Ex Parte Mabey et al

Patent Trial and Appeal Board

Apr 17, 2015

12586472 (P.T.A.B. Apr. 17, 2015)

UNITED STATES PATENT AND TRADEMARK OFFICE
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.
12/586,472 09/22/2009 Michael John Mabey FR-LT-823 9277
41324 7590 04/20/2015
CHRISTOPHER JOHN RUDY
209 HURON AVENUE, SUITE 8
PORT HURON, MI 48060
EXAMINER
BOYLE, KARA BRADY
ART UNIT PAPER NUMBER
1766
MAIL DATE DELIVERY MODE
04/20/2015 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 2013-002973
Application 12/586,472
1

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 Appellants seek our review under 35 U.S.C. § 134(a) of a
decision of the Primary Examiner to reject claims 1–16, 18, and 19.
2
We
have jurisdiction under 35 U.S.C. § 6.
We AFFIRM.

1
According to the Appellants, the real parties in interest are No-Burn
Investments, L.L.C., and No-Burn, Inc. (Appeal Brief filed July 2, 2012,
hereinafter “App. Br.,” 1).
2
Claims 20 and 21, the only other pending claims, have been allowed (see
Form PTOL-326, Final Office Action entered February 15, 2012).
Appeal 2013-002973
Application 12/586,472

2
BACKGROUND
The subject matter on appeal relates to a water-based latex paint that
includes a low-temperature intumescent agent (e.g., GRAFGUARD
®

expandable graphite flake) as a fire retardant ingredient (Specification filed
September 22, 2009, hereinafter “Spec.,” 4, ll. 3–5; 5, ll. 26–30).
3

According to the Appellants, “when heat is applied, the fire retardant paint
of the invention may ‘foam up’ to form an intact, fire-resistive ‘char-barrier’
to protect the treated surface” and, “[a]s a result, fire is robbed of fuel and
oxygen, generates less heat and smoke, and may in some circumstances
extinguish itself” (id. at 4, ll. 17–19).
Representative claim 1 is reproduced from page CA-1 of the Claims
Appendix attached to the Appeal Brief, as follows:
1. A composition of matter comprising a fire retardant
coating formulation in a form of a water-based latex paint
having a fire retardant ingredient with a low-temperature
intumescent agent, which intumesces at a temperature about
180°C (356°F) or below.

3
On page 1 of the Appeal Brief, the Appellants identify two related
appeals—namely, Appeal No. 2012-005405 (Application No. 11/343,099)
and Appeal No. 2011-013133 (Application No. 11/654,486). Both of these
applications are now abandoned pursuant to our decisions affirming the
Examiner’s rejections of the claims. In addition, the Appeal Brief includes
(as an appendix) a copy of the Board’s decision in Appeal No. 2011-005781
(Application 11/654,431), in which the Examiner’s rejections were reversed.
That application was also abandoned following reopening of prosecution by
the Examiner (see Notice of Abandonment entered May 6, 2013 in
Application 11/654,431).
Appeal 2013-002973
Application 12/586,472

3
THE REJECTION
Claims 1–16, 18, and 19 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Mabey
4
and Armstrong.
5

DISCUSSION
The Appellants provide their arguments under various headings
identified by claim(s) (App. Br. 2–4). We address these arguments under the
same headings below.
Claims 1 & 18
The Appellants do not argue dependent claim 18 separately from
independent claim 1 (id. at 2–3). Therefore, we confine our discussion to
claim 1, which we select as representative. 37 C.F.R. § 41.37(c)(1)(iv).
The Examiner found that Mabey describes an intumescent fire
retardant water-based latex paint formulation (Ans. 2). The Examiner
acknowledged that Mabey does “not expressly teach that the formulation
includes an intumescent agent which intumesces at a temperature of . . .
about 180
o
C,” as required by claim 1 (id. at 3). The Examiner also found,
however, that Armstrong teaches various formulations including coatings
that contain GRAFGUARD
®
expandable graphite—the same material
disclosed by the Appellants as an “intumescent agent” as recited in the
claims—for the purpose of forming, upon heating, an insulating char layer
that protects the substrate from heat and air (id. at 3–5, 7). Based on these
findings, the Examiner concluded that a person of ordinary skill in the art

4
United States Patent Application Publication 2006/0167131 A1, published
July 27, 2006.
5
PCT International Publication WO 2006/005716 A2 published January 19,
2006.
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Application 12/586,472

