Ex Parte Deets et al

Patent Trial and Appeal Board

Sep 8, 2016

13164240 (P.T.A.B. Sep. 8, 2016)

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.
13/164,240 06/20/2011 Gary L. Deets 03097P-DIV-020 1463
27804 7590 09/08/2016
HOLLAND & BONZAGNI, P.C.
171 DWIGHT ROAD, SUITE 302
LONGMEADOW, MA 01106-1700
EXAMINER
LISTVOYB, GREGORY
ART UNIT PAPER NUMBER
1765
MAIL DATE DELIVERY MODE
09/08/2016 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 GARY L. DEETS
and JIANMING XIONG
____________

Appeal 2015-001651
Application 13/164,240
Technology Center 1700
____________
Before JEFFREY W. ABRAHAM, JULIA HEANEY, and
JEFFREY R. SNAY, Administrative Patent Judges.
HEANEY, Administrative Patent Judge.
DECISION ON APPEAL
Appellants1 seek our review pursuant to 35 U.S.C. § 134(a) of a
decision of the Examiner to reject claims 1–5, 7–9, and 11 of Application
13/164,240. We have jurisdiction under 35 U.S.C. § 6(b). We affirm in
part.

1 Appellants identify the real party in interest as I.S.T. (MA) Corp. App. Br.
1.
Appeal 2015-001651
Application 13/164,240
2
BACKGROUND
The subject matter on appeal relates to a polyimide oligomer obtained
by reacting an aromatic dianhydride, an aromatic diamine devoid of aliphatic
groups in the polymer backbone between aromatic groups, and an addition
cure end cap comprising citraconic anhydride. App. Br. 2. The polyimide
oligomer is used in solution as an impregnate of a fibrous reinforcing
material. Id.
Claims 1 and 3, reproduced below from the Claims Appendix with
emphasis added, are illustrative:
1. A solution comprising: (a) a polyimide oligomer; and
(b) one or more organic solvents, wherein the polyimide
oligomer is a condensation product of a polyamic acid oligomer
that is obtained by reacting one or more aromatic dianhydrides,
one or more aromatic diamines devoid of aliphatic groups in
polymer backbone between aromatic groups, and an addition
cure end cap comprising citraconic anhydride, and has a
melting point of less than about 250°C, and a melt viscosity at
250°C of less than about 25000 cps,
wherein the polyimide oligomer still flows after the one
or more organic solvents are removed from the solution by
heating to a temperature of about 250 °C and maintaining that
temperature for from about 1 to about 4 hours.
3. A high temperature, low void volume, fiber-reinforced
composite material obtained by consolidating and curing a
prepreg in which a fibrous reinforcing material is impregnated
with the solution of claim 1 using a two-stage cure schedule,
wherein:
in a first stage, the prepreg is cured at temperatures up to
about 250°C for from about 1 to about 4 hours to remove
volatiles, and then consolidated, the viscosity of the oligomers
during the first stage being less than or equal to 2500 poise,
wherein the polyimide oligomer still flows after the volatiles
have been removed from the prepreg, which allows voids in the
composite material to close during consolidation; and
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in a second stage, full cure is effected by crosslinking via
a nonvolatile-producing reaction.
REFERENCES
The Examiner relied upon the following prior art in rejecting the
claims on appeal:
Inoue et al. (“Inoue”) US 5,128,444 July 7, 1992

Manos US 5,272,245 Dec. 21, 1993

THE REJECTION
Claims 1–5, 7–9, and 11 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Manos and Inoue.2
DISCUSSION
Appellants do not separately argue the dependent claims (with the
exception of claim 11); therefore, those claims stand or fall with the
independent claim from which they depend. See 37 C.F.R. § 41.37(c)(1)(iv).
Appellants argue independent claims 1, 3, and 7 in several groups relating to
common limitations of some or all of those claims. We focus our discussion
on those common limitations as argued by Appellants.
Manos discloses a polyimide oligomer (also referred to as
“oligoimide”) prepared by reaction of an aromatic diamine and dicarboxylic
dianhydride in the presence of maleic, itaconic, or citraconic anhydride.

