Ex Parte Gordon-Duffy et al

Patent Trial and Appeal Board

Jun 30, 2016

13139406 (P.T.A.B. Jun. 30, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/139,406 06/13/2011
109 7590 07/05/2016
The Dow Chemical Company
P.O. BOX 1967
2040 Dow Center
Midland, MI 48641
FIRST NAMED INVENTOR
John Gordon-Duffy
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.
67596 US-PCT 1261
EXAMINER
COONEY, JOHN M
ART UNIT PAPER NUMBER
1765
NOTIFICATION DATE DELIVERY MODE
07/05/2016 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,
DAVID R. ARROWSMITH, SIMON P. LEE,
and RALPH SCHMIDT
Appeal2014-008449
Application 13/139,406
Technology Center 1700
Before ADRIENE LEPIANE HANLON, KAREN M. HASTINGS, and
JULIA HEANEY, Administrative Patent Judges.
HANLON, Administrative Patent Judge.
DECISION ON APPEAL
A. STATEMENT OF THE CASE
The Appellants filed an appeal under 35 U.S.C. § 134 from an Examiner's
decision finally rejecting claims 1-8 and 10-16 under 35 U.S.C. § 103(a) as
unpatentable over Stobby1 in view of Gluck et al. 2,3 We have jurisdiction under
35 U.S.C. § 6(b).
1 US 2008/0064774 Al, published March 13, 2008 ("Stobby").
2 US 6,340,713 Bl, issued January 22, 2002 ("Gluck").
3 The Examiner indicates that the rejections of claims 1-8 and 10-16 under
35 U.S.C. § 112, second paragraph, and 35 U.S.C. § 112, first paragraph, based on
Appeal2014-008449
Application 13/139,406
We REVERSE.
The claims on appeal are directed to an extruded polymer foam (claims 1-8)
and a process for preparing the extruded polymer foam (claims 10-16) wherein the
foam passes the Gennan B2 fire test of DIN 4102.
Representative claim 1 is reproduced below from the Claims Appendix of
the Appeal Brief dated February 14, 2014 ("App. Br."). The limitations at issue
are italicized.
1. An extruded polymer foam comprising:
a. a polymer matrix wherein greater than 50 weight-percent
of all polymers in the polymer matrix are alkenyl aromatic polymers;
b. 0.8 weight-percent or more and 1.4 weight-percent or
less of bromide within the polymer matrix based on polymer matrix
weight;
c. 0.05 weight-percent or more and 0.5 weight-percent or
less of a hydrobromic acid scavenger dispersed within the polymer
matrix based on polymer matrix weight; and
d. less than 0.1 weight-percent of C-C and 0-0 labile
organic compounds dispersed in the polymer matrix based on polymer
matrix weight; and
e. 0.5 weight-percent or more and up to 1.5 wt% graphite
dispersed within the polymer matrix based on total polymer matrix
weight;
and characterized by the extruded polymer foam passing the German
B2 fire test of DIN 4102.[4]
App. Br. 15 (emphasis added).
the written description requirement have been withdrawn. Examiner's Answer
dated July 1, 2014 ("Ans."), at 5.
4 We understand "based on polymer matrix weight" in "b.," "c.," and "d." and
"based on total polymer matrix weight" in "e." to be synonymous.
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Appeal2014-008449
Application 13/139,406
B. DISCUSSION
The Examiner finds Stobby discloses preparations of extruded polystyrene
foam comprising, inter alia, bromide containing fire retardants, stabilizers
corresponding to the claimed hydrobromic acid scavenger, and no C-C and 0-0
labile organic compounds. Ans. 2. The Examiner finds Stobby differs from the
claims on appeal "in that it does not particularly recite graphite as a common
additive." Ans. 4.
The Examiner finds Gluck uses graphite in amounts that overlap the claimed
range to achieve good fire retardant and flame extinction properties in polystyrene
foams. Ans. 4; see also Gluck, col. 2, 11. 39-41 ("graphite particles are preferably
present in the styrene polymer in amounts of from 0.05 to 25% by weight"). The
Examiner concludes that it would have been obvious to one of ordinary skill in the
art to add graphite, as disclosed Gluck, to the foam preparation of Stobby "for the
purpose of imparting good flame retarding and extinguishing effects" to Stobby's
L" _ _ __ _ A __ _ A
lUaIIl. AilS. "+.
The Appellants argue Gluck discloses that the addition of graphite to
styrenic foam renders the foam "more difficult to pass important building fire tests
such as the B2 classification." App. Br. 11. To solve this problem, the Appellants
