Ex Parte Temchenko et al

Patent Trials and Appeals Board

Mar 26, 2014

11595535 - (D) (P.T.A.B. Mar. 26, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/595,535 11/09/2006 Marina Temchenko MA05.702US 8411
13181 7590 03/26/2014
Madico, Inc.
Finch & Maloney
50 Phillippe Cote St., Suite 300
Manchester, NH 03101
EXAMINER
HUANG, CHENG YUAN
ART UNIT PAPER NUMBER
1787
MAIL DATE DELIVERY MODE
03/26/2014 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 MARINA TEMCHENKO
and SAMUEL LIM
____________

Appeal 2012-010954
Application 11/595,535
Technology Center 1700
____________

Before EDWARD C. KIMLIN, CHUNG K. PAK, and
GEORGE C. BEST, Administrative Patent Judges.

KIMLIN, Administrative Patent Judge.

DECISION ON APPEAL

This is an appeal from the final rejection of claims 1, 3-5, 7-14, and
27-30. We have jurisdiction under 35 U.S.C. § 6(b). Claim 1 is illustrative:
1. A composite film structure comprising:
at least one film; and
a flame retardant adhesive composition comprising a
polyester or acrylic adhesive, a non-halogenated, phosphorous-
based flame retardant selected from the group consisting of
trialkyl phosphate esters, triaryl phosphate esters, and aryl-alkyl
phosphate esters, and an organic, solvent;
wherein the composite film structure exhibits less than
2% haze as determined by visible light scattering.
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Application 11/595,535

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The Examiner relies upon the following references as evidence of
obviousness:
Usifer US 5,426,166 Jun. 20, 1995
Parsons US 5,851,663 Dec. 22, 1998
Renz US 6,268,415 B1 Jul. 31, 2001
Ueno US 2001/0020537 A1 Sep. 13, 2001
Valinski US 2003/0031874 A1 Feb. 13, 2003
Bajgur US 2004/0102549 A1 May 27, 2004
Shively US 2005/0123769 A1 Jun. 9, 2005

Appellants' claimed invention is directed to a composite film
comprising a frame retardant composition which comprises a polyester or
acrylic adhesive and a non-halogenated, phosphorous-based frame retardant
selected from the recited group, which includes isopropylated triphenyl
phosphate. The composite film exhibits less than 2% haze. According to
the present Specification, most anti-graffiti frame retardant films and cockpit
shade films developed to-date do not meet the requirement of providing
flame retardancy without compromising the film's optical clarity ([0009]).
The appealed claims stand rejected under 35 U.S.C. § 103(a) as
follows:
(a) claims 1, 3-5, 7, 9, 11-14, and 27 over Parsons in view of Bajgur,
(b) claims 7 and 8 over Parsons in view of Bajgur and Valinski,
(c) claim 10 over Parsons in view of Bajgur and Renz,
(d) claim 12 over Parsons in view of Bajgur, Renz, and Valinski,
(e) claim 28 over Parsons in view of Bajgur and Usifer,
(f) claim 29 over Parsons in view of Bajgur, Usifer, and Ueno,
(g) claim 30 over Parsons in view of Bajgur, Usifer, and Ueno,
(h) claims 1, 3-5, 7-9, 11-14 and 27 over Shively in view of Bajgur,
(i) claim 10 over Shively in view of Bajgur, Renz, and Valinsky, and
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(j) claims 28-30 over Shively in view of Bajgur and Usifer.
We have thoroughly reviewed each of Appellants' arguments for
patentability. However, we are in compete agreement with the Examiner
that the claimed subject matter would have been obvious to one of ordinary
skill in the art within the meaning of § 103 in view of the applied prior art.
Accordingly, we will sustain the Examiner's rejections for essentially those
reasons expressed in the Answer, and we add the following primarily for
emphasis.
Parsons, like Appellants, discloses a composite film structure
comprising a flame retardant acrylic adhesive and a non-halogenated
phosphorous-based flame retardant, along with an organic solvent. As
appreciated by the Examiner, although Parsons teaches that a wide variety of
non-halogenated phosphorous flame retardants are useful, the reference does
not specifically disclose the claimed flame retardants. However, as set forth
by the Examiner, Bajgur discloses a flame retardant composition comprising
an acrylic adhesive and the presently claimed non-halogenated, phosphorous
-based compounds, including isopropylated triaryl phosphate recited in
Appellants' claim 27. Accordingly, based on the collective teachings of
Parsons and Bajgur, we concur with the Examiner that it would have been
obvious for one of ordinary skill in the art to employ the non-halogenated,
phosphorous-based flame retardants claimed by Appellants, and disclosed by
Bajgur, in the flame retardant adhesive composition of Parsons.
We are not persuaded by Appellants' argument that nothing in Bajgur
suggests that the claimed flame retardants are suitable for the acrylic-based
adhesives of Parsons. We agree with the Examiner that one of ordinary skill
in the art would have had a reasonable expectation that a flame retardant
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Application 11/595,535

