Ex Parte BoppDownload PDFBoard of Patent Appeals and InterferencesMay 19, 200810311550 (B.P.A.I. May. 19, 2008) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte MICHAEL BOPP ____________ Appeal 2008-2998 Application 10/311,550 Technology Center 1700 ____________ Decided: May 19, 2008 ____________ Before EDWARD C. KIMLIN, THOMAS A. WALTZ, and ROMULO H. DELMENDO, Administrative Patent Judges. DELMENDO, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134 (2002) from a final rejection of claims 37, 40-42, 44, 45, and 47-51. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM-IN-PART. Appeal 2008-2998 Application 10/311,550 Appellant invented particular “composite elements which have at least one core and cover layers containing two fib[er]s” (Specification, hereinafter “Spec.,” 1, ll. 3-5). Representative claims 37, 49, 50, and 51 read as follows: 37. A composite element having at least one core and cover layers containing two fibers in a sandwich layer, wherein the core comprises an open-pored material and the cover layers comprise fiber materials provided with a coating and present in the form of semi-finished products, the coating having reactive resin, which is a powder matrix of cross-linking ethylene- propylene copolymers, unsaturated polyesters and/or polyurethanes and cetyl-methylcellulose, vinylacetate dispersions, PVA solutions, starch or polysaccharides as a thickening agent. 49. An insulating component for a vehicle engine which provides both thermal and acoustical insulation, comprising a composite element, the composite element having at least one core and cover layers containing two fibers in a sandwich layer, wherein the core comprises an open-pored material and the cover layers comprise fiber materials provided with a coating and present in the form of semi-finished products, the coating having reactive, cross-linking [sic] and cetyl-methylcellulose, vinylacetate dispersions, PVA solutions, starch or polysaccharides as a thickening agent. 50. An insulating component according to claim 49, wherein the reactive resin is selected from polyester, polyamide, polyacrylate or mixtures thereof. 51. An insulating component according to claim 50, wherein the reactive resin is a powder matrix of cross-linking ethylene-propylene copolymers, unsaturated polyesters, and/or polyurethanes. The prior art references relied upon by the Examiner in rejecting the claims on appeal are: Parmerter 3,519,618 Jul. 7, 1970 2 Appeal 2008-2998 Application 10/311,550 Thom EP 0 922 563 A1 Jun. 16, 1999 (as translated; hereinafter “EP ‘563”) Bernd Reck and Johannes Türk, “Thermally Curable Aqueous Acrylic Resins – A New Class of Duroplastic Binders for Wood and Natural Fibers,” 272 Die Angewandte Makromolekulare Chemie 5-10 (1999) (hereinafter “Reck”). The Examiner rejected the appealed claims under 35 U.S.C. § 103(a) as follows: (i) claims 37, 40-42, 44, 45, and 47-50 as unpatentable over EP ‘563 in view of Parmerter; and (ii) claim 51 as unpatentable over EP ‘563 in view of Parmerter “and evidenced by Bernd [Reck]...”1 (Examiner’s Answer mailed Jul. 9, 2007, hereinafter “Ans.,” 2). ISSUES Has Appellant shown reversible error in the Examiner’s conclusion that claims 37, 40-42, 44, 45, 47, and 48 are unpatentable over EP ‘563 in view of Parmerter? Has Appellant shown reversible error in the Examiner’s conclusion that claims 49 and 50 are unpatentable over EP ‘563 in view of Parmerter? Has Appellant shown reversible error in the Examiner’s conclusion that claim 51 is unpatentable over EP ‘563 in view of Parmerter and further in view of Reck? FINDINGS OF FACT 1. EP ‘563 describes acoustic components in which plates made of an open-cell melamine resin foam are laminated on both sides with thin, tear-resistant cover layers (¶0001). 1 This document was incorrectly referred to as “Bernd” in the Examiner’s Answer and the Appeal Brief. 3 Appeal 2008-2998 Application 10/311,550 2. EP ‘563 teaches that “[i]t has now been discovered that dimensionally stable acoustic components can also be produced without using aqueous suspensions in that thin, highly resistant cover layers, which are provided with an adhesive on one side, are laid on both sides on the surface of open-cell melamine resin foam plates...” (¶0005). 