Ex Parte Ohnstad et al

Board of Patent Appeals and Interferences

Sep 19, 2011

11411688 (B.P.A.I. Sep. 19, 2011)

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.
11/411,688 04/25/2006 Thomas S. Ohnstad J-HITT.1003 6339
56703 7590 09/19/2011
JON M. DICKINSON, P.C.
8015 S.E. 31st Ave
PORTLAND, OR 97202
EXAMINER
FISCHER, JUSTIN R
ART UNIT PAPER NUMBER
1747
MAIL DATE DELIVERY MODE
09/19/2011 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 THOMAS S. OHNSTAD,
RUSSELL A. MONK, and MICHAEL R. DENNIS
____________

Appeal 2010-005773
Application 11/411,688
Technology Center 1700
____________

Before JEFFREY T. SMITH, BEVERLY A. FRANKLIN, and
KAREN M. HASTINGS, Administrative Patent Judges.

FRANKLIN, Administrative Patent Judge.

DECISION ON APPEAL

Appellants appeal under 35 U.S.C. § 134 from the Examiner's
rejection of claims 1, 3, 6, 8, 11, and 15-18. We have jurisdiction under
35 U.S.C. § 6.

STATEMENT OF THE CASE
Claims 1, 3, 6, 8, and 11 are representative of the subject matter on
appeal and are set forth below:
1. A high-stretch, two-component-only self-protecting, fire-inhibiting
structure consisting of
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a wall structure formed of a high-elastomeric material having an
elastic elongation capability up to at least about 200%, and an outwardly
exposed surface which is at risk for exposure to the heat of fire, and

distributed within and throughout said wall structure, a population of
sodium silicate crystals.

3. The fire-inhibiting structure of claim 1 which is at least part of a
dynamic-motion target structure.

6. The fire-inhibiting structure of claim 3 which is a dynamic-motion
structure, and said target structure is also a dynamic-motion structure.

8. A fire-inhibiting, high-stretch, growth-capable protective coating
for target structure, said coating having an elastic elongation capability up to
at least about 200%, and consisting of two-only cooperative ingredients
which are

a body of fire-resistant, high elastomeric having the mentioned elastic
elongation capability, and

entrained in said material, a population of sodium silicate crystals.

11. The coating of claim 8, wherein the target structure takes the form
of one of (a) the sidewall of a vehicle tire, (b) the undersurface of a vehicle,
and (c) the outer surface of a helmet shell.

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Langer 4,273,879 Jun. 16, 1981
Ward GB 2 357 111 Jun. 13, 2001

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THE REJECTIONS
1. Claims 1, 3, 6, 8, 11, and 15-18 are rejected under 35 U.S.C. §112,
first paragraph, as failing to comply with the written description
requirement.
2. Claims 1, 3, 6, 8, 11, and 15-18 are rejected under 35 U.S.C. §112,
second paragraph, as being indefinite.
3. Claims 1, 3, 6, 8, 11, and 15-18 are rejected under 35 U.S.C. §102(b)
as being anticipated by Ward.
4. Claims 1, 3, 6, 8, 11, and 17 are rejected under 35 U.S.C. §102(b) as
anticipated by or, in the alternative, under 35 U.S.C. §103(a) as obvious over
Langer.
ANALYSIS
(with Findings of Fact and Principles of Law)

We essentially adopt the Examiner’s findings pertinent to the issue(s)
raised by Appellants for each rejection. We, therefore, incorporate the
Examiner’s position as set forth in the Answer. We add the following for
emphasis only.

Rejection 1
Each of independent claims 1, 8, and 17 recites a wall structure
formed of a high elastomeric material “having an elastic elongation
capability up to at least about 200%." It is the Examiner’s position that there
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is no written descriptive support for this subject matter in Appellants’
original Speciation. Ans. 3.
Page 3, lines 1-5 of the Specification discloses:
This coating features, preferably, a high-stretch (up to about 300-400
%) elastomeric body of inherently fire-resistant material in which
there is embedded a population of intumescent sodium silicate
crystals, preferably resident in this coating in a population which
occupies about 30-50% by volume of the body of the thus combined
overall material.
Page 8, beginning at line 4 through page 9, line 2 of the Specification
discloses:

