Cupron Inc. et al.

Patent Trials and Appeals Board

Apr 1, 2021

2020001919 (P.T.A.B. Apr. 1, 2021)

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.
14/420,518 02/09/2015 Kenneth Gauthier Trinder II CUP013.US 4331
129507 7590 04/01/2021
Pike IP Law, PLLC
P.O. Box 8592
Richmond, VA 23226
EXAMINER
CABRAL, ROBERT S
ART UNIT PAPER NUMBER
1618
NOTIFICATION DATE DELIVERY MODE
04/01/2021 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
bernard.pike@pikeiplaw.com
docket@pikeiplaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KENNETH GAUTHIER TRINDER II and
VIKRAM KANMUKHLA
Appeal 2020-001919
Application 14/420,518
Technology Center 1600
Before DONALD E. ADAMS, JOHN G. NEW, and TAWEN CHANG,
Administrative Patent Judges.
CHANG, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 2, 4–9, 50, and 56–62.2 We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as Cupron, Inc.
Appeal Br. 2.
2 Appellant states that “[c]laims 1, 2, 4–9, 15–18, 21–24, 26–28, 32–36, 39–
42, 44–46, 50, and 56–62 are pending” and that “all the pending claims are
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STATEMENT OF THE CASE
The Specification states that “bacteria, fungi, and viruses . . . have the
possibility of establishing a presence on the hard surface. Such surfaces
provide an entrée into the host by the pathogenic microorganisms, which can
negatively impact morbidity and mortality.” Spec. ¶ 2. The Specification
further states that “[o]ne means for eradicating or diminishing contact
exposure to microbes present on solid surfaces is to incorporate an
antimicrobial compound within or on the solid surface” and that “[c]opper
ion releasing compounds, such as copper oxide[,] are known to be highly
effective microcidal agents.” Id. ¶ 3. For example, the Specification notes
that “[c]ounter tops made from copper and its alloys are effective in
controlling the microbial burden on a hard surface of counter top.” Id. ¶ 5.
According to the Specification, however, “copper and its alloys are
expensive and the practicality of their incorporation is both technically
challenging and expensive. In addition, in many cases a metal hard surface
can often be unattractive due to oxidation staining as well as difficult to
maintain esthetically.” Spec. ¶ 6. Moreover, further according to the
Specification, “[w]hile it was previously known that the incorporation of
copper within composite structural solid materials imparts antimicrobial
activity to the same, . . . , composite structural solid materials to date were
limited in that loading of more than 10% w/w of copper-containing particles
within such materials was not attainable.” Spec. ¶ 8.

being appealed.” Appeal Br. 2. However, claims 15–18, 21–24, 26–28, 32–
36, 39–42, and 44–46 have been withdrawn. Appeal Br. 17. Accordingly,
they are not before us on appeal.
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The Specification asserts that the invention at issue on appeal
“provides high copper oxide loaded composite structural solid materials
which are biocidal.” Spec. ¶ 9.
.
CLAIMED SUBJECT MATTER
The claims are directed to a composite structural solid material.
Claims 1 and 50 are illustrative:
1. A composite structural solid material comprising:
a polymeric panel or slab polymerized from a polymeric resin in a
mold, wherein the polymeric resin comprises thermoset resins;
copper oxide particles dispersed within the polymeric panel or slab,
wherein the copper oxide particles are added by use of a copper
containing masterbatch; and
a filler material distributed within the polymeric resin, wherein said
copper oxide is present at a concentration ranging from 10 to 50%
w/w% and wherein a portion of said copper oxide particles are surface
exposed.

50. A composite structural solid material prepared by a continuous
pour process for the manufacture of a composite structural solid
material comprising a polymeric resin and copper oxide particles
substantially uniformly dispersed therein the process comprising the
steps of:
• mixing a filler with copper oxide containing masterbatch
until well blended to form a filler-copper oxide blend;
• stepwise, subsequently mixing said filler-copper oxide
blend with a thermoset resin and optionally a pigment to
form a copper oxide containing blended composition;
• stepwise, subsequently mixing a catalyst with said copper
oxide containing blended composition to form a
polymerizable composite structural material;
• distributing said polymerizable composite structural
material in a mold; and
• providing conditions for polymerization of said
polymerizable composite structural material,
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thereby preparing a composite structural solid material, wherein the
polymeric resin comprises thermoset resins.
Appeal Br. 16–17 (Claims App.).

REJECTION(S)
A. Claims 1, 2, 4–9, 50, and 59–62 are rejected under pre-AIA 35 U.S.C.
103(a) as being unpatentable over Fritz3 and Gabbay.4 Final Act. 5.
B. Claims 56 and 58 are rejected under pre-AIA 35 U.S.C. 103(a) as
being unpatentable over Fritz, Gabbay, and Trinder.5 Final Act. 8.
C. Claim 57 is rejected under pre-AIA 35 U.S.C. 103(a) as being
unpatentable over Fritz, Gabbay, Trinder, and Scher.6 Final Act. 9.
D. Claim 50 is rejected under 35 U.S.C. 112, second paragraph, as being
indefinite. Final Act. 4.

