Ex Parte Otero Martinez et al

Patent Trials and Appeals Board

Apr 18, 2019

13731275 - (D) (P.T.A.B. Apr. 18, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/731,275 12/31/2012 Iran Otero Martinez
22850 7590 04/22/2019
OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P.
1940 DUKE STREET
ALEXANDRIA, VA 22314
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
409031US99 8331
EXAMINER
COONEY, JOHN M
ART UNIT PAPER NUMBER
1765
NOTIFICATION DATE DELIVERY MODE
04/22/2019 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
patentdocket@oblon.com
OBLONPAT@OBLON.COM
iahmadi@oblon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte IRAN OTERO MARTINEZ,
JOSE MANUEL LOPEZ LOPEZ, and
FERRAN ANTICH MOROS
Appeal2017-009280
Application 13/731,275
Technology Center 1700
Before MARK NAGUMO, JEFFREY R. SNAY, and
JENNIFER R. GUPTA, Administrative Patent Judges.
GUPTA, Administrative Patent Judge.
Appeal2017-009280
Application 13/731,275
DECISION ON APPEAL 1
Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner's
final decision rejecting claims 1, 3-7, 9, 10, and 13-19. 3 A hearing was held
on April 2, 2019. 4 We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
The subject matter on appeal relates to flame-retardant polyurethane
foams. Spec. 1, 1. 1. Claim 1, reproduced below from pages 1-2 of the
Reply Brief, is illustrative of the claims on appeal.
1. A process for producing a flame-retardant
polyurethane foam of density from 5 to 50 g/L, the process
compnsmg:
m1xmg
a) an organic polyisocyanate comprising at least one
diphenylmethane diisocyanate with
b) at least one polymeric compound comprising a
polyetherol,
c) optionally a chain extender and/or a crosslinking
agent,
d) a flame retardant,
1 In this Decision, we refer to the Specification filed December 31, 2012
("Spec."), the Final Office Action dated August 26, 2016 ("Final Act."), the
Appeal Brief filed January 13, 2017 ("Appeal Br."), the Examiner's Answer
dated May 3, 2017 ("Ans."), and the Reply Brief filed June 22, 2017 ("Reply
Br.").
2 Appellant is the Applicant, BASF SE, which, according to the Appeal
Brief, is the real party in interest. Appeal Br. 1.
3 Claims 11 and 12 are withdrawn from consideration by the Examiner as
directed to a non-elected invention. Non-Final Office Action dated April 15,
2015, 2.
4 The record will include a transcript of the oral hearing when it becomes
available.
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Application 13/731,275
e) a blowing agent,
f) at least one catalyst, and optionally
g) at least one additive, thereby producing a reaction
mixture and permitting said reaction mixture to
react completely,
where the flame retardant ( d) comprises 20 wt. % or less
of an expandable graphite and an oligomeric organophosphorus
flame retardant comprising at least 3 phosphorus ester units and
at least 5% by weight of phosphorus, based on the total weight
of the oligomeric organophosphorus flame retardant.
Reply Br. 1-2.
DISCUSSION
We review the appealed rejection for error based upon the issues
identified by the Appellant and in light of the arguments and evidence
produced thereon. Ex parte Frye, 94 USPQ2d 1072, 107 5 (BP AI 2010)
(precedential), cited with approval in In re Jung, 637 E3d 1356, 1365 (Fed.
Cir. 2011) ("[I]t has long been the Board's practice to require an applicant to
identify the alleged error in the examiner's rejections."). After considering
the evidence presented in this Appeal and each of Appellant's arguments, we
are not persuaded that Appellant identifies reversible error. Thus, we affirm
the Examiner's rejection for the reasons expressed in the Final Office Action
and below.
The Examiner maintains the rejection of claims 1, 3-7, 9, 10, and 13-
19 under pre-AIA 35 U.S.C. § I03(a) over Lutter et al. (US 5,739,173,
issued April 14, 1998) ("Lutter") and Williams et al. (WO 02/079315 Al,
published October 10, 2002) ("Williams"). Ans. 2; Final Act. 2.
