Ex Parte Mabey et al

Patent Trial and Appeal Board

Apr 1, 2013

11654486 (P.T.A.B. Apr. 1, 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.
11/654,486 01/17/2007 Michael John Mabey FIRE-5U-insect 6562
41324 7590 04/01/2013
CHRISTOPHER JOHN RUDY
209 HURON AVENUE, SUITE 8
PORT HURON, MI 48060
EXAMINER
STANLEY, JANE L
ART UNIT PAPER NUMBER
1767
MAIL DATE DELIVERY MODE
04/01/2013 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 MICHAEL JOHN MABEY and WILLIAM KISH
____________

Appeal 2011-013133
Application 11/654,486
Technology Center 1700
____________

Before ROMULO H. DELMENDO, JAMES C. HOUSEL, and
GEORGE C. BEST, Administrative Patent Judges.

DELMENDO, Administrative Patent Judge.

DECISION ON APPEAL
The Appellants1 seek our review under 35 U.S.C. § 134(a) of a final
rejection of claims 5-24. We have jurisdiction under 35 U.S.C. § 6(b). We
affirm.

1 The Appellants identify the real party in interest as “No-Burn Investments,
L.L.C. and No-Burn, Incorporated” Appeal Brief filed December 29, 2010
(“App. Br.”) at 1.
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STATEMENT OF THE CASE
The Appellants claim a composition of matter comprising an
ammonium phosphate-containing fire retardant and an insecticide in an
amount sufficient to kill, control, or repel a termite. See claim 5 reproduced
below. According to the Appellants, “[t]he composition can be used by
contacting it with a substrate, which advantageously is otherwise flammable,
under conditions sufficient to be flame retardant and provide for the kill,
control or repellence of a target invertebrate, optionally to be also mold
inhibitory.” Specification (“Spec.”) 3, l. 30 to 4, l. 2. Representative claim
5 is reproduced below:
5. A composition of matter comprising an ammonium
phosphate containing fire retardant and an insecticide in an
amount sufficient to kill, control, or repel a termite, wherein:
the ammonium phosphate containing fire retardant
includes a mixture of a substantially neutral ammonium
phosphate salt in combination with an active hydrogen-
containing nitrogenous organic compound, and a hydroxyl-
containing carbonific, such that the composition has a pH when
aqueous of about from 6 to 7 ½;
the composition is a liquid; and
the composition, after treatment of a solid, flammable
substrate by the composition being applied to, and having dried
and reached a constant mass on the substrate, provides for the
following:
a reduction in surface burning characteristics by at
least 50% when compared to untreated, solid, flammable
substrate as tested by ASTM E84 Steiner Tunnel Test
protocol; and
a demonstration of effective termiticide properties
when tested according to the American Wood Preservers’
Association Standard El-97 protocol.
App. Br. CA-1 (Claims App’x).
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The Examiner rejected the claims as follows:
I. Claims 5, 6, 8, 11, and 22 under 35 U.S.C. § 103(a) as
unpatentable over Murch2 and Liebert;3
II. Claims 7, 9, and 10 under 35 U.S.C. § 103(a) as unpatentable
over Murch, Liebert, and Schultz;4
III. Claims 12, 13, 15-18, and 23 under 35 U.S.C. § 103(a) as
unpatentable over Murch and Liebert;
IV. Claim 14 under 35 U.S.C. § 103(a) as unpatentable over Murch,
Liebert, and Schultz;
V. Claims 19-21 and 24 under 35 U.S.C. § 103(a) as unpatentable
over Miller,5 as evidenced by Chyall,6 and Lorentzen;7 and
VI. Claims 5-18 under the judicially created doctrine of
obviousness-type double patenting as unpatentable over claims
1-19 of U.S. Patent 7,482,395 B2 issued January 27, 2009 to
Mabey in view of Lorentzen or Liebert.
Examiner’s Answer entered April 12, 2011 (“Ans.”) 4-48.

