Ex Parte BONK et al

Board of Patent Appeals and Interferences

Jan 16, 2003

09170790 (B.P.A.I. Jan. 16, 2003)

The opinion in support of the decision being entered today was not
written for publication and is not binding precedent of the Board.
Paper No. 14
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte HENRY W. BONK and DAVID GOLDWASSER
____________
Appeal No. 2001-0168
Application No. 09/170,790
____________
ON BRIEF
____________
Before WILLIAM SMITH, WARREN, and POTEATE, Administrative Patent
Judges.
POTEATE, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the examiner's
refusal to allow claims 1-43 and 64-66. Claims 44-63 are pending
but have been withdrawn from consideration as directed to a non-
elected invention. See Final Rejection, Paper No. 5, mailed
July 26, 1999, page 2.
Appeal No. 2001-0168
Application No. 09/170,790
2
Claims 1, 2 and 10 are representative of the subject matter
on appeal and are reproduced below:
1. A barrier membrane having improved resistance to undesired
gas permeation, comprising:
a first layer including a combination of at least one
aliphatic thermoplastic urethane and a copolymer of ethylene and
vinyl alcohol; and
a second layer including a thermoplastic urethane;
wherein hydrogen bonding occurs along a segment of the
membrane between the first and second layers, and further wherein
said barrier membrane is sealed and is inflated with a gas toward
which said membrane has a gas transmission rate value of about
10.0 cc/m2 x atm x day or less.
2. The barrier membrane according to Claim 1, wherein said
first layer includes up to about 50 wt.% of aliphatic
thermoplastic urethane.
10. The barrier membrane according to Claim 1, wherein said
first layer includes:
(a) 50 wt.% to about 97 wt% of at least one ethylene and
vinyl alcohol copolymer;
(b) 3 wt.% to about 50 wt.% of at least one aliphatic
thermoplastic urethane; and
(c) up to about 3.0 wt.% of one or more aromatic urethanes;
wherein the total constituency of said first layer is equal
to 100.0 wt.%.
The reference relied upon by the examiner is:
Moureaux 5,036,110 Jul. 30, 1991
Appeal No. 2001-0168
Application No. 09/170,790
1 The rejections of claims 1-43 and 64-66 under 35 U.S.C.
§ 112 first and second paragraphs have been withdrawn in view of
the amendment after final rejection, Paper No. 9, received March
2, 2000. See Examiner's Answer, Paper No. 12, page 2, paragraph
(6).
3
Ground of Rejection1
Claims 1-43 and 64-66 stand rejected under 35 U.S.C. § 103
as unpatentable over Moureaux.
We affirm as to claims 1, 5-9, 17-21, 23, 27-30, 32, 36-40,
42-43 and 64-66. We reverse as to claims 2-4, 10, 14-16, 22, 24-
26, 31, 33-35 and 41.
Background
The invention is directed to a barrier membrane having
improved resistance to undesired gas permeation and to a method
of producing a laminated barrier membrane useful for controlling
gas permeation therethrough. Such barrier membranes are, for
example, useful in vehicle tires and sporting goods, accumulators
used on heavy machinery and cushioning devices used in footwear.
Specification, page 2, lines 1-6.
The barrier membrane of the invention includes first and
second layers. The first layer is a combination of at least one
aliphatic thermoplastic urethane and a copolymer of ethylene and
Appeal No. 2001-0168
Application No. 09/170,790
4
vinyl alcohol. The second layer includes a thermoplastic
urethane. The first and second layers are held together by
hydrogen bonding. In accordance with the method of the
invention, the laminated barrier membrane is preferably
manufactured by extruding the layers.
Discussion
Appellants assert that "[e]ach of the present claims is
patentable over the Moureaux reference because the Moureaux
reference fails to teach, mention or suggest hydrogen bonding
between layers of a barrier membrane." Appeal Brief, Paper No.
10, received March 2, 2000, page 9. Appellants appear to concede
that Moureaux teaches a barrier membrane having layers containing
the same chemical components as the claimed first and second
layers. See id., pages 9 and 10. However, appellants maintain
that the structure of Moureaux's first layer is such that
hydrogen bonding would not occur, while the structure of
appellants' first layer allows for hydrogen bonding to occur
along a segment of the membrane between the first and second
Appeal No. 2001-0168
Application No. 09/170,790
2 The examiner acknowledges that "[t]he claimed gas
transmission rate is not disclosed" in Moureaux, but found that
the membrane "would inherently display a gas transmission rate
within the claimed maximum period." Examiner's Answer, page 3.
Appellants have not traversed the examiner's finding.
