Ex Parte Lorgouilloux et al

Patent Trials and Appeals Board

Jan 25, 2019

14406915 - (D) (P.T.A.B. Jan. 25, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/406,915 12/10/2014 Marion Lorgouilloux
42922 7590 01/28/2019
WHITAKER CHALK SWINDLE & SCHWARTZ PLLC
301 COMMERCE STREET
Suite 3500
FORT WORTH, TX 76102-4186
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.
22080.039 1029
EXAMINER
GODENSCHWAGER, PETER F
ART UNIT PAPER NUMBER
1767
MAIL DATE DELIVERY MODE
01/28/2019 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 MARION LORGOUILLOUX, DIDIER LESUEUR,
MARC PELLETIER, FOUAD LAOUTID, and
PHILLIPPE DUBOIS
Appeal2018-000918
Application 14/406,915
Technology Center 1700
Before JAMES C. HOUSEL, A VEL YN M. ROSS, and
MERRELL C. CASHION, JR., Administrative Patent Judges.
HOUSEL, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1-9, 11, 12, and 25-27. We have jurisdiction over
the appeal under 35 U.S.C. § 6(b ).
We REVERSE.
1 Our decision refers to the Specification ("Spec.") filed December 10, 2014,
the Examiner's Final Office Action ("Final") dated January 3, 2017,
Appellant's Appeal Brief ("Br.") filed May 24, 2017, and the Examiner's
Answer ("Ans.") dated September 7, 2017.
2 Appellant is the Applicant, S.A. Lhoist Recherche et Developpement,
which is identified in the Appeal Brief as the real party in interest (Br. 3).
Appeal2018-000918
Application 14/406,915
STATEMENT OF THE CASE
The invention relates to the flame-retardant polymer compositions
comprising a polymer and a mineral filler comprising a calcium compound
(Spec. 1: 7-8). Appellant discloses that flame retardant additives are
incorporated into polymer matrices in order to slow down or stop
combustion of the polymer in case of fire (id. at 1: 12-14 ). Appellant further
discloses that although calcium dihydroxide, Ca(OH)2, endothermically
decomposes around 400°C, releasing water and giving rise to the formation
of calcium oxide, CaO, this decomposition temperature means that Ca(OH)2
is only efficient as a flame-retardant at a temperature above the polymer
degradation (id. at 3: 17-24). However, upon combustion, Appellant
discloses that a hard ash mainly of CaC03 is produced involving an
exothermic carbonation reaction such that Ca(OH)2 is both less common
than aluminum and magnesium hydroxides and not relevant as a flame-
retardant (id. at 3:28; 5:3-14). Appellant desires a mineral filler comprising
at least one calcium compound that benefits from its endothermic
decomposition, while allowing acceptable mechanical characteristics for the
polymer composition containing the filler and allowing formation of a
cohesive combustion residue (id. at 6:20-25). For this purpose, Appellant
provides a flame-retardant polymer composition comprising calcium
hydroxide having a specific surface area, computed according to the BET
method, greater than 25 m2/g and less than 60 m2/g (id. at 6:26-31 ).
According to Appellant, this high specific surface area of calcium hydroxide
allows formation of a particularly cohesive and possibly intumescent
combustion residue (id. at 6:32-7:1).
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Appeal2018-000918
Application 14/406,915
Claim 1, reproduced below from the Claims Appendix to the Appeal
Brief, is illustrative of the subject matter on appeal. The limitations at issue
are italicized.
1. A flame-retardant polymer composition comprising a mineral
filler and a polymer, said mineral filler comprising a calcium
compound, characterized in that the calcium compound is a
fire-resistant additive in the form of calcium hydroxide having a
specific surface area computed according to the BET method
greater than 25 m2/g and less than 60 m2/g, the mineral filler
being incorporated into the flame-retardant polymer
composition in an amount from 40 to 75% by weight, based
upon the total weight of the flame-retardant polymer
composition.
Claim 25 recites a combustion residue of the composition of claim 1.
REJECTIONS
The Examiner maintains, and Appellant's request our review of, the
following grounds of rejection under 35 U.S.C. § I03(a):
1. Claims 1, 8, 9, 11, 12, and 25-27 as unpatentable over
Kraeuter3 in view of Seki; 4 and
2. Claims 2-7 as unpatentable over Kraeuter in view of Seki, and
further in view of Herbiet. 5
3 DE 102009034700 Al, published April 15, 2010. The Examiner relies,
without objection, on the European Patent Office machine translation
("Kraeuter") of this patent application. We, likewise, rely on this machine
translation in deciding the issues on appeal.
