Ex Parte Stowell et alDownload PDFPatent Trial and Appeal BoardFeb 18, 201612312594 (P.T.A.B. Feb. 18, 2016) Copy Citation 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. 12/312,594 01/14/2010 Jeffrey K. Stowell 1321-164 PCT US 7325 28249 7590 02/18/2016 DILWORTH & BARRESE, LLP Dilworth & Barrese, LLP 1000 WOODBURY ROAD SUITE 405 WOODBURY, NY 11797 EXAMINER RIOJA, MELISSA A ART UNIT PAPER NUMBER 1767 MAIL DATE DELIVERY MODE 02/18/2016 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 JEFFREY K. STOWELL, SERGEI LEVCHIK, ANDREW PIOTROWSKI, WEIHONG LIU, and YINZHONG GUO ____________ Appeal 2014-004177 Application 12/312,594 Technology Center 1700 ____________ Before ROMULO H. DELMENDO, GEORGE C. BEST, and MONTÉ T. SQUIRE, Administrative Patent Judges. SQUIRE, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants1 appeal the Examiner’s final rejection of claims 1–4, 10, 11, and 13–22. 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6(b). For the reasons set forth below, we AFFIRM. 1 Appellants identify ICL-IP America as the real party in interest. Br. 1. Appeal 2014-004177 Application 12/312,594 2 The Claimed Invention Appellants’ disclosure relates to a flame-retardant polyurethane foam containing a mixture of cyclic phosphate ester and melamine compounds, and the use of such mixture as a flame-retardant additive. Abstract; Spec. ¶ 1; Br. 5. Independent claim 1 and dependent claim 20 are representative of the claims on appeal and are reproduced below from the Claims Appendix to the Appeal Brief (Br. 15, 17): 1. A flame-retarded polyurethane foam comprising: a) a polyurethane foam; and b) a flame-retardant mixture comprising: i) from 1 to 20 weight percent based on the total weight of the polyurethane foam of at least one non halogen- containing cyclic phosphate ester having the general formula: wherein R1 and R2, are the same or different, 1 to 6 carbon atom(s) straight-chain or branched alkyl groups, which may or may not contain heteroatom substituents, and R3 is phenyl or substituted phenyl containing from 6 to 12 carbon atoms, which may or may not contain heteroatom substituents; and ii) from 1 to 20 weight percent[,] based on the total weight of the polyurethane foam[,] of melamine, wherein the flame retarded polyurethane foam is able to achieve a pass rating in the BS-5852, Part II, Source V test. 20. The flame-retarded polyurethane foam of Claim 1 wherein the polyurethane foam possesses an index of organic isocyanate and polyol components is at least about 90. Appeal 2014-004177 Application 12/312,594 3 The References The Examiner relies on the following prior art in rejecting the claims on appeal: Gerkin US 5,489,618 Feb. 6, 1996 Staendeke US 5,750,601 May 12, 1998 Hackl et al. US 5,837,760 Nov. 17, 1998 (hereinafter “Hackl”) The Rejections 1. Claims 1–4, 10, 11, 13–19, 21, and 22 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Staendeke in view of Hackl. 2. Claim 20 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Staendeke in view of Hackl as applied to claim 1, and in further view of Gerkin. OPINION 1. Rejection of Claims 1–4, 10, 11, 13–19, 21, and 22 under 35 U.S.C. § 103(a) over Staendeke in view of Hackl Claims 1–3, 10, 11, 13–19, and 21. Appellants argue claims 1–3, 10, 11, 13–19, and 21 as a group. We, therefore, select claim 1 as representative of this group, and the remaining claims stand or fall with claim 1. 37 C.F.R. § 41.37(c)(1)(iv) (2013). The Examiner finds the combination of Staendeke and Hackl teaches all of claim 1’s limitations. Ans. 2–5. The Examiner finds Staendeke teaches a flame-retardant polyurethane foam comprising a polyurethane foam and a flame-retardant mixture. Id. at 2. The Examiner further finds that the flame-retardant mixture comprises a cyclic phosphoric acid ester (i.e., cyclic phosphate ester) present in an amount of 2 to 40% of the polyurethane system and used in amounts as low Appeal 2014-004177 Application 12/312,594 4 as 2.5 and as high as 20 parts per hundred parts polyol. Id. at 2–3 (citing Staendeke col. 1, ll. 36–60; Examples 2–4, 8, 9). The Examiner finds that although Staendeke teaches the cyclic phosphate ester may be used in combination with other flame-proofing agents, it does not expressly teach the use of melamine compounds in conjunction with the cyclic phosphate