Ex Parte MozeikaDownload PDFBoard of Patent Appeals and InterferencesJul 30, 201010921721 (B.P.A.I. Jul. 30, 2010) Copy Citation 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. 10/921,721 08/19/2004 Michael Mozeika III NDI 1 9701 31704 7590 07/30/2010 Thomas, Raring, & Teague, P.C. 536 GRANITE AVENUE RICHMOND, VA 23226 EXAMINER KENNY, DANIEL J ART UNIT PAPER NUMBER 3633 MAIL DATE DELIVERY MODE 07/30/2010 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 BOARD OF PATENT APPEALS AND INTERFERENCES ____________________ Ex parte MICHAEL MOZEIKA III ____________________ Appeal 2009-006575 Application 10/921,721 Technology Center 3600 ____________________ Before: WILLIAM F. PATE III, STEFAN STAICOVICI, and FRED A. SILVERBERG, Administrative Patent Judges. PATE III, Administrative Patent Judge. DECISION ON APPEAL1 1 The two-month time period for filing an appeal or commencing a civil action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing, as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE” (paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery mode) shown on the PTOL-90A cover letter attached to this decision. Appeal 2009-006575 Application 10/921,721 2 This is an appeal from the final rejection of claims 1-8 and 11-17. These are the only claims in the application. We have jurisdiction under 35 U.S.C. §§ 134 and 6. We affirm. The claimed subject matter is directed to a gutter protection system of reticulated foam wherein the foam has a fire retardant additive. Claim 1, reproduced below, is further illustrative of the claimed subject matter: 1. A gutter protection system comprising; a reticulated foam insert adapted to fit within a gutter and further having at least substantially the same width as the gutter, and the foam insert comprising an antimicrobial additive and a fire retardant additive. The references of record relied upon by the Examine as evidence of obviousness are: Dugan Weller Phillips US 3,855,132 US 4,949,514 US 6,442,912 Dec. 17, 1974 Aug. 21, 1990 Sep. 3, 2002 Olthoff US 2005/0178072 A1 Aug. 18, 2005 Claims 1-8 and 11-17 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Olthoff, in view of Dugan and Weller, and further in view of Phillips. Ans. 3. OPINION With respect to the scope and content of the prior art and the differences between the prior art and the claimed subject matter, we adopt the Examiner’s findings of fact from the Answer. Ans. 3:16-4:9. We further find that one of Phillips’ embodiments is directed to synthetic architectural moldings manufactured from polystyrene, polyurethane or polyethylene Appeal 2009-006575 Application 10/921,721 3 foams. Col. 5, ll. 16-35. These foams are cut or molded into the desired shape and coated with an elastomer that optionally contains a fire retardant. Phillips, col. 5, ll. 20-22. Thus, Phillips teaches architectural foams with a coating comprising fire retardant materials. We are further in agreement with the Examiner that it would have been obvious to one of ordinary skill to use reticulated foams as taught by Dugan and Weller in the structure of Olthoff and to provide Olthoff with a fire retardant additive as taught by Phillips. The use of a fire retardant in the foam insert of Olthoff is merely combining prior art elements according to known methods to yield a predictable result. In this instance, it is clearly within the understanding of one of ordinary skill that the use of a fire retardant composition applied onto an architectural member would produce a predictable fire retardant result with respect to the architectural member. Appellant argues that one of ordinary skill would not combine Olthoff and Phillips because the references are unrelated and in technically contradictory fields. Appellant argues that Phillips is related to sealed or impermeable products while the gutter filler insert, by definition, is porous and allows water to flow through. In our view, Appellant’s argument is related to a bodily incorporation of Phillips’s features into the foam insert of Olthoff. However, it is not necessary that the invention of the references be physically combinable to render obvious the invention under review. In re Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983). “Combining the teachings of the references does not involve an ability to combine their specific structures.” In re Nievelt, 482 F.2d 965, 986 (CCPA 1973). In this instance, the Examiner is merely using the teaching of Phillips that architectural foam structures may be protected from sparks