Ex Parte Mozeika

Board of Patent Appeals and Interferences

Jul 30, 2010

10921721 (B.P.A.I. Jul. 30, 2010)

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

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THOMAS, RARING, & TEAGUE, P.C.
536 GRANITE AVENUE
RICHMOND VA 23226