10476175 (P.T.A.B. Feb. 25, 2013)

Ex Parte Parrish

Patent Trial and Appeal BoardFeb 25, 2013

10476175 (P.T.A.B. Feb. 25, 2013)

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. 10/476,175 11/04/2003 Clyde F Parrish KSC-12236-2 1924 7590 02/25/2013 Randall M Heald Office of Chief Counsel NASA Mail Code CC-A John F Kennedy Space Center Kennedy Space Center, FL 32899 EXAMINER NGUYEN, DINH Q ART UNIT PAPER NUMBER 3752 MAIL DATE DELIVERY MODE 02/25/2013 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 PATENT TRIAL AND APPEAL BOARD ____________ Ex parte CLYDE F. PARRISH ____________ Appeal 2010-007132 Application 10/476,175 Technology Center 3700 ____________ Before CHARLES N. GREENHUT, ANNETTE R. REIMERS, and BART A. GERSTENBLITH, Administrative Patent Judges. GERSTENBLITH, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-007132 Application 10/476,175 2 STATEMENT OF THE CASE Clyde F. Parrish (“Appellant”) appeals under 35 U.S.C. § 134 from the Examiner’s decision rejecting claims 23-48. We have jurisdiction under 35 U.S.C. § 6(b). The Claimed Subject Matter Claims 23, 33, and 40 are representative of the claimed subject matter and are reproduced below. 23. A flame suppression agent, comprising: aqueous droplets encapsulated in a flame retardant polymer, whereby said flame suppression agent is capable of suppressing flames; and wherein said flame suppression agent is non-toxic. 33. A method of suppressing a flame, comprising: applying polymer-encapsulated aqueous droplets to the flame to suppress the flame, wherein said polymer-encapsulated aqueous droplets comprise aqueous droplets encapsulated in a flame retardant polymer; and wherein said flame suppression agent is non-toxic. 40. A fire suppression system, comprising: a container containing encapsulated aqueous droplets, wherein said encapsulated aqueous droplets comprise aqueous droplets encapsulated in a flame retardant polymer; and wherein said flame suppression agent is non-toxic; and a dispenser for dispensing the encapsulated aqueous droplets from the container upon demand to suppress flames. Appeal 2010-007132 Application 10/476,175 3 References The Examiner relies upon the following prior art references: Vincent US 3,968,060 July 6, 1976 Carlon US 5,052,618 Oct. 1, 1991 Tapscott US 5,056,602 Oct. 15, 1991 Zubkova US 6,863,846 B1 Mar. 8, 2005 Gross Def. Pub. T861043 Apr. 22, 1969 Rejections The Examiner makes the following rejections: I. Claims 23-48 are rejected under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement; II. Claims 23, 25, 28, 29, 33, 34, 36, and 37 are rejected under 35 U.S.C. § 103(a) as unpatentable over Gross and Zubkova; III. Claims 40, 41, and 43-46 are rejected under 35 U.S.C. § 103(a) as unpatentable over Gross, Zubkova, and Tapscott; IV. Claims 24, 30-32, 38, 39, 47, and 48 are rejected under 35 U.S.C. § 103(a) as unpatentable over Gross, Zubkova, Tapscott, and Vincent; and V. Claims 26, 27, 35, and 42 are rejected under 35 U.S.C. § 103(a) as unpatentable over Gross, Zubkova, and Carlon. SUMMARY OF DECISION We REVERSE. Appeal 2010-007132 Application 10/476,175 4 OPINION Rejection I – Written Description The Examiner rejected claims 23-48 as failing to comply with the written description requirement because the Specification “does not provide support for the newly added limitation ‘wherein said flame suppression agent is non-toxic.’”1 Ans. 3. In particular, the Examiner found that the Specification “does not disclose the polymer that being used [sic] as the encapsulated flame retardant is non-toxic.”2 Id. Appellant asserts that support for the added claim language resides in U.S. Provisional Patent Application No. 60/293,918, titled “Non-Toxic Environmentally Safe Halon Replacement,” which is commonly assigned and incorporated by reference in the Specification. App. Br. 11. Appellant 1 We note that the language “wherein said flame suppression agent is non- toxic” in claims 33-48 lacks an antecedent basis since “flame suppression agent” is not previously recited in those claims. One of ordinary skill in the art, however, would likely understand “flame suppression agent” to refer to the claimed “polymer-encapsulated aqueous droplets” that are applied to the flame to suppress the flame (in claims 33-39) and the “encapsulated aqueous droplets” (in claims 40-48). While we do not make a new ground of rejection, because our determination in this appeal does not depend upon this specific issue, we do encourage Appellant to amend the claims if a different meaning was intended. 