Ex Parte Narum et al

Board of Patent Appeals and Interferences

Sep 18, 2009

11071088 (B.P.A.I. Sep. 18, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________

Ex parte TIMOTHY N. NARUM,
JAMES J. KOBE, RODGER J. PEREYRA,
and ZHIMING ZHOU
______________

Appeal 2008-006054
Application 11/071,088
Technology Center 1700
_______________

Decided: September 18, 2009
_______________

Before CHARLES F. WARREN, PETER F. KRATZ, and
CATHERINE Q. TIMM, Administrative Patent Judges.

WARREN, Administrative Patent Judge.

DECISION ON APPEAL
Applicants appeal to the Board from the decision of the Primary
Examiner finally rejecting claims 1 through 9 and 11 in the Office Action
mailed May 24, 2006 (“Office Action”). 35 U.S.C. §§ 6 and 134(a) (2002);
37 C.F.R. § 41.31(a) (2006).
We affirm the decision of the Primary Examiner.
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Application 11/071,088
2
Claim 1 illustrates Appellants’ invention of a fire retardant, multi-
layer article, and is representative of the claims on appeal:
1. A fire retardant, multi-layer article, comprising:
a first adhesive layer comprising a pressure sensitive adhesive;
a core layer having an outer surface, the first adhesive layer adhered to
at least a portion of the outer surface;
a fire retardant disposed in at least one of the first adhesive layer or
the core layer, the fire retardant comprising a brominated phosphate and
being essentially free of antimony fired retardants and polybrominated
biphenyls; and
the article being cleanly removable.
The Examiner relies upon the evidence in these references (Ans. 3): 1
Suter US 4,338,370 Jul. 6, 1982
Bonk US 4,751,269 Jun. 14, 1988
Mazurek US 5,650,215 Jul. 22, 1997
Parsons US 5,851,663 Dec. 22, 1998
Narum US 6,866,928 B2 Mar. 15, 2005
Ogushi2 JP 4-39374 Feb. 10, 1992

Fire Retardant Materials, Ch. 8, Table 8.1, Part VII (A.R. Horrocks and D.
Price, eds. Woodhead Publishing, 2001) (Horrocks).
Appellants rely upon the evidence in this reference in rebuttal:
Flame Retardants 3 and 5 (Dead Sea Bromine Group) (DSBG).
Appellants request review of the ground of rejection under 35 U.S.C.
§ 103(a) advanced on appeal by the Examiner (App. Br. 5; Reply Br. 3):
claims 1, 3 through 9, and 11 over Mazurek in view of Ogushi, as evidence
by Horrocks (Ans. 3-4);3 and

1 We consider the Appeal Brief filed February 26, 2007, the Examiner’s
Answer mailed July 3, 2007, and the Reply Brief filed August 30, 2007.
2 We refer to the translation of Ogushi prepared by the USPTO (PTO: 2006-
1511) and relied on by the Examiner. Ans. 3-4.
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Application 11/071,088
3
claim 2 over Mazurek in view of Ogushi, as evidence by Horrocks,
alternatively further in view of Bonk (Ans. 8).
Appellants argue the claims in the first ground of rejection as a group
and further argue claims 4 and 5 separately. App. Br. 8-9; Reply Br. 7-8.
Thus, we decide this appeal based on claims 1, 2, and 4. 37 C.F.R.
§ 41.37(c)(1)(vii) (2005).
Issues On Appeal
The issues in this appeal are whether Appellants have shown that the
evidence in the combined teachings of Mazurek, Ogushi, and Horrocks and
the evidence in Parsons and Suter (see above note 3) does not support the
Examiner’s conclusion of prima facie obviousness with respect to the
claimed fire retardant article encompassed by appealed claims 1 and 4; and
that the evidence in these five references alternatively further combined with
Bonk does not support the Examiner’s conclusion of prima facie
obviousness with respect to the claimed fire retardant article encompassed
by appealed claim 2.
Claim Interpretation
The plain language of representative appealed independent claim 1
specifies any fire retardant article which is cleanly removable, comprising at
least any adhesive layer comprising at least any pressure sensitive adhesive
(PSA) which permits clean removal of the article, adhered to any portion of
the outer surface of any core layer, wherein a fire retardant comprising any
brominated phosphate and being essentially free of antimony fire retardants