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suitable for Bajgur's acrylonitrile-based adhesive can also be successfully
used in the acrylonitrile adhesive of Parsons, particularly since both Parsons
and Bajgur are directed to the use of non-halogenated, phosphorous-based
flame retardants. Appellants have presented no convincing rationale for why
one of ordinary skill in the art would not have reasonably expected Bajgur's
non-halogenated, phosphorous-based flame retardants to be suitable for the
adhesive compositions of Parsons. Appellants' assertions in the Brief lack
factual support.
Parsons and Bajgur are silent with respect to the percentage of haze
exhibited by the composite film structure. However, we find no error in the
Examiner's reasoning that the obvious inclusion of the claimed flame-
retardants in the adhesive composition of Parsons would necessarily result in
the claimed percentage of haze, inasmuch as the claimed composite film
structure and that of Parsons would be essentially the same. In particular,
the film structures of Appellants and Parsons comprise an acrylic adhesive
containing the flame retardant on a polyethylene terephthalate film.
Moreover, Appellants' Specification acknowledges that the prior art
recognized a need for flame retardant films having high optical clarity and a
low haze for use as anti-graffiti films and cockpit shade films. Indeed, the
Specification's disclosure that "[m]ost anti-graffiti flame retardant films and
cockpit shade films" do not meet the requirement of flame retardancy and
optical clarity indicates that at least some of the prior art films do meet such
requirement ([0009] (emphasis added)). Hence, since Bajgur discloses that
the claimed flame retardants are particularly preferred in adhesive
compositions, we are satisfied that one of ordinary skill in the art would
have found it obvious to resort to no more than routine experimentation to
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determine the optimum concentrations of flame retardants to achieve the
desired optical clarity. We note that the appealed claims embrace a large
class of films and adhesive compositions, and attach no criticality to a
particular polyester or acrylic adhesive, or to concentrations and specific
film structures, such as layer thicknesses.
We also find no error in the Examiner's legal conclusion that it would
have been obvious for one of ordinary skill in the art to include the metal or
metal oxide coatings of Valinski in the film structure of Parsons to provide
reflection or anti-reflection characteristics. Appellants only argue that
Valinski does not satisfy the asserted deficiency in the combination of
Parsons and Bajgur.
We also agree with the Examiner that it would have been obvious for
one of ordinary skill in the art to include Renz's ultraviolent absorbers to
achieve photo stability and dyes for coloring. We further agree with the
examiner that it would have been obvious for one of ordinary skill in the art
to include the (3-isocyanatopropyl) triethoxysilane of Usifer in the adhesive
composition of Parsons to promote better adhesion. We find no merit in
Appellants' argument that the composition of Parsons is already sufficiently
adhesive without the addition of the Usifer compound. Manifestly, it would
have been obvious for one of ordinary skill in the art to increase the adhesive
strength for particular applications. Appellants' argument that the use of
Usifer's compound produces a synergistic effect is, as pointed out the
Examiner, lacking in evidentiary support for the asserted synergism.
As for claim 29, Appellants have not established error in the
Examiner's legal conclusion that it would have been obvious for one of
ordinary skill in the art to select Ueno's polyester adhesive for the adhesive
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of Parsons to achieve relatively low hygroscopicity and sufficient film
strength and electrical insulating properties.
Turning to the § 103 rejection of Shively over Bajgur, Shively, like
Appellants, discloses a composite film structure comprising transparent film,
a polyester adhesive, and a non-halogenated, phosphorous-based flame
retardant, wherein the composite film structure exhibits about 5% or less
haze. While Shively does not disclose the specifically claimed flame
retardants, we agree with the Examiner that it would have been obvious for
one of ordinary skill in the art to select the particular flame retardants of
Bajgur for the non-halogenated, phosphorous-based flame retardants of
Shively. Since Shively prefers the use of an organo-phosphorous oligomer
as the flame retardant, we are persuaded that it would have been obvious for
one of ordinary skill in the art to select the organo phosphorous flame
retardants especially preferred by Bajgur for the adhesive composition of
Shively. As emphasized by the Examiner, Shively's haze value of preferably
about 5% or less encompasses the claimed value, and for the reasons set
forth above, the inclusion of Bajgur's flame retardants in the adhesive of
Shively would necessarily result in the claimed haze value. Appellants have
presented no rationale for why one of ordinary skill in the art would not have
reasonably expected the non-halogenated, phosphorous-based flame
retardants of Bajgur to be suitable for the polyester compositions of Shively
which comprise a non-halogenated, phosphorous-based flame retardant.
In conclusion, it is our judgment that the Examiner's evidence of
obviousness outweighs Appellants' arguments for nonobviousness of the
claimed subject matter. Accordingly, the Examiner's decision rejecting the
appealed claims is affirmed.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).
AFFIRMED

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