3. According to EP ‘563, “[p]referred cover layers are metal or plastic films...and furthermore fibrous fleece based on mineral, plastic, pulp, or cotton fibers...” and that “[t]he cover layers are coated, on one side, with an adhesive made of duroplastic or thermoplastic resins” (¶0007). 4. EP ‘563 teaches that preferred adhesives include commercial melamine resin adhesives, acrylic ester resins, polyvinyl propionate resin, and thermoplastic hot melt adhesives such as ethylene-acrylic acid copolymers and methylcellulose (¶0008). 5. EP ‘563 states that duroplastic adhesives are cured (¶0010). 6. EP ‘563 does not teach a “reactive resin, which is a powder matrix of cross-linking ethylene-propylene copolymers, unsaturated polyesters and/or polyurethanes” as recited in appealed claim 37. 7. EP ‘563 does not teach “cetyl-methylcellulose, vinylacetate dispersions, PVA solutions, starch or polysaccharides as a thickening agent” as recited in appealed claim 37 or 49. 8. Parmerter describes a modified starch composition prepared by reacting granular starch and an unsaturated aldehyde to produce 4 Appeal 2008-2998 Application 10/311,550 a substantially noncross-linked granular starch derivative having a specified structure (col. 1, ll. 11-25). 9. Appellant does not assert that Parmerter’s modified starch composition is not a “starch” as recited in the appealed claims. 10. Parmerter teaches that the starch composition is useful as a binder for non-woven textile fabrics and “has superior utility over competing products as a thickener and extender in liquid synthetic polymer compositions; and has a superior utility in ease of handling, formulation and application” (col. 1, l. 66 to col. 2, l. 2; col. 6, ll. 47-62). 11. Reck discloses a “new class of duroplastic binders for wood and natural fibers” (Title), namely a new acrylic resin (p. 6). 12. Reck further teaches that “Duroplastic” includes polyester resins/styrene and polyurethane resins for natural fibers (Tab. 1, p. 6). 13. The Examiner failed to apply Reck against claims 37, 40-42, 44, 45, 47, and 48. PRINCIPLES OF LAW “Section 103 forbids issuance of a patent when the ‘differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which the subject matter pertains.’” KSR Int’l Co. v. Teleflex Inc., 127 S. Ct. 1727, 1734 (2007). 5 Appeal 2008-2998 Application 10/311,550 KSR reaffirms the analytical framework set out in Graham v. John Deere Co. of Kan. City, 383 U.S. 1 (1966), which mandates that an objective obviousness analysis includes: (1) determining the scope and content of the prior art; (2) ascertaining the differences between the prior art and the claims at issue; and (3) resolving the level of ordinary skill in the pertinent art. KSR, 127 S. Ct. at 1734. Secondary considerations such as commercial success, long felt but unsolved needs, or failure of others “‘might be utilized to give light to the circumstances surrounding the origin of the subject matter sought to be patented.’” Id. (quoting Graham, 383 U.S. at 17-18). While KSR rejected a formalistic and rigid application of the teaching, suggestion, or motivation test as an exclusive test in the obviousness inquiry, it nevertheless made clear that an invention “composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art.” KSR, 127 S. Ct. at 1741. KSR elucidated on this matter by stating that “it can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine elements in the way the claimed new invention does.” Id. ANALYSIS I. Claims 37, 40-42, 44, 45, 47, and 48: EP ‘563 & Parmerter We cannot affirm the rejection of these claims. The Examiner states that “EP ‘563 lacks a teaching of a thickening agent in the adhesive coating” (Ans. 3). This understates the actual differences between the claimed subject matter and the closest prior art, 6 Appeal 2008-2998 Application 10/311,550 which is EP ‘563 (Facts 1-7). As pointed out by Appellant (App. Br. 10), claim 37 requires a specified “reactive resin, which is a powder of a matrix of cross-linking ethylene-propylene copolymers, unsaturated polyesters and/or polyurethanes.” The Examiner did not account for this