Ex Parte Gordon-Duffy

Patent Trial and Appeal Board

Apr 28, 2016

13318365 (P.T.A.B. Apr. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/318,365 11/01/2011 John Gordon-Duffy
109 7590 05/02/2016
The Dow Chemical Company
P.O. BOX 1967
2040 Dow Center
Midland, MI 48641
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
68046 US-PCT 7272
EXAMINER
ZEMEL, IRINA SOPJIA
ART UNIT PAPER NUMBER
1765
NOTIFICATION DATE DELIVERY MODE
05/02/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
FFUIMPC@dow.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN GORDON-DUFFY
Appeal2014-007539
Application 13/318,365
Technology Center 1700
Before KAREN M. HASTINGS, GEORGE C. BEST, and
N. WHITNEY WILSON, Administrative Patent Judges.
WILSON, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner's
January 9, 2014 decision finally rejecting claims 1-12. We have jurisdiction
over the appeal under 35 U.S.C. § 6(b).
We affirm.
CLAIMED SUBJECT MATTER
Appellant's invention is directed to a foam insulating composition
used in building and construction applications and a process for preparing
1 Appellant identifies the Real Party in Interest as Dow Global Technologies
LLC (Appeal Br. 1 ).
Appeal2014-007539
Application 13/318,365
the foam insulation material (Spec. 1, 11. 10-16). Claim 7 is representative
and is reproduced below from the Claims Appendix of the Appeal Brief (key
claim limitations shown in italics):
7. A polymeric foam comprising:
a. a thermoplastic polymer matrix compnsmg a
polymer component that contains all the polymers in the
thermoplastic polymer matrix and having cells dispersed
therein;
b. two weight-percent or more and five weight-percent
or less of an infrared attenuating agent dispersed within
the thermoplastic polymer matrix, the infrared attenuating
agent selected from a group consisting of carbon black
having an average particle size of 100-700 nanometers and
petcokes;
c. 2.5 to 3.5 weight-percent of a brominated flame
retardant dispersed within the thermoplastic polymer
matrix, the brominated flame retardant being selected
from a group consisting of hexabromocyclododecane,
brominated polystyrene, and brominated styrene-
butadiene copolymers; and
d. at least 0.1 weight-percent of epoxy stabilizer
dispersed within the polymer matrix;
where weight parts is relative to total polymer component
weight and wherein the polymeric foam is characterized
by having a density in a range of 30 to 37 kilograms per
cubic meter, a unimodal cell size distribution with an
average cell size in a range of 0.1 to 0.4 millimeters, a
thermal conductivity in a range of 28 to 35 milliwatts per
meter*Kelvin and that passes the German B2 fire test.
Appeal Br. 19-20 (Claims Appendix).
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Application 13/318,365
REJECTIONS
Appellant appeals the rejection of claims 1-12 as unpatentable under
35 U.S.C. § 103(a) over Kruper2 in view of Stobby. 3
Appellant's arguments focus on claims 1-12 as a whole (see generally
Appeal Br. 11-17; Reply Br. 6-10). Because Appellant argues the rejection
of claims 1-12 as a group, we select claim 7 and decide this appeal on the
basis of this claim alone. 37 C.F.R. § 41.37(c)(l)(iv).
DISCUSSION
The Examiner finds Kruper teaches each of the features of
independent claim 7, except: ( 1) Kruper discloses cell sizes that are slightly
larger than the upper limit of the claimed cell size (Non-Final Act. 4 3, citing
Kruper, Table 3 (Example 12 provides a cell size of 0.42mm, whereas the
upper limit of the cell size recited in claim 7 is 0.4 mm)), and (2) Kruper
does not disclose addition of the claimed epoxy stabilizer dispersed within
the polymer matrix (Non-Final Act. 4).