OPINION
A. Obviousness rejection over Fritz and Gabbay (claims 1, 2, 4–9, 50,
and 59–62)
1. Issue
The Examiner finds that Fritz teaches almost all of the limitations of
independent claim 1, except that Fritz does not teach “copper oxide particles
dispersed within [a] polymeric panel or slab, wherein the copper oxide
particles are added by use of a copper-containing masterbatch” and “is

3 Fritz et al., US 9,259,083 B1, issued Feb. 16, 2016.
4 Gabbay, US 2013/0195841 A1, published Aug. 1, 2013.
5 Trinder et al., US 2006/0125137 A1, published June 15, 2006.
6 Scher et al., US 5,260,006, issued Nov. 9, 1993.
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present at a concentration ranging from 10 to 50 w/w%,” and “wherein a
portion of said copper oxide particles are surface exposed.” Final Act. 5.
However, the Examiner finds that “Gabb[a]y relates to incorporation
of copper oxide in a polymeric resin to provide antimicrobial properties to
the material” and “teaches that ‘a master batch formulation is prepared at a
concentration of between 20% and 40% copper oxide w/w for inclusion in
the slurry state of a polymer for use.’” Id. The Examiner finds that Gabbay
also teaches that “[a] typical formulation would comprise . . . in addition to
the copper oxide, a dispersant, for example a wax and, if desired, a
thermoplastic polymer,” wherein “[t]he thermoplastic polymer assists the
dispersing of the wax throughout the slurry,” and “[t]he wax serves to
disperse the copper oxide and other additives evenly and finely in the
formulation and to stabilize the dispersion.” Id. The Examiner finds that
Gabbay further teaches that
[t]he copper oxide can be included in a polymer, or attached to
a polymer after it is shaped, can be placed as a coating on a
hard surface, or included in a polymer that is then attached to a
hard surface, or can be applied directly to the materials from
which the surface material is constructed such as rubber
(artificial and natural), urethane compounds, polymers,
ceramics, composite stones or marbles, products used in the
formation of table tops, and softer materials such as those used
in floorings.
Id. at 6. Accordingly, the Examiner finds that Gabbay teaches or suggests
the “wherein a portion of . . . copper oxide particle are surface exposed.” Id.
The Examiner concludes that “[i]t would have been prima facie
obvious to one of ordinary skill in the art at the time of the invention to
modify the teachings of Fritz . . . by incorporating copper oxide as taught by
Gabbay to introduce antimicrobial properties to the composition of Fritz,”
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because “it is generally obvious to add known ingredients to known
compositions with the expectation of obtaining their known function.” Final
Act. 6.
With respect to independent claim 50, the Examiner notes that the
claim is a product-by-process claim and that, “[t]hus, the determination of
the patentability is based on the product itself and not the process recited in
the claims.” Final Act. 7. The Examiner concludes that, “[b]ecause the
prepared product is also a composite structural solid material comprising a
polymeric resin and copper oxide particles substantially uniformly dispersed
as recited in claim 1, Fritz . . . and Gabby’s combined disclosures as
discussed with respect to claim 1 [above] would address this claim.” Id.
Appellant contends that the claims on appeal “should be allowable
because the prior art does not enable production of the composite structural
solid material, the chemical arts are unpredictable, not all the claim
limitations are taught in the prior art references, and the problem and the
solution were not known in the prior art.” Appeal Br. 3–4.
Appellant does not separately argue the claims. We therefore focus
our analysis on claims 1 and 50 as representative. The issue with respect to
this rejection is whether a preponderance of the evidence of record supports
the Examiner’s conclusion that claims 1 and 50 are obvious over the
combination of Fritz and Gabbay.
2. Findings of Fact
1. Fritz teaches a composite, solid surface article. Fritz Abstract;
see also id. at 2:53–55 (“new composite countertops”), 3:1–3 & 3:46–48
(describing Figures 1 and 2 as “schematic cross-section view[s] of . . .
example solid-surface-composite article[s]” 100 and 200, respectively).
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2. Fritz teaches “a method for forming a countertop,” including
“providing a base material that may include resin, a coloring pigment, a
catalyst, microspheres and resin filler (i.e., such as calcium carbonate, wood,
sand, mica, fiberglass, fly ash, and other suitable materials).” Id. at 1:46–50.
3. Fritz teaches that “[t]he base material is mixed and dispensed
into a mold and cured.” Id. at 1:51–52, 1:63–64; see also id. at 8:9–13
(claim 1), 6:43–46 & 7:5–8 (teaching that catalyzed base material may be
worked or lightly mixed with additives to form stone patterning and that
“[t]he catalyzed stone mixture can be packed into a flexible mold,” which
can be removed after curing).
4. More particularly, Fritz teaches that its composite, solid surface
articles “may be formed of thermoset and thermoplastic resin, a curing
agent, microspheres, resin filer and or desired fillers, and additives.” Id. at
4:62–64.
5. Fritz teaches that “[a] curing agent is selected from materials
that can initiate cross-linking of the chosen thermoset resin. Thus, polyester
resins will typically use methyl ethyl ketone peroxide and a blend of CHP as
needed as a curing agent while bisphenol resins will typically use an amine
based curing agent.” Id. at 5:1–6.
6. Fritz teaches that “[t]he amount of curing agent used is
dependent on the amount of thermoset resin used in the composition. For
thermoset resins such as polyester resins, the amount of curing agent used
may be varied to increase or decrease the cure time of the catalyzed base
material.” Id. at 5:6–11; see also id. at 5:34–45 (stating that “[t]he amount
of curing agent is based on the type of thermoset resin chosen, desired cure
time, and the thickness of the object being formed” and that “[t]he amounts
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of resin, curing agent and microspheres are chosen so that the resulting
homogeneous mixture will have a suitable viscosity to form a catalyzed base
material”), 6:29–35 (“The amount of thermoset resin used is determined by
the amount of product needed. The amount of curing agent needed is based
on the thermoset resin chosen, amount of thermoset resin, thickness of
material being formed, and the desired cure time.”).
7. Fritz teaches that “[t]he order of mixing the resin, curing agent
and microspheres to form a catalyzed base mixture can be varied depending
on application.” Id. at 5:59–61; see also id. at 5:62–6:9 (describing various
order of mixing ingredients), 6:28–40 (describing embodiments in which “an
artificial material [is] prepare directly at the point of use,” wherein curing
agent is added to thermoset resin, the catalyzed resin mixture is mixed, and
the “microspheres are added by pouring directly over the top of the
catalyzed resin mixture with generally homogeneous mixing to form the
catalyzed base material”).
8. Fritz teaches that “microspheres may be homogeneously
distributed in the catalyzed base material.” Id. at 6:19–20.
9. Gabbay teaches “a biofilm resistant material comprising an
active agent, which consists essentially of an insoluble copper oxide at a