The Examiner finds that Lutter discloses a process for preparing a
polyurethane foam that involves reacting claim 1 's mixture of
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Application 13/731,275
components (a) to (g), including a mixture of flameproofing agents ( flame
retardant ( d)) that contain expandable graphite and an additional
flameproofing agent, but fails to disclose the additional flameproofing agent
can be an oligomeric organophosphorus flame retardant as recited in
claim 1. Final Act. 2-3 (citing Lutter, Abstract, 1:54--10:38, 7:15-38). The
Examiner also finds, and Appellant does not dispute that, Lutter teaches that
its foams have a density, and include expandable graphite in amounts that
overlap with claim 1 's recited ranges. Compare Final Act. 2 ( citing
Lutter 7: 15-3 8 ("surprisingly synergistic effect due to the addition of
relatively small amounts of expandable graphite meaning that the flame
resistance effected by the melamine can be significantly improved"), 10:56-
58 ("The soft PU foam and moldings prepared by the process according to
the invention have a density of from 30 to 150 g/1. preferably from 40 to
100 g/1 .... In particular, flame-resistant aircraft seats having densities of
from 30 to 100 g/1 are produced."), with Appeal Br. 3-7.
The Examiner finds that Williams discloses a flame retardant blend
suitable for use in a polyurethane foam. Final Act. 3 ( citing Williams,
Abstract). The Examiner finds that Williams teaches that its flame retardant
blend includes an oligomeric organophosphorus flame retardant, preferably
having a phosphorus content of no less than about 5%, by weight, and at
least three phosphate ester units. Final Act. 3 ( citing Williams, Abstract, 2,
11. 8-12). Based on Williams' teachings, the Examiner finds that it would
have been obvious for one of ordinary skill in the art to use Williams'
oligomeric organophosphorus flame retardant as the additional fire retardant
in Lutter' s polyurethane foam for providing fire retardant effects with a
reasonable expectation of success. Final Act. 3; see also KSR Int 'l Co. v.
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Teleflex Inc., 550 U.S. 398,417 (2007) (In assessing the obviousness of
claims to a combination of prior art elements, the question to be asked is
"whether the improvement is more than the predictable use of prior art
elements according to their established functions.").
Appellant presents separate patentability arguments for claims 1 and
19. See Appeal Br. 3-6. We select claim 1 as representative of rejected
claims 3-7, 9, 10, and 13-18, and will address the separate arguments
presented for claim 19 below. 37 C.F.R. § 41.37 (c)(l)(iv).
Claim 1
We begin our analysis with claim construction. During patent
examination, the pending claims must be given their "'broadest reasonable
construction consistent with the specification."' In re Suitco Surface, Inc.,
603 F.3d 1255, 1259 (Fed. Cir. 2010) (citation omitted).
The Examiner determines that because claim 1 's recitation "20 wt. %
or less of an expandable graphite" encompasses O wt. %, "[t]he claims do
not require that flame retardant (d) comprises an expandable graphite."
Ans. 10.
As Appellant argues, it is clear from Appellant's Specification that its
flame retardant ( d) comprises an expandable graphite. Spec. 1, 11. 3-9, 17,
11. 3-15 ( original claim 1). Thus, we do not adopt the Examiner's claim
interpretation discounting claim 1 's "expandable graphite" recitation.
Appellant's application is titled, "Flame-retardant polyuurthane foams," and
Appellant's Specification discloses that "flame retardant ( d) comprises
expandable graphite and [an] oligomeric organophosphorus flame
retardant." Spec. 1, 11. 1, 8-9. Thus, when given its broadest reasonable
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interpretation in view of the Specification, we interpret claim 1 as including
an expandable graphite (i.e., in a detectable amount).
Notwithstanding the Examiner's claim interpretation in the Answer,
the Examiner expressly finds that Lutter discloses a polyurethane foam
including an expandable graphite in amounts that overlap with claim 1 's
range of expandable graphite. Final Act. 2 (finding "[Lutter's] polymer
foam incorporates particles of graphite in amounts [that] overlap with the
requirements of applicants' claims"). Thus, although we disagree with the
Examiner's claim interpretation, we sustain the Examiner's conclusion that
claim 1 is obvious over Lutter and Williams for the reasons expressed in the
Final Office Action.