ester as recited in claim 1. Id. at 3. The Examiner, however, relies on Hackl for teaching that limitation. Id. In particular, the Examiner finds Hackl teaches a polyurethane foam comprising phosphoric esters and that it is desirable to use melamine derivatives in conjunction with the phosphoric esters, preferably in a weight ratio of 5:1 to 1:5. Id. (citing Hackl col. 7, ll. 23–35). The Examiner concludes it would have been obvious to a person of ordinary skill in the art at the time of the invention to include melamine in the amount taught by Hackl in Staendeke’s flame-retardant mixture comprising cyclic phosphate ester. Id. at 4. The Examiner finds one of ordinary skill would have been motivated to combine Hackl’s teachings regarding the combination of melamine with phosphate esters with Staendeke’s teachings regarding cyclic phosphate esters to arrive at Appellants’ claimed invention because the combination of melamine derivatives and phosphoric acid flame retardants is especially advantageous in the preparation of self-extinguishing polyurethanes that do not drip particles while possessing good mechanical and processing properties. Id. (citing Hackl col. 2, ll. 3–12). The Examiner also concludes that combining phosphoric acid esters and melamine compounds would have been obvious to one of ordinary skill because of their known and shared intended use as flame retardants in polyurethane foams. Id. Appeal 2014-004177 Application 12/312,594 5 Appellants argue there is no motivation to combine Hackl’s melamine with Staendeke’s cyclic phosphate ester because the “phosphoric esters” described in Hackl refer only to “trialkyl or triaryl phosphates” and trialkyl phosphate esters are “specifically preferred by Hackl.” Br. 8–9 (emphasis in original). We are not persuaded by this argument. Hackl’s teachings are not limited to the disclosure of certain examples in its specification, as Appellants’ argument suggests. See In re Mills, 470 F.2d 649, 651 (CCPA 1972) (“[A] reference is not limited to the disclosure of specific working examples.”). As the Examiner found (Ans. 7), although Hackl discloses examples of suitable phosphate esters, e.g., trialkyl phosphate esters and triaryl phosphate esters, its teachings are not limited to those examples. Moreover, the examples and preferred embodiments disclosed in Hackl do not constitute a teaching away from Hackl’s broader disclosure regarding the use of phosphate esters in conjunction with melamine for flame-proofing polyurethanes (Hackl col. 2, ll. 3–12; col. 7, ll. 23–35). See, e.g., In re Susi, 440 F.2d 442, 446 n.3 (CCPA 1971). Further, the Examiner’s factual findings regarding the teachings of Staendeke and Hackl and rationale for why one of ordinary skill would have combined the teachings of these prior art references to arrive at Appellants’ claimed invention are well-supported by the record and based upon sound technical reasoning. As the Examiner found (Ans. 4), one of ordinary skill would have been motivated to combine Hackl’s teachings regarding the combination of melamine with phosphate esters with Staendeke’s teachings regarding cyclic phosphate esters because the combination of melamine derivatives and phosphoric acid flame retardants is especially advantageous in the preparation of self-extinguishing polyurethanes that do not drip Appeal 2014-004177 Application 12/312,594 6 particles while possessing good mechanical and processing properties. Staendeke col. 1, ll. 36–60; Examples 2–4, 8, 9; Hackl col. 2, ll. 3–12; col. 7, ll. 23–35. Appellants’ argument that one of ordinary skill would not have combined the teachings of Staendeke and Hackl “[d]ue to significant differences in the effect of the structure of the phosphate esters of Hackl,” (Br. 9) without more, does not sufficiently rebut the Examiner’s findings in this regard. In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984). Moreover, that the Examiner’s reason for combining these references is not the same as Appellants’ reason for combining them is insufficient to establish reversible error. KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 420 (2007) (explaining that any need or problem known in the art can provide a reason for combining the elements in the manner claimed). Appellants argue that Staendeke and Hackl are not analogous