Ex Parte Mabey

Patent Trial and Appeal Board

Feb 21, 2014

12317715 (P.T.A.B. Feb. 21, 2014)

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.
12/317,715 12/23/2008 Michael John Mabey MinFmFR-799 6423
41324 7590 02/21/2014
CHRISTOPHER JOHN RUDY
209 HURON AVENUE, SUITE 8
PORT HURON, MI 48060
EXAMINER
CHANG, VICTOR S
ART UNIT PAPER NUMBER
1788
MAIL DATE DELIVERY MODE
02/21/2014 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 MICHAEL JOHN MABEY
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Appeal 2012-010525
Application 12/317,715
Technology Center 1700
________________

Before TERRY J. OWENS, ROMULO H. DELMENDO, and
DONNA M. PRAISS, Administrative Patent Judges.

OWENS, Administrative Patent Judge.

DECISION ON APPEAL
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Application 12/317,715

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STATEMENT OF THE CASE
The Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-19. We have jurisdiction under 35 U.S.C. § 6(b).
The Invention
The Appellant claims a thermal barrier polymer composite. Claim 1
is illustrative:
1. A thermal barrier synthetic polymer composite, which comprises a
synthetic polymer matrix made from reaction of a mixture of at least an
isocyanate and an active hydrogen containing compound, in intimate
admixture and combination with at least two water-releasing mineral
additives such that thermal barrier, fire resistance, fire retardant and smoke
reducing properties are provided by the composite, wherein:
the synthetic polymer matrix is selected from the group consisting of a
polyurethane, a polyurethaneurea, a polyurea, a polyisocyanurate, and an
analog thereof;
the at least two water-releasing mineral additives comprise a first
mineral additive capable of releasing water at a temperature between about
100°C and 200°C, present up to about 15% by weight of starting materials,
and a second mineral additive capable of releasing water at a temperature
about from 200°C to 300°C, present up to about 7% by weight of the
starting materials; and
the composite is characterized as including the following properties:
a density of at least about 5 pounds per cubic foot;
a Class 1 flame spread rating of less than 25 when tested to
Can/ULC-Sl02 or the ASTM-E84 Steiner Tunnel Test at from
1 inch to 1.5 inch of thickness of the composite;
a smoke developed rating of 450 or less when tested to
Can/ULC-S102 or the ASTM-E84 Steiner Tunnel Test; and
sufficient fire resistance to withstand at least 15 minutes exposure to
at least 1200°F in order to qualify as a Class A thermal barrier
composite when tested to Can/ULC-S124 or ASTM-E119 for
15 minutes at from 1.0 inch to 1.5 inches of thickness of the
composite.

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Application 12/317,715

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The References
Peterson US 4,386,166 May 31, 1983
Massengill US 2005/0222285 A1 Oct. 6, 2005
The Rejection
Claims 1-19 stand rejected under 35 U.S.C. § 103 over Massengill in
view of Peterson.
OPINION
We affirm the rejection.
The Appellant argues the claims in the following groups: 1) claims 1-
4, 8, 10, 12, and 16, 2) claims 5-7, 9, and 11, 3) claim 13, 4) claim 14,
5) claim 15, 6) claim 17, 7) claim 18, and 8) claim 19 (Br. 2-4). We
therefore limit our discussion to claims 13-15, 17-19 and one claim in each
of the other groups, i.e., claims 1 and 5. Claims 2-4, 8, 10, 12, and 16 stand
or fall with claim 1 and claims 6, 7, 9, and 11 stand or fall with claim 5. See
37 C.F.R. § 41.37(c)(1)(vii) (2007).
Claims 1, 5, 13-15, and 19
Massengill discloses a rigid polyurethane foam made by reacting an
isocyanate-based component with a polyol-based component and being fully
compliant with the ASTM E84 Class A flame retardancy standards (flame
spread rating not exceeding 25 and smoke density rating not exceeding 450)
(¶¶ 0007-09, 0012, 0015, 0025). The foam has intimately mixed therein one
or more flame retardants and/or smoke suppressants, the preferred ones
including aluminum trihydrate1 and magnesium hydroxide,2 in an a amount