4 WO 2010/073595 Al, published July 1, 2010. The Examiner relies,
without objection, on the English-language equivalent, US 2011/0257313
Al, published October 20, 2011 ("Seki"). We, likewise, rely on this
English-language equivalent in deciding the issues on appeal.
5 US 2010/0160541 Al, published June 24, 2010 ("Herbiet").
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Application 14/406,915
ANALYSIS
Claims 1, 8, 9, 11, and 12
The Examiner finds that Kraeuter teaches a polymer flame retardant
composition comprising polymer and greater than 5 mass% calcium
hydroxide having a BET surface area greater than 5 m2/g (Ans. 3). The
Examiner acknowledges that Kraeuter fails to teach either the specific
recited range of greater than 25 m2/g to less than 60 m2/g or the specific
recited amount of calcium hydroxide of 40-75 wt.% (id.). However, the
Examiner finds that Seki teaches metal hydroxide fillers for flame retardant
polymers should have a BET surface area of 1-50 m2/g (id.). Therefore, the
Examiner concludes that it would have been obvious to utilize a calcium
hydroxide filler having a BET surface area up to 50 m2/g in Kraeuter's
polymer composition because Seki teaches such values are suitable for
providing excellent flame retardancy and heat resistance (id.). With regard
to the amount of calcium hydroxide in the composition, the Examiner notes
that, where the claimed range overlaps or lies inside the prior art range, as
here, a prima facie case of obviousness exists (id., citing MPEP 2144.05). In
addition, the Examiner notes that because it has been held that it is not
inventive to discover the optimum or workable ranges by routine
experimentation, differences in concentration will not support patentability
absent evidence that such differences are critical (id., citing In re Aller, 220
F.2d 454,456 (CCPA 1955).
Appellant argues that the combination of Kraeuter and Seki teaches
away from the invention as claimed (Br. 10). In particular, Appellant asserts
that Seki discloses a flame retardant polymer composition having 3-15 wt.%
of a phosphinate flame retardant, and only 0.05-2 wt.% of a metal
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Appeal2018-000918
Application 14/406,915
compound such as calcium hydroxide for suppressing corrosive wear of steel
members (id. at 11 ). In addition, Appellant asserts that Seki expressly
teaches that when the amount of this metal compound is greater than 2 wt.%,
it results in low flame retardancy, heat resistance, and molding thermal
stability (id. at 12). Moreover, Appellant urges that Seki's only example
using calcium hydroxide in a polymer composition is Example 33 which
uses calcium hydroxide with a BET surface area of 20 m2/g in an amount of
only 0.40 wt.% (id.). Appellant contends that this calcium hydroxide falls
within the standard range of BET surface areas of 15-20 m2/g as set forth in
the Declaration under 37 C.F.R. § 1.132 of Marion Lorguilloux ("Deel.)
filed June 6, 2016 (id. at 10, 12).
In response, the Examiner determines that the showing of unexpected
results in the Lorguilloux Declaration fails to establish criticality for the
BET surface area range recited in the claims because the data do not include
data points just above and below the recited range with a sufficient number
of samples within the range (Ans. 7). In addition, the Examiner determines
that the data also fails to establish that standard slaked lime would
necessarily have a BET surface area outside the recited range because the
particle sizes of the calcium hydroxide in the Lorguilloux Declaration are an
average of 2.9 microns, whereas those ofKraeuter are 50-100 nm (id.). As
to Appellant's argument that Seki teaches away from the recited amounts of
calcium hydroxide in the claims, the Examiner notes that the test for
obviousness does not require bodily incorporation of the features of a
secondary reference into the structure of a primary reference, but what the
combined teachings of the references would have suggested to those of
ordinary skill in the art (id. at 8, citing In re Keller, 642 F.2d 413 (CCPA
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Application 14/406,915
1981). As to Seki's Example 33, the Examiner notes that Seki teaches the
metal hydroxide fillers should have a BET surface area of 1-50 m2/g, and
Kraeuter also discloses calcium hydroxide having a BET surface area greater
than 5 m2/g (id. at 9). As such, the Examiner finds that both Kraeuter and
Seki suggest BET surface areas that overlap and, therefore, render obvious
the claimed range (id.).
