Ex parte ROUS

Board of Patent Appeals and Interferences

Mar 15, 2002

08819239 (B.P.A.I. Mar. 15, 2002)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
Paper No. 15
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte FRIEDEMANN ROUS
____________
Appeal No. 1999-1073
Application No. 08/819,239
____________
ON BRIEF
____________
Before GARRIS, PAK, and KRATZ, Administrative Patent Judges.
PAK, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134 from
the examiner’s final rejection of claims 1, 3 through 7 and 15
through 20, which are all of the claims pending in the above-
identified application.

Appeal No. 1999-1073
Application No. 08/819,239
2
Claim 1 is representative of the subject matter on appeal
and reads as follows:
1. A nonflammable halogen-free mixture for manufacturing
electrical cables with increased heat resistance, the mixture
comprising:
a copolymer selected from the group of copolymers
consisting of a polypropylene block copolymer and a
polypropylene random block copolymer;
a salt of a metal selected from the group consisting of
Group II, IIa and IIb metals of the periodic system, wherein the
metal salt in the mixture is in the range of 1 to 15 parts per
100 parts of copolymer;
a metal hydroxide, wherein the metal hydroxide in the
mixture is in the range of 30 to 180 parts of copolymer; and
a silicone material selected from the group consisting of
silicone oil, silicone rubber, and combinations thereof, wherein
the silicon material in the mixture is in the range of 0.3 to 20
parts per 100 parts copolymer.
The prior art references relied upon by the examiner are:
Harbourne et al. (Harbourne) 4,722,858 Feb. 2,
1988
Dokurno et al. (Dokurno) 4,847,317 Jul. 11,
1989
Keogh 5,104,920 Apr. 14, 1992
Jow et al. (Jow) 5,482,990 Jan. 9, 1996
(Filed Jan. 17, 1995)
The appealed claims stand rejected as follows:
1) Claims 1, 3 through 7 and 16 under 35 U.S.C. § 103 as
unpatentable over Keogh; and
Appeal No. 1999-1073
Application No. 08/819,239
3
2) Claims 1, 3 through 7 and 15 through 20 under 35 U.S.C.
§ 103 as unpatentable over the combined disclosures of Keogh,
Jow, Dokurno and Harbourne.
We have carefully reviewed the claims, specification and
applied prior art, including all of the arguments advanced by
both the examiner and appellant in support of their respective
positions. This review leads us to conclude that the examiner’s
§ 103 rejections are not well founded. Accordingly, we reverse
the examiner’s § 103 rejections. Our reasons for this
determination follow.
Under Section 103, “the examiner bears the initial burden,
on review of the prior art or on any other ground, of presenting
a prima facie case of unpatentability.” In re Oetiker, 977 F.2d
1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992). In other
words, the burden of producing a factual basis to support a
prima facie case of obviousness rests on the examiner. In re
Warner, 379, F.2d 1011, 1017, 154 USPQ 173, 177-78 (CCPA 1967).
In the present case, the examiner has not demonstrated that
the applied prior art references, either individually or in
Appeal No. 1999-1073
Application No. 08/819,239
4
combination, teach or would have suggested the employment of the
claimed polypropylene block copolymer or polypropylene random
block copolymer in the nonflammable halogen-free composition
described in Keogh. As correctly pointed by appellant (e.g.,
Brief, pages 7, 9, 10 and 11), the examiner recognizes that the
applied prior art does not teach the claimed polypropylene block
copolymer or polypropylene random block copolymer. To remedy
this deficiency, the examiner asserts (Answer, pages 4 and 5)
that:
Keogh relates the same flame retardant systems’s
application in ethylene copolymers with propylene.
Since applicant has not deigned to reveal with any
degree of specificity what the comonomer(s) of his
propylene block or random block copolymers are [,]
they should be presumed to be those which are
ordinarily employed in making propylene copolymers
such as Keogh utilizes. Applicant has not pointed out
any properties inherent in the makeup of the instant
propylene block copolymers that would tend to detract
from using the same preservatives as ordinarily used
in the nonblock form of the copolymer[.] The fact that
Keogh relates that alternatively polymers as diverse
as polycarbonate, polyesters, and polyurethanes or
diolefin derived polymers are also made flameproofed,
signifies the absence of criticality in the spatial
configuration of the hydrocarbon radicals in the
polymers’ chains as a factor in predicting amenability
to flameproofing.
In so asserting, the examiner has improperly shifted the burden
to appellant without first establishing a prima facie case of
Appeal No. 1999-1073
Application No. 08/819,239
5
obviousness. In other words, the examiner has not provided any
evidence to demonstrate that it would have been prima facie
obvious to employ the claimed polypropylene block copolymer or
polypropylene random block copolymer in the nonflammable
halogen-free composition described in Keogh. The examiner
simply has not referred to any evidence to show that it is known
to use the claimed polypropylene block copolymer or
polypropylene random block copolymer in forming a nonflammable
halogen-free composition.
Under these circumstances, we are constrained to agree with
appellant that the examiner has not established a prima facie
case of obviousness regarding the claimed subject matter within
the meaning of 35 U.S.C. § 103. Accordingly, we reverse all the
aforementioned § 103 rejections.
REVERSED
Appeal No. 1999-1073
Application No. 08/819,239
6
BRADLEY R. GARRIS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
CHUNG K. PAK ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
PETER F. KRATZ )
Administrative Patent Judge )
CKP/lp
PETER H VAN WINKLE
WARE FRESSOLA VAN DER SLUYS
& ADOLPHSON
755 MAIN STREET P O BOX 224
MONROE CT 06468-0224
Appeal No. 1999-1073
Application No. 08/819,239
7
Letty
JUDGE PAK
APPEAL NO. 1999-1073
APPLICATION NO. 08/819,239
APJ PAK
APJ KRATZ
APJ GARRIS
DECISION: REVERSED
PREPARED: Oct 1, 2002
OB/HD
PALM
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