On this record, Appellant does not dispute or identify reversible error
in the Examiner's prima facie case of obvious over Lutter5 and Williams.
Appeal Br. 3-7; Reply Br. 1-5. 6 Rather, Appellant argues that the Examiner
5 Because claim 1 uses the open-ended transitional phrase "comprising" and
also recites that "the flame retardant ( d) comprises," it does not exclude
additional flame retardants from its foam, such as melamine, as taught by
Lutter. Lutter, Abstract, 1:16-19.
6 Appellant argues for the first time in the Reply Brief that the Examiner's
conclusion that it would have been obvious to formulate a flame retardant
polyurethane foam by mixing an expandable graphite and an oligomeric
organophosphorus flame retardant, based on directions in In re Kerkhoven,
626 F .2d 846, 850 (CCP A 1980), is erroneous. Reply Br. 5-6. This
argument was not first raised in the Appeal Brief and is not responsive to
statements made by the Examiner for the first time in the Answer. Because
Appellant fails to show good cause why such arguments could not have been
raised in the Appeal Brief, we decline to consider them. See 37 C.F.R.
§ 41.37 (c)(l)(iv) ("Except as provided for in§§ 41.41, 41.47 and 41.52, any
arguments or authorities not included in the appeal brief will be refused
consideration by the Board for purposes of the present appeal."); see also Ex
parte Borden, 93 USPQ2d 1473, 1477 (BPAI 2010) (Informative)
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reversibly erred in ignoring the evidence of record demonstrating that
claim 1 's process produces a flame-retardant polyurethane foam having
enhanced flame retardancy and good mechanical properties. Appeal Br. 3-
5.
Appellant's argument is not persuasive of reversible error. Contrary
to Appellant's argument, the Examiner considers the evidence, including the
Declaration under 37 C.F.R. § 1.132 executed August 12, 2015, by
Dr. Martinez, but finds the polyurethane foams tested are not commensurate
in scope with claim 1. Ans. 7.
In the Declaration, Dr. Martinez opines that "[t]here is no special
mechanism for flame retardancy for low density foams having a density of 5
to 50 g/liter. Therefore the composition of the polyurethane does not
typically affect flame retardancy of such polyurethane foams." Deel. 4.
Such conclusory statements of belief that lack objective evidentiary support
in the record are of little value. In re Beattie, 974 F.2d 1309, 1313 (Fed. Cir.
1992) ( explaining that opinion evidence in declarations has little value
without factual support). Further, neither Appellant's Specification nor
Dr. Martinez's Declaration establishes that the results would have been
"unexpected." Deel. 1--4; Spec. 14--16. On the record before us, only the
attorney who authored the Reply Brief states that the evidence is
unexpected. See, e.g., Reply Br. 8-9. Attorney argument, unsupported by
cited evidence of record, however, is inadequate to establish unexpected
results. In re Geisler, 116 F.3d 1465, 1470-71 (Fed. Cir. 1997) (reiterating
( explaining that under the previous rules, which are similar to the current
rules, "the reply brief [is not] an opportunity to make arguments that could
have been made in the principal brief on appeal to rebut the Examiner's
rejections, but were not.").
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that unexpected results must be established by factual evidence and that an
attorney's statement is insufficient to establish unexpected results).
Moreover, as the Examiner explains, the results provided in
Dr. Martinez's Declaration are based a polyurethane foam that includes only
one polyetherol mixture ( claim 1 's component (b) ), and two different
oligomeric organophosphorus flame retardants, Fyrol PNX (IE 1, IE2) and
Fyrolflex RDP (IE3) ( claim 1 's component ( d)), in an amounts of 5% by
weight (IE 1) and 10% by weight (IE2, IE3). Claim 1, however, is broader in
scope. For example, claim 1 's foam is unlimited in the amount or particular
oligomeric organophosphorus flame retardant, and also unlimited in the
particular polyetherol it may contain. Thus, we are not persuaded of
reversible error in the Examiner's finding that "[t]his limited demonstration
of results is insufficient in showing results that are ... reflective of the scope
of foam formulations ... encompassed by the claims." Ans. 7;
see In re Lindner, 457 F .2d 506, 508 (CCP A 1972) ( explaining that
"commensurate in scope" means that the evidence provides a reasonable
basis for concluding that the untested embodiments encompassed by the
claims would behave in the same manner as the tested embodiment(s)).