concentration of between 3 and 10% w/w of said biofilm resistant material
and uses thereof.” Gabbay Abstract, ¶¶ 7, 12.
10. Gabbay teaches “a method of inhibiting, diminishing or
abrogating microbial biofilms or microbial biofilm formation or a
combination thereof on a material surface,” comprising (1) “producing such
material with at least a surface comprising an active agent consisting
essentially of an insoluble copper oxide at a concentration of between 3 and
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10% w/w of the biofilm resistant material” or (2) “attaching to a portion of a
surface of said material an active agent consisting essentially of an insoluble
copper oxide such that said insoluble copper oxide is at a concentration of
between 3 and 10% w/w of said material.” Id. ¶¶ 81–82, claims 18, 19.
11. Gabbay teaches embodiments in which “the biofilm resistant
material[] further comprises a polymeric resin.” Id. ¶ 13; see also id. at
claims 2, 3.
12. Gabbay teaches that
[i]t is to be understood that the preparation of the polymers may
be by any means known in the art. For example, and in some
embodiments, a polymer concentrate comprising at least one of
an oxide of copper, a polyethylene wax prepared from ethylene
and, if desired, one or more olefins using a chelating agent
catalyst, if desired a thermoplastic polymer and, if desired,
other additives is prepared and added to a carrier polymer in the
form of a master batch concentration. In some embodiments,
only a partial preparation of the powder is necessary, such as
only dispersing the powder in a wax, and in some cases the
powder can be added directly to the carrier.
[i]n some embodiments, a master batch formulation is
prepared at a concentration of between 20% and 40% copper
oxide w/w for inclusion in the slurry state of a polymer for use.
The master batch may be diluted to between 3% and 10%
copper oxide to achieve the desired composition.
A typical formulation would comprise, in some
embodiments, in addition to the copper oxide, a dispersant, for
example a wax, and, if desired, a thermoplastic polymer,
usually a polyolefin. The thermoplastic polymer assists the
dispersing of the wax throughout the slurry. The wax serves to
disperse the copper oxide and other additives evenly and finely
in the formulation and to stabilize this dispersion. In some
embodiments, an envisioned formulation of such a concentrate
for a master-batch would comprises 20-40% by weight of
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copper oxide, 10% by weight of wax, 2% chelating agent and
the balance by weight of a thermoplastic polymer. The ratios of
the individual components can be varied within certain limits.
Id. ¶¶ 74–76.
13. Gabbay teaches that a skilled artisan will recognize that
using copper oxide as the active ingredient to attack the biofilm
has application to a variety of hard surfaces. The copper oxide
can be included in a polymer, or attached to a polymer after it is
shaped, can be placed as a coating on a hard surface, or
included in a polymer that is then attached to a hard surface, or
can be applied directly to the materials from which the surface
material is constructed such as rubber (artificial and natural),
urethane compounds, polymers, ceramics, composite stones or
marbles, products used in the formation of table tops, and softer
materials such as those used in floorings.
Id. ¶ 80.
3. Analysis
Unless otherwise noted, we adopt the Examiner’s findings of fact and
reasoning regarding the rejection of claims 1 and 50 as obvious over Fritz
and Gabbay. (Final Act. 5–6, 7; Ans. 3–6; FF1–FF13). We address
Appellant’s arguments below. Only those arguments timely made by
Appellant in the Appeal Brief (no Reply Brief was submitted) have been
considered; arguments not so presented in the Brief are waived. See 37
C.F.R. § 41.37(c)(1)(iv) (2015); see also Ex parte Borden, 93 USPQ2d
1473, 1477 (BPAI 2010) (informative) (“Any bases for asserting error,
whether factual or legal, that are not raised in the principal brief are
waived.”).
Appellant first contends that Fritz “does not produce a composite
structural solid material comprising copper oxide . . . present at a
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concentration ranging from 10 to 50% w/w% and wherein a portion of said
copper oxide particles are surface exposed.” Appeal Br. 4. To the extent
Appellant intends this as a stand-alone argument against the obviousness
rejection, we are not persuaded. “Non-obviousness cannot be established by
attacking references individually where the rejection is based upon the
teachings of a combination of references. . . . [The reference] must be read,
not in isolation, but for what it fairly teaches in combination with the prior
art as a whole.” In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
In this case, the Examiner cites Gabbay as disclosing the limitations with
respect to copper oxide.
Appellant further contends that “the inventor was first to develop
polymerize [sic] thermoset polymers in the presence of copper oxides,” that
“[t]h[e] problems with this combination were not known in the prior art,”
and that “the solution required an invention due to the unpredictable
interactions between the components.” Appeal Br. 4. Appellant contends
that replacing Fritz’s microspheres with copper oxide would only work if
“the filler is first mixed with the copper oxide containing masterbatch until
well blended to form a filler-copper oxide blend prior to adding the copper
oxide to the resin and the catalyst.” Id. at 5. Appellant contends that Fritz
teaches “mixing the microspheres (copper oxide) directly with the resin, . . .
with the curing agent, or both to form the premixes” but “does not teach,
suggest or motivate one skilled in the art to mix the filler with the copper
oxide containing masterbatch.” Id. at 5–6.
Appellant does not specify whether its argument is that a skilled
artisan would not have had reason to combine the disclosures of Fritz and
Gabbay, with a reasonable expectation of success, or that the prior art
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combination is not enabling with respect to the claimed invention.7 We do
not find Appellant’s argument to be persuasive in either case.
To the extent Appellant’s argument is that a skilled artisan would not
have had reason to combine the Fritz and Gabbay to arrive at the claimed
invention, with a reasonable expectation of success, we disagree because, as
the Examiner points out, a skilled artisan would have had reason to
incorporate the copper oxide taught in Gabbay into the composite material
taught by Fritz, in order to obtain the advantages of biofilm resistance
described in Gabbay. Ans. 5.
Furthermore, a skilled artisan would have had a reasonable
expectation of success at arriving at the invention of claims 1 and 50 via the
combination because Fritz and Gabbay together discloses all of the
limitations of claim 1, and, as conceded in the Declaration of Ed Locke8
attached as Appendix C to the Appeal Brief, “polymerization technologies
and reactions are well known” even if the specific claimed composite
structural solid material comprising a polymeric panel has not been
previously disclosed. Thus, as the Examiner points out (Final Act. 6),
combining Fritz and Gabbay merely involves combining familiar elements
using known methods, which is likely to be obvious when it yields only