4
would have been prompted to combine the teachings of Mabey and
Armstrong in the manner claimed by the Appellants in order to produce a
coating with improved fire retardance (id. at 5).
The Appellants contend that Armstrong is non-analogous art (App.
Br. 2). In addition, the Appellants argue that “Armstrong teaches away from
a water-based latex paint to an organic-based epoxy adhesive” (id.).
Furthermore, the Appellants contend that Mabey does not disclose a water-
based paint that intumesces at about 180ºC or below, as required by claim 1,
but instead “teaches away from low-temperature intumescence in a water-
based latex paint to about 400ºF plus . . . .” (id. at 3). In support, the
Appellants rely on a 37 C.F.R. § 1.132 Declaration of William Kish
executed on December 1, 2011 (Evidence App’x).
The Appellants’ arguments do not persuade us of any reversible error
in the Examiner’s rejection of claim 1. In re Jung, 637 F.3d 1356, 1365
(Fed. Cir. 2011).
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 are 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. Id. at 658–659.
Consistent with the Examiner’s position (Ans. 6–7), Armstrong,
Mabey, and the subject application all relate to the general field of fire
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Application 12/586,472

5
retardant coatings (Armstrong 5, ll. 26–31; Mabey ¶¶ 2–5, 10; Spec. 1, ll. 6–
7). Indeed, both Armstrong and the subject application disclose the
incorporation of the same GRAFGUARD
®
expandable graphite into the
coatings for the same or similar purpose, which is to provide an insulating
char layer or char barrier over various substrates (Armstrong 10, ll. 8–17;
Spec. 4, ll. 17–19, and 5, ll. 5, ll. 26–30). Although the Appellants are
correct that Armstrong and the subject application are classified (under the
International Patent Classification) in different subclasses (App. Br. 2), that
fact alone is not dispositive. Rather, it has long been held that the
similarities and differences in structure and function carry far greater weight.
In re Ellis, 476 F.2d 1370, 1372 (CCPA 1973).
Even if we assume that Armstrong is not in the same field of endeavor
as the current application, Armstrong is reasonably pertinent because, as
discussed above, it discloses the use of GRAFGUARD
®
expandable graphite
for the same or similar purpose as in the current application—i.e., to provide
an insulating char layer or char barrier over a substrate. 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).
Moreover, we determine that a person of ordinary skill in the art
seeking to improve Mabey’s fire retardant coating would have considered
Armstrong’s teachings concerning the beneficial effects of GRAFGUARD
®

expandable graphite, because “[w]hen a work is available in one field of
endeavor, design incentives and other market forces can prompt variations of
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Application 12/586,472

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it, either in the same field or a different one.” KSR Int’l Co. v. Teleflex Inc.,
550 U.S. 398, 417 (2007) (emphasis added).
For these reasons, we discern no reversible error in the Examiner’s
determination that Armstrong is analogous art.
The Appellants’ argument that “Armstrong teaches away from a
water-based latex paint to an organic-based epoxy adhesive” (App. Br. 2)
lacks persuasive merit. Consistent with the Examiner’s stated position (Ans.
8–9), we find that a person of ordinary skill in the art would have reasonably
expected GRAFGUARD
®
expandable graphite to improve the fire
retardance of a water-based coating as disclosed in Mabey in view of
Armstrong’s disclosure of the actual mechanism by which the expandable
graphite forms an insulating char layer on the substrate—a mechanism that
does not depend on the nature of the solvent vehicle or the particular resin in
the composition (Armstrong 10, ll. 8–26). As pointed out by the Examiner
(Ans. 9), the Appellants’ teaching away argument fails at the outset because
they do not identify any teaching in the prior art that criticizes, discredits, or
otherwise discourages the use of GRAFGUARD
®
expandable graphite in a
water-based latex paint. In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994).
The Appellants’ argument (App. Br. 3) that Mabey teaches away from
a water-based paint that intumesces at about 180ºC or below, as required by
claim 1, is similarly unpersuasive. The Kish Declaration does not include
experimental evidence establishing that Mabey’s compositions necessarily
intumesce at temperatures significantly higher than 180ºC (356ºF) or that the
difference between claim 1 and the prior art gives rise to unexpected results.
Nor do the Appellants identify any prior art teaching criticizing, discrediting,
or otherwise discouraging intumescence of Mabey’s compositions at
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Application 12/586,472