DISCUSSION
We address Rejections I-VI in order below. For each rejection, we
select a representative claim with which all other claims stand or fall

2 U.S. Patent 3,934,066 issued January 20, 1976.
3 U.S. Patent 6,080,796 issued June 27, 2000.
4 U.S. Patent 5,730,907 issued March 24, 1998.
5 U.S. Patent 4,105,566 issued August 8, 1978.
6 U.S. Patent 6,632,442 B1 issued October 14, 2003.
7 U.S. Patent 5,332,765 issued July 26, 1994.
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together, unless the Appeal Brief includes arguments in support of the
separate patentability of other claims. See 37 C.F.R. § 41.37(c)(1)(vii).

I.
Claims 5 & 22:
We select claim 5 as representative.
The Examiner found that Murch explicitly describes every limitation
of claim 5 except: (1) “a pH when aqueous of about from 6 to 7 ½”; (2) “an
insecticide in an amount sufficient to kill, control, or repel a termite”; and
(3) the specified “reduction in surface burning characteristics” and “effective
termiticide properties.” Ans. 4-6. With respect to (1), the Examiner found
that the Declaration of Michael John Mabey (hereinafter “Mabey
Declaration,” Evidence App’x at EA-2) establishes that Murch’s
composition has a pH as high as 5.7, which was further found to be
description of “a pH . . . of about . . . 6,” as recited in claim 5. Id. at 21.
With respect to (2), the Examiner found that Liebert teaches the
incorporation of insecticides such as permethrin, which the Appellants
identify as an effective termiticide. Id. at 5; Spec. 10, ll. 1-2. With respect
to (3), the Examiner asserted that these characteristics would necessarily
flow from the modification of Murch in view of Liebert. Ans. 5-6.
The Appellants make two arguments. First, the Appellants contend
that Liebert constitutes non-analogous art. App. Br. 3. Second, the
Appellants contend that the prior art references teach away from the pH
range recited in claim 5. Id.
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Thus, the dispositive issues for claim 5 are:
Did the Appellants demonstrate reversible error in the Examiner’s
determination that Liebert constitutes analogous art?
Did the Appellants demonstrate reversible error in the Examiner’s
finding that the prior art references do not teach away from the pH range
recited in claim 5?
The Appellants’ arguments are unpersuasive to show reversible error.
In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (“[E]ven assuming that the
examiner had failed to make a prima facie case, the Board would not have
erred in framing the issue as one of ‘reversible error.’”).
The nonanalogous art test considers the threshold question whether a
prior art reference is “‘too remote to be treated as prior art.’” In re Clay, 966
F.2d 656, 658 (Fed. Cir. 1992) (quoting In re Sovish, 769 F.2d 738, 741
(Fed. Cir. 1985)). The two separate tests for determining whether a prior art
reference is analogous is as follows: (i) whether the art is from the same
field of endeavor, regardless of the problem addressed; and (ii) if the
reference is not within the inventor’s field of endeavor, whether the
reference is reasonably pertinent to the particular problem with which the
inventor is involved. The same field of endeavor test “for analogous art
requires the PTO to determine the appropriate field of endeavor by reference
to explanations of the invention’s subject matter in the patent application,
including the embodiments, function, and structure of the claimed
invention.” In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004) (reference
describing a toothbrush found to be in the same field of endeavor as a claim
to a hairbrush based on findings regarding function and structural similarity).
With respect to the second test, a reference is reasonably pertinent to the
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particular problem with which the inventor is involved if it addresses the
same or similar problem. In re ICON Health & Fitness, Inc., 496 F.3d 1374,
1380-81 (Fed. Cir. 2007) (prior art disclosing springs as part of a
counterbalancing mechanism in a folding bed is reasonably pertinent to an
application describing a gas spring used as part of a lift assist assembly in a
claimed treadmill).
In this case, the current Specification defines the problem addressed
by the invention as follows: “The invention is useful in protecting building
structures, their contents and/or their occupants, in general, from fire, insect
damage or annoyance, optionally mold, and so forth.” Spec. 4, ll. 5-6. In
this regard, the Specification emphasizes: “Broadly, the invention combines
a fire retardant with an insecticide.” Id. at 5, ll. 1-2 (emphasis added).8 By
comparison, Liebert teaches the incorporation of insecticides such as
permethrin in foamable fire retardant compositions that may be used in the
construction industry. Abst.; col. 2, ll. 15-17, 52-65. The Examiner
therefore correctly found that “Liebert teaches it is known to include
insecticides in fire retarding compositions for the purpose of imparting
insect and termite resistance.” Ans. 22. Although Liebert’s composition
contains polymeric foam, Liebert nonetheless addresses a problem that is
similar to that addressed by the inventors – namely, the incorporation of
insecticides into fire retardant formulations designed for use in construction
materials in order to kill, control, or repel termites. Therefore, under the
second test identified above, we find that Liebert constitutes analogous art