art. Br. 9. In particular, Appellants argue Staendeke is directed to “flexible polyester-polyurethane foams” and Hackl is directed to “thermoplastic polyurethanes,” and that it was well understood by those skilled in the art that thermoplastic polyurethanes are “non-foamed coating materials which are completely different in their physical and flammability properties as compared to polyurethane foams.” Id. at 9–10 (emphasis omitted). We are not persuaded by Appellants’ argument. To qualify as analogous art to the claimed invention to support an obviousness rejection, a prior art reference must be either: (1) in the same field of applicant’s endeavor or, if not in the same field, (2) reasonably pertinent to the particular problem with which the applicant was concerned. In re Oetiker, 977 F.2d 1443 (Fed. Cir. 1992). Appeal 2014-004177 Application 12/312,594 7 Here, based on the Examiner’s findings and the teachings of the cited references, it is clear from the record that Staendeke and Hackl each satisfy both tests recited in Oetiker and thus, are analogous prior art. As the Examiner found (Ans. 3–4, 8), both references are (1) in the same field of Applicants’ endeavor, i.e., the field of flame retardant polyurethane (Staendeke col. 1, ll. 36–60; Hackl col. 7, ll. 23–35), and are (2) reasonably pertinent to the problem with which the Applicants were involved, i.e., imparting flame retardant properties to polyurethanes using phosphate esters and/or melamine as flame retardants (Staendeke col. 1, ll. 36–60; Hackl col. 2, ll. 3–12). Appellants’ conclusory statement that Staendeke is directed to flexible polyester-polyurethane foams and that Hackl is directed to thermoplastic polyurethanes is insufficient to rebut the Examiner’s finding that Staendeke and Hackl are analogous art. Appellants’ argument that it was well understood by those skilled in the art that thermoplastic polyurethanes are non-foamed coating materials is not well-taken because Appellants do not provide an adequate technical explanation or sufficient evidence to support it, and attorney argument cannot take the place of evidence. In re De Blauwe, 736 F.2d at 705. As noted by the Examiner (Ans. 8), Appellants fail to provide evidence sufficient to show that the known polyurethane retardants taught by Hackl would not have been expected by those skilled in the art to function in foamed polyurethane. Further, as the Examiner found (id. at 9) and contrary to Appellants’ argument, Hackl specifically teaches the use of melamine as a known flame retardant in the production of polyurethane foams. Hackl col. 1, ll. 53–58. Appellants argue that the incorporation of melamine in a non-halogen- containing cyclic phosphate ester is “not obvious” because phosphorus- Appeal 2014-004177 Application 12/312,594 8 nitrogen synergism in flame retardants is difficult to predict and there would have been “likely expectation of no synergistic effect to those skilled in the art.” Br. 10 (emphasis in original). As support for this argument, Appellants rely on two references, i.e., a 1993 article2 and a 1994 article.3 Id. We do not find Appellants’ argument persuasive. First, the two references Appellants rely on are not the closest prior art to the claimed invention. As the Examiner found (Ans. 9) and Appellants do not challenge, the discussion of phosphorous-nitrogen synergism in the 1994 article focuses on melamine phosphate compounds, and the 1993 article discusses the use of melamine compounds in conjunction with halogenated phosphates. Neither article teaches or suggests melamine with cyclic phosphate esters in polyurethane foam as recited in the claims. Moreover, as the Examiner found (Ans. 9–10), Hackl is closer prior art to the claimed invention than the references cited by Appellants because both Hackl and the claimed invention pertain to melamine and cyclic phosphate esters in polyurethane foam, and Hackl teaches flame retardants closer in composition and structure to the claims. Hackl col. 1, ll. 53–58; col. 5, l. 61–col. 6, l. 24. Second, the portions of the two references Appellants identify in the Appeal Brief (Br. 24, 29, 32, 34, 37) are insufficient to establish reversible error in the Examiner’s analysis and obviousness conclusion. As previously discussed above, the Examiner’s findings and rationale for one of ordinary 2 Weil, E.D., et al., Phosphorous-Nitrogen Combinations–Some Interaction and Mode-Of-Action Considerations, 4th Annual Conference on Recent Advances in Flame Retardancy of Polymeric Materials, May 18–20, 1993, 190–99. 