Ex Parte Gordon-Duffy

Patent Trial and Appeal Board

Aug 23, 2017

13318365 (P.T.A.B. Aug. 23, 2017)

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.
13/318,365 11/01/2011 John Gordon-Duffy 68046 US-PCT 7272
109 7590 08/25/2017
The Dow Chemical Company
P.O. BOX 1967
2040 Dow Center
Midland, MI 48641
EXAMINER
ZEMEL, IRINA SOPJIA
ART UNIT PAPER NUMBER
1765
NOTIFICATION DATE DELIVERY MODE
08/25/2017 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
Appeal 2017-000813
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
June 3, 2016 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 (Br. 3).
Appeal 2017-000813
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
(emphasis added):
7. A polymeric foam comprising:
a. a thermoplastic polymer matrix comprising 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. brominated flame retardant dispersed within the
thermoplastic polymer matrix at a concentration of 2.5 to
3.5 weight-percent, the brominated flame retardant
consisting of a brominated flame retardant 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.
Br. 14—15 (Claims Appendix).
2
Appeal 2017-000813
Application 13/318,365
REJECTION
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
Br. 8—12). 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 || 33, 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.
3
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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 novolac5 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 urges reversal of the Examiner’s rejection based upon the
holding in Dippin ’ Dots Inc. v. Mosey, 476 F.3d 1337, 1343 (Fed. Cir.
2007). Appellant argues that Dippin ’ Dots supports their argument that
although “[t]he claims employ the phrase ‘comprising[,]’ . . . that does not
. . . broaden[] the scope of specifically stated limitations in the claims”
(Br. 9). Appellant further argues that “[t]he present open ended claims
specifically limit the brominated flame retardant to a brominated flame
retardant selected from a group consisting of hexabromocyclododecane,
brominated polystyrene, and brominated styrene-butadiene copolymers” {id.
at 10). Thus, Appellant concludes that the claims, pursuant to the language
5 Appellant characterizes the Examiner’s rejection of claims 1—12, and our
affirmance in the prior decision Appeal No. 2014-007539 (Application
13/318,365) (“the earlier Decision”), as relying “on a combination of Kruper
and Stobby that requires adding a flame retardant from Stobby to the
composition taught by Kruper” (Br. 9) (emphasis added). Appellant’s
characterization is incorrect because the Examiner relies on Stobby’s
composition for teaching the claimed epoxy stabilizer {see Non-Final Act.
3—\\ the earlier Decision 3—\\ Stobby Abstract, || 33—35).
4
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Application 13/318,365
in Dippin ’ Dots Inc., exclude the presence of a brominated fatty acid-based
flame retardant “because the scope of specifically stated brominated flame
retardants in the claims does not include brominated fatty acid-based flame
retardant” (id.).
Appellant’s arguments are not persuasive.
As set forth in our earlier Decision, 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. 2007) (“In the patent claim context the term ‘comprising’ is
well understood to mean ‘including but not limited to.’”)).
In Dippin ’ Dots, the claims at issue recited the term “comprising” to
introduce steps in the method for preparing and storing a novelty ice cream
product in the form of beads. 476 F.3d at 1340. Recognizing that “the
written description specifically describes ‘beads’ as having a ‘smooth,
spherical appearance’” and that the patentee had argued “that a ‘bead’ was ‘a
small round ball or round drop,”’ the Federal Circuit found no error in the
District Court’s “limitation of the claim scope to exclude processes that
produce irregularly shaped particles.”6 Id. at 1342—1343. In other words,
the District Court held that the term “bead” had a specific meaning which
6 The District Court noted that the patentee “did not want to produce a
product which consisted of beads and irregularly shaped particles. [The
patentee] had produced such in the past, but when filing for his patent, [the
patentee] only included beaded pieces of flash frozen ice cream.” In re
Dippin’ Dots Patent Litigation, 249 F. Supp. 2d 1346, 1370 (N.D. Ga.
2003).
5
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Application 13/318,365
excluded the allegedly infringing product. The Federal Circuit determined
that “[t]he presumption raised by the term ‘comprising’ does not reach into
each of the [] steps to render every word and phrase therein open-ended—
especially where, as here, the patentee has narrowly defined the claim
term.” Id. at 1343 (emphasis added).7 The Federal Circuit did not hold that
the introduction of an additional step into the allegedly infringing process
was enough to take it outside the scope of the claim (including the
“comprising” transition phrase). Thus, Appellant’s characterization of the
Federal Circuit’s holding is incorrect (see supra fii.7).
Moreover, in this case, unlike Dippin ’ Dots, there is no evidence in
the written description, nor anywhere else in the record, that Appellant has
narrowly defined the claim term “brominated flame retardant.” Rather,
Appellant broadly defined the claim term in dispute. As set forth in our
earlier decision, 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; see also earlier
Decision 7). The Specification discloses that “[t]he brominated flame
retardant can be any brominated flame retardant known or yet to be known
for use in extruded polymeric foam,” which includes Kruper’s brominated
fatty acid-based fire retardant (see Spec., p. 8,1. 31—p. 9,1. 1; see also earlier
Decision 7).
7 Appellant characterizes this language in Dippin ’ Dots as holding that “if an
open ended claim states specific limitations, then additional elements cannot
broaden those specific limitations in a valid reading of the claim” (Br. 10).
6
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Application 13/318,365
Because the transition phrase for the claim is “comprising,” the claim
does not exclude the presence of other compounds, such as Kruper’s
brominated fatty acid-based flame retardants.
Appellant’s amendments made of record since our earlier Decision
have not substantively limited the claimed compositions such that additional
components—e.g., those disclosed by Kruper—are excluded, as they might
be. For example, a limitation specifically excluding brominated flame
retardants other than those listed in element c of claim 7 would exclude
Kruper’s brominated fatty acid-based flame retardants.8 Accordingly, in our
judgment, the instant claims still 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 (see earlier Decision 7). Therefore, our previous
determination that claim 7 encompasses Kruper’s polymeric foam
embodiments containing brominated fatty acid-based fire retardant remains
unchanged (see id.).
Appellant further argues that the applied prior art neither suggests nor
motivates any proposed modification that removes a brominated fatty acid-
based flame retardant from Kruper’s composition (Br. 10). Appellant asserts
that such a modification “thereby modifies Kruper so as to be unsatisfactory
for its intended purpose” (id.). Thus, Appellant asserts that “Kruper teaches
away from the presently claimed invention by requiring an element the
presently claimed invention cannot contain” (id. at 8).
8 We express no opinion regarding the written description support—or lack
thereof—for such a limitation.
7
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Application 13/318,365
Appellant’s arguments are unpersuasive.
For the reasons set forth above, the present claims do not require
removing a brominated fatty acid-based flame retardant from Kruper’s
composition. Likewise, the Examiner’s proposed modification does not
require any such removal (see Non-Final Act. 2—5; see also Ans.9 (“Kruper
does not teach away from the claimed invention, and, in fact, expressly
discloses compositions that may contain both BFAB FR[, i.e., brominated
fatty acid-based flame retardant] and [hexabromocyclododecane] . . ..”)).
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 Answers.10
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
9 Answer, dated May 14, 2014.
10 See supra fh. 8 and Answer, dated July 22, 2016.
8