8 The Appellants rely on the Mabey Declaration to establish what constitutes
“pertinent art.” App. Br. 3; Mabey Decl. ¶¶ 3-4. Because Mabey’s
testimony does not address the description found in the Specification, we do
not find its weight sufficient to nullify the Specification’s description.
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that may be considered in determining whether the claimed subject matter
would have been obvious to a person of ordinary skill in the art. Cf. KSR
Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007) (“When a work is
available in one field of endeavor, design incentives and other market forces
can prompt variations of it, either in the same field or a different one. If a
person of ordinary skill can implement a predictable variation, § 103 likely
bars its patentability.”).
The Appellants’ argument that the references teach away from the pH
range recited in claim 5 is also unavailing. Mabey declared that the pH of
compositions “A” and “B” in Murch’s Examples 1 and 5 are 5.7 and 5.3,
respectively. Mabey Decl. ¶ 5. The Appellants, however, fail to address the
Examiner’s finding that a pH of 5.7 is a description of “a pH . . . of about . . .
6,” as recited in claim 5. Moreover, Murch does not limit the pH to any
particular value and therefore a person of ordinary skill in the art would have
formulated the composition to have any suitable pH, including neutral pH
for ease of handling. In this case, the Appellants do not direct us to any
evidence demonstrating that a pH of “about . . . 6” provides an unexpected
criticality or result over a pH of 5.7. Indeed, it appears that the Appellants
were aiming for a neutral pH to avoid the known effects attributed to acidic
and caustic solutions. Spec. 14, ll. 1-7.