With respect to (1 ), the Examiner finds Kruper discloses other
Examples that teach the claimed cell size (see, e.g., Kruper, Table 1
(comparative sample C2 exhibits a 0.21 mm cell size)) and expressly teaches
use of size regulators to adjust foam compositions to a desired cell size
(Non-Final Act. 3 (see, e.g., Kruper i-fi-133, 44, and 46)). According to the
Examiner, because Kruper teaches that cell size governs some foam
2 Kruper, JR. et al., US 2009/0117358 Al, published May 7, 2009.
3 Stobby, US 2008/0293839 Al, published Nov. 27, 2008.
4 Non-Final Office Action, dated October 22, 2013.
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Application 13/318,365
properties, the claimed cell size would have been obvious to one of ordinary
skill in the art (Non-Final Act. 3--4).
Regarding the claimed missing element (2), the Examiner finds
Stobby discloses a process for preparing polymer foam in which epoxy
cresol novolac is added in amounts corresponding to the claimed amounts
(id. at 4). The Examiner determines that because Stobby teaches that the
resulting foam has improved surface and processing properties, it would
have been obvious for an ordinary skilled artisan to add the epoxy cresol
novolac to Kruper's compositions to achieve foams with desired surface and
processing properties (id.).
Appellant makes the following arguments urging reversal of the
Examiner's§ 103(a) rejection: (1) Kruper teaches away from the presently
claimed invention by specifying only the use ofbrominated fatty acid based
fire retardants to the problem of large cell size infrared attenuating foam
(Appeal Br. 12-14, citing Kruper i-f 44), (2) the Examiner has failed to
provide any reasonable motivation for one of ordinary skill in the art to
modify Kruper' s teachings by supplementing brominated fatty acid based
fire retardants with any of the claimed flame retardants (Appeal Br. 14--17),
(3) Kruper does not suggest a 2.5-3.5 weight-percent of a brominated flame
retardant selected from a group consisting of hexabromocyclododecane,
brominated polystyrene, and brominated styrene-butadiene copolymers
(Reply Br. 8-9), and (4) Kruper provides no examples or comparative
examples that disclose foam having a cell size in the presently claimed
range, which contains infrared attenuating agent and a flame retardant other
than a brominated fatty acid based fire retardant (id. at 9-10).
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Appeal2014-007539
Application 13/318,365
With regard to argument (1 ), whether a reference teaches away from a
claimed invention is a question of fact. In re Harris, 409 F.3d 1339, 1341
(Fed. Cir. 2005). "Under the proper legal standard, a reference will teach
away when it suggests that the developments flowing from its disclosures
are unlikely to produce the objective of the applicant's invention." Syntex
(U.S.A.) LLC v. Apotex, Inc., 407 F.3d 1371, 1380 (Fed. Cir. 2005) (citations
omitted).
In this case, the objectives of the Appellant's invention include
preparing a polymeric foam that achieves a German B2 fire test rating, has a
unimodal cell size distribution, and an average cell size of 0.12 mm or
greater with a good surface quality (Spec., p. 3, 11. 18-21).
The Examiner relies on Kruper' s explicit disclosure that, along with
brominated fatty acid based fire retardants, "[ o ]ther materials may be present
... in the resulting extruded polymer foam [and t ]hese include ... other [fire
retardant] agents, including hexabromocyclododecane .... " (Kruper i1 3 3;
see Final Act. 2). Kruper, thus, teaches the inclusion of the claimed
hexabromocyclododecane in polymeric foam. The Examiner, furthermore,
found that the claimed hexabromocyclododecane "is used in several
comparative examples, and as shown in those examples, [it] is a very
effective [fire retardant] that provides compositions with excellent flame
retardant properties" (Final Act. 2). Appellant's arguments are not
persuasive because these properties provide acceptable fire test ratings and
foam cells with the desired size and surface qualities in accordance with
Appellant's objectives. Kruper, furthermore, provides data testing the
claimed hexabromocyclododecane as a standard by which other brominated
fatty acid based fire retardants are measured by. Therefore, we find that
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Appeal2014-007539
Application 13/318,365
Kruper does not teach away from the objectives of the Appellant's
invention.