5
layers.2 Appeal Brief, page 10. In particular, appellants'
first layer is such that the ethylene vinyl alcohol copolymer is
present at the layer surface. Id. In contrast, Moureaux teaches
that the ethylene-vinyl alcohol copolymer, as part of the graft
polymer, is embedded as eyelets in the polyurethane. See id.
(referencing Figure 1 of Moureaux). Appellants argue that the
embedded copolymer is not in contact with adjacent membrane
layers and, therefore, hydrogen bonding cannot occur at the
interface of the layers. See id.
In deciding patentability issues under 35 U.S.C. § 103
"[a]nalysis begins with the key legal question -- what is the
invention claimed?" Panduit Corp. v. Dennison Mfg. Co., 810 F.2d
1561, 1567-68, 1 USPQ2d 1593, 1597 (Fed. Cir.), cert. denied,
481 U.S. 1052 (1987). In determining the patentability of
claims, the Patent Office gives claim language its "broadest
reasonable interpretation" consistent with the specification and
claims. In re Morris, 127 F.3d 1048, 1054, 44 USPQ2d 1023, 1027
(Fed. Cir. 1997).
Appeal No. 2001-0168
Application No. 09/170,790
3 According to appellants' specification, "it is believed
that significant bonding occurs as the result of available
hydrogen molecules being donated by the vinyl alcohol groups of
the ethylene-vinyl alcohol co-polymer along the length of the
laminated membrane and hydroxyl and urethane carbonyl groups, or
simply the available polar groups of aliphatic thermoplastic
urethane." Specification, page 32, lines 6-10 (emphasis added).
6
As pointed out by the examiner, "[t]he claims merely define
a layer of a combination of a polyurethane and ethylene-vinyl
alcohol copolymer without specifying the position of the
copolymer within the layer." Examiner's Answer, page 7.
Moreover, the claims do not specifically recite that the hydrogen
bonding occurs "between a copolymer of ethylene-vinyl alcohol
(EVOH) of the first layer and a thermoplastic polyurethane (TPU)
of a second layer." See Appeal Brief, page 9. Rather, the
claims merely require that hydrogen bonding occur along a segment
of the membrane between the first and second layers.3
Although the initial burden of establishing a prima facie
case of obviousness rests on the examiner, see In re Oetiker,
977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992), the
PTO can require an applicant to prove that a prior art product
does not necessarily or inherently possess the characteristics of
the claimed product where the claimed and prior art products are
Appeal No. 2001-0168
Application No. 09/170,790
7
identical or substantially identical, or are produced by
identical or substantially identical processes. In re Best,
562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977).
In arguing that Moureaux's structure could not exhibit
hydrogen bonding, appellants rely, in particular, on the
embodiment shown in Figure 1 of Moureaux wherein the ethylene-
vinyl alcohol copolymer is not depicted as being present at the
surface of the membrane layer. See supra, page 5. The examiner
concludes that "[t]he ethylene-vinyl alcohol is not limited to a
location within the polyurethane but is uniformly distributed
throughout the membrane, including the surface" (Examiner's
Answer, page 6).
We find that Moureaux discloses at least one film of a
graft polymer, formed by the reaction of thermoplastic
polyurethane with a copolymer of ethylene and vinyl alcohol (as
described in connection with FIG. 1, see Moureaux, column 6,
lines 11-12), which is arranged between two layers 3 of a
thermoplastic polyurethane. See id., lines 10-16. The layer
containing the co-polymer may be made by mixing the thermoplastic
polyurethane and the co-polymer. See id., claim 2.
Specifically, Moureaux teaches that these materials may be mixed
for a few minutes at a temperature between 150
C and 250
C
Appeal No. 2001-0168
Application No. 09/170,790
8
(302
F - 482
F). Id., column 7, lines 10-13. The membrane is
then formed by incorporating the film between the layers of
thermoplastic polyurethane in a bi-material injection press.
Moureaux, column 7, lines 13-16.
Moureaux is silent as to how bonding is effected between the
layers in the aforementioned embodiment. However, since Moureaux
utilizes the same starting materials and temperatures as
appellants (300
F to about 450
F, Specification, page 39,
lines 17-19) (see Final Rejection, Paper No. 8, mailed December
6, 1999, page 4), it would be expected that Moureaux's process
would produce a structure which falls within the limitations of
claim 1. Thus, we agree with the examiner's conclusion that the
gas-barrier membrane of Moureaux inherently exhibits hydrogen
bonding between the layers. See Examiner's Answer, page 3.
See Lamberti, 545 F.2d 747 at 750, 192 USPQ at 280 ("[T]he
question under 35 U.S.C. § 103 is not merely what the references
expressly teach, but what they would have suggested to one of
ordinary skill in the art at the time the invention was made.")