1 Aluminum dihydrate is the Appellant’s exemplified second mineral
additive (Spec. 1).
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of about 0 wt% to about 95 wt% of the entire composition, the optimal
amount being about 0 wt% to about 65 wt% (¶¶ 0022, 0026-28). The foam’s
density is about 2-50 lb/ft3 (¶¶ 0013, 0024).
Peterson discloses a polyester-polyurethane foam which has an
ASTM E84 flame spread rating preferably less than 25 and smoke
generation rating less than 450, contains a filler which can be aluminum
trihydrate, magnesium hydroxide or gypsum,3 and has a density of 0.5-
40 lb/ft3 (col. 1, ll. 62-65, col. 2, ll. 1-64, col. 6, ll. 49-53).
The Appellant argues that neither reference discloses a composite
containing the Appellant’s two (claim 1) or three (claim 5) mineral additives
in the recited low amounts, having the recited density and meeting the
recited ASTM E84, ASTM E119 and UL 1715 (claim 13) requirements
(Br. 2-4; Reply Br. 1).
In making an obviousness determination one “can take account of the
inferences and creative steps that a person of ordinary skill in the art would
employ.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
Massengill’s disclosure that one or more flame retardants and smoke
suppressants can be used would have led one of ordinary skill in the art,
through no more than ordinary creativity, to use the disclosed aluminum
trihydrate and magnesium hydroxide in combination (¶ 0026). Massengill’s
disclosure that gypsum is the only true material which is in compliance with
Class A requirements for flame retardancy (¶¶ 0003-04) would have led one

2 Magnesium hydroxide is the Appellant’s exemplified third mineral additive
(claim 5). Supra, n.1.
3 Gypsum (hydrated calcium sulfate) is the Appellant’s exemplified first
mineral additive. Supra, n.1.
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of ordinary skill in the art, through no more than ordinary creativity, to use
Peterson’s gypsum (col. 6, ll. 49-53) with Massengill’s aluminum trihydrate
and magnesium hydroxide to contribute to flame retardancy. Massengill’s
disclosure that the amount of flame retardant and/or flame suppressant
preferably is about 0-65 wt% of the composition (¶ 0028) would have led
one of ordinary skill in the art, through no more than ordinary creativity, to
use an amount of each flame retardant and/or smoke suppressant such that
the total amount is within that range, such as using up to about 15 wt%
gypsum and up to about 7 wt% aluminum trihydrate. Massengill’s
disclosure that the flame spread rating does not exceed 25 and the smoke
density does not exceed 450 (¶ 0015) would have led one of ordinary skill in
the art, through no more than ordinary creativity, to select flame retardants
and smoke suppressants and their amounts to provide desired flame spread
and smoke density ratings within those ranges, such as a flame spread rating
of 15 or less and a smoke density rating of 350 or less (claims 14 and 15).
Massengill’s disclosure that the foam can have a density of about 2-50 lb/ft3
(¶ 0013) would have led one of ordinary skill in the art, through no more
than ordinary creativity, to make the foam such that it has any density within
that range, such as a density of at least about 5 lb/ft3 (claim 1) or about 10-
25 lb/ft3 (claim 19). Massengill does not mention the UL 1715 corner test
(claim 13). However, Massengill’s foam containing the Appellant’s recited
mineral additives in the recited amounts which are arrived at through no
more than ordinary creativity would have the properties of the Appellant’s
foam including the property of passing that test. See In re Papesch, 315
F.2d 381, 391 (CCPA 1963) (“From the standpoint of patent law, a
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Application 12/317,715

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compound and all of its properties are inseparable; they are one and the same
thing”).
The Appellant argues that “Massengill et al., in the only time an
amount of ATH [aluminum trihydrate] was noted, employs 60% by weight
of ATH to yield products with densities of 15-24 lbs./cu.ft., obtaining flame
spread ratings of 29-40, none of which is less than 25, with smoke density
ratings of 884, 896, 338, 461 and 591, only one of the five of which is 450 or
less. See, Massengill et al., page 5, paragraph No. 0061” (Br. 2).
Massengill is not limited to its examples. See In re Fracalossi, 681
F.2d 792, 794 n.1 (CCPA 1982); In re Mills, 470 F.2d 649, 651 (CCPA
1972). Instead, all disclosures therein must be evaluated for what they
would have fairly suggested to one of ordinary skill in the art. See In re Boe,
355 F.2d 961, 965 (CCPA 1966). As indicated above, Massengill and
Peterson would have led one of ordinary skill in the art, through no more
than ordinary creativity, to foams falling within the Appellant’s claims.
Hence, we are not persuaded of reversible error in the rejection of
claims 1-16 and 19.
Claims 17 and 18
The Appellant argues that neither reference discloses a composite
having an exterior hard coat of a more weather-resistant material (claim 17)
or a sandwich panel construction (claim 18).
The Examiner has taken official notice that those claim features were
well known in the art (Ans. 5). Because that finding is reasonable and the
Appellant has not challenged it, we accept it as fact. See In re Kunzmann,
326 F.2d 424, 425 n.3 (CCPA 1964). Hence, we are not persuaded of
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reversible error in the Examiner’s argument that modification of
Massengill’s foam product to include the Appellant’s recited exterior hard
coat or sandwich panel construction would have been prima facie obvious to
one of ordinary skill in the art (Ans. 5-6).
DECISION/ORDER
The rejection of claims 1-19 under 35 U.S.C. § 103 over Massengill in
view of Peterson is affirmed.
It is ordered that 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(a).
AFFIRMED

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