Regarding argument (2), Appellant asserts that "[a]dding another
flame retardant only dilute[s] the effect on the cell size" and, thus, the
ordinary skilled artisan would not be motivated to include the claimed
hexabromocyclododecane in a polymeric foam composition along with
brominated fatty acid based fire retardants (Appeal Br. 14). We are
unpersuaded because Appellant's argument is supported only by attorney
argument, not factual evidence. Arguments of counsel cannot take the place
of evidence. See In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984); In re
Payne, 606 F.2d 303, 315 (CCPA 1979). Furthermore, as mentioned above,
Kruper' s disclosed polymer foams do not require any modification to
include the claimed hexabromocyclododecane because the reference
expressly discloses that hexabromocyclododecane fire retardants may be
added as a supplement to brominated fatty acid based fire retardants (Kruper
ii 33).
With regard to argument (3), 5 because the term "comprising" is used
to introduce elements in composition claim 7, there is a presumption that the
composition may contain elements in addition to those explicitly mentioned
in the claim. See, e.g., In re Skvorecz, 580 F.3d 1262, 1267 (Fed. Cir. 2009)
((citing CIAS, Inc. v. Alliance Gaming Corp., 504 F.3d 1356, 1360 (Fed. Cir.
5 We note that Appellant presents arguments (3) and (4) for the first time in
the Reply Brief filed May 28, 2014 (Reply Br. 8-10), directed to the
Examiner's findings first outlined on page 3 of the Non-Final Office Action
(Non-Final Act. 3 ("All of the amounts of each respective component fully
correspond to the claimed amounts.")). It is generally improper for
Appellant to discuss for the first time in the Reply Brief matters that could
have been raised in the Appeal Brief. 37 C.F.R. § 41.41(b)(2) (2013).
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Appeal2014-007539
Application 13/318,365
2007) ("In the patent claim context the term 'comprising' is well understood
to mean 'including but not limited to.'")).
In this case, Appellant's claims encompass Kruper's polymeric foam
embodiments containing both brominated fatty acid based fire retardant and
hexabromocyclododecane. The instant claims, furthermore, also encompass
polymeric foam compositions in which the total weight-percent of a
brominated flame retardant exceeds 2.5 to 3.5 weight-percent, but the excess
weight-percent contribution originates from a brominated flame retardant
that is not a member of the claimed Markush group. We note that the
Specification describes polymeric foam compositions in which the weight-
percent of brominated fire retardants is greater than 2.5 weight percent with
no upper limit (see Spec., p. 9, 11. 4--9). The Specification, furthermore,
states that "[t]he brominated flame retardant can be any brominated flame
retardant known or yet to be known for use in extruded polymeric foam"
(see id. at p. 8, 1. 31-p. 9, 1. 1), which includes Kruper's brominated fatty
acid based fire retardant.
With regard to argument ( 4), we are likewise unpersuaded because the
Examiner need only find that Kruper suggests foam having a cell size in the
presently claimed range, which contains infrared attenuating agent, and a
flame retardant other than a brominated fatty acid based fire retardant. The
record evidence provides that Kruper teaches that a "cell size control agent"
was used for sample C2 (Kruper i-f 46), which contains
hexabromocyclododecane at a concentration of 2.5 parts per 100 parts by
weight resin and resulted in a "[ c ]ell size, mm" of 0.21 (Kruper, Table 1
(footnote omitted)). We discern no reversible error in the Examiner's
reasoned determination that "use of [the claimed hexabromocyclododecane]
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Application 13/318,365
flame retardant would have been obvious to obtain foams with fine or
smaller cells" (Final Act. 3). Therefore, we are not persuaded by argument
(4).
Accordingly, we affirm the rejection of claims 1-12 for the reasons
set forth above and explained in the Examiner's Non-Final and Final Office
Actions and Answer.
CONCLUSION
We AFFIRM the rejection of claims 1-12 under 35 U.S.C. § 103(a) as
obvious over Kruper in view of Stobby.
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
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