Ex Parte Nicholas

Patent Trial and Appeal BoardMay 27, 2014

12485648 (P.T.A.B. May. 27, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE ________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ________________ Ex parte GEORGE F. NICHOLAS1 ________________ Appeal 2012-011610 Application 12/485,648 Technology Center 1700 ________________ Before TERRY J. OWENS, PETER F. KRATZ, and MARK NAGUMO, Administrative Patent Judges. NAGUMO, Administrative Patent Judge. DECISION ON APPEAL George F. Nicholas (“Nicholas”) timely appeals under 35 U.S.C. § 134(a) from the final rejection2 of claims 1-17 and 19.3 We have jurisdiction. 35 U.S.C. § 6. We affirm. 1 The real party in interest is listed as The Boeing Company. (Appeal Brief, filed 13 February 2012 (“Br.”), 3.) 2 Office action mailed 11 August 2011 (“Final Rejection,” cited as “FR”). 3 Copending claims 18 and 20 have been withdrawn from consideration and are not before us. (FR 1, § 4a; Br. 5.) Appeal 2012-011610 Application 12/485,648 2 OPINION A. Introduction4 The claimed subject matter on appeal relates to methods of adding aqueous solutions of fire-retardant organic phosphate esters to foam substrates, in particular, to open-cell melamine substrates. The products are said to be lightweight, and to have thermal and acoustic properties that make them attractive as insulation materials in commercial aircraft. (Spec. 1 [0002].) Claim 1 is representative and reads: A method for making a flame propagation resistant foam from a foam substrate comprising the steps of: preparing a flame-retardant solution comprising an organic phosphate ester in an aqueous carrier; contacting said foam substrate with said flame-retardant solution; and after said contacting step, curing said foam substrate at a predetermined temperature for a predetermined amount of time. (Claims App., Br. 14; some indentation and paragraphing added.) The Examiner maintains the following grounds of rejection:5 A. Claims 1-6, 8-17, and 19 stand rejected under 35 U.S.C. § 103(a) in view of the combined teachings of Thom6 and Yang.7 4 Application 12/485,648, Flame propagation resistant foam and method, filed 16 June 2009. We refer to the specification as the “648 Specification and cite it as “Spec.” 5 Examiner’s Answer mailed 18 May 2012 (“Ans.”). 6 Arnd Thom, Melamine resin foam, U.S. Patent 6,350,511 B2 (2002). Appeal 2012-011610 Application 12/485,648 3 A1. Claim 7 stands rejected under 35 U.S.C. § 103(a) in view of the combined teachings of Thom, Yang, and Prybutok.8 B. Discussion Findings of fact throughout this Opinion are supported by a preponderance of the evidence of record. The Examiner finds that Thom discloses all aspects of the methods covered by independent claim 1, but for the use of an aqueous solution of phosphate ester as the fire-retardant. (FR 2, ll. 11-18, and 4, ll. 4-11.) In particular, Thom describes contacting an open-cell melamine resin foam (Thom, col. 1, l. 3) such as BASOTECT® (from BASF Aktiengesellschaft) (id. at 6-8) with an aqueous solution of a salt of phosphoric acid at, for example, 1-50 w% (id. at ll. 27-31). Thom teaches that “excess liquid is squeezed out if appropriate, and the foam is dried.” (Id. at ll. 40-41.) Drying may be done at elevated temperatures in an oven, or “preferably simply by storage at room temperature in free contact with the atmosphere for a number of hours.” (Id. at ll. 42-46.) The Examiner finds (FR 3, ll. 5-9) that Yang teaches the equivalence of phosphate salts and phosphate esters as flame retardants for treating polymer materials inclusive of melamine resins (Yang, col. 6, ll. 31, 34, and 37-49), and also the equivalence of polyolefins and melamine resins (id. at col. 10, ll. 16-18 and 31). 7 Wu Yang et al., Resin additive composition and process for producing the same, U.S. Patent 7,052,630 B2 (2006). 