7 In the Answer, the Examiner asserts that Appellant’s arguments are
applicable only to claim 50, a product-by-process claim, because claim 1 and
its dependent claims do not require any particular order of mixing
ingredients. Ans. 3–4. We disagree and do not adopt this portion of the
Examiner’s response to the extent the Examiner does not take into account
the potential relevance of the arguments to reasonable expectation of success
and to whether the prior art is enabling with respect to the claimed invention.
8 Declaration of Ed Locke (July 4, 2018) (“Locke Declaration”).
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predictable results. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007).
For the reasons discussed further below, Appellant has not provided
persuasive evidence of unpredictable results commensurate with the scope of
the claims.9 In this regard, we further note that “[o]bviousness does not
require absolute predictability of success,” only “a reasonable expectation of
success.” In re O’Farrell, 853 F.2d 894, 903-04 (Fed. Cir. 1988).
To the extent Appellant’s argument is that the cited combination of
prior art does not enable the claimed invention, we first note that the
Examiner’s rejection does not appear to be based on, as Appellant asserts,
replacing Fritz’s microspheres with copper oxide. Compare Appeal Br. 6
(stating that “[t]he inventors found that copper oxide . . . could not be
directly substituted with the microspheres [of Fritz] as suggested by the
examiner”) and 8–9 (alleging the Examiner’s reliance on In re Lindner is
improper because in this case Fritz’s microspheres would be substituted with
copper oxide rather than another filler and stating that “[t]he method . . . in
Fritz et al. could not be performed by mere replacement of the microspheres
with the copper oxide of Gabbay”) with Ans. 6 (stating that Appellant’s

