Ex Parte D et al

Patent Trial and Appeal Board

Feb 17, 2017

12754461 (P.T.A.B. Feb. 17, 2017)

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.
12/754,461 04/05/2010 Sean Charles D'Silva 7617D 6770
29602 7590 02/17/2017
TOTTNS 1UANVTT T F
EXAMINER
10100 WEST UTE AVENUE CHRISS, JENNIFER A
PO BOX 625005
LITTLETON, CO 80162-5005 ART UNIT PAPER NUMBER
1786
MAIL DATE DELIVERY MODE
02/17/2017 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SEAN CHARLES D’SILVA and THOMAS E. BURGHARDT
Appeal 2015-004500
Application 12/754,461
Technology Center 1700
Before ROMULO H. DELMENDO, LINDA M. GAUDETTE, and
MICHELLE N. ANKENBRAND, Administrative Patent Judges.
DELMENDO, Administrative Patent Judge.
DECISION ON APPEAL
The Applicants (hereinafter the “Appellants”)1 appeal under 35 U.S.C.
§ 134(a) from a final decision of the Primary Examiner to reject claims
15—17.2 We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 The Appellants state that the real party in interest is “Johns Manville”
(Appeal Brief filed August 26, 2014, hereinafter “Br.,” 1).
2 Br. 1, 4—10; Final Office Action mailed April 1, 2014, hereinafter “Final
Act.,” 4—9; Examiner’s Answer mailed December 30, 2014, hereinafter
“Ans.,” 2-14.
Appeal 2015-004500
Application 12/754,461
BACKGROUND
The subject matter on appeal relates to reinforcing fibers having
particulate protuberances directly attached to the surfaces thereof
(Specification, hereinafter “Spec.,” 1,11. 6—9; Figs. 4 and 4A). According to
the Appellants {id. at 1,11. 9-13), the claimed reinforcing fibers may be used
to form fiber reinforced products (FRP) or long fiber reinforced products
(LFRP) having certain improved characteristics.
Representative claim 15 is reproduced from the Claims Appendix to
the Appeal Brief, with key disputed limitations highlighted, as follows:
15. Reinforcing fibers selected from the group consisting of
glass fibers and carbon fibers and mixtures thereof, having
fumed silica particulate protuberances attached directly to the
surfaces thereof wherein the particles are physically and/or
chemically bonded directly to the surfaces of the fibers, and
not part of a coating composition, but with the particles coated
with a binder or a sizing composition, and with the particles
forming such protuberances having a longest number average
dimension within the range of approximately 0.01 nanometer to
approximately 30 micrometers.
REJECTIONS ON APPEAL
The Examiner rejected the claims as follows:
I. Claims 15 and 16 under pre-AIA 35 U.S.C. § 102(b) as
anticipated by Hawkins et al.3 (hereinafter “Hawkins”);
II. Claims 16 and 17 under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over Hawkins and Simmons et al.4
(hereinafter “Simmons”);
III. Claims 15 and 17 under pre-AIA 35 U.S.C. § 103(a) as
3 US 5,707,734, issued January 13, 1998.
4 US 5,565,049, issued October 15, 1996.
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Application 12/754,461
unpatentable over Gladney et al.5 (hereinafter “Gladney”)
and Hawkins; and
IV. Claim 16 under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over Gladney, Hawkins, and Jaffee.6
(Final Act. 4—9; Ans. 2—14.)
DISCUSSION
Rejection I
The Appellants argue claims 15 and 16 together (Br. 4—6). Therefore,
we confine our discussion to claim 15, which we select as representative
pursuant to 37 C.F.R. § 41.37(c)(l)(iv). As provided by this rule, claim 16
stands or falls with claim 15.
The Examiner found that Hawkins describes every limitation recited
in claim 15 (Ans. 2—3). Regarding the limitations highlighted in reproduced
claim 15 above, the Examiner found, inter alia, that Hawkins discloses
applying a sizing composition including fumed silica particulates on the
fiber surfaces and that this technique is indistinguishable from the
Appellants’ described method for producing reinforcing fibers having the
disputed limitations {id. at 8).
