Ex parte RINEHART et al.

Board of Patent Appeals and Interferences

Apr 30, 1998

07853224 (B.P.A.I. Apr. 30, 1998)

Application for patent filed March 17, 1992.1
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered
today (1) was not written for publication in a law
journal and (2) is not binding precedent of the Board.
Paper No. 20
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte ROBERT E. RINEHART
and PETER J. KARTHEISER
_________
Appeal No. 94-4259
Application 07/853,2241
_________
ON BRIEF
_________
Before DOWNEY, METZ and PAK, Administrative Patent Judges.
DOWNEY, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the final rejection of claims 1,
3-10, 12, 14-17 and 24; claims 18-23 pending in the application are directed to a non-
elected invention and, thus, are not before us.
Appeal No. 94-4259
Application 07/853,224
2
The subject matter on appeal is directed to a flame retardant multilayer
structure.
Appellants separately argue claims 1, 16, 17 and 21. Claim 1 is
representative of the invention and reads as follows:
1. A multi-layer structure comprising:
a first layer comprising a composition comprising a fire retardant polyolefin,
and,
a second layer comprising a composition comprising a polyamide and a
phosphonate ester of the formula:
wherein “x” is 0 or 1.

The references relied upon by the examiner are:
Anderson et al. (Anderson) 3,789,091 Jan. 29, 1974
Campbell 4,327,248 Apr. 27, 1982
Hauser et al. (Hauser) 4,732,789 Mar. 22, 1988
Kartheiser 4,868,054 Sep. 19, 1989

Appeal No. 94-4259
Application 07/853,224
The examiner in his answer (page 6) referred to and relied upon the2
Anderson reference, however, he failed to list it in the statement of the rejection. Where a
reference is relied on to support a rejection, whether or not in a minor capacity, there would
appear to be no excuse for not positively including the reference in the statement of the
rejection. In re Hoch, 428 F.2d 1341, 1342 n.3, 166 USPQ 406, 407 n.3 (CCPA 1970).
Appellants filed a reply brief responding to the examiner’s reliance upon Anderson.
Accordingly, we consider the statement of the rejection to include the Anderson reference.
Claim 8, which depends from claim 1, recites a mixture of fire retardants,3
whereas claim 1 is limited to a single fire retardant. Appellants should correct claim 1 to
embrace mixtures of fire retardants.
3
Claims 1, 3-10, 12, 14-17, and 24 stand rejected under 35 U.S.C.§ 103 as
unpatentable over Campbell or Kartheiser in view of Hauser and Anderson. 2
After careful consideration of the arguments of appellants and the examiner
and of the record before us, we find ourselves in agreement with appellants. Accordingly,
on this record, we cannot sustain the examiner’s rejection.
Claim 1 is directed to a multilayer structure comprising two layers. The first
layer comprises a fire retardant polyolefin and the second a polyamide containing a certain
phosphonate ester fire retardant. 3
Campbell discloses a multilayer structure comprising a olefin layer next to a
non-olefinic nylon layer with and without an adhesive between these layers (see Table 1,
Sample 2). The non-olefinic layer is said to be flame-retardant (column 3, lines 1-8). Both
Hauser and Anderson describe phosphonate esters as useful flame retardants for nylon.
Appeal No. 94-4259
Application 07/853,224
4
Anderson further teaches that the flame retardant composition may be in the form of a
fiber, film, coating, sheet, etc. (col. 21, lines 60-64). Although Campbell does not disclose
how the non-olefinic nylon layer is made fire-retardant, in
our view the use of single or multiple compounds known to be effective flame retardants for
nylon in such non-olefinic layer would have been prima facie obvious to one of ordinary skill
in the art. Campbell does not describe the use of a flame retardant in the olefin layer.
The examiner has pointed to sample 4 as describing a fire retardant
polyolefin next to a polyamide. Sample 4 discloses a flame retardant chlorosulfonated
polyethylene layer and an ethylene copolymer layer with and without a polyamide based
adhesive therebetween. Campbell identifies chlorosulfonated polyethylene as non-olefinic
(column 2, lines 29-51). Accordingly, we find no support for the examiner’s allegation.
Kartheiser describes a polyvinylchloride (non-olefinic) layer and a polyamide
layer with and without a polyvinyl adhesive therebetween. The examiner alleges that
Kartheiser discloses a medium comprising a fire retardant polyolefin and polyamide in
column 4. However, we, like the appellants, cannot find any teaching to support the
examiner’s position in Kartheiser. We do note that Kartheiser indicates that in prior art
structures, an adhesive layer comprised an acid-modified olefinic polymer and an acid-
modified halogen-containing olefinic polymer are known (column 1, lines 34-37). However,
the examiner has not determined whether this olefinic
Appeal No. 94-4259
Application 07/853,224
5
adhesive layer contains a flame retardant or whether the addition of a fire retardant to an
olefinic adhesive layer would have been obvious.
On this record, the examiner has failed to establish a prima facie case of
obvious. In re Piasecki, 745 F.2d 1468, 1471, 223 USPQ 785, 787 (Fed. Cir. 1984);
Carella v. Starlight Archery Pro Line Co., 804 F.2d 135, 139, 231 USPQ 644, 644 (Fed.
Cir. 1986); Ashland Oi l, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 301-302,
227 USPQ 657, 675 (Fed. Cir. 1985), cert. denied 475 U.S. 1017 (1986). Accordingly,
we will not sustain the examiner’s rejection.
We note at page two of the specification, appellants refer to a technical
paper which describes various types of fire-retardant polyolefins in wire and cable
constructions. The examiner should evaluate the teachings of this reference and make
Appeal No. 94-4259
Application 07/853,224
6
an initial determination of whether the claimed subject matter would have been prima facie
obvious in light of the teachings of said reference.
REVERSED
MARY F. DOWNEY )
Administrative Patent Judge )
)
)BOARD OF PATENT
ANDREW H. METZ )
Administrative Patent Judge ) APPEALS AND
)
)INTERFERENCES
CHUNG K. PAK )
Administrative Patent Judge )
Appeal No. 94-4259
Application 07/853,224
7
Andrew N. Parfomak
Allied-Signal, Inc.
P. O. Box 2245
Morristown, NJ 07962-2245