9 Appellant contends that “one skilled in the art would understand the
complexity and unpredictability of addition of an ionic species into a radical
or ionic initiated polymerization as produced by [the] combination” of
Gabbay and Fritz and that “[t]he results and the course of the polymerization
after the addition of a sufficient amount of copper oxides to produce
antimicrobial properties was not predictable”). Appeal Br. 10. However,
Appellant cites no specific support for this statement. “Attorneys’ argument
is no substitute for evidence.” Johnston v. IVAC Corp., 885 F.2d 1574, 1581
(Fed. Cir. 1989); Ans. 6. To the extent Appellant relies on the Locke
Declaration for these arguments, we are not persuade for the reasons set
forth below in our discussion of the Locke Declaration.
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argument regarding In re Lindner is “misguided” because it is predicated on
a mistaken assumption that the obviousness rejection is based on “a
substitution of fillers,” i.e., substitution of copper oxide for the microspheres
taught in Fritz).10
Assuming for the sake of argument that the Examiner’s prima facie
case depends on replacing/combining Fritz’s microspheres with copper
oxide, Appellant is also incorrect that Fritz only teaches “mixing the
microspheres (copper oxide) directly with the resin, . . . with the curing
agent, or both to form . . . premixes.” Appeal Br. 5. For example, Fritz also
teaches pouring microspheres directly over the top of catalyzed resin
mixtures (i.e., where curing agent has been added to thermoset resin and
mixed), with generally homogeneous mixing such that the material is
prepared directly at the point of use. FF7. Because Appellant appears to
equate Fritz’s microspheres with copper oxide, this order of combining
ingredients would seem to meet Appellant’s requirement that “the filler [be]
first mixed with the copper oxide . . . prior to adding the copper oxide to the
resin and the catalyst.” Appeal Br. 5; see also Spec. ¶¶ 83 (stating that “it
was surprisingly found that when . . . the copper oxide was added as the final
ingredient . . . the congealing [of the mixture] was delayed), 85.11

10 We note that the Examiner does not appear to have cited or relied on In re
Lindner, 457 F.2d 506 (CCPA 1972) in the Final Action.
11 We note that, while Appellant contends on appeal that in order to avoid
undesirably rapid polymerization “copper oxide could not be added to the
resin or the curing agent prior to the initiation of the polymerization
process,” Appeal Br. 9, the Specification states that “it was surprisingly
found that when the catalyst and the copper oxide were mixed together as a
last step or when the copper oxide was added as the final ingredient, or when
a blend of the copper oxide and filler or when a paste of the copper oxide
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More importantly, Fritz teaches that “[t]he order of mixing the resin,
curing agent and microspheres to form catalyzed base mixture can be varied
depending on application.” FF7. Similarly, Fritz teaches that the amount of
curing agent used in its process may depend on a number of factors such as
the amount and type of thermoset resin used in the composition, desired cure
time, and the thickness of the object being formed. FF6. Fritz further
teaches that “the amount of resin, curing agent and microspheres are chosen
so that the resulting homogenous mixture will have a suitable viscosity to
form a catalyzed base material.” Id.
In other words, the prior art teaches that the order of mixing
ingredients, the amount/type of thermoset resin, and the amount of curing
agent are all parameters that would affect results. Discovering the optimal
order of adding ingredients and the amounts of resin and curing agent to be
used so that, e.g., suitable viscosity for forming a catalyzed base material is
achieved is analogous to the discovery of optimum or workable ranges by
routine experimentation, which is not inventive “where the general
conditions of a claim are disclosed in the prior art.”12 In re Aller, 220 F.2d
454, 456 (CCPA 1955). We further note that claim 1 does not require any