The Appellants contend that Hawkins does not anticipate because
“[depositing the fumed silica from a coating composition, as in Hawkins,
does not provide the required adhesiveness and resulting toughness” that
would result from the fumed silica particles being bonded directly to the
fiber surfaces (Br. 6). According to the Appellants {id.), “[t]he fumed silica
particles of the claimed reinforcing fibers are coated with a binder or sizing
5 US 3,692,507, issued September 19, 1972.
6 US 2003/0113526 Al, published June 19, 2003.
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Application 12/754,461
composition, but they are not applied in one as they are bonded directly to
the fiber surface.”
The Appellants’ arguments fail to identify a reversible error in the
Examiner’s factual findings supporting the anticipation rejection. In re
Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011).
The current Specification describes several techniques for preparing
the claimed fibers in which the particles are bonded directly to the fiber
surfaces, as follows (Spec. 5,11. 6—20) (emphases added):
The method of the present invention comprises forming
the fibers having particulate protuberances on the surfaces
thereof prior to collecting of the fibers into a strand or strands.
This is achieved by causing particles to bond to hot surfaces of
the freshly drawn fiber or fibers, prior to the coating of the
fibers with typical sizing materials or binders. One method
involves directing one or more gaseous streams containing
suspended particles onto the fibers while the surface of the
fibers are still in a molten or otherwise tacky state and elevated
temperature, causing the particles to physically and/or
chemically bond to the surface of the fibers. Another method
directs one or more streams of liquid containing suspended
particles onto the fibers while the surfaces of the fibers are still
in a molten or otherwise tacky state or at an elevated
temperature, causing the liquid to evaporate and the particles to
physically and/or to chemically bond to the surface of the
fibers. Still another method comprises including particles in
any conventional sizing, thus forming a chemical and/or
physical bond between the nascent fibers and the particles
during the sizing application and/or further processing steps
like drying, pelletizing and agglomerating.
Hawkins describes a technique that is indistinguishable from one or
more of the Appellants’ described techniques. Specifically, Hawkins
discloses applying fumed silica—either alone or in combination with
optional fibrillary TEFFON®—during fiber formation as a size composition
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Application 12/754,461
using a sizing applicator that applies a coating to the fibers from a coating
bath (col. 2,11. 60-66). Hawkins further teaches that “[ajfter application of
the fumed silica ... to the glass fibers, the coated fibers can be collected by
any convenient means” and that “[i]f desired, the coated fibers can be heated
to remove water” (col. 3,11. 6—7).
Because Hawkins discloses the same or substantially identical
technique as that described in the current Specification, it would reasonably
appear that Hawkins’s fibers would have at least some fumed silica
particulate protuberances that are attached directly to the fiber surfaces, as
required by claim 15. The Appellants’ mere argument to the contrary is
insufficient to show otherwise. “Where . . . the claimed and prior art
products are identical or substantially identical, or are produced by identical
or substantially identical processes, the PTO can require an applicant to
prove that the prior art products do not necessarily or inherently possess the
characteristics of his claimed product.” In re Best, 562 F.2d 1252, 1255
(CCPA 1977). Accord In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990)
(“[W]e conclude that the Board correctly found that the virtual identity of
monomers and procedures sufficed to support a prima facie case of
unpatentability of Spada’s polymer latexes . . . .”).
The Appellants appear to be arguing that the claim language “not part
of a coating composition” precludes the use of a sizing agent to produce the
claimed fibers (Br. 5). We disagree. As found by the Examiner (Ans. 8) and
as we discuss above, Hawkins’s use of a sizing composition is consistent
with the Appellants’ description regarding suitable techniques that may be
used to produce particles that are physically and/or chemically bonded
directly to the surfaces of the fibers. To the extent that the sizing
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composition may reduce (but not completely eliminate) the number of
fumed silica particulates that are directly bonded to the fiber surfaces, we
agree with the Examiner’s observation (Ans. 9) that claim 15 fails to specify
any degree of adhesiveness or toughness—i.e., the claim fails to specify the
amount, degree, and/or percentage of the particles relative to the fibers that
must be attached directly to the fiber surface. To the extent that we were to
construe the phrase “not part of a coating composition” as a process
limitation, the patentability of a product claim rests on the product itself—
not the process by which it is produced. Spada, 911 F.2d at 708 (citing In re
Thorpe, 111 F.2d 695, 697-698 (Fed. Cir. 1985)).