3 The Examiner relies on Parsons and Suter in the first ground of rejection
in response to Appellants’ challenge to adduce evidence in support of notice
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and polybrominated biphenyls, is disposed in at least one of the adhesive
layer and the cores layer. Appealed dependent claim 2 further modifies claim
1 by specifying the fire retardant is disposed in the adhesive layer and the core
layer, that is, the same fire retardant containing PSA can be the adhesive layer
and in the core layer. In similar manner, appealed dependent claim 4 further
modifies claim 1 by specifying a core layer that comprises at least, that is,
contains, any amount of any PSA. Appealed dependent claim 13 specifies the
brominated phosphate is tri(tribromoneopentyl) phosphate. See Spec. e.g.,
6:6-9; 7:27 to 8:19; 9:20 to 10:20; 11:16-26; 23:20 to 24:4; and Figs. 1-3.
See, e.g., In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1378-79 (Fed.
Cir. 2007); In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir.
2004), and cases cited therein; In re Morris, 127 F.3d 1048, 1054-55 (Fed.
Cir. 1997).
The open-ended terms “comprising” and “comprises” open the claims
to include any article containing any manner of additional components and
ingredients. See, e.g., Exxon Chem. Pats., Inc. v. Lubrizol Corp., 64 F.3d
1553, 1555 (Fed. Cir. 1995); In re Baxter, 656 F.2d 679, 686 (CCPA 1981).
Claims 1, 2, and 4: 35 U.S.C. § 103(a)
Findings of Fact
We find Mazurek would have disclosed to one of ordinary skill in this
art articles coated with a PSA, which can be repositioned “without causing
damage to the substrate and without leaving residue on the substrate” when
adhered to a variety of substrates. Mazurek, e.g., Abstract, col. 1, ll. 8-15,

of certain facts. Ans. 6 and 7. See In re Ahlert, 424 F.2d 1088, 1091-92
(CCPA 1970).
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col. 3, ll. 11-18, col. 5, l. 62 to col. 6, l. 12. The article can comprise a PSA
layer coated on a backing, which is a thin flexible sheet, or a liner which are
capable of being embossed or molded. Mazurek, e.g., col. 3, l. 11 to col. 5,
l. 20, col. 6, ll. 21-24, col. 10, l. 65 to col. 11, l. 16. The backings can
include, among other things, polypropylene and woven and nonwoven
fabrics formed of threads and fibers. The backings can be coated with the
PSA composition by, among other things, hot melt techniques, roll coating,
knife coating, and curtain coating by conventional coating devices.
Mazurek, col. 17, ll. 18-42. The liner can include, among other things,
plastics such as polypropylene, and paper or other substrates coated with
such plastics. Mazurek, col. 11, ll. 3-9.
Mazurek discloses the PSA can include thermoplastic block
copolymer adhesives including styrene-isoprene-styrene, styrene-butadiene-
styrene, and styrene-ethylene/butylenes-styrene block copolymers, as well as
acrylic polymeric PSAs modified with grafted high glass transition
temperature polymeric segments, such as described in United States Patent
4,554,324 to Husman,4 which is incorporated by reference. Mazurek, col.
14, l. 23 to col. 15, l. 11; see also col. 15, l. 12 to col. 16, l. 7. Mazurek
discloses a methacrylate-terminated polystyrene monomer used in the
preparation of a “hard” PSA as described in Husman, and a “soft” PSA.
Mazurek, col. 21, l. 11 to col. 22, l. 9. Mazurek illustrates a styrene-
isoprene-styrene block copolymer containing PSA. Mazurek col. 22,
ll. 11-22.

