Ex Parte Laoutid et al

Patent Trial and Appeal Board

Dec 23, 2013

11658016 (P.T.A.B. Dec. 23, 2013)

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.
11/658,016 12/10/2007 Fouad Laoutid 612.47074X00 3233
20457 7590 12/24/2013
ANTONELLI, TERRY, STOUT & KRAUS, LLP
1300 NORTH SEVENTEENTH STREET
SUITE 1800
ARLINGTON, VA 22209-3873
EXAMINER
VO, HAI
ART UNIT PAPER NUMBER
1788
MAIL DATE DELIVERY MODE
12/24/2013 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 FOUAD LAOUTID,1
Jean Sauttreau, and Laurent Bergogne
________________

Appeal 2012-0113442
Application 11/658,016
Technology Center 1700
________________

Before ADRIENE LEPIANE HANLON, MARK NAGUMO, and
JAMES C. HOUSEL, Administrative Patent Judges.

NAGUMO, Administrative Patent Judge.

DECISION ON APPEAL

1 The real party in interest is listed as Compart SAS. (Appeal Brief,
filed 16 April 2012 (“Br.”), 1.)
2 Heard 19 December 2013. The Official Transcript, which was not
available when this Opinion was entered, will be made of record.
Appeal 2012-011344
Application 11/658,016

2
Fouad Laoutid, Jean Sauttreau, and Laurent Bergogne (“Laoutid”)
timely appeal under 35 U.S.C. § 134(a) from the final rejection3 of claims 1,
3-6, 8-17, 19, and 22-28. We have jurisdiction. 35 U.S.C. § 6. We affirm.
OPINION
A. Introduction4
The subject matter on appeal relates to a firestop material comprising
a polymer foam containing no halogenated compound, a physical charring
agent, a reactive charring agent, and an inorganic flame retardant, each
selected to be activated at different temperatures. The 016 Specification
teaches that a physical charring agent is a material, such as expansible
graphite, that forms a charred layer at the surface of the material when
exposed to a high temperature. (Spec. 8-9.) A reactive charring agent, such
as tricresyl phosphate, reacts with the polymer of the foam at high
temperature to form a charring layer. (Id. at 9.) The inorganic flame
retardant of the invention comprises a mineral filler, such as calcium silicate,
that melts at fire temperatures and forms a skin on the polymer foam
material; and a metal oxide, such as zinc borate, that decomposes
endothermically at fire temperatures and stabilizes the skin. (Id. at 10.)

3 Office action mailed 16 September 2011 (“Final Rejection”; cited as
“FR”).
4 Application 11/658,016, Firestop Material, filed 10 December 2007 as the
National Stage of an international application filed 22 July 2005, claiming
the benefit of an application filed in France on 22 July 2004. The
specification is referred to as the “016 Specification,” and is cited as “Spec.”
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Claim 1 is representative and reads:
A firestop material comprising
a polymer foam containing no halogenated compound
and
flame-retardants designed to form a cohesive charred
layer on the foam surface, for a temperature
corresponding to that of a fire, the flame retardants
comprising
at least one physical charring agent intended to form,
by itself and in the absence of any interaction with any
other constituent of the firestop material, a charred
layer,
at least one reactive charring agent intended to form,
by reacting with the polymer of the foam, a charred
layer on the material surface and
at least one inorganic flame retardant comprising
a mineral filler and
a metal oxide whose decomposition, under the effect
of a temperature corresponding to that of a fire, is
endothermic,
wherein the inorganic flame retardant is configured
such that
the mineral filler can melt at high temperature and
form a skin and
an endothermic-decomposition compound of the
metal oxide stabilizes the skin,
and wherein the physical charring agent, the reactive
charring agent and the inorganic flame retardant are so
selected as to intervene at different stages of the attack
by the fire or the temperature on the firestop material,
successively as the temperature increases.
(Claims App., Br. 14; indentation, paragraphing, and emphasis added.)
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The Examiner maintains the following grounds of rejection:5, 6
A. Claims 1, 3-6, 8-10, 12-17, 19, 22-24, and 26-28 stand
rejected under 35 U.S.C. § 103(a) in view of the combined
teachings of von Bonin7 and Russo.8
A1. Claims 11 and 25 stand rejected under 35 U.S.C. § 103(a) in
view of the combined teachings of von Bonin, Russo, and
Jones.9
B. Discussion
Findings of fact throughout this Opinion are supported by a
preponderance of the evidence of record.
The Examiner finds that von Bonin discloses all components required
by appealed claim 1 but for “the mineral filler that can melt at high
temperature and form a skin.” (FR 2, last para., through 3.) In particular,
von Bonin teaches halogen-free polyurethane foam compositions comprising
expanded graphite (corresponding to the physical charring agent) in essential
“combination with one or more components from the group consisting of
phosphorus-containing polyols, borates and amine salts.” (von Bonin col. 3,
ll. 35-39.) Among borates, von Bonin particularly mentions zinc borates.

