Ex Parte Denkmann et al

Patent Trial and Appeal Board

Apr 25, 2018

13254483 (P.T.A.B. Apr. 25, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/254,483 12/20/2011
53609 7590 04/27/2018
REINHART BOERNER VAN DEUREN P.C.
2215 PERRYGREEN WAY
ROCKFORD, IL 61107
FIRST NAMED INVENTOR
Volker Denkmann
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
508730 9332
EXAMINER
KRUER,KEVINR
ART UNIT PAPER NUMBER
3649
NOTIFICATION DATE DELIVERY MODE
04/27/2018 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
RockMail@reinhartlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte VOLKER DENKMANN, ULRICH HAMPEL,
WILLI SCHENKEL, ANDREAS SIEMEN, and
WOLF OETTING
Appeal2016-006412
Application 13/254,483 1
Technology Center 3600
Before KEN B. BARRETT, EDWARD A. BROWN, and
GEORGE R. HOSKINS, Administrative Patent Judges.
BROWN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Volker Denkmann et al. ("Appellants") appeal under 35 U.S.C.
§ 134(a) from the Examiner's decision, as set forth in the Final Office
Action dated June 4, 2015 ("Final Act."), rejecting claims 1-3, 5, 7-12, and
14--17. 2 We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 Appellants identify Hydro Aluminium Deutschland GmbH as the real party
in interest. Appeal Br. 2.
2 Claims 4, 6, and 13 have been cancelled. Appeal Br. 2.
Appeal2016-006412
Application 13/254,483
CLAIMED SUBJECT MATTER
Appellants' disclosure "relates to a method for producing an
aluminium strip, in which the aluminium strip is coated with a sorption layer
which has a binder and a sorbent. In addition, the invention relates to a
correspondingly coated aluminium strip and to its advantageous use." Spec.
1, 11. 4--8.
Claim 1, reproduced below, is illustrative of the claimed subject
matter.
1. Method for producing an aluminium strip, comprising:
coating the aluminium strip with a sorption layer which
. .
compnses a suspens10n;
applying the suspension to the aluminium strip in the
coating process, the suspension comprising a liquid, at least one
binder, formed by suspension polymerisation or by suspension
copolymerisation, and a sorbent, wherein the sorbent in the
suspension is not wetted through the solid binder; and
subjecting the aluminium strip together with the applied
suspension to a drying process, in which the liquid in the
suspension is evaporated and the binder is activated.
Appeal Br. (Claims App. 1).
REJECTIONS
1. Claims 1, 2, 5, 7, and 14 are rejected under 35 U.S.C. § I03(a)
as unpatentable over Abell (US 5,731,260, issued Mar. 24, 1998) and
Conrad (US 4,107,256, issued Aug. 15, 1978) or Ramanathan (US
6,123,988, issued Sept. 26, 2000).
2. Claim 3 is rejected under 35 U.S.C. § I03(a) as unpatentable
over Abell, Conrad or Ramanathan, and Dunne (US 2004/0231828 Al,
published Nov. 25, 2004).
2
Appeal2016-006412
Application 13/254,483
3. Claim 8 is rejected under 35 U.S.C. § I03(a) as unpatentable
over Abell, Conrad or Ramanathan, and Karandikar (US 2007/0207335 Al,
published Sept. 6, 2007).
4. Claims 9 and 15 are rejected under 35 U.S.C. § I03(a) as
unpatentable over Abell, Conrad or Ramanathan, and Nakada (US
2003/0065085 Al, published April 3, 2003).
5. Claims 10 and 16 are rejected under 35 U.S.C. § I03(a) as
unpatentable over Abell, Conrad or Ramanathan, and Siemonsen (US
3,889,745, issued June 17, 1975).
6. Claim 12 is rejected under 35 U.S.C. § I03(a) as unpatentable
over Abell, Conrad or Ramanathan, Siemonsen, and Davisson (US
6,350,532 Bl, issued Feb. 26, 2002).
