12934683 (P.T.A.B. Jul. 28, 2017)

Ex Parte Sauttreau et al

Patent Trial and Appeal BoardJul 28, 2017

12934683 (P.T.A.B. Jul. 28, 2017)

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. 20362-134679 9119 EXAMINER RIOJA, MELISSA A ART UNIT PAPER NUMBER 1768 MAIL DATE DELIVERY MODE 12/934,683 02/25/2011 42798 7590 07/28/2017 FITCH, EVEN, TAB IN & FLANNERY, LLP 120 South LaSalle Street, Suite 1600 Chicago, IL 60603-3406 Jean Sauttreau 07/28/2017 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 JEAN SAUTTREAU and LAURENT BERGOGNE Appeal 2016-001098 Application 12/934,6831 Technology Center 1700 Before N. WHITNEY WILSON, CHRISTOPHER L. OGDEN, and BRIAN D. RANGE, Administrative Patent Judges. OGDEN, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal2 under 35 U.S.C. § 134(a) from the Examiner’s final decision rejecting claims 1—20 in the above-identified application.3 We have jurisdiction pursuant to 35 U.S.C. § 6(b). An oral hearing was held on July 20, 2017. We REVERSE. 1 According to Appellants, the real parties in interest are IFP Energies nouvelles, formerly IFP, and Compart SAS. Appeal Brief 1, Apr. 27, 2015 [hereinafter Appeal Br.]. 2 Appeal Br.; Reply Brief, Nov. 3, 2015 [hereinafter Reply Br.]. 3 Final Office Action, Aug. 27, 2014 [hereinafter Final Action]; Examiner’s Answer, Sept. 3, 2015 [hereinafter Answer], Appeal 2016-001098 Application 12/934,683 BACKGROUND Appellants’ invention relates to “passive protection against fires, and in particular means of fire-break caulking and/or filling, in particular for use as means of partition, such as expansion seals or panels.” Spec.4 1. Independent claim 1 is representative: 1. Caulking or filling device with fire-break properties comprising an elastic material comprising polyurethane foam, characterized in that said foam is obtained by reacting: — at least one polyol with a molecular mass of 4000 to 7000 g/mol and an OH index of 20 to 40 mg KOH/g in a mixture of 0.3 to 1.5 weight % of water as an expansion agent, 0.1 to 2 weight % of a catalytic system of the amine type, and at least one cell stabilization agent, wherein a total amount of cell stabilization agent compared to the weight of said material is in a range of 0.3 to 0.5 weight %, — and an isocyanate in the form of a prepolymer or a quasi prepolymer comprising 5 to 25% free NCO functions, NCO content compared to isocyanate weight, and, in that, said material comprises at least 50 weight % of fire retardant agents. Appeal Br. Claims App. 1 (emphasis of key limitation added). Claim 3 is also independent and includes the limitation of claim 1 highlighted above. See id. at 1—2. The Examiner maintains the following grounds of rejection: 1. Claims 1, 2, 6, 7, 9, and 10 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Lutter5 in view of McDonald.6 See Final Action 2—7. 4 Specification, Sept. 27, 2010 [hereinafter Spec.]. 5 Lutter et al., US 5,739,173 (issued Apr. 14, 1998). 6 McDonald et al., US 2007/0094963 Al (published May 3, 2007). 2 Appeal 2016-001098 Application 12/934,683 2. Claim 8 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Lutter in view of McDonald and Zhang.7 See id. at 7—8. 3. Claims 3—5, 12—14, 16, and 17 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Lutter in view of McDonald and Keppeler.8 See id. at 8—13. 4. Claim 15 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Lutter in view of McDonald, Keppeler, and Zhang. See id. at 14—15. 5. Claims 1, 2, 6, 7, 9-11, and 20 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Lutter in view of Thompson.9 See id. at 15-19. 6. Claims 3—5, 12—14, and 16—19 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Lutter in view of Thompson and Keppeler. See id. at 19-25. DISCUSSION Claim 1 recites a caulking or filling device comprising an elastic material that “comprises at least 50 weight % of fire retardant agents.” Appeal Br. Claims App. 1. The Examiner finds that Lutter teaches a polyurethane foam that comprises a flame retardant composition of 5 to 100 parts by weight melamine, 0.1 to 35 parts by weight graphite, and 0.5 to 7 Zhang et al., US 6,713 522 B2 (published Mar. 30, 2004). 8 Keppeler et al., US 5,981,612 (issued Nov. 9, 1999). 9 Thompson, US 2004/0020148 Al (published Feb. 5, 2004). 3 Appeal 2016-001098 Application 12/934,683 15 parts by weight per 100 parts by weight ammonium polyphos phate (b)[.] The flame retardants are thus present in an amount of 5.5 to 160 parts by weight per 100 parts (b). Final Action 3 (citing Lutter 8:17—30). Appellants argue that based on the disclosure of Lutter, “there would not have been any apparent reason to provide at least 50 weight % of fire retardant agents; in fact, it appears the Lutter et al. foams mostly have less than 50% fire retardant agents.” Appeal Br. 5. We agree with Appellants that the Examiner has not shown that Lutter teaches the recited weight ratio of fire retardant agents in claim 1. Lutter discloses the “parts by weight” of each fire retardant agent as being relative to 100 parts by weight of component (b), which is a “high-molecular weight compound containing at least two reactive hydrogen atoms.” See Lutter 8:28—31. In addition to component (b), Lutter describes the inclusion of reactant (a), “an organic polyisocyanate and/or a modified organic polyisocyanate,” which reacts with component (b). See id. Abstract. Thus, in determining whether or not Lutter discloses at least 50 wt.% of fire retardant agents, one must consider not only the relative amount of (b) in the composition, but also the relative amount of reactant (a). For example, if the amount of (a) is comparable to the amount of (b), then the amount of (a) and (b) combined would be approximately 200 parts, compared to 160 parts of fire retardant materials as calculated by the Examiner, which would be less than 50% of the total composition. The Examiner has not quantified the relative amount of (a) in Lutter’s composition or established a reason why a person of ordinary skill in the art would have selected an amount of (a) such that the composition falls within the scope of claim 1. Thus, the Examiner’s rationale for rejecting claim 1 is 4 Appeal 2016-001098 Application 12/934,683 insufficient to establish a prima facie case of obviousness. For the same reasons, the Examiner has not made a prima facie case with respect to claim 3 or the claims that depend from claims 1 or 3. Consequently, we reverse the Examiner’s rejection of claims 1—20. DECISION The Examiner’s decision is reversed. REVERSED 5