Elements, or crystals, 32b, when taking the form of the mentioned
sodium silicate crystals, respond to fire heat which reaches a
temperature of about 500-degrees F, with a rapid, popping, volumetric
expansion which causes coating 32 effectively to function as a heat-
responsive "growth" structure. Coating 32 is thus referred to herein as
having a heat-responsive growth nature. When the outer surface 32c
in coating 32 is exposed to a threatening fire which reaches or exceeds
this "expansion, or popping, temperature", and as what can be thought
of as a front of this popping temperature moves inwardly through
layer 32 from its outside toward a tire sidewall, such as sidewall 24a,
at least two important, mechanical mechanisms function to protect fire
24 against combustion.

The first of these mechanisms involves the outwardly thrusting
popping and expanding characteristic of the embedded sodium
crystals.

The second of these mechanisms involves the progressively
inwardly advancing popping/expansion of intumescence elements, as
can clearly be seen in the schematic illustration provided toward the
right side of Fig. 3 in the drawings, with this expansion causing the
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overall lateral dimension, or thickness, of layer 32 to increase. In
making a comparison of what is shown in Fig. 3 with respect to what
is shown in Fig. 2, such a thickness growth, or expansion, can there be
seen illustrated. As coating thickness growth takes place, this
phenomenon retards progressively the time to dangerous temperature
rise occurring at tire sidewall 24a. Experience has shown that overall
thickness growth of a coating like coating 32 in response to the heat of
fire is typically up to about 200%.
In view of the above excerpts from Appellants’ Specification, it is
evident that the high-stretch of up to about 300-400% is a property of the
elastomeric body of an inherently fire-resistant material, whereas the coating
thickness growth is a property of the combination of 1) the popping/
expansion of intumescence elements within 2) the elastomeric body. Hence,
the properties are not the same.
Therefore, we are in agreement with the Examiner that there is no
written descriptive support for the claim limitation of a high elastomeric
material “having an elastic elongation capability up to at least about 200%",
because, with regard to the properties of the elastomeric body, the
Specification only discloses “a high-stretch (up to about 300-400 %)
elastomeric body of inherently fire-resistant material.” This does not
support at value of “up to at least about 200%.” (claim 1).
Furthermore, in response to the Examiner’s position, Appellants argue
that “[a]pplicants’ teaching and the general characteristics of the material is
in no way limiting or instructive to the CLAIMED properties of the coating
structure.” Br. 5. Hence, it appears that Appellants are arguing that the
description referred to by the Examiner (as identified above) is not limiting
regarding what is being claimed. This is incorrect. The written description
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inquiry is one of fact. Ariad Pharms., Inc. v. Eli Lilly and Co., 598 F.3d
1336, 1351 (Fed. Cir. 2010) (en banc). “The purpose of the written
description requirement,” the court has explained, “is to prevent an applicant
from later asserting that he invented that which he did not; the applicant for
a patent is therefore required to recount his invention in such detail that his
future claims can be determined to be encompassed within his original
creation.” Amgen Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313,
1330 (Fed. Cir. 2003) (internal quote and citations omitted). In the instant
case, as discussed above, the claimed phrase of “having an elastic elongation
capability up to at least about 200%" is not encompassed by the original
Specification.
Finally, we do agree with the Examiner’s statement that the original
disclosure describes the thickness growth as being “up to 200%”, which is
different from the claimed value of "up to at least about 200%." Ans. 3.
Spec. p. 9.
In view of the above, we affirm Rejection 1.
Rejection 2
We agree with the Examiner that the claims refer to elastic elongation
in terms of a growth thickness value rather than in terms of an elongation
value (Ans. 4), which is confusing since these two properties are not the
same, as explained in our analysis in the previous rejection, supra. As such,
we agree with the Examiner’s conclusion that the claims are indefinite, and
affirm Rejection 2.
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Rejection 3
Appellants have not presented separate arguments for all of the
rejected claims in Rejection 3. Any claim not separately argued will stand
or fall with its respective independent claim. See 37 C.F.R.
