Ex Parte Kish

Board of Patent Appeals and Interferences

Jan 19, 2012

11654431 (B.P.A.I. Jan. 19, 2012)

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.
11/654,431 01/17/2007 William Kish FM-BUG-72X 7416
41324 7590 01/19/2012
CHRISTOPHER JOHN RUDY
209 HURON AVENUE, SUITE 8
PORT HURON, MI 48060
EXAMINER
GRESO, AARON J
ART UNIT PAPER NUMBER
1726
MAIL DATE DELIVERY MODE
01/19/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte WILLIAM KISH
____________________

Appeal 2011-005781
Application 11/654,431
Technology Center 1700
____________________

Before ROMULO H. DELMENDO, JEFFREY B. ROBERTSON, and
DANIEL S. SONG, Administrative Patent Judges.

ROBERTSON, Administrative Patent Judge.

DECISION ON APPEAL

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Application 11/654,431

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STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 1-
20. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
THE INVENTION
The claims are directed to a fire retardant composition having a mold
inhibitor and an insecticide, and methods for making and using it, as well as
the composition in combination with a substrate. (Spec. 1.)
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A composition of matter comprising a fire retardant, a mold
inhibitor, and an insecticide, wherein the fire retardant is at least
initially in a foundational form of an aqueous liquid of light
viscosity and strength, which is capable of being sprayed on
and has ingredients with percentages (%) by weight, in general,
as follows:
Water 70~90%
Phosphorus containing acid 5~15%
Ammonium base 5~15%
Wetting and/or other agent 0.05~0.2%
Preservative 0.01~0.1%;
the mold inhibitor is present in an amount sufficient to kill,
control and/or repel Stachybotrys chartarum when the
composition is applied to, and optionally dried on or in, a
substrate; and the insecticide is present in an amount sufficient
to kill, control and/or repel a target invertebrate when the
composition is applied to, and optionally dried on or in, the
substrate.

(Appeal Brief, Claims Appendix1 CA-1.)

1 Appeal Brief filed August 25, 2010, hereinafter “App. Br.” and “Claims
App’x,” respectively.
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THE REJECTIONS
(I) The Examiner rejected claims 2, 4, and 13-20 under 35 U.S.C.
§ 112, second paragraph, as indefinite. (Examiner’s Answer, dated
November 26, 2010, “Ans.” 4.) (Final Rejection, dated March 23,
2010, “Final” 3.)2

(II) The Examiner rejected claims 1, 3, and 8-12 under 35 U.S.C.
§ 103(a) as unpatentable over Stanley et al. (US 3,899,810) in view
of Curzon et al. (US 2004/0173783 A1) and further in view of
Stossel et al (US 3,414,374). (Ans. 6-14.)

(III) The Examiner rejected claims 2, 4, and 13-20 under 35 U.S.C.
§ 103(a) as unpatentable over Stanley in view of Curzon and
further in view of Stossel and McDaniel (US 2004/0109853 A1).
(Ans. 14-17.)

(IV) The Examiner rejected claims 5-7 under 35 U.S.C. § 103(a) as
unpatentable over Stanley in view of Curzon, McDaniel, Stossel
and Laversanne et al. (US 6,277,404 B1). (Ans. 17-19.)

ISSUES
Rejection I
With respect to claims 2, 4, and 14, the Examiner found that the
language “at least about” rendered those claims indefinite because the word
“about” permits some tolerance. (Ans. 4.) With respect to claim 13, the
Examiner determined that the recitation of ingredients with percentages in
parentheses, e.g., “Polyphosphoric acid (115%),” renders claim 13 indefinite
because, inter alia, one of ordinary skill in the art would not know if these
amounts are specific or optional. (Final 3.)

2 The Examiner withdrew the rejection of claims 2 and 4 under 35 U.S.C.
§112 second paragraph, with respect to the use of the language “ASTM
E84.” (Ans. 3.)
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Appellant argues that although the word, “about,” permits some
tolerance, it is not indefinite to one of ordinary skill in the art in light of the
Specification. (App. Br. 3.) Appellant also argues that one of ordinary skill
in the art would recognize that the term “at least” sets a lower limit for the
claimed percentages. (App. Br. 3.)
Appellant further contends that one of ordinary skill in the art would
recognize that the parentheticals in claim 13 indicate certain types and
percentages of well-known subcomponents. (App. Br. 3-4.) In support of
Appellant’s argument, Appellant points to Stossel, and other patents of
record, which similarly parenthetically explain the strength of ingredients
such as polyphosphoric acid. (App. Br. 4.)

Rejections II-IV
With respect to independent claims 1 and 13, the Examiner found that
the prior art does not disclose a specific amount of polyphosphoric acid
material to be used for a fire retardant composition. (Ans. 11-12.) The
Examiner found that Stossel indicates that the ratio of the aqueous solution
complexes disclosed therein is determined by the amount of phosphorous
and aluminum material present and that one can adjust the viscosity of the
solution by changing the amount of phosphorous material. (Ans. 12.) Based
on this finding, the Examiner determined that the amount of polyphosphoric
acid in a fire retardant composition is a result effective variable. (Ans. 12.)
Appellant argues that the prior art does not provide guidance on how
to arrive at the claimed percentages in light of the unpredictability of the
chemical arts. (App. Br. 5, 7.) Appellant argues, therefore, that the
Examiner is engaging in impermissible hindsight. (App. Br. 5.)
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Therefore, the dispositive issues on appeal are:
(1) Whether the Examiner erred in determining that claims 2, 4, and
14 were indefinite due to the recitation of “at least about”?
(2) Whether the Examiner erred in determining that claim 13 was
indefinite due to its recitation of ingredients with percentages in
parentheses?
(3) Whether the Examiner erred in concluding that one of ordinary
skill in the art would have found it obvious to employ a fire
retardant composition comprising the amount of phosphorus
containing acid claimed by Appellant?