and embers by the use of a fire retardant composition. As noted above, this is merely the use of a known Appeal 2009-006575 Application 10/921,721 4 technique to improve a similar device in the same way. See KSR Int’l Co. v. Teleflex, 550 U.S. 398, 402, 417 (2007). With respect to claims 16 and 17, Appellant argues that the combined teachings of the prior art would not have rendered obvious the fire retardant additive coating on the foam insert product. We note, however, that Phillips clearly discloses that the fire retardant composition can be coated on architectural foam member. See, e.g., Phillips, col. 5, ll. 16-35. Accordingly, the Examiner has established the prima facie obviousness of claims 1-8 and 11-17. As noted above, we have found the subject matter of the claims on appeal to be prima facie obvious. Whenever obviousness is found with respect to the subject matter on appeal, and an appellant furnishes evidence of secondary considerations, it is our duty to reconsider the issue of obviousness anew, carefully weighing the evidence for obviousness with respect to the evidence against obviousness. See, e.g., In re Eli Lilly & Co., 902 F.2d 943, 945 (Fed. Cir. 1990). We are also mindful that the objective evidence in any given case may be entitled to more or less weight depending on its nature and its relationship with the merits of the invention. See Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 1538 (Fed. Cir. 1983). To be given substantial weight in the determination of obviousness or non- obviousness, evidence of secondary considerations must be relevant to the subject matter as claimed. Therefore, we must determine whether there is a nexus between the merits of the claimed invention and the secondary considerations. Ashland Oil, Inc. v. Delta Resins and Refractories, Inc., 776 F.2d 281, 305 n.42 (Fed. Cir. 1985). Turning to the four declarations provided by the Appellant and considering the declarations as they relate to sales of the gutter filter product Appeal 2009-006575 Application 10/921,721 5 that included a fire retardant additive coating, it is our finding that the Appellant shows commercial success of the product and has provided a nexus between the product on sale and the claimed subject matter. In our view, the Examiner did not give proper credence to the evidence in the declarations as they relate to commercial success. With respect to paragraph 8 of the first Mozeika declaration, and the attached figures, we acknowledge that the foam when treated with the fire retardant, and particularly when treated with a coating of fire retardant, provided resistance to the heated pill used in the ASTM test and resisted disintegration of the polyurethane foam. However, in our view, this is the purpose of a fire retardant composition. This is why fire retardant compositions are used. Thus, we consider these results to be an expected beneficial result, and expected beneficial results are evidence of obviousness of the claimed invention, just as unexpected beneficial results are evidence of non-obviousness. See In re Skoner, 517 F.2d 947, 950 (CCPA 1975). Accordingly, paragraph 8 of the Mozeika declaration provides little evidence of non-obviousness. Inasmuch as the jurisprudence mandates a balancing test for all evidence for and against obviousness, we must balance the strong case of prima facie obviousness with the evidence of commercial success and the evidence that the use of a fire retardant composition is merely an expected result. In our view, the prima facie case of obviousness is quite strong and the expected result buttresses our conclusion that the claimed subject matter would have been obvious to one of ordinary skill. When we balance this evidence of obviousness against the commercial success that the Appellant has shown, we believe that the weight of evidence tips the scales toward the obviousness of the claimed subject matter. The evidence has shown that Appeal 2009-006575 Application 10/921,721 6 coating foam architectural products with a fire retardant composition, as taught by Phillips, yields an entirely predictable and expected result as shown by Appellant’s declaration, and this evidence is not outweighed by the Appellant’s evidence of commercial success. Therefore, the Examiner’s decision rejecting claims 1-8 and 11-17 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)(1)(iv) (2009). AFFIRMED nhl THOMAS, RARING, & TEAGUE, P.C. 536 GRANITE AVENUE RICHMOND VA 23226 Copy with citationCopy as parenthetical citation