Claim 6:
Claim 6 recites:
6. The composition of claim 5, which includes
ingredients in approximate percentages by weight as follows:
mono/diammonium phosphate(s) 20~70%
water 25~50%
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spumific 2.5~15.0%
sugar 4.0~12.0%
polysaccharide resin 2.0~40.0%
surfactant 0% or 0.2~1.2%
defoaming agent 0% or 0.01~0.5%
insecticide 0.1~5%.
Claims App’x CA-1.
The Appellants argue that “the insecticide range picked by the
Examiner from Liebert . . . teaches away because that range of insecticide is
taught for use for making solid thermoplastics, not liquid coatings.” App.
Br. 4. The Appellants further argue that “the ranges [disclosed for the
various components in Murch] do not match or approximate those in the
claim. Id. In particular, the Appellants question how “20-50 percent
spumific of the types found in Murch at column 5, lines 57-65, as found in a
solid final product, equate, approximate or suggest the about 2.5 to 15
percent spumific required, along with other ingredients, in the claim.” Id.
We do not find these arguments persuasive for the reasons given by
the Examiner. Ans. 4-6, 23-25. We add the following for emphasis.
Murch describes a specific example of an intumescent composition
containing the following components:
monoammonium phosphate 20 g
diammonium phosphate 20 g
glycerine 30 g
urea 40 g
trioxane 8 g
boric acid 2.5 g
cyanoguamidene 2.5 g
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water 100 g
Col. 12, ll. 11-18 (Example 1). Thus, in this example, Murch teaches the use
of a mixture of monoammonium and diammonium phosphates, which are
each disclosed as a suitable spumific material. Col. 5, ll. 57-65. The total
amount of Murch’s monoammonium and diammonium phosphates is about
18% by weight. When considered together with Murch’s disclosure that
these spumific materials are “generally present in an amount between 20 and
50 percent by weight,” col. 5, ll. 63-65, a person of ordinary skill in the art
would have found the “approximate percentages” of “20~70%,” as recited in
claim 6 obvious.
Furthermore, Murch teaches that the amount of water in the
exemplified composition is 100 g, which is about 45% by weight – a value
within the “approximate percentages” of “25~50%,” as recited in claim 6.
Therefore, a person of ordinary skill in the art would have found the claimed
amount of water obvious in view of Murch’s disclosure.
With respect to the amounts for sugar and polysaccharide components
recited in claim 6 (“approximate percentages” of “4.0~12.0%” and
“2.0~40.0%,” respectively), the Examiner determined that Murch would
have suggested the use of a combination of sucrose (sugar) and starch (a
polysaccharide), which are individually disclosed as “non-resinous
carbonific” materials, in amounts that fall within the scope of the claimed
“approximate percentages” for sugar and polysaccharide. Ans. 23; col. 5, l.
66 to col. 6, l. 7. We discern no reversible error in this determination. In re
Kerkhoven, 626 F.2d 846, 850 (CCPA 1980) (explaining that the idea of
combining two compositions, each known to be used for the same purpose,
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“flows logically from their having been individually taught in the prior
art.”).
With respect to the insecticide, Liebert teaches the addition of 0.03-
0.5% by weight of an insecticide such as cypermethrin or permethrin to the
monomer system that polymerizes into a fire retardant foamed polymer.
Col. 2, ll. 37-67. In incorporating such an insecticide in Murch’s
composition, a person of ordinary skill in the art would have arrived at,
through nothing more than routine experimentation, an optimum or
workable range of insecticide amounts. In re Boesch, 617 F.2d 272, 276
(CCPA 1980) (“[D]iscovery of an optimum value of a result effective
variable in a known process is ordinarily within the skill of the art.”); In re
Aller, 220 F.2d 454, 456 (CCPA 1955) (“[W]here the general conditions of a
claim are disclosed in the prior art, it is not inventive to discover the
optimum or workable ranges by routine experimentation.”).
With respect to the “approximate percentages” of the additional
“spumific” recited in claim 6, the Appellants do not dispute the Examiner’s
finding, Ans. 24, that Murch’s ammonium acetate or boric acid blowing
agent, which may be present in an amount between 5-20% by weight, is in
fact a “spumific.” Col. 6, ll. 8-19. Although Murch discloses the presence
of other spumific materials such as mono- or diammonium phosphate (a
component that may be present in the Appellants’ claimed composition),
Murch’s teaching regarding the ammonium acetate or boric acid is sufficient
to constitute a description of the 2.5~15.0% spumific component recited in
claim 6. In this regard, claim 6 does not specify a total spumific amount.
For these reasons, we find no reversible error in the Examiner’s
rejection of claim 6.
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Claim 8:
Claim 8 recites:
8. The composition of claim 5, which includes
ingredients in approximate weight percentages by weight as
follows:
ammonium orthophosphate as from 40% aqueous
solution 50~70%
polysaccharide resin 20~30%
cane sugar 5~10%
urea as a spumific 5~7%
defoaming agent 0% or 0.01~0.5%
organic insecticide 0.5~3%.
Claims App’x CA-1 to CA-2.
The Appellants argue that “the identity and amount of ingredients of
this claim . . . is not rendered obvious by the combination [of prior art
references].” App. Br. 4.
We disagree with the Appellants for the reasons given by the
Examiner. Ans. 25. The Examiner determined that the prior art teachings
would have suggested the specific ingredients in the specific ranges of
amounts recited in claim 8. Ans. 6-7. The Appellants merely rely on
general arguments similar to those offered for claim 6. Therefore, we find
these arguments similarly unpersuasive for claim 8.