4 Husman is not of record in this Application.
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Mazurek discloses the PSA can also include radiation curable acrylic
PSA compositions. Mazurek, col. 16, ll. 8-27 and col. 16, l. 60 to col. 17,
l. 9. The PSA can comprise additives including, among other things, fillers,
fibrous reinforcing agents, woven and nonwoven fabrics, fire retardants, and
mixtures thereof. Mazurek, col. 17, ll. 10-17.
We find Ogushi would have disclosed to one of ordinary skill in this
art adhesive compositions comprising acrylic ester copolymers mixed with
industrial fillers which further include fire retardants such as the
commercially available halogen containing phosphate “CR-900.” Ogushi
1-6. Ogushi illustrates the adhesive compositions containing methacrylic
acid cyclohexyl-styrene copolymer, as a main ingredient, and carboxy
denatured styrene butadiene. Ogushi 4-5.
We find Horrocks would have disclosed to one of ordinary skill in this
art that the fire retardant “CR-900” is tris(tribromoneopentyl)phosphate.
Horrocks discloses the “main applications” of this fire retardant is “PP &
HIPS,” that is, polypropylene and high impact polystyrene, respectively.
We find DSBG would have disclosed to one of ordinary skill in this
art the brominated flame retardants “FR-370, FR-372” which are
tris(tribromoneopentyl) phosphate, and have the “applications” “HIPS, PS,”
“ABS,” that is, high impact polystyrene, polystyrene, acrylonitrile-
butadiene-styrene, respectively, and “textiles/fibers.” DSBG 3 and 5.
We find Suter would have disclosed to one of ordinary skill in this art,
as illustrated in the Figure, that fabric layer 12, made of, among other things,
polyester, nylon and propylene, can be impregnated, fully or partially, with a
rubber-adhesive, using conventional methods such as knife coating and
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dipping, which promotes adhesion of rubber layers 16 and 18 to fabric 12..
Suter, e.g., Abstract, col. 1, l. 58 to col. 3, l. 28.
A discussion of Parsons and Bonk is not necessary to our decision.
Opinion
We considered the totality of the record in light of Appellants’
arguments with respect to claims 1, 2, and 4 and the grounds of rejection
advanced on Appeal. See, e.g., In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir.
2006) (“‘On appeal to the Board, an applicant can overcome a rejection by
showing insufficient evidence of prima facie obviousness or by rebutting the
prima facie case with evidence of secondary indicia of nonobviousness.’”)
(quoting In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir. 1998)); In re Oetiker,
977 F.2d 1443, 1445 (Fed. Cir. 1992) (“After evidence or argument is
submitted by the applicant in response, patentability is determined on the
totality of the record, by a preponderance of evidence with due consideration
to persuasiveness of argument.”) (citing, inter alia, In re Spada, 911 F.2d
705, 707 n.3 (Fed. Cir. 1990)).
We are of the opinion Appellants have not established the evidence in
the combined teachings of Mazurek, Ogushi, and Horrocks along with the
evidence in Parsons and Suter (see above note 3) with respect to claims
1 and 4, and alternatively further combined with Bonk with respect to claim
2, does not support the Examiner’s conclusion of prima facie obviousness
with respect to the claimed fire retardant article encompassed by these
appealed claims.
Claim 1
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We cannot subscribe to Appellants’ position that the combined teachings
of Mazurek, Ogushi, and Horrocks would not have led one of ordinary skill in
this art to use the known fire retardant tris(tribromoneopentyl) phosphate in the
polystyrene containing acrylic polymer PSAs used by Mazurek in cleanly
removable, multilayered articles. App. Br. 6-8; Reply Br. 4-7; see above pp. 4-
5. Indeed, Ogushi, Horrocks, and DSBG5 all disclose that
tris(tribromoneopentyl) phosphate is a fire retardant useful with, among other
things, polystyrene containing materials, with Ogushi evincing use thereof in
adhesive compositions containing an acrylic acid ester-styrene copolymer and
other styrene containing ingredients. See above p. 6. Thus, one of ordinary
skill in this art would have been led to combine tris(tribromoneopentyl)
phosphate with Mazurek’s polystyrene containing acrylic polymer PSA
compositions with a reasonable expectation of successfully incorporating the
halogenated phosphate fire retardant therein. Indeed, we are of the view that
Ogushi, Horrocks, and DSBG would have suggested to this person to use
tris(tribromoneopentyl) phosphate in Mazurek’s styrene-isoprene-styrene,
styrene-butadiene-styrene, and styrene-ethylene/butylenes-styrene block
copolymer containing PSAs as well. See above p. 5. See, e.g., KSR Int'l Co. v.