8 Jarred M. Prybutok, U.S. Patent Application Publication 2006/0194893 A1 (2006). Appeal 2012-011610 Application 12/485,648 4 The Examiner concludes it would have been obvious to use phosphate esters as an equivalent fire-retardant material for the phosphate salts described by Thom. Initially, we find that Nicholas presents arguments for the separate patentability of independent claims 1 and 19,9 and for claim 15, which depends from claim 1. All claims other than those discussed separately infra thus stand or fall with claim 1. Nicholas urges that Yang “specifically teaches away from the method disclosed in Thom.” (Br. 10, l. 7.) The gist of Nicholas’s argument, as we understand it, is that Yang is concerned with overcoming the problems of treating hydrophobic polymers such as polyolefins with hydrophilic additives, such as fire-retardant phosphate salts and esters. The short answer is that Thom teaches that there is no problem treating open cell melamine resins—in particular, BASOTECT® MF foams—with aqueous solutions of fire-retardant phosphate salts. A person having ordinary skill in the art would have learned from Yang that organic phosphate esters have the same “problem” of hydrophilicity as phosphate salts, as well as the same fire- retardant character for resins such as polyolefins and melamines. Armed with that knowledge, that person would have had a reasonable expectation of successfully substituting hydrophilic organic phosphate esters as the fire- retardant material in the aqueous solutions of hydrophilic phosphate salts described by Thom. 9 Claim 12, which depends from claim 1, is argued together with claim 19. Appeal 2012-011610 Application 12/485,648 5 Nicholas argues further that “[t]here is no consideration of curing the foam substrate at a predetermined temperature for a predetermined amount of time.” (Br. 11, last two lines.) This argument is without merit. Nicholas recommends using the same material, BASOTECT® (Spec. 3 [0013]) that Thom recommends (Thom, col. 1, ll. 6-9). Thom recommends drying at elevated temperatures in an oven, but even the disclosure that drying may be done at room temperature in free contact with the atmosphere for a number of hours suffices to meet the “curing” limitation in the absence of a limiting definition of the term “curing.” Nicholas has not directed our attention to such a definition in the supporting disclosure. We are not persuaded of harmful error in the rejection of claim 1. Nicholas argues further that Thom does not disclose squeezing out excess liquid during the contacting step, as required by claims 12 and 19, but only after the contacting step. (Br. 12, ll. 4-10.) According to Nicholas, “[t]here is a difference between mechanically deforming the foam substrate during the contacting step and squeezing the foam to remove excess liquid.” (Id. at ll. 10-12.) We are not persuaded of harmful error. Nicholas has not directed our attention to a definition of the “contacting step” in the disclosure that terminates the “contacting step” at any particular time. Giving the term the reasonable meaning that “contacting step” lasts as long as the aqueous solution of phosphate ester wets the foam without significant change in the character of the foam or the aqueous solution, we have no difficulty finding that this limitation is fully met by Thom’s disclosure. Appeal 2012-011610 Application 12/485,648 6 Nicholas urges further that the Examiner failed to establish a motivation to perform the repeated contacting with aqueous fire-retardant solution after the squeezing step required by claim 15. The Examiner’s reliance on the generic obviousness of repetition of parts is, in Nicholas’s view, inadequate. (Br. 12, ll. 13-21.) We are not persuaded of harmful error. Thom teaches that “the depth of penetration of the solution here should be at least 1 mm.” (Thom, col. 1, l. 48-col. 2, l. 2.) Even without this teaching, the experience of household chores indicates that loading a porous substrate with an additive in a liquid solution is a process that is advantageously repeated to assure even or thorough distribution. It is improper to attribute less than ordinary skill to artisans. Finally, Nicholas does not argue for patentability based on so-called “secondary considerations” such as unexpected results or commercial success. Nor did Nicholas file a Reply. We conclude that Nicholas has not shown harmful error in the appealed rejections. C. Order We affirm the rejection of claims 1-17 and 19. 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 Appeal 2012-011610 Application 12/485,648 7 cdc