Claim 11:
The Appellants argue that Murch and Liebert do not render obvious
an insecticide substance as specified in claim 11 (“an organothio compound,
a chlorinated organic compound, a pyrethroid, a carbamide, a carbimide, a
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cyclopropanecarboxylate, a pyrethrin, a piperonyl ether, and a combination
thereof”). App. Br. 4.
The Appellants are incorrect. As pointed out by the Examiner, either
of the cypermethrin or permethrin disclosed in Murch is a “chlorinated
organic compound,” as recited in claim 11. Col. 2, ll. 52-65.

II.
Claim 7:
Claim 7 recites: “The composition of claim 6, which further contains a
mold inhibitor of a quaternary organic ammonium halide present in an
amount about from 0.5 to 5 percent by weight of total composition.” Claims
App’x CA-1.
The Examiner acknowledged that Murch does not disclose the use of
“a mold inhibitor of a quaternary organic ammonium halide,” as specified in
claim 7. Ans. 7-8. The Examiner, however, relied on the teachings of
Schultz to resolve this difference and concluded that the subject matter of
claim 7 would have been obvious to a person of ordinary skill in the art. Id.
at 8.
The Appellants contend that Schultz is nonanalogous art. App. Br. 6.
In addition, the Appellants argue that “[n]othing, in fact, suggests that a
composition as of claim 6 should further contain a mold inhibitor of a
quaternary organic ammonium halide present in an amount about from 0.5 to
5 percent by weight of total composition.” Id.
Thus, the dispositive issues are:
Did the Appellants show reversible error in the Examiner’s
determination that Schultz is analogous art?
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Did the Appellants show reversible error in the Examiner’s conclusion
that the claimed subject matter would have been obvious in view of the
collective teachings of Murch, Liebert, and Schultz?
The Appellants’ arguments do not persuade us of any reversible error
in the Examiner’s rejection. Jung, 637 F.3d at 1365.
As we found above, the current Specification states that “[t]he
invention is useful in protecting building structures, their contents and/or
their occupants, in general, from fire, insect damage or annoyance,
optionally mold, and so forth.” Spec. 4, ll. 5-6. The Specification identifies
mold (e.g., in wood) as a problem of particular interest. Id. at 4, ll. 7-19.
Schultz, like the Appellants, is also concerned with protecting wood from
fungal decomposition. Col. 2, ll. 14-26, 41-54. Specifically, Schultz teaches
a wood preservative composition comprising (A) at least one biocide
selected from the group consisting of a quaternary ammonium compound
(that may contain organic groups and halides), an isothiazolone, and an
isophthalonitrile and (B) at least one antioxidant. Id. Because Schultz
addresses the same or similar problem addressed by the Appellants, we find
that this reference constitutes analogous art and therefore can be considered
in the obviousness analysis.9
Having determined that Schultz is analogous prior art, we find no
error in the Examiner’s obviousness analysis. Murch explicitly teaches that
the intumescent composition may be applied to wood and that “[i]f desired,

9 Although the Examiner stated that “Murch and Schultz are analogous
because they are concerned with the same field of endeavor,” that erroneous
statement was harmless because the Examiner correctly compared the
problem addressed by Schultz with the problem addressed by the invention.
Ans. 33.
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stabilizers, fungicides, bactericides and other additives may be included in
the intumescent formulations in amounts ranging between 0.1 and 5 percent
by weight.” Col. 1, ll. 8-12 and col. 6, ll. 21-24 (emphasis added). As found
above, Schultz teaches a wood preservative composition comprising at least
one biocide for treating fungus and at least one antioxidant. Therefore, a
person of ordinary skill in the art would have been prompted to add an
optimum amount of Schultz’s wood preservative composition including an
organic quaternary ammonium halide into Murch’s intumescent composition
in order to protect the wood from fungal decomposition. KSR, 550 U.S. at
420 (“Common sense teaches . . . that familiar items may have obvious uses
beyond their primary purposes, and in many cases a person of ordinary skill
will be able to fit the teachings of multiple patents together like pieces of a
puzzle.”).

