Ex Parte Nandi

Patent Trial and Appeal BoardOct 31, 2012

11648466 (P.T.A.B. Oct. 31, 2012)

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. 11/648,466 12/28/2006 Malay Nandi 7662 3546 29602 7590 11/01/2012 JOHNS MANVILLE 10100 WEST UTE AVENUE PO BOX 625005 LITTLETON, CO 80162-5005 EXAMINER BOYLE, KARA BRADY ART UNIT PAPER NUMBER 1766 MAIL DATE DELIVERY MODE 11/01/2012 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 MALAY NANDI __________ Appeal 2011-004373 Application 11/648,466 Technology Center 1700 ____________ Before CHARLES F. WARREN, BEVERLY A. FRANKLIN, and MICHAEL P. COLAIANNI, Administrative Patent Judges. COLAIANNI, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-004373 Application 11/648,466 2 Appellant appeals under 35 U.S.C. § 134 from the final rejection of claims 1, 5, 6, and 8-10. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b). We AFFIRM. Appellant’s invention is directed to a polyisocyanurate foam composition that includes 10 to 15 wt.% calcium carbonate as a filler having a particle size range from 14 to 25 . Claim 1 is illustrative: 1. A polyisocyanurate foam composition comprising an isocyanate reactive compound, a polyisocyanate, blowing agent and non-coated calcium carbonate filler component, wherein the amount of calcium carbonate filler in the composition ranges from 10 to 15 wt % based upon the weight of isocyanate reactive compound, and the particle size of the calcium carbonate filler ranges from 14 to 25 . Appellant appeals the following rejections: 1. Claims 1, 5, 6, 8, and 10 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Halterbaum (US 2002/0171164 A1 issued Nov. 21, 2002). 2. Claim 9 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Halterbaum in view of Peterson (US 4,386,166 issued May 31, 1983). Appellant’s arguments focus on claim 1 only (App. Br. 3-5). Appellant’s arguments regarding claim 9 rely on arguments regarding claim 1such that claim 9 will stand or fall with our analysis of claim 1 (id. at 4-5). Appeal 2011-004373 Application 11/648,466 3 ISSUE Did the Examiner reversibly err in determining that after consideration of Appellant’s evidence of nonobvious and the evidence of obviousness in light of Halterbaum anew, the preponderance of the evidence favors the Examiner’s obviousness conclusion? We decide this issue in the negative. FINDINGS OF FACT AND ANALYSES The Examiner finds that Halterbaum teaches a polyisocyanurate foam composition that includes all the elements recited in claim 1 (Ans. 4). The Examiner finds that Halterbaum teaches that filler that may be added to the composition includes calcium carbonates having a particles size from submicron particles to 200 microns, which overlaps with and thus would have rendered obvious Appellant’s claimed particle size range (id. at 4-5). The Examiner further finds Halterbaum teaches that the proportion (i.e., amount) and particle size of the filler to be employed is within the purview of the skilled artisan fabricating the foam (id. at 5). The Examiner finds that Halterbaum recognizes the amount and particles size of the filler to be a result-effective variable that would have been optimized to arrive at a composition falling within the claimed size and amount ranges (id.). Appellant argues that presently claimed subject matter would not have been obvious to the skilled artisan, but Appellant does not specifically challenge any of the Examiner’s findings (App. Br. 3-4). We find that based on the Examiner’s findings and conclusion noted above the Examiner has established a prima facie case of obviousness. Appellant argues that evidence contained in Table 3 of the Specification establishes “surprising” results achieved because of the recited Appeal 2011-004373 Application 11/648,466 4 combination of loading and particle size rebuts any prima facie case of obviousness (id. at 3). Appellant contends that the data in Table 3 of the Specification establishes that physical properties such as friability, R-factor, and compressive strength to density ratio are best when the particle size of the calcium carbonate filler is between 14 and 25 (id. at 4). Appellant argues that the data in Table 3 shows that the discovery that using non- coated calcium carbonate versus coated calcium carbonate is quite different and surprising (id.). Appellant contends that there is no suggestion in the prior art of this result (i.e., using non-coated calcium carbonate). Id. We agree and adopt the Examiner’s analysis of Appellant’s secondary considerations on pages 7-13 of the Answer as our own. We add the following for emphasis. Appellant’s evidence of secondary consideration is not probative of non-obviousness because Appellant never indicates that the results obtained are unexpected. In re Nolan, 553 F.2d 1261, 1267 (CCPA 1977). Appellant fails to explain how the property data in Table 3 that includes 14  and 25  sized particles in an amount of 10 wt.% compares to the property data for lower particle sizes with greater amounts (i.e., 15 wt.%) or why the result is unexpectedly better with a particles size of 14  or 25 .. Indeed, the Examiner finds that properties obtained can be inconsistent and do not necessarily establish a trend in the data that establishes the criticality of the particle size or amount of the filler (Ans. 9-10). We agree with the Examiner that Appellant’s data in Table 3 includes only data for 14  and 25  particle sizes in an amount of 10 wt.%. This evidence is not commensurate in scope with the claimed range of 10 wt.% to 15 wt.%. In re Clemens, 622 F.2d 1029, 1035 (CCPA 1980). Appeal 2011-004373 Application 11/648,466 5 Appellant’s data further does not adequately compare the claimed invention with the closest prior art (i.e., Halterbaum). Halterbaum teaches that particle sizes can range from submicron to 200 microns. Accordingly, as indicated by the Examiner, a comparison with Halterbaum should include particles sizes greater than 25  in order to show criticality of the claimed particle size range relative to the teachings of Halterbaum (Ans. 10). Appellant’s argument regarding the criticality of using non-coated versus coated calcium carbonate is not persuasive because the Examiner finds that Halterbaum teaches non-coated calcium carbonate. This finding is not challenged by Appellant. On this record, we affirm the Examiner’s § 103 rejections. DECISION The Examiner’s decision is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136. ORDER AFFIRMED bar