PRINCIPLES OF LAW

35 U.S.C. § 112, second paragraph
The test for definiteness under 35 U.S.C. § 112, second paragraph, is
whether “those skilled in the art would understand what is claimed when the
claim is read in light of the specification.” Orthokinetics, Inc. v. Safety
Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986) (citations
omitted).
“Such broadening usages as ‘about’ must be given reasonable scope;
they must be viewed by the decisionmaker as they would be understood by
persons experienced in the field of the invention. Although it is rarely
feasible to attach a precise limit to ‘about,’ the usage can usually be
understood in light of the technology embodied in the invention.” Modine
Mfg. Co. v. U.S. ITC, 75 F.3d 1545, 1554 (Fed. Cir. 1996) (internal citations
omitted).
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35 U.S.C. § 103
The examiner bears the initial burden of factually supporting any
prima facie case of obviousness. In re Oetiker, 977 F.2d 1443, 1445 (Fed.
Cir. 1992). The key to supporting any prima facie case of obviousness under
35 U.S.C. § 103 is the clear articulation of the reason(s) why the claimed
invention would have been obvious. The Supreme Court in KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 418 (2007) noted that the analysis supporting a
rejection under 35 U.S.C. § 103 should be made explicit. “‘[R]ejections on
obviousness grounds cannot be sustained by mere conclusory statements;
instead, there must be some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness.’” KSR, 550
U.S. at 418 (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).

ANALYSIS
Issue One
We do not agree with the Examiner that Appellant’s use of “at least
about” renders claims 2, 4, and 14 indefinite. We agree with Appellant that
the language “about” permits some tolerance, where one of ordinary skill in
the art would have understood that “about’ provides some variance in the
lower limit of the reduction of surface burning characteristics of 25% and
the lower limit of the reduction in Stachybotrys chartarum growth of 85%.
See Modine Mfg., 75 F.3d at 1554. We also agree with Appellant that one of
ordinary skill in the art would recognize that the term “at least” sets a lower
limit for the percentages following “about” in those claims. Thus, we cannot
agree with the Examiner’s position that “at least about,” when read in light
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of the Specification, would have been indefinite to one of ordinary skill in
the art.

Issue Two
With respect to the Examiner’s determination that the recitation of
ingredients with percentages in parentheses renders claim 13 indefinite, we
do not find this determination sufficiently supported by the record. We
agree with Appellant that one of ordinary skill in the art would recognize
that the parenthetical terms represent certain types and percentages of well-
known subcomponents. As noted by Appellant, Stossel (see e.g., Col. 17, ll.
52-53) and other prior art of record use these same types of annotations to
parenthetically explain the strength of ingredients. Accordingly, we are of
the opinion that the parenthetical annotations of claim 13 would have been
reasonably understood by one of ordinary skill in the art.

Issue Three
We also agree with Appellant that the Examiner erred in concluding
that one of ordinary skill in the art would have found the claimed
percentages of phosphorus containing acid to be obvious in view of the prior
art. The Examiner’s conclusion is based on a determination that the amount
of phosphorous containing acid present in a fire retardant composition is a
result-effective variable. However, Stossel discloses that the amount of
phosphorous material that affects the viscosity of a solution is contingent
upon a ratio of phosphorus and aluminum containing complexes. (Col. 24,
ll. 13-17.) Thus, Stossel does not disclose that the amount of phosphorus
containing acid alone directly affects viscosity; but rather that adjusting a
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specific ratio of phosphorus and certain aluminum-containing complexes
affects the viscosity of the solution. The Examiner has not pointed to any
disclosure of similar aluminum-containing complexes disclosed in Stanley,
which in conjunction with the phosphorus compound, would affect the
viscosity of the compositions therein.
Thus, the Examiner has failed to establish a prima facie case of
obviousness with respect to claims 1 and 13, and for similar reasons, the
Examiner has failed to establish a prima facie case of obviousness with
respect to the remaining dependent claims subject to Rejections II-IV.

CONCLUSIONS
The Examiner erred in determining that claims 2, 4, and 14 were
indefinite due to the recitation of “at least about.”
The Examiner erred in determining that claim 13 was indefinite due to
its recitation of ingredients with percentages in parentheses.
Appellant has demonstrated that the Examiner did not sufficiently
establish that one of ordinary skill in the art would have found it obvious to
employ a fire retardant composition comprising the amount of phosphorus
containing acid claimed by Appellant.

DECISION
We reverse the Examiner’s rejection of claims 2, 4, and 13-20 under
35 U.S.C. § 112, second paragraph, as indefinite.
We reverse the Examiner’s rejection of claims 1, 3, and 8-12 under 35
U.S.C. § 103(a) as unpatentable over Stanley in view of Curzon in view of
Stossel.
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We reverse the Examiner’s rejection of claims 2, 4, and 13-20 under
35 U.S.C. § 103(a) as unpatentable over Stanley in view of Curzon in view
of Stossel in view of McDaniel.
We reverse the Examiner’s rejection of claims 5-7 under 35 U.S.C.
§ 103(a) as unpatentable over Stanley in view of Curzon in view of Stossel
in view of Laversanne.

REVERSED

KMF