Claim 9:
The Appellants offer the same or similar arguments offered in support
of claim 7. We find these arguments unpersuasive for the same reasons.

Claim 10:
Claim 10 recites that the “insecticide includes permethrin, and the
mold inhibitor includes an alkyldimethylbenzylammonium chloride.”
Claims App’x CA-2.
The Appellants contend that the prior art references would not have
prompted a person of ordinary skill in the art to select the specified
insecticide and the specified mold inhibitor. App. Br. 7.
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We find the Appellants’ argument unpersuasive for the reasons given
by the Examiner at pages 36-37 of the Answer.

III.
Claims 12, 17, & 23:
We select claim 12 as representative. Claim 12 recites:
12. A composition of matter comprising a fire retardant
agent; an insecticide in an amount sufficient to kill, control or
repel a target invertebrate; and a mold inhibitor in an amount
sufficient to kill, control, or prevent growth of Stachybotrys
chartarum – wherein the composition, after treatment of a solid,
flammable substrate by the composition being applied to, and
having dried and reached a constant mass on the substrate,
provides for the following:
a reduction in surface burning characteristics by at least
50% when compared to untreated, solid, flammable substrate as
tested by ASTM E84 Steiner Tunnel Test protocol;
effective activity in killing, controlling or repelling the
target invertebrate; and
a reduction in the growth of the Stachybotrys chartarum
by at least about 85% for at least about 30 days as tested by
ASTM D5590-94 Determination of Resistance of a Coating
Material to Fungal Growth test protocol.
Claims App’x CA-2.
In addition to the nonanalogous art argument, which we found
unpersuasive above, the Appellants argue that the “superior fire retardant,
insecticidal, and action against Stachybotrys chartarum functions as claimed
together is nowhere in the applied art, expressed or implied.” App. Br. 4-5.
We find no merit in the Appellants’ additional argument. “There is no
question that all evidence of the properties of the claimed compositions and
the prior art must be considered in determining the ultimate question of
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patentability, but it is also clear that the discovery that a claimed
composition possesses a property not disclosed for the prior art subject
matter, does not by itself defeat a prima facie case.” In re Dillon, 919 F.2d
688, 693 (Fed. Cir. 1990).
As pointed out by the Examiner, Ans. 26-29, the prior art references
would have prompted a person of ordinary skill in the art to arrive at a
composition including the same specific fire retardants, insecticides, and
fungicides as those described as being effective in the current Specification.
Spec. 16-17, Examples 1-3; Schultz col. 4, l. 24. Therefore, the argued
characteristics would necessarily follow as a consequence of combining the
teachings of the prior art. In re Kubin, 561 F.3d 1351, 1357 (Fed. Cir. 2009)
(“Even if no prior art of record explicitly discusses the ‘wherein the
polypeptide binds CD48’ aspect of claim 73, the Kubin-Goodwin
application itself instructs that CD48 binding is not an additional
requirement imposed by the claims on the NAIL protein, but rather a
property necessarily present in NAIL.”).

Claim 13:
The Appellants offer the same or similar arguments offered in support
of claim 6 subject to Rejection I. These arguments are unpersuasive for the
same reasons discussed above.