3 Weil, E.D., et al., Melamine Phosphate Flame Retardants, Plastics Compounding, May/June1994, 31–39. Appeal 2014-004177 Application 12/312,594 9 skill to combine Staendeke and Hackl to arrive at Appellants’ claimed invention are well-supported by the record and based on sound technical reasoning. Further, as the Examiner concluded (Ans. 4), it would have been obvious to a person of ordinary skill in the art at the time of the invention to include melamine in the amount taught by Hackl in Staendeke’s flame- retardant mixture comprising cyclic phosphate ester because the combination of melamine derivatives and phosphoric acid flame retardants is especially advantageous in the preparation of self-extinguishing polyurethanes that do not drip particles while possessing good mechanical and processing properties. Hackl col. 2, ll. 3–12. Appellants’ argument regarding the 1993 and 1994 articles is unpersuasive and insufficient to establish reversible error in the Examiner’s findings and conclusion in this regard. Appellants argue the prior art does not teach or disclose claim 1’s limitation that the flame-retardant polyurethane foam achieve a pass rating in the BS-B5282, Part II, Source V test. Br. 10. We do not find this argument persuasive. As previously discussed above, the Examiner’s finding that the combination of Staendeke and Hackl teaches all the limitations of claim 1 is well-supported by the record. Moreover, as the Examiner found (Ans. 10), because the combination of Staendeke and Hackl teaches a polyurethane foam prepared with all the claimed ingredients in the claimed amounts by a substantially similar process, it follows that all the claimed physical properties and limitations of the claimed invention, including being “able to achieve a pass rating in the BS-5952, Part II, Source V test” as recited in claim 1, would follow from following the suggestion to combine the references. Appellants fail to identify evidence sufficient to establish reversible error in the Examiner’s findings in this regard. Appeal 2014-004177 Application 12/312,594 10 Appellants argue that the Declaration of Jeffrey Stowell submitted May 17, 2012 (“Stowell Declaration”) provides evidence of unexpected results. Br. 10–11. In particular, Appellants argue that based on certain comparative examples provided in the Stowell Declaration, there exists an unexpected synergy between melamine and the claimed cyclic phosphate esters that results in passage of a BS-5852 flammability test. Id. We are not persuaded by Appellants’ argument. In attempting to overcome a prima facie case of obviousness by showing unexpected results, the burden rests with Appellants to establish: (1) that there actually is a difference between the results obtained through the claimed invention and those of the prior art and (2) that the difference actually obtained would not have been expected by one skilled in the art at the time of the invention. See In re Freeman, 474 F.2d 1318, 1324 (CCPA 1973) (citations omitted). Appellants have failed to meet their burden. The comparative examples Appellants rely upon for showing unexpected results are neither representative of the teachings of the prior art, nor commensurate with the scope of the claims. As noted by the Examiner (Ans. 11), the only flame retardant used in the comparative examples was neopentyl phenyl phosphate (“NPP”). Claim 1, however, is not limited to the combination of NPP and melamine. Moreover, as the Examiner found (id. at 11–12), Appellants do not provide sufficient evidence to conclude that the addition of NPP and melamine in the recited amounts to any polyurethane foam, as is claimed, would result in a foam that passes the BS-5852 flammability test. Indeed, as the Examiner points out (id. at 12), there are a variety of factors that were neither accounted for nor controlled in Appellants’ comparative examples that would influence the flame retardancy of the foam. Appeal 2014-004177 Application 12/312,594 11 As the Examiner also found (Ans. 12), the experimental data provided in the Stowell Declaration does not