and resin is formed, the congealing was delayed.” Spec. ¶ 83; see also id. ¶
15 (describing embodiment comprising a first step of “mixing a polymeric
resin or a filler with copper oxide until well blended to for a resin-copper
oxide mix or filler-copper oxide blend”) (emphasis added).
12 Appellant contends that “Fritz et al. discusses the control of viscosity
based upon the proper ratios of components but not based upon the
interaction of components” and that “Fritz et al. has only chosen and taught
fillers and microspheres that are inert to the reaction.” Appeal Br. 9. We are
not persuaded by Appellant’s narrow reading of Fritz: the proper ratio of
components is dependent on the interaction of the components.
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particular amount of thermoset resins and, as Appellant acknowledges, Fritz
teaches that its composite may be formed of thermoset and thermoplastic
resin. FF4; Appeal Br. 9 (acknowledging that “Fritz et al. teaches the
catalytic curing of combination of thermoset resins and thermoplastic
resins”). Appellant has not provided persuasive evidence that the alleged
undesirable interaction between copper oxide and curing agent and/or
growing portion of the polymer chain would occur regardless of the amounts
and types of thermoset resins and/or curing agents used.
Appellant additionally contends that “Gabbay only teaches mixing
copper oxides with previously prepared thermoplastic polymers” and that
“[t]here are no resins . . . or curing agents used in the process of Gabbay
since the polymers are already formed.” Appeal Br. 6. Appellant contends
that it is not possible to use Gabbay’s process, which adds copper oxide
particles to melted polymer to form a slurry, for incorporating solids into
thermoset polymers as taught by Fritz. Id. at 6–7. We are not persuaded.
As the Examiner points out, claim 1 does not require a particular amount of
thermoset resin, and Fritz teaches the use of thermoset and thermoplastic
resins. Ans. 5; FF4. Moreover, “[c]laims may be obvious in view of a
combination of references, even if the features of one reference cannot be
substituted physically into the structure of the other reference.” Orthopedic
Equip. Co. v. U.S., 702 F.2d 1005, 1013 (Fed. Cir. 1983).
Appellant cites to In re Omeprazole Patent Litigation, 536 F.3d 1361
(Fed. Cir. 2008), in which the Federal Circuit affirmed a district court
decision that claims to certain pharmaceutical preparations comprising a
omeprazole core, an inert water-soluble subcoating, and an outer enteric
coating, were not obvious over prior art describing an omeprazole tablet
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with only an enteric coating, despite other references that generally disclose
the use of subcoatings in various other pharmaceutical preparations. Appeal
Br. 11–12; Omeprazole, 536 F.3d at 1365, 1379–1380.
More particularly, Appellant contends that,
[i]n the Omeprazole case, in view of the expectations of those
of ordinary skill in the art, adding the subcoating would not
have been expected to confer any particular desirable property
on the final product. Rather, the final product obtained
according to the proposed modifications would merely have
been expected to have the same functional properties as the
prior art product. This is the same as Subject Application
wherein the additional step of combining the filler and the
copper oxide masterbatch together prior to addition to the resin
and the catalyst would cause an additional step for no apparent
reason.
The Omeprazole case can also be analyzed in view of the
discovery of a previously unknown problem by the patentee. If
the adverse interaction between active agent and coating had
been known, it might well have been obvious to use a
subcoating. This again demonstrates the nonobviousness of the
claims of the Subject Application. The problem had not been
previously known[;] there would have been no reason to incur
additional time and expense to add another layer or step, even
though the addition would have been technologically possible.
This is true because the prior art of record failed to mention any
stability problem in Omeprazole or the adverse curing agent
reaction in the Subject Application.
Appeal Br. 12.
We are not persuaded. In this case, a skilled artisan would have had
reason to incorporate the copper oxide discussed in Gabbay into Fritz’s
product, in order to obtain the advantage of biofilm resistance discussed in
Gabbay. Ans. 6. Likewise, unlike in Omeprazole, it would have been
obvious to a skilled artisan to vary the order in which ingredients are added,
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because Fritz specifically teaches that the order of addition of ingredients
may be altered depending on the application. Ans. 6; FF7.
Finally, we have considered the Locke Declaration Appellant
submitted in support of “the unpredictability of the initiation and subsequent
polymerization process.” Appeal Br. 6. However, we are not persuaded that
the declaration, when considered together with the evidence of obviousness,
shows that a skilled artisan would not have had reason to combine the
disclosures of Fritz and Gabbay with a reasonable expectation of success, or
that the prior art combination is not enabling with respect to the claimed
invention.
As an initial matter, the Locke Declaration fails to provide sufficient
explanation of the underlying facts and data on which opinions are based. In
re Beattie, 974 F.2d 1309, 1313 (Fed. Cir. 1992) (opinion evidence in
declarations has little value without factual support). For example, the
Locke Declaration states that “polymerization of thermoset resins in the
presence of copper oxide particles, filler, and a catalyst for the thermoset
resin . . . was initially discovered by EOS impossible to perform with prior
art processes” because “[t]he addition of the copper oxide particles in the
polymerization batch resulted in an uncontrollably fast polymerization rate
of the thermoset resins.” Lock Decl. ¶ 3. However, the declaration does not
explain what prior art processes were used by EOS.13 Likewise, the Locke