§ 41.37(c)(1)(vii). Hence, we consider the claims discussed below based
upon Appellants’ arguments.
Claims 1, 8, and 17
It is Appellants’ position that claim 1 limits the structure to 2
components, and the wall structure (elastomeric body) component consists
of only 1 component. Br. 6, 7, 8, and 9. Appellants argue that Ward
discloses 3 materials rather than 2 materials as claimed, and therefore does
not anticipate claims 1 and 8. Id.
However, we agree with the Examiner that even if we interpret the
claims as proposed by Appellants, Ward anticipates a structure having 2
components wherein the wall structure (elastomeric body) has 1 component,
as explained by the Examiner on page 9 of the Answer. That is, we agree
that the polyol resin and isocyanate react to form the polyurethane (the wall
structure/elastomeric body), which is one of the components, and that the
other component is the sodium silicate crystals. Ward, p.2., sixth full
paragraph. We also agree with the Examiner that if we interpret the claim as
limited to 2 components (as discussed by the Examiner in the first paragraph
on page 5 of the Answer), Ward also anticipates the claims for the reasons
explained by the Examiner in the Answer.
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Appellants also argue that the word “rigid” in Ward to describe the
finished product suggests that the final product is not a high elastomeric
structure. Br. 7. However, as explained by the Examiner on pages 9-10 of
the Answer, page 7 of Appellants’ Specification discloses that a preferred
elastomeric material is polyurethane (TUFF STUFF®FR). The Examiner
states that polyurethane is the same material disclosed in Ward, which
Appellants do not dispute; hence, the elongation value would inherently be
met by Ward. This evidence shifts the burden to Appellants to prove
otherwise. When a claimed product appears to be substantially identical to a
product disclosed by the prior art, the burden is on the Applicants to prove
that the product of the prior art does not necessarily or inherently possess
characteristics or properties attributed to the claimed product. In re Spada,
911 F.2d 705, 708 (Fed. Cir. 1990); In re Best, 562 F.2d 1252, 1255 (CCPA
1977). In the instant case, Appellants have not offered such proof. Hence,
we are not convinced of error.
Claims 3, 6, and 11
For each of these claims, Appellants argue that the Examiner ignores
the aspects of these claims pertaining to the dynamic-motion structure or
target structure. Br. 7-8.
It is the Examiner’s position that these aspects of the claims are
intended use and do not further limit the structure of the claimed fire-
inhibiting structure. Ans. 5, 11, and 12. We agree. “[M]ere statement of a
new use for an otherwise old or obvious composition cannot render a claim
to the composition patentable.” In re Zierden, 411 F.2d 1325, 1328 (CCPA
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1969). This is because a claim to a composition is directed to the
composition itself and must be distinguished from the prior art on the basis
of the structure and chemical components of the composition. In other
words, whether the fire-inhibiting structure or composition of the references
is used on a door or in, for instance, on a tire of a vehicle, the fire-inhibiting
structure or composition remains the same.
In view of the above, we affirm Rejection 3.
Rejection 4
Claims 1, 8, and 17
Appellants argue that their claim 1 limits the structure to 2
components and the wall structure (elastomeric body) component consists of
only 1 component, whereas Langer discloses a wall structure having at least
4 elements. Br. 9-10.
However, we are in agreement with the Examiner’s position as set
forth on pages 6-7 and 10-11 of the Answer. Therein, the Examiner
correctly interprets the teachings of Langer. That is, language of “up to”
includes a value of zero, and therefore Langer does not require 4 elements as
asserted by Appellants, but 2 elements, which meets the requirements of the
claims as interpreted by Appellants. Langer, col. 2, ll. 10-24.
With regard to the claimed elastic elongation value, we also agree
with the Examiner that Langer’s teaching of a thickness growth of up 10
times the original volume (Langer, Abstract) suggests the claimed value of
“up to at least about 200%.”
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Claims 3, 6, and 11
We refer to our previous analysis regarding claims 3, 6, and 11 made
in our discussion for Rejection 3, as the analysis therein is equally applicable
here. .” Zierden, 411 F.2d at1328.
In view of the above, we affirm Rejection 4.
CONCLUSIONS OF LAW AND DECISION
Each rejection is affirmed.
TIME PERIOD FOR RESPONSE
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

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