Accordingly, upon considering the underlying factual basis for the
Examiner's obviousness determination, as well as Appellant's objective
evidence of non-obviousness, we determine that the arguments and evidence
of record, on balance, weigh in favor of obviousness. Therefore, we sustain
the Examiner's§ 103(a) rejection of claims 1, 3-7, 9, 10, and 13-18 over
Lutter and Williams.
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Claim 19
Claim 19 depends from claim 1 and recites
said polyetherol comprises:
37.4 pbw of a polyetherol having an OH number of
28 mgKOH/g and a functionality of 2.7, based on ethylene
oxide and propylene oxide, having 84% propylene oxide
content and 14% ethylene oxide content;
35 pbw of a polyetherol with an OH number
535 mgKOH/g and a functionality of 3, based on ethylene
oxide; and
23 pbw of a polyetherol with an OH number
42 mgKOH/g, a functionality of 2.7 based on ethylene oxide
each based on 100 pbw of said polyetherol.
Appeal Br. 11 (Claims App.).
As discussed above, we interpret claim 1 as including an expandable
graphite (i.e., in a detectable amount). As with claim 1, based on this
interpretation, and in contrast to the Examiner, we find the polyurethane
foams tested are not commensurate in scope with claim 19. Although
claim 19 recites the specific polyetherol used in the polyurethane foams
tested in Dr. Martinez's Declaration, the results provided are based a
polyurethane foam that includes two different oligomeric organophosphorus
flame retardants. Claim 19, which depends from claim 1, however, is much
broader in scope than the evidence presented in Dr. Martinez's Declaration
and in the Specification. For example, claim 1 's foam is unlimited in the
amount or particular oligomeric organophosphorus flame retardant relative
to the other components (including the expandable graphite). Thus, we are
not persuaded of reversible error in the Examiner's finding that "[t]his
limited demonstration of results is insufficient in showing results that are ...
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reflective of the scope of foam formulations ... encompassed by the
claims." Ans. 7; see Lindner, 457 F.2d at 508.
Although the Examiner finds that "the showings of record would be
sufficient in overcoming a rejection of claim 19 if claim 1 were amended to
require [an] expandable graphite," (Final Act. 8), this finding was based on
an improper interpretation of the claims. Thus, we determine that the
Examiner's analysis of the deficiencies of Dr. Martinez's Declaration
relative to claim 1 discussed above also apply to claim 19.
Moreover, as discussed above, the unsupported, conclusory statements
in Dr. Martinez's Declaration (4, 11. 1-3) are entitled to little weight, and the
attorney argument, for example at pages 8-9 of the Reply Brief, is
inadequate to establish unexpected results. Beattie, 974 F.2d at 1313;
Geisler, 116 F.3d at 1470-71.
Accordingly, upon considering the underlying factual basis for the
Examiner's obviousness determination, as well as Appellant's objective
evidence of non-obviousness, we determine that the arguments and evidence
of record, on balance, weigh in favor of obviousness. Therefore, we sustain
the Examiner's§ 103(a) rejection of claims 19 over Lutter and Williams.
Claims 7 and 14
Appellant argues in the Reply Brief that the patentability of claims 7
and 14 should be considered separately. Reply Br. 10. This argument was
not first raised in the Appeal Brief and is not responsive to statements made
by the Examiner for the first time in the Answer. Because Appellant fails to
show good cause why such arguments could not have been raised in the
Appeal Brief, we decline to consider them. See 37 C.F.R. § 41.37 (c)(l)(iv);
see also Borden, 93 USPQ2d at 1477.
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DECISION
The rejection of claims 1, 3-7, 9, 10, and 13-19 under pre-AIA
35 U.S.C. § 103(a) over Lutter and Williams 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).
AFFIRMED
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