13 As discussed below, the only specific process discussed in the declaration
is “the addition of copper oxide into the polymerization of thermoset resins
catalyzed by MEKP,” which accordingly to the declaration “resulted in an
uncontrolled rapid polymerization that increased the viscosity of the
polymerization batch too rapidly to pour in a mold.” Locke Decl. ¶ 9.
However, the Locke Declaration does not describe the ranges of MEKP
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Declaration states that “[e]ngineers and scientists of the joint owners of the
patent application . . . spent over a year experimenting with different
methods to produce the claimed product.” Dec. ¶ 3; see also id. ¶ 4.
However, the declaration does not address whether such experimentation
was undue or merely involved routine optimization.
In addition, the Locke Declaration does not address all of the
disclosures in the prior art and, thus, does not persuasively show that the
claim are not obvious when considered together with the evidence of
obviousness. For example, the Locke Declaration does not acknowledge or
address that Fritz teaches using thermoset and thermoplastic resin. Locke
Decl. ¶ 5; FF4. Similarly, the Locke Declaration does not address why a
skilled artisan would not have found it obvious to optimize the order of
adding ingredients in a method suggested by the combination of Fritz and
Gabbay, given that Fritz teaches that the order of mixing ingredients can be
varied depending on the application. FF7.
The Locke Declaration states that “the addition of copper oxide into
the polymerization of thermoset resins catalyzed by MEKP resulted in an
uncontrolled rapid polymerization that increased the viscosity of the
polymerization batch too rapidly to pour in a mold” and that “[i]t was
apparent that the copper compounds enhanced the catalytic activity of the
catalyst and/or catalyzed the polymerization of the thermoset resins
directly.” Locke Decl. ¶¶ 9–10. However, as discussed above, Fritz teaches
that the amount of curing agent may be adjusted based on a variety of factors

concentration tested. Moreover, Fritz teaches curing agents in addition to
MEKP, FF5, and it is not apparent from the declaration whether any curing
agents other than MEKP was tested.
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such as the identity and amount of the thermoset resin and the desired cure
time and that “[t]he amounts of resin, curing agent and microspheres are
chosen so that the resulting . . . mixture will have a suitable viscosity to
forma catalyzed base material.” FF6. The Locke Declaration does not
persuasively address why these disclosures do not render the claims obvious
by teaching skilled artisans to optimize the amount of curing agents/catalysts
in the method suggested by the combination of Fritz and Gabbay, in order to
achieve a suitable viscosity.
Likewise, Dr. Locke cites Kochi14 and hypothesizes that rapid
polymerization occurs when copper oxide is added directly into the
polymerization batch because of “the rapid, exothermic decomposition of
organic peroxides in the presence of cuprous bromide or cuprous chloride”
and that “premixing the cuprous oxide with the filler prior to addition . . . to
the thermoset resin batch results in controllable usable resin handling and
subsequent cure” because the filler coats the cuprous oxide, reducing its
accessible surface area and shielding the cuprous oxide from interaction with
the organic peroxide catalysts such as MEKP. Locke ¶¶ 12–14. Dr. Locke,
however, does not address Fritz’s disclosure of curing agents other than
organic peroxide catalysts such as MEKP. FF5.
Dr. Locke further states that
[t]he results and the course of the polymerization after the
addition of a sufficient amount of copper oxides to produce
antimicrobial properties was not predictable. It was theorized
that the copper oxides produced ionic species that interfere, not
only with the catalytic initiation of the curing or polymerization
but also with the radical, ionic, and/or cationic polymerization

14 Jay K. Kochi, 85 J. AM. CHEM. SOC’Y 1958 (1963).
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processes after initiation. The monomers form ionic species
when the unsaturated monomers react with the initiator or a
growing polymer chain. Whether and the degree to which the
reaction rates of the initiators and the reactive thermoset resins
were altered and whether the claimed products could be
produced under these conditions was unknown.
Locke Decl. ¶ 10; see also Appeal Br. 8 (stating that “[t]here is no finite
number of predictable solutions with anticipated success to the problem of
rapid polymerization and increase in viscosity prior to molding” and that
“[t]his is a new problem in the art and no solution provided a certain . . .
outcome”).
We are not persuaded. The primary, if not the only, basis for Dr.
Locke’s opinion in this regard appears to be the work performed by
Appellant and the Kochi reference relating to organic peroxides such as
MEKP. As discussed above, however, Dr. Locke does not address
disclosures in the prior art relating to curing agents other than organic
peroxide catalysts.15 As we have discussed above, moreover, “[o]bviousness
does not require absolute predictability of success,” only a “reasonable
expectation of success.” In re O’Farrell, 853 F.2d 894, 903-04 (Fed. Cir.
1988). Without additional articulation for the basis of Dr. Locke’s opinion,
we are not persuaded, based on the conclusory statements in the Locke
Declaration, that a skilled artisan would not have a reasonable expectation of