7
temperatures of about 180ºC or below. As stated by the Examiner (Ans. 10),
the intumescence temperature characteristic recited in claim 1 would
necessarily follow from the suggestion in the prior art of adding Armstrong’s
GRAFGUARD expandable graphite into Mabey’s water-based latex.
For these reasons, and those set forth by the Examiner, we uphold the
rejection of claim 1.
Claims 2 & 3
Claim 2, which depends from claim 1, specifies “an additional fire
retardant ingredient that intumesces at about 204.4ºC (400ºF) or above”
(Claims App’x at CA-1). Claim 3, which depends from claim 2, specifies
that the composition “has a substantial fire retardant ingredient of or
including an ammonium phosphate” (id.).
The Appellants contend that Mabey “has no disclosure” of the
additional limitations of claim 2 (App. Br. 3). Such a skeletal argument is
not an argument in support of the separate patentability of a claim 1,
particularly where, as here, the Examiner relied on the combined teachings
of Mabey and Armstrong (Ans. 2–3) (determining obviousness based on
combination of Mabey’s composition including ammonium phosphate and
GRAFGUARD
®
expandable graphite disclosed in Armstrong). In re Lovin,
652 F.3d 1349, 1356–57 (Fed. Cir. 2011).
Claim 4
The Appellants argue that “nothing in either reference discloses that,
in a formulation as set forth in claim 4, intumescence should occur between
160ºC (320ºF) to 200ºC (392ºF)” (App. Br. 3). Again, such a skeletal
argument is not an argument in support of the separate patentability of a
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8
claim, and therefore, we need not further address it. Lovin, 652 F.3d at
1356–57.
Claim 5
With respect to claim 5, which depends from claim 4, the Appellants
argue that Armstrong does not teach some of the components recited in
claim 4 (e.g., ammonium phosphate solids, pigment or filler, glass, ester
alcohol, hydroxyalkylcellulosic, or a wetting agent) but instead “teaches
toward epoxy, urethane and so forth type monomers and an amine hardener”
(App. Br. 4). As stated by the Examiner (Ans. 12), the Appellants’
argument attacks the references individually without considering what the
collective teachings would have suggested to one of ordinary skill in the art.
In re Keller, 642 F.2d 413, 425 (CCPA 1981) (“The test for obviousness is
not whether the features of a secondary reference may be bodily
incorporated into the structure of the primary reference . . . .”).
Claims 6–9
The Appellants rely on the same arguments offered in support of
claims 1–4 (App. Br. 3). Those arguments are unpersuasive or insufficient
to warrant separate consideration for the reasons given above.
Claim 10
Claim 10 depends from claim 5 and recites in relevant part that “the
low-temperature intumescent agent is or includes expandable graphite flake
intercalated with acid, added to the base fire retardant latex paint
formulation at a ratio between about 1:20 to 1:26 by weight” (Claims App’x
CA-2). The Appellants contend that neither Mabey nor Armstrong discloses
the ratio recited in claim 10 (App. Br. 4). That contention, however, is
without merit for the reasons given by the Examiner (Ans. 13–14).
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Application 12/586,472

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Claims 11–15
The Appellants argue that neither Mabey nor Armstrong discloses a
minimum intumescence temperature of “about 140ºC,” as recited in claims
11–15 (App. Br. 4). As found by the Examiner (Ans. 14), however,
Armstrong teaches that the GRAFGUARD
®
expandable graphite has an
onset temperature of 160ºC or 220ºC (Armstrong 10, ll. 17–18), which is
above the minimum intumescence temperature recited in these claims.
Claim 16
The Appellants repeat the same argument made for claim 4 (App. Br.
4), which we found is not an argument in support of separate patentability
and therefore need not be addressed further.
Claim 19
Claim 19 depends from claim 18, which depends from claim 1, and
specifies a “structural plastic foam” as a substrate (Claims App’x CA-2).
The Appellants rely on the same arguments offered for claims 1 and 18
(App. Br. 4). In addition, the Appellants argue that “neither reference
suggests a compound so particularly, advantageously combined on a foam
plastic substrate as claimed by claim 19” (id.).
The Appellants’ arguments offered for claim 1 are unpersuasive for
the same reasons discussed above. As for the additional argument based on
the “foam plastic substrate” limitation, we incorporate the Examiner’s
findings on page 14 of the Answer as our own.

SUMMARY
The Examiner’s rejection of claims 1–16, 18, and 19 under 35 U.S.C.
§ 103(a) as unpatentable over Mabey and Armstrong is affirmed.
Appeal 2013-002973
Application 12/586,472

10
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).

AFFIRMED
cdc