7. Claims 11 and 17 are rejected under 35 U.S.C. § I03(a) as
unpatentable over Abell, Conrad or Ramanathan, Siemonsen, and Nakada.
ANALYSIS
Rejection 1 - Claims 1, 2, 5, 7 and 14
Claim 1 recites "applying the suspension to the aluminium strip in the
coating process, the suspension comprising ... at least one binder,formed
by suspension polymerisation or by suspension copolymerisation . ... "
Appeal Br. (Claims App. 1 (emphasis added)). The Examiner finds that
Abell discloses coating an aluminum strip with a sorption layer comprising a
suspension comprising a binder, which may be polyurethane. Final Act. 3--4
(citing Abell, col. 7, 11. 9+, 1. 17, 1. 38+). The Examiner finds that Abell
does not teach making the binder by suspension polymerization. Id. at 4.
The Examiner relies on Conrad and Ramanathan to teach that polyurethanes
3
Appeal2016-006412
Application 13/254,483
may be made by suspension polymerization. Id. The Examiner concludes
that it would have been obvious to one of ordinary skill in the art to form the
binder used in Abell by suspension polymerization because this is a known
method of producing polyurethane polymers. Id. The Examiner also states
that Abell teaches polyurethane binders are desirable, and Conrad and
Ramanathan both teach that suspension polymerization is "a commercially
known and viable method of making polyurethane polymers," which is an
objective reason to combine the reference teachings. Adv. Act. 2 ( dated
Aug. 25, 2015).
Appellants contend that the Examiner has not provided an objective
reason to combine the teachings of Conrad or Ramanathan with Abell.
Appeal Br. 5. Appellants contend that the Examiner's description of Conrad
and Ramanathan as "teach[ing] that suspension polymerization is 'an
economically and viable' means of producing polyurethane polymers" "does
not provide any objective reason as to why one would deviate from the
teachings in Abell." Id. at 6 (emphasis added). Appellants also assert that
"[t]he Examiner does not identify that the methods in Conrad or Ramanathan
teach a polymerization process which is more economical and more viable
than that taught by Abell." Id. ( emphasis added).
Appellants' contentions are not persuasive. Abell discloses that
exemplary polymers for the binder include urethanes. Abell, col. 3, 11. 29-
36. The Examiner points out that "Abell does not disclose a method of
polymerizing the polyurethane taught therein; thus, the proposed
combination does not 'deviate' from the teachings of Abell." Ans. 8.
Regarding Appellants' position that the Examiner fails to establish that
"Conrad or Ramanathan teach[ es] a polymerization process which is more
4
Appeal2016-006412
Application 13/254,483
economical and more viable than that taught by Abell," the Examiner states,
"since no method of polymerization is disclosed in Abell, it is impossible for
the examiner to compare the viability or economics of suspension
polymerization relative to Abell's teachings." Id.
We agree with the Examiner. Appellants have not explained what
polymerization method in Abell should be compared with the suspension
polymerization method disclosed in either Conrad or Ramanathan. Indeed,
the record supports the Examiner's finding that Abell does not disclose how
the polyurethane binders are formed. Appellants' other arguments
( discussed below) focus substantially on Abell' s disclosure of formulating
the binder as an oil-in-water emulsion, but that disclosure presumes
polymerization has already occurred, such that the emulsion is "formed by
first dissolving the polymer(s) in a[n] organic solvent." Abell, col. 4, 11. 54--
58. Moreover, Appellants have not cited any authority to support the
position that the Examiner's reason for combining the teachings of Conrad
and Ramanathan with Abell is inadequate unless the Examiner shows that
the polymerization method disclosed in Conrad or Ramanathan is "more
economical and more viable than that taught by Abell." Appeal Br. 6
( emphasis added).
The Examiner further reasons that the proposed modification of Abell
to suspension polymerize the polyurethane binder based upon the teachings
of Conrad and Ramanathan would have been obvious under several
additional obviousness rationales set forth in KSR Int 'l Co. v. Teleflex Inc.,
550 U.S. 398 (2007). Ans. 7-8. We need not address these additional
rationales, however, as Appellants have not apprised us of error in the
Examiner's rationale discussed above.