limitation (Fact 13). Here, the Examiner’s failure to ascertain the differences between the prior art and the claims in the manner as required under Graham constitutes clear reversible error. The Examiner’s statement that “[i]t would have been obvious to one skilled in adhesive dispersion for nonwoven to modify the adhesive of EP ‘563 with a starch thickening agent...” cannot make up for the failure to address why a person having ordinary skill in the art would have been led to use Parmerter’s modified starch thickener in combination with Appellant’s specified reactive resin in EP ‘563. II. Claims 49 and 50: EP ‘563 & Parmerter The rejection of claims 49 and 50, which Appellant groups together,2 is another matter. Claim 49 merely recites “reactive, crosslinking.” EP ‘563 discloses such “reactive, crosslinking” (Fact 5). Thus, EP ‘563 differs only in that it does not disclose Appellant’s recited thickener (Fact 7). But given Parmerter’s disclosure, we concur with the Examiner that a person having ordinary skill in the art would have found it obvious to incorporate Parmerter’s modified starch composition in EP ‘563 with a reasonable 2 Appellant groups claims 49 and 50 with claim 51, which was subject to a different ground of rejection (App. Br. 10). Nevertheless, we select claim 49 as representative of claims 49 and 50 and limit our discussion to this selected claim. 37 C.F.R. § 41.37(c)(1)(vii). 7 Appeal 2008-2998 Application 10/311,550 expectation of obtaining all of the advantages disclosed in Parmerter (Facts 8-10). Appellant argues that “the open porosity of the core in conjunction with the claimed thickening agent provides a surprisingly high sound isolation of the composite element” (App. Br. 11). This is unpersuasive because it constitutes mere attorney argument, not evidence. See, e.g., In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997). Appellant’s argument (App. Br. 12) that Parmerter does not “indicate that the compounds disclosed therein would be useful in the physically demanding usage” as defined in the claim is without merit because the reason for combining the references need not be identical to that of Appellant. KSR, 127 S. Ct. at 1742; In re Kemps, 97 F.3d 1427, 1430 (Fed. Cir. 1996); In re Dillon, 919 F.2d 688, 693 (Fed. Cir. 1990)(en banc). Here, a person having ordinary skill in the art would have been led to combine the references, and thus arrive at Appellant’s claimed subject matter, for the uses disclosed in the references. III. Claim 51: EP ‘563, Parmerter, & Reck We also uphold the rejection of claim 51, which recites: “wherein the reactive resin is a powder matrix of cross-linking ethylene-propylene copolymers, unsaturated polyesters, and/or polyurethanes.” We have already addressed why a person having ordinary skill in the art would have been led to use Parmerter’s modified starch in combination with the curable resin disclosed in EP ‘563 to coat the cover layers. Although EP ‘563 does not disclose Appellant’s specified reactive resin, it 8 Appeal 2008-2998 Application 10/311,550 teaches the use of “duroplastic” resins as a curable adhesive (Facts 3-5). Reck teaches that polyurethane is a “duroplastic” suitable for binding natural fibers (Fact 12). Accordingly, a person having ordinary skill in the art would have found it obvious to select polyurethane from a finite number of possible duroplastic adhesives suitable in EP ‘563. http://des.uspto.gov/Foia/ReterivePdf?system=BPAI&flNm=fd20080601- 03-31-2008-1 (BPAI 2008). CONCLUSION On this record, we determine that the Examiner reversibly erred in rejecting claims 37, 40-42, 44, 45, 47, and 48 under 35 U.S.C. § 103(a) as unpatentable over EP ‘563 in view of Parmerter. Appellant, however, failed to demonstrate any error in the Examiner’s conclusion that the subject matter of appealed claims 49-51 would have been obvious over the prior art. DECISION The Examiner’s decision to reject the appealed claims is affirmed-in- part. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). 9 Appeal 2008-2998 Application 10/311,550 AFFIRMED-IN-PART tc MARSHALL & MELHORN 8TH FLOOR FOUR SEAGATE TOLEDO, OH 43604 10 Copy with citationCopy as parenthetical citation