5 Examiner’s Answer mailed 6 June 2012 (“Ans.”).
6 Rejections based on the combined teachings of von Bonin and Park (U.S.
Patent 4,266,042 (1981)) were withdrawn by the Examiner.
7 Wulf von Bonin and Dietmar Schäpel, Fire retardant foams comprising
expandable graphite, amine salts and phosphous polyols, U.S.
Patent 5,173,515 (1992).
8 Robert Victor Russo, Fire-retardant polyurethane, U.S. Patent 4,002,580
(1977).
9 David Russel Jones et al., EP 0 450 693 A1 (1991).
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(Id. at ll. 62-63.) von Bonin further teaches the use of organophosphate
compounds such as ethylenediamine phosphates. (Id. at col. 4, ll. 9-10;
FR 2, last para.) von Bonin also teaches that mineral fillers can be added.
(von Bonin, col. 1, ll. 63-65 (cited by Laoutid at Br. 6, ll. 6-810).) As the
Examiner recognizes (FR 3, ll. 10-11), von Bonin does not disclose the use
of calcium silicate as a filler. The Examiner finds that Russo teaches that
calcium silicate, in particular, acicular calcium metasilicate, may be
incorporated in polyurethane cellular foams as “a reinforcing agent,
improving the tear strength, tensile strength and load bearing properties of
the polyurethane to which it is added.” (Russo, col. 15, ll. 45-55.)
The Examiner held that it would have been obvious to use calcium
silicate as a filler in the compositions disclosed by von Bonin in order to
obtain the reinforcing qualities disclosed by Russo. (FR 3, ll. 14-18.)
The use of a recognized species of material disclosed to be useful in a
composition is prima facie obvious. Laoutid has not shown that the relative
amounts of materials suggested by von Bonin and Russo would be outside of
the range of components suitable for obtaining the properties recited in the
claims. In this regard, Laoutid’s arguments that Russo, by teaching
improved resistance to discoloration, teaches away from the claimed
invention are not convincing of harmful error in the Examiner’s rejection.
The Examiner has relied on Russo’s teachings regarding calcium

10 We do not understand how Laoutid (Br. 6, ll. 6-8) can characterize this
passage, which extends to column 2, line 4, and which includes materials
such as glass powder, glass globules, calcium carbonate and
aluminosilicates, as not including mineral filler. Perhaps Laoutid intended
to refer to the additional properties recited in claim 1.
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metasilicate as an unexpectedly desirable reinforcing agent for polyurethane
foams. Russo’s other teachings, which focus on lessening the amount of
2,3-dibromo-2-butenediol-1,4, present as a chain extender and reactive fire-
retardant component by providing certain organophosphorus compounds,
have not been shown to be relevant. Laoutid has not argued in the Brief11 or
in the Reply,12 let alone demonstrated, that Russo’s teachings regarding
calcium metasilicate as an additive are limited to the particular polyurethane
foams described by Russo.13
Laoutid argues that neither von Bonin nor Russo, individually,
disclose or render obvious the claimed invention. (Br. 5, l. 13 to 6, l. 11.)
We are not persuaded of harmful error in the Examiner’s rejections because
such arguments do not address the combined teachings of the references as
advanced by the Examiner.
Laoutid argues further for patentability based on unexpected results,
in particular, that the combination of a mineral filler and a metal oxide

11 See especially Br. 6, 3d para., through 7.
12 Reply Brief filed 3 August 2012 (“Reply”).
13 Counsel argued at the hearing that Russo “teaches away” at column 15,
lines 34-63, from the introduction of other filler materials, and that Russo’s
teachings regarding the acicular calcium metasilicate are limited to the
halogenated polyurethanes of Russo’s invention. We do not find these
arguments persuasive for at least two reasons. First, they are belated, as we
find no fair trace of these arguments in the Brief or in the Reply. See
37 C.F.R. §41.37(e)(1) (2013), which is identical to the version in force
when the briefs were filed, and which excludes evidence and arguments not
present in the briefs. Second, the teachings of the benefits of that material
are fairly read as being general to polyurethanes and particularly cellular
foams of polyurethanes.
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“leads to synergistic results.” (Br. 7, l. 14-15.) The difficulty with these
arguments is the absence of any supporting experimental data or other
credible evidence. Whether results are unexpected is a factual inquiry. See,
e.g., In re Harris, 409 F.3d 1339, 1341 (Fed. Cir. 2005). As our reviewing
court has long held, “[m]ere lawyer's arguments and conclusory statements
in the specification, unsupported by objective evidence, are insufficient to
establish unexpected results.” In re Soni, 54 F.3d 746, 750 (Fed. Cir. 1995),
quoting In re Wood, 582 F.2d 638, 642 (CCPA 1978). The present
specification provides no working examples or test results demonstrating the
formation, at different temperatures, of any charred layers, cohesive or
otherwise, and there are no control examples. As a result, we have not been
placed in a position to make any relevant findings of fact regarding the state
of the prior art, the nature of the advances due to the claimed invention, and
whether those advances would have been regarded as unexpected by persons
having ordinary skill in the art.
Laoutid does not raise substantively separate arguments regarding the
patentability of the other claims, including those rejected further in view of
Jones.
The broad claims on appeal limit the components of the firestop
composition primarily by their function—only the most generic properties,
e.g., the “mineral filler” has a high melting temperature and can form a skin,
and the skin can be stabilized by a decomposition product of the metal
oxide. The 016 Specification in turn provides relatively sparse guidance as
to the identity of suitable materials, relative amounts, and still less regarding
interactions between components to be sought or avoided. Under these
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circumstances, the burden on the Examiner to come forward with evidence
probative of obviousness is far less than when the specification or the
applied prior art teaches that many constraints must be met to obtain the
desired properties.
On the present record, we are not persuaded of harmful error in the
appealed rejections.
C. Order
We affirm the rejection of claims 1, 3-6, 8-17, 19, and 22-28.
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

cdc