When the prior art teaches away from a combination, that
combination is more likely to be nonobvious. KSR Int 'l. Co. v. Teleflex Inc.,
550 U.S. 398, 417 (2007). "A reference may be said to teach away when a
person of ordinary skill, upon reading the reference, would be discouraged
from following the path set out in the reference, or would be led in a
direction divergent from the path that was taken by the applicant." In re
Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). Further, references in a
combination may be said to teach away where their combined teachings
would produce a "seemingly inoperative device". See In re Sponnoble, 405
F.2d 578, 587 (CCPA 1969).
Teaching an alternative or equivalent method, however, does not
teach away from the use of a claimed method. See In re Dunn, 349 F.2d
433,438 (CCPA 1965). "A reference does not teach away, however, ifit
merely expresses a general preference for an alternative invention but does
not 'criticize, discredit, or otherwise discourage' investigation into the
invention claimed." DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc.,
567 F.3d 1314, 1327 (Fed. Cir. 2009) (citing In re Fulton, 391 F.3d 1195,
1201 (Fed. Cir. 2004)). Rather, teaching away requires "clear
discouragement" from implementing a technical feature. In re Ethicon, Inc.,
844 F.3d 1344, 1351 (Fed. Cir. 2017). "A reference teaches away when it
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Application 14/406,915
suggests that the line of development flowing from the reference's
disclosure is unlikely to be productive of the result sought by the applicant."
Santarus, Inc. v. Par Pharm., Inc., 694 F.3d 1344, 1354 (Fed. Cir. 2012)
(quotingMedichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir.
2006) ( quotations omitted)).
Here, Seki clearly teaches that a flame retardant polymer composition
having an amount of metal hydroxide such as calcium hydroxide in excess
of 2 wt.% "tends to result in low flame retardancy, heat resistance and
molding thermal stability" (Seki ,r 102). Since the object of Appellant's
invention as well as Seki' s is a polymer composition with flame retardant
properties, Seki' s teaching that amounts of metal hydroxide such as calcium
hydroxide greater than 2 wt.% result in low flame retardancy clearly
discourages use of amounts greater than 2 wt.%. As such, Seki teaches
away from the amounts recited in the claims which are at least 20 times
more than Seki's upper limit and at least 8 times more than Kraeuter's most
preferred lower limit.
Thus, although Kraeuter' s amount of mineral filler containing calcium
hydroxide-greater than 5 masso/o--in the polymer composition appears to
encompass the amount of mineral filler containing calcium hydroxide recited
in the claims, Seki teaches away from optimizing the amount in Kraeuter
significantly above Kraeuter' s disclosed most preferred lower limit of 5
mass%. Therefore, the ordinary artisan would have no reasonable
expectation of success in using amounts of mineral filler containing calcium
hydroxide from 40 to 7 5 wt.% in a flame retardant polymer composition. 6
6 We need not address the issue as to whether Appellant has demonstrated
that the claimed amounts, when combined with calcium hydroxide having a
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Application 14/406,915
Accordingly, we do not sustain the Examiner's obviousness rejection
of claim 1, nor of dependent claims 8, 9, 11, and 12.
Claims 25-27
Claims 25-27 recite a combustion residue of the composition of claim
1. We note, in rejecting claims 25-27, the Examiner relies on the same
findings and conclusions as set forth above with regard to claim 1.
Therefore, the rejection of these claims suffer from the same deficiency as
identified above for the rejection of claim 1. Accordingly, we likewise do
not sustain the Examiner's obviousness rejection of claims 25-27.
Claims 2-7
The Examiner rejects claims 2-7 adding Herbiet to the combination of
Kraeuter and Seki applied to claim 1 above. However, the Examiner does
not rely on Herbiet to remedy the deficiency in the combination of Kraeuter
and Seki. Accordingly, we do not sustain the Examiner's obviousness
rejection of claims 2-7 over Kraeuter in view of Seki and Herbiet.
DECISION
Upon consideration of the record, and for the reasons given above and
in the Appeal Brief, the decision of the Examiner rejecting claims 1-9, 11,
12, and 25-27 is reversed.
REVERSED
BET surface area greater than 25 m2/g and less than 60 m2/g, produce
unexpected results.
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