Ex Parte Bopp

Board of Patent Appeals and Interferences

May 19, 2008

10311550 (B.P.A.I. May. 19, 2008)

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