argue Gluck adds more than 2.1 % bromine by weight, which is more than the
claimed amount. 5 App. Br. 11-12 (citing Gluck, col. 2, 11. 44--58 (bromine
5 Claim 1 recites "0.8 weight-percent or more and 1.4 weight-percent or less of
bromide within the polymer matrix based on polymer matrix weight." App. Br. 15.
We find that bromine is the chemical element (Br) and bromide is a bromine atom
with an ionic charge of -1 (Br} On appeal, the Appellants appear to use bromine
and bromide interchangeably. See Spec. 5, 11. 25-26 ("Br concentration includes
Br bound to a flame retardant compound as well as any other form of Br.").
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Appeal2014-008449
Application 13/139,406
compounds should have a bromine content of 2:70% by weight)). 6 Thus, according
to the Appellants, "[ o ]ne of ordinary skill in the art looking to modify Stobby with
graphite based on the teachings of Gl[u]ck would reasonably expect to require
more than 2.1 wt% bromine to achieve the B2 rating claimed in the present
invention." App. Br. 12 (emphasis omitted).
Gluck discloses:
A problem associated with the use of graphite particles is the
ready flammability of the expanded polystyrene foams containing
graphite particles. Thus, graphite-containing polystyrene foams have
hitherto not been able to pass the burning tests required for use in
building and construction (B 1 and B2 in accordance with DIN 4102).
To rectify this defect, flame retardants, particularly ones based
on organic bromine compounds, are added to the expandable styrene
polymers in a preferred embodiment of the invention. The bromine
compound (without a synergist)[7J should be added in an amount of
more than 3 % by weight, based on the weight of the expandable
styrene polymers. B 1 and B2 are not passed when the customary
amount of flame retardant is used. The organic bromine compounds
should have a bromine content of 2:70% by weight.
Gluck, col. 2, 11. 44--58.
The Examiner finds this disclosure in Gluck cannot be assumed to apply to
the polystyrene foam disclosed in Stobby. Ans. 8. The Examiner finds Stobby's
polystyrene foam not only comprises a bromine-based fire retardant, as disclosed
in Gluck, but also comprises "brominated flame retardant stabilizing acid
scavengers that are particularly desired for their effects of reducing decomposition
6 According to the Appellants, a bromine content of 2:70% by weight is "more than
2.1 % by weight bromine based on expandable styrene polymer weight (70% of 3%
is 2.1 %)." App. Br. 12.
7 According to the Appellants' Specification, C-C and 0-0 labile organic
compounds are synergists. Spec. 6, 11. 19--21.
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Appeal2014-008449
Application 13/139,406
ofbrominated fire retardants." Ans. 8-9. According to the Examiner, "[t]he rather
obvious revelation from this disclosure of Stobby is that these acid scavengers
would enable more flame retardancy from less brominated flame retardant." Ans.
9.
We understand that Stobby's polystyrene foam includes acid scavengers
which "stabilize brominated flame retardants by reacting with acids that may
catalyze the decomposition of the brominated flame retardant." Stobby i-f 32. As a
result, the polystyrene foam disclosed in Stobby can be said to comprise a low
amount of bromide. See Spec. 5, 11. 14--29 (characterizing an extruded polymer
foam having a bromide concentration of 1.4 wt% or less based on the polymer
weight in the foam as "a low Br concentration foam"); Ans. 2 (finding that
Stobby' s foam comprises bromide in an amount that overlaps the claimed range).
Nonetheless, it is not readily apparent on this record why the presence of Stobby's
acid scavengers, which react with acids, would have suggested that the claimed
amount of graphite could have been added to Stobby's foam with a reasonable
expectation of passing the German B2 fire test of DIN 4102, while maintaining a
bromide content within the claimed range (e.g., 1.4 weight-percent). For this
reason, the§ 103(a) rejection of claims 1-8 and 10-16 is not sustained.
C. DECISION
The decision of the Examiner is reversed.
REVERSED
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