a), (b), (c), and (d) would typically be present
in fire protective compositions. Thus, the skilled worker understood the
chemistry of intumescent fire retardant compositions and how to produce
them.
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In sum, the preponderance of the evidence shows that the claimed
invention is a combination of components which were known to be useful in
fire preventative compositions (see above and Findings of Fact). “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, 82 USPQ2d at 1395 (2007). Appellant has presented no
evidence that anything other than predictable results were obtained.
Consequently, we affirm the rejection of claim 1. Claims 3-5 fall with claim
1 because they were not separately argued. In affirming this rejection, we
have relied on reasoning that differs from the Examiner’s. Accordingly, we
designate this rejection as a new ground of rejection under 37 C.F.R. §
41.50(b).

TIME PERIOD
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b) (effective September 13, 2004, 69 Fed. Reg. 49960
(August 12, 2004), 1286 Off. Gaz. Pat. Office 21 (September 7, 2004)). 37
C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to this
paragraph shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that the appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
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reconsidered by the examiner, in which event the proceeding
will be remanded to the examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record. . . .

Should the appellant elect to prosecute further before the examiner
pursuant to 37 C.F.R. § 41.50(b)(1), in order to preserve the right to seek
review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed rejection,
the effective date of the affirmance is deferred until conclusion of the
prosecution before the examiner unless, as a mere incident to the limited
prosecution, the affirmed rejection is overcome.
If the appellant elects prosecution before the examiner and this does
not result in allowance of the application, abandonment or a second appeal,
this case should be returned to the Board of Patent Appeals and Interferences
for final action on the affirmed rejection, including any timely request for
rehearing thereof.
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; § 41.50(b)

Ssc

BRUCE M. WINCHELL
13324 SUNSET CANYON DRIVE NE
ALBUQUERQUE, NM 87111-4250
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