provide sufficient evidence to conclude an unexpected synergism exists between melamine and the claimed phosphate ester compounds because no comparative examples are provided in which the prior art phosphate esters are used alone as a basis of comparison when used with melamine. The comparative examples provided in the Stowell Declaration fail to establish unexpected results sufficient to weigh in favor of nonobviousness. Accordingly, we affirm the Examiner’s rejection of claims 1–3, 10, 11, 13–19, and 21 under 35 U.S.C. § 103(a) as unpatentable over Staendeke in view of Hackl. Claims 4 and 22. Appellants present a separate argument for the patentability of dependent claims 4 and 22.4 Claim 4 depends from claim 1 and adds the limitation: “wherein the phosphate ester is 1,3,2- dioxaphosphorinane, 5,5-dimethyl-2-phenoxy-,2-oxide.” Br. 16. For this argument, Appellants repeat and incorporate by reference the same arguments presented for claim 1 above. Id. at 13. Appellants also re- argue unexpected results, stating that the “comparative evidence of neopentyl phosphate ester as opposed to other phosphates and has shown a clear synergistic effect to the use of neopentyl phosphate ester.” Id. We are not persuaded by Appellants’ argument. We agree with the Examiner finding (Ans. 2–5) that the combination of Staendeke and Hackl teaches all the limitations of claim 4. Based on the findings and technical 4 Because Appellants argue claims 4 and 22 as a group, we select claim 4 as representative of this group. Claim 22, therefore, stands or falls with claim 4. 37 C.F.R. § 41.37(c)(1)(iv) (2013). Appeal 2014-004177 Application 12/312,594 12 reasoning provided by the Examiner (id.), which we adopt as our own, and for the same reasons discussed above for claim 1, we find that Appellants fail to show reversible error in the Examiner’s factual findings and legal conclusions with respect to claim 4. Accordingly, we affirm the Examiner’s rejection of claims 4 and 22 under 35 U.S.C. § 103(a) as unpatentable over Staendeke in view of Hackl. 2. Rejection of Claim 20 under 35 U.S.C. § 103(a) over Staendeke in view of Hackl as applied to Claim 1, in further view of Gerkin Appellants present a separate argument for the patentability of dependent claim 20. Claim 20 depends from claim 1 and adds the limitation: “wherein the polyurethane foam possesses an index of organic isocyanate and polyol components is at least about 90.” Br. 17. The Examiner finds the combination of Staendeke and Hackl as applied to claim 1 teaches all the limitations of claim 20, except the isocyanate index of the reaction mixture. Ans. 6. The Examiner relies on Gerkin for teaching that limitation. Id. In particular, the Examiner finds Gerkin teaches a method of making a polyurethane foam wherein the isocyanate of the reaction mixture may be in the range of 85–120. Id. (citing Gerkin col. 8, ll. 36–40). The Examiner concludes it would have been obvious to a person of ordinary skill in the art at the time of the invention to prepare the foam of Staendeke using an isocyanate index in the range taught by Gerkin. Id. The Examiner finds the motivation to combine the Staendeke’s and Gerkin’s teachings would have been that the isocyanate index taught by Gerkin is suitable for making flexible polyurethane foams. Id. (citing Gerkin col. 8, ll. 36–40). Appeal 2014-004177 Application 12/312,594 13 Appellants argue that the Examiner “has not met the burden of making out a prima facie case of obviousness.” Br. 13. For this argument, Appellants repeat and incorporate by reference the same arguments presented for Rejection 1 above. Based on the findings and technical reasoning provided by the Examiner (Ans. 6), which we adopt as our own, and for the reasons discussed above for Rejection 1, we find that Appellants fail to show reversible error in the Examiner’s factual findings and legal conclusions with respect to claim 20. Accordingly, we affirm the Examiner’s rejection of claim 20 under 35 U.S.C. § 103(a) as unpatentable over Staendeke in view of Hackl and Gerkin. DECISION/ORDER The Examiner’s rejections of claims 1–4, 10, 11, and 13–22 under 35 U.S.C. § 103(a) are affirmed. It is ordered that the Examiner’s decision 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 Copy with citationCopy as parenthetical citation