Appellants separately argue the patentability of dependent
claims 2-4, 10, 14-16, 22, 24-26, 31, 33-35 and 41 which define
barrier membranes having 50 weight percent or less thermoplastic
Appeal No. 2001-0168
Application No. 09/170,790
4 We note that the presence of "3.0 wt.% of one or more
aromatic urethanes" as recited in these claims is merely optional
since it is preceded by the language "up to."
9
urethane in the first layer. Appeal Brief, page 3. Appellants
also separately argue the patentability of claims 10, 22, 31 and
41 which are directed to barrier membranes that include 50-97
weight percent of ethylene-vinyl alcohol copolymer and 3-15
weight percent of thermoplastic urethane in the first layer.4
Appellants assert that all of these claims define over
Moureaux which "teaches that the polyurethane is at least 80
weight percent of the graft copolymer layer." Appeal Brief,
page 11. According to appellants, the examiner has
misinterpreted Moureaux as disclosing two distinct layers one of
which contains a minority of ethylene-vinyl alcohol copolymer and
another of which contains a majority, i.e., 50-95% of ethylene-
vinyl alcohol copolymer. See Reply Brief, Paper No. 12, received
May 23, 2000, page 1. We agree.
Claims 2-4, 14-16, 24-26, and 33-35 require that the barrier
membranes include 50 weight percent or less thermoplastic
urethane in the first layer. Each of claims 10, 22, 31 and 41
specify that the first layer of the claimed membrane includes "50
wt.% to about 97 wt% of at least one ethylene and vinyl alcohol"
Appeal No. 2001-0168
Application No. 09/170,790
10
and "3 wt.% to about 50 wt." of at least one aliphatic
thermoplastic urethane." Moureaux discloses a membrane
comprising a film 2 of a graft polymer formed by the reaction of
thermoplastic polyurethane with ethylene-vinyl alcohol copolymer
arranged between two layers 3 of thermoplastic polyurethane
membrane. See, supra, pages 7-8. Film 2 may be obtained by
mixing these components "in a proportion of 50% to 95% of EVOH
with respect to the thermoplastic polyurethane" to form a graft
polymer. Moureaux, column 6, lines 24-25 (emphasis added). In
the resulting film 2, the amount of ethylene-vinyl alcohol
copolymer with respect to the first material is in the range of
5-20%. Id. column 2, lines 25-39 (emphasis added). Thus,
Moureaux does not render obvious those claims which require that
the barrier membrane include 50 weight percent or less
thermoplastic urethane or those claims which require that the
first layer include 5 wt.% of at least one ethylene and vinyl
alcohol.
In sum, we conclude that the examiner has established a
prima facie case of obviousness with respect to claims 1, 5-9,
17-21, 23, 27-30, 32, 36-40, 42-43 and 64-66 which appellants
have failed to rebut. The rejection is affirmed as to these
claims. The examiner has failed to establish a prima facie case
Appeal No. 2001-0168
Application No. 09/170,790
11
of obviousness with respect to claims 2-4, 10, 14-16, 22, 24-26,
31, 33-35 and 41. We reverse the rejection as to these claims.
Other Issues
1. 37 CFR § 1.192(c)(7) (July, 1999) provides that
for each ground of rejection which appellant contest
and which applies to a group of two or more claims, the
Board shall select a single claim from the group and
shall decide the appeal as to the ground of rejection
on the basis of that claim alone unless a statement is
included that the claims of the group do not stand or
fall together and, in the argument under ¶ (c)(8) of
this section, appellant explains why the claims of the
group are believed to be separately patentable.
Precisely how appellants view the patentability of the claims
over Moureaux is unclear from the stated grouping of the claims.
Claim 2 is grouped with claim 1. However, claim 2 is also
grouped separately from claim 1. Similarly, claims 10, 22, 31
and 41 are indicated as standing or falling with claim 2 and,
yet, are separately grouped. Since appellants appear to have
made a bonafide attempt to separately argue the patentability of
three groups of claims, we have separately considered the
patentability of each of claims 1, 2 and 10.
2. In the event that appellants elect to continue
prosecution of this application, claims 31 and 41 should be
amended to correct the preamble. In particular, the preambles
Appeal No. 2001-0168
Application No. 09/170,790
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currently recite "A barrier membrane according to" claims 23 and
32, respectively. Claims 23 and 32 recite "A method for
producing a laminated barrier membrane. . . ."
Time Period for Response
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART
WILLIAM F. SMITH )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
CHARLES F. WARREN ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
LINDA R. POTEATE )
Administrative Patent Judge )
LRP/lbg
Appeal No. 2001-0168
Application No. 09/170,790
13
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