Ex Parte Stowell et al

Patent Trial and Appeal Board

Feb 18, 2016

12312594 (P.T.A.B. Feb. 18, 2016)

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.
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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.

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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
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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.
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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
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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).
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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-
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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.
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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.
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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.
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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).
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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).
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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