For these reasons, and those well-stated by the Examiner, we uphold
Rejection I.
Rejection II
With respect to Rejection II, based on the combined teachings of
Hawkins and Simmons, the Appellants rely on the same arguments offered
against Rejection I—i.e., that “Hawkins is deficient” and add that “Simmons
does not cure the deficiencies of Hawkins” (Br. 7). As discussed above,
however, the Examiner’s anticipation rejection over Hawkins is not
“deficient.” Therefore, we affirm Rejection II for the same reasons
discussed for Rejection I above.
Rejection III
The Appellants argue claims 15 and 17 together (Br. 7—10).
Therefore, we confine our discussion to claim 15, which we select as
representative pursuant to 37 C.F.R. § 41.37(c)(l)(iv). As provided by this
rule, claim 17 stands or falls with claim 15.
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The Examiner found that Gladney describes every limitation of claim
15 except that the additives used for treating the fibers are not described as
forming “fumed silica particulate protuberances” having “a longest number
average dimension within the range of approximately 0.01 nanometer to
approximately 30 micrometers” (Ans. 4—5). The Examiner found, however,
that Hawkins teaches applying fumed silica having an average particle size
up to 10 microns, more preferably between about 1 and about 50 nanometers
onto glass fibers {id. at 5). The Examiner concluded that a person having
ordinary skill in the art would have combined Gladney and Hawkins in the
manner claimed by the Appellants as a matter of combining known elements
according to known methods with no change in their respective functions to
yield predictable results {id. at 6).
The Appellants argue that “[t]he methods of Gladney are for preparing
foamable components, which are quite different from [the claimed]
reinforcing fibers” (Br. 7). Specifically, the Appellants point out that
Gladney teaches a hydration step and that “while additives can be added to
the components of Gladney, they are of a particular type designed for the
foamable components to be prepared”—i.e., those that “impact the
molecular structure of the silicates” {id. at 8) (quoting Gladney, col. 2,11.
34-45). Thus, according to the Appellants {id.), “the addition of fumed
silica to be bonded to the surface of glass or carbon fibers is not
contemplated or suggested in Gladney” {id.). Furthermore, the Appellants
argue that “Hawkins cannot cure the deficiencies of Gladney” because
“Hawkins is deficient in that the fumed silica coating is applied from a
sizing or coating composition” {id. at 9).
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We disagree with the Appellants that Hawkins is “deficient” for the
reasons already discussed above for Rejection I. As for the argument that
Gladney relates to preparing foamable components, we discern no error in
the Examiner’s finding that Gladney discloses fibers, which are treated
during their formation with dry particulate powders or solid particles in a
gaseous stream and which are indistinguishable from the Appellants’
claimed reinforcing fibers (Ans. 4, 11). See Gladney’s column 3, lines 49-
54 (“The silicate glass particles or fibers have a high specific surface area
and may be treated while forming or immediately after forming with
additives such as . . . dry particulate powders of insolubilizing agents,
complexing agents, and mineral or organic fillers'1'’) (emphases added). The
fact that Gladney also teaches foams does not negate Gladney’s teachings
relating to fibers. Finally, regarding the argument that Gladney teaches the
use of additives that affect the molecular structure of the silicates, the
Examiner correctly found (Ans. 11) that Gladney’s disclosure in column 2,
lines 34-45, relates to other prior art products (“There exists an extensive
body of prior art concerning the use of alkali metal silicates . . . .”), which
are unrelated to the disclosure upon which the Examiner’s rejection is based.
For these reasons and those given by the Examiner, we uphold
Rejection III.
Rejection IV
The Appellants argue that “[t]he proposed combination of Gladney
and Hawkins is deficient for the reasons discussed above” and that “Jaffee
does not cure the deficiencies” (Br. 10). Because the Examiner’s rejection
based on Gladney and Hawkins is not “deficient,” we uphold Rejection IV
for the same reasons given above for Rejection III.
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SUMMARY
Rejections I—IV are affirmed. Therefore, the Examiner’s final
decision to reject claims 15—17 is affirmed.
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).
AFFIRMED
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