Claim 15:
The Appellants offer the same or similar arguments offered in support
of claim 11 subject to Rejection I. These arguments are unpersuasive for the
same reasons discussed above.
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Claim 16:
Claim 16, which depends from claim 12, recites that “the mold
inhibitor is present in an amount about from 0.1% to 10% by weight of the
total composition, and the insecticide is present in an amount about from
0.1% to 10% by weight of the total composition.”
Given the teachings found in Liebert and Schultz, a person of ordinary
skill in the art would have arrived at optimum or workable amounts of mold
inhibitor and insecticide to be incorporated into Murch’s intumescent
composition. Boesch, 617 F.2d at 276; Aller, 220 F.2d at 456.

Claim 18:
The Appellants argue that the prior art references do not disclose a
termiticide. App. Br. 5. That is incorrect. Liebert explicitly teaches
termiticides. Abst.

IV.
Claim 14:
The Appellants again argue that Liebert and Schultz are nonanalogous
art. App. Br. 7. In addition, the Appellants argue that the prior art does not
disclose or suggest the specified amount of mold inhibitor. Id.
For reasons discussed above, we find these arguments unpersuasive.

V.
Claims 19 & 24:
We select claim 19 as representative. Claim 19 recites:
19. A composition of matter comprising a fire retardant
agent and an insecticide, wherein:
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the fire retardant agent is a liquid having ingredients by
weight, as follows:
water 70-90%
phosphorus containing acid 5~15%
ammonium base 5~15%
at least one of a wetting agent, another agent,[10] and a
combination thereof 0.05~0.2%
preservative 0.01~0.1 %; and
the insecticide is present in an amount sufficient to kill,
control or repel a target invertebrate when the composition is
applied to, and optionally dried on or in, a substrate.
Claims App’x CA-3 to CA-4.
The Appellants argue that “[t]he selection of [the] ingredients [recited
in claim 19] is not found in the art.” App. Br. 7. The Appellants also argue
that Lorentzen is not analogous art because it teaches the inclusion of
insecticides in the context of an antifouling marine paint. Id. at 8. The
Appellants further argue that the Examiner’s reasoning for relying on Chyall
“is removed from common sense and the practical realities of the claims, as
on page 14 of the specification such an ammonium base is a strong base
suitable to neutralize the phosphorous containing acid, for example, as found
with a hydroxide, not in a weak amphoteric substance as proposed by the
Examiner apart from real world fact.” Id.
The Appellants’ arguments are unpersuasive. The Examiner made
explicit findings regarding the scope and content of Miller, including the
specific portions of the reference that describe water, a phosphorus
containing acid, an ammonium base, at least one wetting agent, a

[10] In the event of further examination, the Examiner should consider
whether the term “another agent” renders the claim indefinite under 35
U.S.C. § 112, ¶ 2.
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preservative, and their amounts. The Examiner also relied on Chyall as
extrinsic evidence to explain Miller’s teaching regarding the mixture of
ammonium salts of a plurality of polyphosporic acids at column 2, lines 20-
40 – i.e., to show that Miller’s mixture of ammonium salts of a plurality of
polyphosphoric acids acts as both a phosphoric acid source and an
ammonium source. Ans. 12 (citing Chyall col. 4, ll. 10-20 and col. 5, ll. 47-
59). See In re Baxter Travenol Labs., 952 F.2d 388, 390 (Fed. Cir. 1991)
(“[E]xtrinsic evidence may be considered when it is used to explain, but not
expand, the meaning of a reference.”).
Other than conclusory statements, the Appellants do not specifically
identify any error in the Examiner’s findings, which were made explicit.
Therefore, we cannot reverse on this basis.
The Appellants’ argument, Appeal Brief page 8, that Lorentzen
teaches the use of insecticides in the context of an antifouling marine paint is
plainly wrong. In support of this argument, the Appellants cite Lorentzen’s
column 5, lines 3-5 and 12-13. But Lorentzen’s column 5, lines 3-13
actually states (emphasis added):
Other suitable active compounds are algicides,
moluscicides, active compounds against “sea animals” which
colonise, for example, ship’s bottom paints.
The microbicidal [sic] agents or concentrates used for the
protection of the industrial materials contain the active
compound combinations according to the invention in a
concentration of 0.01 to 95% by weight, in particular 0.01 to
60% by weight, in addition to, if appropriate, 0.001 to 10% by
weight of a suitable further fungicide, insecticide or a further
active compound as mentioned above.
Lorentzen’s teachings are not limited to marine paints but are applicable to a
wide variety of aqueous functional fluids including aqueous coatings. Col.
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Application 11/654,486
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1, l. 41 to col. 2, l. 19. The Appellants’ claimed composition is an aqueous
coating. Therefore, the Appellants’ basis for asserting that Lorentzen is
nonanalogous art lacks factual foundation.
With respect to Chyall, the Examiner relied on this reference merely
to show that ammonium polyphosphates, which are disclosed in Miller, act
as both an acid source and an ammonia source. Chyall col. 3, ll. 57-61; col.
4, ll. 10-45; col. 5, ll. 47-59. Therefore, the Examiner provided a factual
foundation upon which to assert that Miller’s ammonium polyphosphates in
an aqueous environment would reasonably appear to be a source for both
polyphosphoric acid and ammonium hydroxide. The Appellants have
offered no evidence to show the contrary.