2 The Examiner also asserted, in response to Appellant’s argument, that the Specification does not provide information relating to the particular chemicals that make up the polymers considered non-toxic in flame suppression, and thus one of ordinary skill in the art would not be able to identify the particular polymers that are considered non-toxic. Ans. 7. As noted above, however, the claims do not explicitly require a non-toxic polymer. Appeal 2010-007132 Application 10/476,175 5 further contends that one of ordinary skill in the art would understand that “fire extinguishing agents and flame suppression agents that are nontoxic would inherently include components that are likewise nontoxic. Consequently, logic would dictate that all the components, and thus the flame retardant polymer, must necessarily be nontoxic.” Id. at 12. The claim language recites “wherein said flame suppression agent is non-toxic.” Claim 23 requires that the flame suppression agent comprises “aqueous droplets encapsulated in a flame retardant polymer . . . , wherein said flame suppression agent is non-toxic.” (emphasis added). The added claim language does not explicitly require that the flame retardant polymer is non-toxic; rather, it requires a non-toxic flame suppression agent. Accordingly, we do not sustain Rejection I because the claims do not explicitly recite a non-toxic flame retardant polymer. Rejection II – Gross and Zubkova The Examiner determined that the subject matter of claims 23, 25, 28, 29, 33, 34, 36, and 37 would have been obvious to one of ordinary skill in the art in light of the combined teachings of Gross and Zubkova. Ans. 4. The Examiner relied upon Gross as disclosing most of the limitations of the claims “except for a non-toxic encapsulating polymer.” Id. The Examiner, however, found that Zubkova discloses “a flame retardant polymer that is non-toxic . . . consist of halogenated polymer [sic].3 Id. The Examiner thus 3 The Examiner also found that “the apparatus shown by Gross in view of Zubkova . . . are capable [sic] of performing the method or steps” of claims 33, 34, and 36. Ans. 4. Appeal 2010-007132 Application 10/476,175 6 determined that it would have been obvious to one of ordinary skill in the art to provide “the device of Gross with a non-toxic encapsulating polymer as suggested by Zubkova . . . . Doing so would provide a non-toxic fire suppression agent.” Id. Appellant contends, inter alia, that “neither the Gross nor the Zubkova reference disclose the use of a flame retardant polymer as the shell for a microcapsule.” Reply Br. 7. Thus, while Appellant “concede[s] that flame retardant polymers are not new materials, . . . none of the references provided by the Examiner teach or suggest that flame retardant polymers are used as the encapsulating polymer as claimed in the present invention.” Id. Rather, “[b]oth Zubkova and Gross disclose the flame retardant material as the core ingredient in the microcapsule.” Id. The Examiner relied upon Zubkova for the disclosure of a flame retardant polymer. See Ans. 8 (“The Examiner relying [sic] on the Zubkova et al. for teaching of the flame retardant polymers . . . .”); id. at 9 (“The Zubkova et al.’s polymer is also being utilized as fire retardant polymer shell [sic] for the encapsulation process . . . .”). Specifically, the Examiner pointed to column 6, lines 22-30, of Zubkova as disclosing a flame retardant polymer. Id. Zubkova, however, is primarily directed to “creating combustion retardants for polymer materials and more efficient means of producing low-combustibility polymer compositions.” Zubkova, col. 5, ll. 23-28. The specific portion of Zubkova relied upon by the Examiner states: For the processes described above, and others, for the production of low fire risk polymer materials, when the combustion retardant developed by the authors is introduced Appeal 2010-007132 Application 10/476,175 7 into the polymer in the course of its processing, it is advisable first to microencapsulate the combustion retardant in a polymer shell, capsule size being from, 5 to 25 µm. To produce the microcapsule shell, one may use polyethylene or polyorganosiloxanes, in particular polyvinyl[-] methyldiethoxysiloxane or polyaminopropylethoxysiloxane. To produce low fire risk polymer materials such as polyester and epoxy resins, the new combustion retardant must be introduced into the polymer composition before it sets. Zubkova, col. 6, ll. 19-30 (emphasis added). As reflected in the quoted portion above, Zubkova teaches that “it is advisable” to “first . . . microencapsulate the combustion retardant in a polymer shell” prior to introducing the combustion retardant into the polymer for which fireproofing properties are sought to be enhanced. See id. While Zubkova discloses a combustion retardant and microencapsulating the combustion retardant in a polymer shell, the Examiner has not established from this disclosure that the polymer into which the combustion retardant is inserted and microencapsulated is itself a flame retardant polymer. Thus, the Examiner’s factual finding regarding Zubkova’s disclosure is not supported by a preponderance of the evidence. See In re Caveney, 761 F.2d 671, 674 (Fed. Cir. 1985) (“preponderance of the evidence is the standard that must be met by the PTO in making rejections”); see also In re Oetiker, 977 F.2d 1443, 1449 (Fed. Cir. 1992) (Plager, J., concurring) (“In rejecting an application, factual determinations by the PTO must be based on a preponderance of the evidence, and legal conclusions must be correct.”) (citation omitted). Accordingly, we do not sustain Rejection II. Appeal 2010-007132 Application 10/476,175 8 Rejections III, IV, and V Rejections III, IV, and V each rely upon the Examiner’s finding that Zubkova discloses a flame retardant polymer. See Ans. 4-11. Accordingly, for the reasons explained above with respect to Rejection II, we do not sustain Rejections III, IV, and V. DECISION We reverse the Examiner’s decision rejecting claims 23-48. REVERSED mls