Ex parte Yamamoto

Board of Patent Appeals and Interferences

Mar 30, 2000

08487226 (B.P.A.I. Mar. 30, 2000)

1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1)
was not written for publication in a law journal and (2) is
not binding precedent of the Board.
Paper No. 47
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte YASUAKI YAMAMOTO
__________
Appeal No. 1997-1161
Application 08/487,226
___________
HEARD: March 21, 2000
___________
Before OWENS, WALTZ and KRATZ, Administrative Patent Judges.
OWENS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the examiner’s final rejection of
claims 1, 2 and 6-8, and refusal to allow claims 3-5 as
amended after final rejection. These are all of the claims in
the application.
THE INVENTION
Appellant’s claimed invention is directed toward a flame
Appeal No. 1997-1161
Application 08/487,226
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retardant composition for electrical insulation and sheathing
of wire and cables. The composition includes recited amounts
of a polyolefin polymer, a metal hydroxide or hydrated metal
salt, a polyolefin based polymer or oligomer grafted or
polymerized with a vinyl bearing species, and an
organopolysiloxane compound. Appellant states that the
composition does not evolve toxic or corrosive gases as it
burns (specification, page 1, lines 7-9). Claim 1 is
illustrative and reads as follows:
1. A flame retardant resin composition for electrical
insulation and sheathing of wire and cables which has enhanced
oil resistance and excellent processing characteristics,
comprising (a) 100 parts by weight of a polyolefin polymer,
(b) 50 to 200 parts by weight of metal hydroxide or hydrated
metal salt selected from the group consisting of aluminum
hydroxide, magnesium hydroxide, calcium hydroxide, basic
magnesium carbonate, and hydrocalcite, or mixtures thereof,
(c) 3 to 20 parts by weight of a polyolefin based polymer or
oligomer grafted or copolymerized with a vinyl bearing species
selected from the group consisting of a vinyl hydroxy
carboxylic acid, a vinyl carboxylic acid, a vinyl hydroxy
dicarboxylic acid, a vinyl dicarboxylic acid, and esters and
anhydrides thereof, which polyolefin (c) differs from olefin
(a), and (d) 1 to 10 parts by weight of an organopolysiloxane
compound wherein components (b) - (d) are all based on 100
parts by weight of the polyolefin polymer(a).
THE REFERENCES
Abolins et al. (Abolins) 4,497,925 Feb. 5, 1985
Yusawa et al. (Yusawa) 4,983,742 Jan. 8, 1991
Appeal No. 1997-1161
Application 08/487,226
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Keogh 5,104,920 Apr. 14, 1992
(filed Jun. 14,
1989)
THE REJECTIONS
The claims stand rejected under 35 U.S.C. § 103 as
follows: claims 1-8 over Yusawa in view of Abolins, and claims
1, 2 and 6-8 over Keogh.
OPINION
We have carefully considered all of the arguments
advanced by appellant and the examiner and agree with
appellant that the aforementioned rejections are not well
founded. Accordingly, we reverse these rejections. We need
to address only the broadest claim, i.e., claim 1.
Rejection over Yusawa in view of Abolins
Yusawa discloses a fire retardant 1-butene resin
composition which contains components falling within the scope
of appellant’s components (a), (b) and (c) of claim 1, in
amounts which overlap the amounts recited in the claim
(abstract). Yusawa does not disclose appellant’s
Appeal No. 1997-1161
Application 08/487,226
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organopolysiloxane component (d).
Abolins discloses polymeric resins which contain, to
improve their flame resistance, a blend of hydrated alumina
and polyphenylene oxide, or a blend of hydrated alumina,
polydiorganosiloxane and polyphenylene oxide (abstract). The
polydiorganosiloxane usually is 0.1-6 wt% of the composition
(col. 3, lines 35-37).
The examiner argues that it would have been obvious to
one of ordinary skill in the art to add Abolins’
polydiorganosiloxane to Yusawa’s composition because it is
conventional to use a flame retardant in an analogous flame
retardant composition (answer, pages 5 and 8). This argument
is not well taken because the examiner has provided no
supporting evidence. The examiner’s speculation is not a
sufficient basis for a prima facie case of obviousness. See
In re Warner, 379 F.2d 1011, 1017, 154 USPQ 173, 178 (CCPA
1967), cert. denied, 389 U.S. 1057 (1968); In re Sporck, 301
F.2d 686, 690, 133 USPQ 360, 364 (CCPA 1962).
The examiner argues that Abolins discloses at page 3,
lines 5-14, adding to the composition conventional fire
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Application 08/487,226
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retardants such as polydimethylsiloxane in order to improve
the properties of the composition (answer, page 11). In the
portion of the reference relied upon by the examiner, however,