Claim 20:
The Appellants argue claim 20 requires “selection of even more
stringent ingredient parameters, “none of which is even suggested by the
combination” of the prior art references. App. Br. 8. Again, the Examiner
made specific findings regarding the limitations at issue. Ans. 12. The
Appellants’ conclusory statement is insufficient to demonstrate reversible
error.

Claim 21:
The Appellants offer an additional argument that “Stachybotrys
chartarum is not found in any applied art.” App. Br. 8.
The Appellants’ argument is unpersuasive for the reasons given by the
Examiner. Ans. 44-46.

Appeal 2011-013133
Application 11/654,486
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VI.
Regarding the obviousness-type double patenting rejection, the
Appellants argue that the Examiner committed reversible error by using the
entire Mabey patent as a prior art reference. App. Br. 9. The Appellants
also argue that the claims of the Mabey patent relate to a fire retardant
intumescent latex paint, which is “notably different from the composition of
claims 5-18.” Id.
The Appellants’ arguments are unpersuasive. Although the Examiner
stated that “US 7,482,395 [to Mabey] does not specifically teach the
inclusion of an insecticide,” it is clear from the context of the rejection that
the Examiner was actually referring to the claims of the Mabey patent. Ans.
15 (“the claims of both the instant and US 7,482,395 are directed to similar
liquid compositions . . . .”). With respect to the claims of the Mabey patent
being directed to an intumescent fire retardant latex paint, the Appellants’
claims on appeal are directed to a “composition of matter” and read on such
a latex paint.
For these reasons, we find no reversible error in the Examiner’s
obviousness-type double patenting rejection.

SUMMARY
The Examiner’s rejection under 35 U.S.C. § 103(a) of claims 5, 6, 8,
11, and 22 as unpatentable over Murch and Liebert is affirmed.
The Examiner’s rejection under 35 U.S.C. § 103(a) of claims 7, 9, and
10 as unpatentable over Murch, Liebert, and Schultz is affirmed.
The Examiner’s rejection under 35 U.S.C. § 103(a) of claims 12, 13,
15-18, and 23 over Murch and Liebert is affirmed.
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Application 11/654,486
22
The Examiner’s rejection under 35 U.S.C. § 103(a) of claim 14 as
unpatentable over Murch, Liebert, and Schultz is affirmed.
The Examiner’s rejection under 35 U.S.C. § 103(a) of claims 19-21
and 24 under 35 U.S.C. § 103(a) as unpatentable over Miller, as evidenced
by Chyall, and Lorentzen is affirmed.
The Examiner’s rejection under the judicially created doctrine of
obviousness-type double patenting of claims 5-18 as unpatentable over
claims 1-19 of the Mabey patent in view of Lorentzen or Liebert is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED

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