15 Appellant contends in the Appeal Brief that “[c]opper oxide is a reactive
ionic species that unpredictably interacts with the radical species produced
by the peroxide curing agents or the ionic species produced by the amine
curing agents.” See Appeal Br. 7–8; see also id. at 10. Once again,
however, Appellant cites no persuasive evidence supporting the contention
that copper oxide unpredictably interacts with the ionic species produced by
the amine curing agents. Johnston, 885 F.2d at 1581; Ans. 6.
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success in combining the teachings of Fritz and Gabbay to produce the
composite structural solid material of claim 1, particularly in light of Fritz’s
teaching that the order of adding ingredients and amount of curing
agents/catalysts used are optimizable result effective variables. FF6, FF7.
Neither are we persuaded by the statements in the Locke Declaration
that Appellant “are aware of” and/or “understands . . . intimately” the prior
art technology, or the statement that neither “the cited references nor any
other prior art that [the declarant] knows of provides a method of producing
the claimed composite structural solid material and, hence, the claimed
composite structural solid material comprising the copper oxide particles
was not available prior to the invention of the subject patent application,”
Locke Decl. ¶¶ 7–8, 15; see also id. ¶ 11. “An expert opinion is no better
than the soundness of the reasons supporting it,” and the conclusory nature
of these statements do not entitle them to significant weight. Perreira v.
Secretary of the Dept. of HHS, 33 F.3d 1375, 1377 n. 6 (Fed. Cir. 1994).
Accordingly, for the reasons discussed above, we affirm the
Examiner’s rejection of claim 1 as obvious over Fritz and Gabbay.
Appellant asserts that “Claim 50 is directed to the very specific
component addition sequence that must be followed in order to prepare the
composite structural solid material of Claim 1” and that “[t]his process
sequence and process components are not taught by Fritz et al., Gabbay or
their combination.” Appeal Br. 9–11. Appellant further contends that “[t]he
limitations of Claim 50 that require a specific order of addition of
component has not been considered by the examiner.” Id. at 12–13.
As the Examiner points out, however, claim 50 is a product-by-
process claim. Final Act. 7. “The patentability of a product does not depend
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on its method of production. If the product in a product-by-process claim is
the same as or obvious from a product of the prior art, the claim is
unpatentable even though the prior product was made by a different
process.” In re Thorpe, 777 F.2d 695, 697, 227 USPQ 964, 966 (Fed. Cir.
1985). Because we find that the composite structural solid material of claim
1 is obvious over Fritz and Gabbay, we likewise find claim 50 to be obvious
over Fritz and Gabbay. Claims 2, 4–9, and 59–62, which are not separately
argued, fall with claims 1 and 50.

B. Obviousness rejections over Fritz, Gabbay, and Trinder (claims 56
and 58) and over Fritz, Gabbay, and Scher (claim 57)
Appellant makes no additional arguments with respect to the
obviousness rejections of claims 56 and 58 over Fritz, Gabbay, and Trinder
and claim 57 over Fritz, Gabbay, and Scher. Accordingly, we affirm these
rejections for the same reasons discussed above with respect to the
obviousness rejection over Fritz and Gabbay.

C. Indefiniteness rejection (claim 50)
The Examiner concludes that
[t]he term “substantially” in claim 50 is a relative term which
renders the claim indefinite. The term “substantially” is not
defined by the claim, the specification does not provide a
standard for ascertaining the requisite degree, and one of
ordinary skill in the art would not be reasonably apprised of the
scope of the invention. Consequently, the claimed polymeric
panel or slab is rendered indefinite by the use of the term
“substantially”.
Final Act. 4.
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Appellant does not provide any substantive response to the
Examiner’s rejection. We consequently summarily affirm the Examiner’s
rejection of claim 50 as indefinite.

CONCLUSION
In summary:
Claim(s)
Rejected
35 U.S.C. § Reference(s) /
Basis
Affirmed Reversed
1, 2, 4–9, 50,
59–62
103(a) Fritz, Gabbay 1, 2, 4–9,
50, 59–62

56, 58 103(a) Fritz, Gabbay,
Trinder
56, 58
57 103(a) Fritz, Gabbay,
Scher
57
50 112, second
paragraph
indefiniteness 50
Overall
Outcome
1, 2, 4–9,
50, 56–62

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED