Appeal No. 2006-1792
Application 10/329,665
equivalently useful as flame retardants (id., page 12). The examiner submits that in view of the
references, one of ordinary skill in the art would have expected that zinc borate “would have
worked adequately in place of the boric acid” in the admitted prior art composition (id., pages
13-14). The examiner further maintains that the determination of the amount of zinc borate to
use would have been determined by one of ordinary skill in the art through routine
experimentation (id., pages 15-16).
We find substantial evidence in the record supporting the examiner’s position. We
cannot agree with Appellants that one of ordinary skill in this art would not have recognized that
powdered boric acid was present in the admitted prior art ablative insulative composition for a
rocket motor for its well known function as a flame retardant, given the known environment of a
rocket motor (see specification, e.g., [0003]). Indeed, appellants have not established that this
person would have reasonably considered boric acid to serve another function in that
composition. On this basis alone, we agree with the examiner that, prima facie, one of ordinary
skill in this art would have substituted zinc borate for boric acid in the admitted prior art ablative
insulative composition on the basis that each is a known boron containing flame retardant as
evinced on this record by Lyday and by Nanaumi, in the reasonable expectation of obtaining an
ablative insulative composition with the same or similar properties which would perform in the
known methods of insulating a rocket motor evidenced by Whelan and Russell in the same or
similar manner since all other ingredients of the compositions are the same. We are reinforced in
our view by the additional evidence in Lyday that zinc borate is more suited as a flame retardant
in plastics than boric acid, the further evidence in Brownell, Duryea, Nanaumi and Yasuma
adduced by the Examiner that zinc borate is useful as a flame retardant in compositions
containing phenolic resins, and that Nanaumi would have disclosed that both of these boron
compounds can be used in such compositions for that purpose. With respect to claim 15, we
agree with the examiner that one of ordinary skill in this art would have determined the workable
or optimum range for zinc borate in the composition. See In re Aller, 220 F.2d 454, 456-58,
105 USPQ 233, 235-37 (CCPA 1955) (“[W]here the general conditions of a claim are disclosed
in the prior art, it is not inventive to discover the optimum or workable ranges by routine
experimentation.”).
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