2 We cite herein to the Non-Final Action mailed March 27, 2013 (Non-
Final Act.), because the Examiner incorporated that rejection into the Final
Office Action mailed December 18, 2013.
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Application 13/164,240
4
Manos 12:63–13:11. The oligoimide is used as a chemically etchable
adhesive with high temperature stability for bonding to a metal laminate. Id.
at 1:10–2:6. Inoue discloses a thermosetting resin composition for use as an
adhesive, with improved heat resistance and mechanical properties. Inoue,
Abstract, 1:5–25, 2:12–22. The resin composition includes a polyimide
oligomer formed by reacting an aromatic diamine with an aromatic
tetracarboxylic acid, of which dianhydrides are particularly preferred. Id. at
2:22–56; 5:18–6:3.
The Examiner acknowledges that Manos does not teach that the
aromatic diamine ingredient is “devoid of aliphatic groups in polymer
backbone between aromatic groups” as recited in claims 1 and 7 (Non-Final
Act. 4), but determines that a person of ordinary skill in the art would
replace Manos’s “aliphatic fragments” with Inoue’s completely aromatic
structure, in order to obtain a thermosetting resin composition with improved
heat resistance and mechanical properties. Non-Final Act. 4–5; Ans. 4.
With respect to the limitation “one or more aromatic diamines devoid
of aliphatic groups in polymer backbone between aromatic groups,”
Appellants argue that the rejection of claim 1 should be reversed because
replacement of the aliphatic groups in Manos’s structure would render it
unsuitable for its intended use as a flexible and etchable adhesive film. App.
Br. 8–11. Specifically, Appellants argue that the aliphatic constituents of
Manos provide increased flexibility of the molecular structure, thereby
reducing the degree of crystallization, increasing solubility of the resin, and
aiding in its etchability, and that it “is well known to those skilled in the art
[that] a lack of solubility and flexibility during cure would result in the
inability of this material to form a film.” Id. at 10. We have considered
Appellants’ argument, but find that it lacks evidentiary support and does not
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Application 13/164,240
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establish that Manos’s oligomer would be unable to form a film. Further,
Appellants do not respond to the Examiner’s finding that Inoue’s completely
aromatic oligomer is formed into a flexible lamination sheet with high
values for elasticity module (Ans. 4, citing Inoue Example 5 and Table 1),
and that Inoue further discloses an amorphous, non-crystalline oligomer.
Id., citing Inoue Table 1. See Reply Br. 2–4. Therefore, we are not
persuaded that Appellants have demonstrated reversible error with respect to
the rejection of claim 1.
With respect to the limitation “high temperature, low void volume,
fiber-reinforced composite material” recited in claims 3 and 7, Appellants
argue that “neither Manos nor Inoue disclose fiber-reinforced composite
materials or address the problem concerning the evolution of cure volatiles
from condensation cure polyimide resins during composite manufacture.”
App. Br. at 7. The Examiner responds that Manos as modified by Inoue
discloses a material of the same formula and molecular weight as the
appealed claims, and thus inherently would be expected to have the same
void volume. Ans. 2–3. The Examiner further determines that “fiber-
reinforced composite material” is an intended use that does not distinguish
claims 3 and 7 from the prior art because Manos as modified by Inoue
“disclose the material of the same set of properties [as the claimed
invention], they can be used in the same compositions [as the claimed
invention].” Id. at 2.
On the record before us, the Examiner has not shown that a person of
ordinary skill in the art would have had an apparent reason to use the
oligoimide composition of Manos as modified by Inoue to make a fiber-
reinforced composite material. The Examiner does not point to any teaching
in Manos or Inoue relating to a fiber-reinforced composite, and we do not
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agree with the Examiner’s determination that “fiber-reinforced composite
material” as recited in claims 3 and 7 is merely an intended use. Rather,
claims 3 and 7 are directed to a fiber-reinforced composite material obtained
by the method recited in those claims. Therefore, we conclude that the
Examiner reversibly erred in rejecting claims 3 and 7.
Because we find reversible error in the determination of obviousness
with respect to claim 7, we need not address Appellants’ separate argument
with respect to dependent claim 11.
SUMMARY
We affirm the rejections of claims 1, 2, and 8 as unpatentable under
35 U.S.C. § 103(a), for the reasons set forth above.
We reverse the rejection of claims 3–5, 7, 9, and 11 as unpatentable
under 35 U.S.C. § 103(a), for the reasons set forth above.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED-IN-PART