5 We recognize that the Examiner does not rely on DSBG. However,
Appellants do. See, e.g., In re Hedges, 783 F.2d 1038, 1039-40 (Fed. Cir.
1986) (“In Hedges’ case, the Solicitor referred to new portions of the
references cited by Hedges during examination for further support of the
same rejection that had been upheld by the Board. Hedges had relied on
these references before the Board, as he does before us, for his argument that
viewed as a whole the body of the prior art teaches away from conducting
this reaction at high temperatures. The Solicitor should not be constrained
from pointing to other portions of these same references in contravention of
Hedges’ position.”).
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Teleflex Inc., 550 U.S. 398, 420-421 (2007) (a patent claiming a combination
of elements known in the prior art is obvious if the improvement is no more
than the predictable use of the prior art elements according to their established
functions); In re Sovish, 769 F.2d 738, 743 (Fed. Cir. 1985) (skill is presumed
on the part of 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. . . . Rather, the test is what the combined teachings of the
references would have suggested to those of ordinary skill in the art.”); see
also, e.g., Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1364 (Fed. Cir. 2007)
("the expectation of success need only be reasonable, not absolute"); In re
O’Farrell, 853 F.2d 894, 903-04 (Fed. Cir. 1988) (“For obviousness under
§ 103, all that is required is a reasonable expectation of success.” (citations
omitted)).
We are not persuaded otherwise by Appellants’ arguments that Ogushi
would have led away from the use of tris(tribromoneopentyl) phosphate in
Mazurek’s PSAs. Reply Br. 6-7. Indeed, Ogushi does not contain any
contrary teachings with respect to the use of this fire retardant in styrene
containing materials and, in this respect, accords with the teachings to do so
in Horrocks and DSBG. See, e.g., In re Fulton,
391 F.3d 1195, 1201 (Fed. Cir. 2004) (a prior art disclosure does not teach
away if the “disclosure does not criticize, discredit, or otherwise discourage
the solution claimed.”). Furthermore, the fact that Ogushi and Mazurek
disclose different adhesive materials does not, on this record, preclude the
combination of these references. See App. Br. 7-8. See, e.g., Keller,
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642 F.2d at 425.

Claim 4
We disagree with Appellants’ arguments that Mazurek would not
have described “a core comprising an adhesive” to one of ordinary skill in
this art. Reply Br. 8. We interpreted this language of claim 4 to specify a
core layer that comprises at least, that is, contains, any manner of core
containing any amount of PSA therein, and indeed, the open-ended term
“comprises” opens claim 4 to include a core having Mazurek’s backing
layer. See above p. 4. We agree with the Examiner that one of ordinary skill
in this art in applying a PSA layer to a woven or nonwoven fabric backing
core layer with a number of conventional coating devices as taught in
Mazurek, would have reasonably expected the PSA to impregnate into fibers
of the woven or nonwoven fabric backing core at least to some extent, even
without the evidence in Suter establishing the same. Ans. 7. See above p. 4-
5 and 6-7. See, e.g., Sovish, 769 F.2d at 743. This is all claim 4 requires.
Claim 2
We interpreted claim 2 as encompassing the same PSA impregnated
core as claim 4, and further determined that a fire retardant containing PSA
can be the adhesive layer and contained by the core layer. See above p. 4.
While these two claims encompass similar articles, claim 2 does not contain
the language “core comprising an adhesive” as Appellants argue. Reply Br,
9. We determine that the combination of Mazurek, Ogushi, Horrocks, and
DSBG would have led one skilled in this art to the claimed articles
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encompassed by claim 2 as we discussed above with respect to claims 1 and
4.
Conclusion
Accordingly, based on our consideration of the totality of the record
before us, we have weighed the evidence of obviousness found in the
combined teachings of Mazurek, Ogushi, and Horrocks along with the
evidence in Parsons and Suter (see above note 3) with respect to claims
1 and 4, and alternatively further combined with Bonk, as well as with
DSBG with Appellants’ countervailing evidence of and argument for
nonobviousness and conclude, by a preponderance of the evidence and
weight of argument, that the claimed invention encompassed by appealed
claims 1 through 9, and 11 would have been obvious as a matter of law
under 35 U.S.C. § 103(a).
Claims 1 through 3, and 8: judicially created doctrine of
obviousness-type double patenting
The Examiner has not withdrawn the ground of rejection of appealed
claims 1 through 3, and 8 under the judicially created doctrine of
obviousness-type double patenting over claims 1 through 3 of Narum. Ans.
3. The Examiner points out Appellants did not request review of this ground
of rejection. Ans. 3. In the Amendment filed September 15, 2005,
Appellants stated the intent to “consider the submission of a Terminal
Disclaimer” if this ground of rejection “is maintained throughout the
prosecution of this application.” Amend. 7. In the Office Action, the
Examiner maintained the ground of rejection “will not be withdrawn until
the submission of the terminal disclaimer.” Office Action 2.
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Accordingly, on this record, we summarily affirm the ground of
rejection of appealed claims 1 through 3 and 8 under the judicially created
doctrine of obviousness-type double patenting as being unpatentable over
claims 1 through 3 of Narum.
The Primary Examiner’s decision 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)(v).
AFFIRMED

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