Abolins does not refer to polydimethylsiloxane. The
conventional fire retardants which have the “aforementioned
adverse factors” referred to by Abolins (col. 3, line 14) are
those at column 1, lines 10-15. The representative examples
of such fire retardants set forth by Abolins are phosphorous-,
antimony- and halogen-containing compounds (col. 1, lines 13-
15). Abolins discloses that the drawbacks and undesirable
factors of the conventional fire retardants are overcome by
using as a fire retardant a blend of hydrated alumina and
polyphenylene oxide, alone or in with a polydiorganosiloxane
(col. 1, lines 23-32). The portion of Abolins relied upon by
the examiner discloses that conventional fire retardants may
be used in combination with these blends to improve the
properties of the fire retardant composition, and that doing
so minimizes or eliminates the adverse factors often
associated with the use of the conventional fire retardants.
This portion, however, does not disclose that adding a
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Application 08/487,226
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polydiorganosiloxane to a fire retardant composition improves
the properties of the composition.
In order for a prima facie case of obviousness to be
established, the teachings from the prior art itself must
appear to have suggested the claimed subject matter to one of
ordinary skill in the art. See In re Rinehart, 531 F.2d 1048,
1051, 189 USPQ 143, 147 (CCPA 1976). The mere fact that the
prior art could be modified as proposed by the examiner is not
sufficient to establish a prima facie case of obviousness.
See In re Fritch, 972 F.2d 1260, 1266, 23 USPQ2d 1780, 1783
(Fed. Cir. 1992). The examiner must explain why the prior art
would have suggested to one of ordinary skill in the art the
desirability of
the modification. See Fritch, 972 F.2d at 1266, 23 USPQ2d at
1783-84. The examiner has not provided such an explanation
and, therefore, has not established a prima facie case of
obviousness of the invention recited in any of appellant’s
claims. Accordingly, we reverse the rejection over Yusawa in
Appeal No. 1997-1161
Application 08/487,226
Since no prima facie case of obviousness has been1
established, we need not address the experimental results
relied upon by appellant (declaration filed August 20, 1993,
attachment to paper no. 14). See In re Piasecki, 745 F.2d
1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984); In re
Rinehart, 531 F.2d 1048, 1052, 189 USPQ 143, 147 (CCPA 1976).
7
view of Abolins. 1
Rejection over Keogh
Keogh discloses a flame retardant composition including a
crosslinkable thermoplastic resin and, per hundred parts by
weight of the thermoplastic resin, about 180 to about 350
parts by weight of a metal hydrate, about 0.1 to about 5 parts
by weight of an organic peroxide, and about 0.1 to about 10
parts by weigh of a vinyl substituted silicone fluid (col. 1,
lines 60-68; col. 2, lines 47-50; col. 3, lines 37-41; col. 4,
lines 13-18).
The examiner argues that it would have been obvious to
one of ordinary skill in the art to use a blend of the
polymers because doing so is suggested by the references
(answer, page 6).
Keogh’s “thermoplastic resin can be any homopolymer or
Appeal No. 1997-1161
Application 08/487,226
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copolymer produced from two or more comonomers, or a blend of
two or more of these polymers, conventionally used as
jacketing and/or insulating materials in wire and cable
applications” (col. 2, lines 3-7). The blend could possibly
include both a polyolefin polymer and a polyolefin polymer
copolymerized with an anhydride of a vinyl dicarboxylic acid,
i.e., maleic anhydride (col. 2, lines 9-25). However, no such
copolymer is disclosed. In order to arrive at appellant’s
combination of components (a) and (c) in claim 1, one of
ordinary skill in the art would have had to select, from the
enormous number of combinations encompassed by Keogh’s
disclosure, a polyolefin/maleic anhydride copolymer and
another polyolefin, which is different from the copolymer, and
blend them in the relative amounts recited in appellant’s
claim 1. The examiner has not explained why Keogh reasonably
would have led one of ordinary skill in the art to this
combination. Accordingly, we reverse the rejection over
Keogh.
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Application 08/487,226
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DECISION
The rejections under 35 U.S.C. § 103 of claims 1-8 over
Yusawa in view of Abolins, and claims 1, 2 and 6-8 over Keogh,
are reversed.
REVERSED
TERRY J. OWENS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
THOMAS A. WALTZ )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
PETER F. KRATZ )
Administrative Patent Judge )
Appeal No. 1997-1161
Application 08/487,226
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