5
Appeal2016-006412
Application 13/254,483
Appellants also contend that modifying Abell in view of Conrad or
Ramanathan would render Abell unsatisfactory for its intended purpose.
Appeal Br. 7. Appellants assert that Abell teaches that the binder is
formulated as an oil-in-water emulsion, and such emulsion is preferably
formed by dissolving the Abell polymers in an organic solvent. Id. ( citing
Abell, col. 4, 11. 54--58). Appellants assert that to the extent the process in
either Conrad or Ramanathan cannot dissolve Abell's binder to form an
emulsion, such a modification would render Abell unsatisfactory for its
intended purpose of providing a binder that is formulated as an oil-in-water
emulsion. Id.
In response to the Examiner's finding that "Abell teaches oil-in-water
emulsions are desirable 'in certain embodiments,' but is not limited to such
embodiments" (Final Act. 8), Appellants appear to contend that Abell
contains disclosure that requires the binder to be an oil-in-water emulsion.
Appeal Br. 8 ( citing Abell, col. 2, 11. 5-9, Abstract, claims). Appellants also
acknowledge that Abell discloses that the binder or binder formulation may
be an organic solution. Id. ( citing Abell, col. 4, 1. 65 - col. 5, 1. 6).
Abell describes:
In certain embodiments of this invention, the binder or binder
combination is formulated as an oil-in-water emulsion, and the
emulsion is often most easily formed by first dissolving the
polymer(s) in [an] organic solvent that forms a separate phase
with water. . . . In other embodiments of the invention ... the
binder or binder formulation may be used effectively as an
organic solution without an aqueous phase.
Abell, col. 4, 1. 54--col. 5, 1. 12 (emphases added). According to Appellants,
Abell "demonstrates that the binder can be one of two possible forms: an
6
Appeal2016-006412
Application 13/254,483
emulsion and a solution," and "Abell outline two possible forms of the
binder, and neither form is a suspension." Reply Br. 11.
Appellants' contentions are not persuasive. The above-quoted
description in Abell indicates that the binder or binder formulation may be
an oil-in-water emulsion or an organic solution without an aqueous phase,
but it does indicate that the binder or binder formulation is limited to these
forms. Appellants do not apprise us of error in the Examiner's finding that
Abell discloses coating an aluminum strip with a suspension. Final Act. 3.
The Examiner finds that Abell' s binder may be in the form of a suspension.
Ans. 8-9 (citing Abell, col. 7, 1. 15+). Abell states, "[t]he binder
formulation may be a suspension, emulsion, or solution." Abell, col. 7, 11.
16-17 ( emphasis added). The Examiner also points out Abell teaches it is
known in the art to use a suspension for application of sorbents to a
substrate. Ans. 9 ( citing Abell, "Examples"); see Abell, col. 7, 1. 63---col. 8,
1. 2. Appellants do not apprise us of any error in the Examiner's finding that
the binder used in Abell may be a suspension.
Appellants also appear to contend that the Examiner erred in
determining that "the claims do not require the binder form a suspension."
Appeal Br. 9 ( citing Final Act. 9). Appellants assert that the Examiner erred
"'by taking the position at page 3 that 'the claim does not require the binder
be present as a suspension in the suspension applied to the aluminum
substrate."' Id. at 9-10 (citing Adv. Act. 3).
We agree with the Examiner that the limitation of "at least one binder,
formed by suspension polymerisation or by suspension copolymerization,"
( emphasis added), specifies how the binder is formed, that is, the process
used to form the binder. Adv. Act. 3. Claim 1 recites that the suspension
7
Appeal2016-006412
Application 13/254,483
applied to the aluminium strip comprises the binder formed by the recited
process. We understand that, in the Examiner's combination, the binder is
formed by suspension polymerization, as taught by Conrad or Ramanathan,
and the suspension applied to an aluminum strip comprises the binder and a
sorbent, as taught by Abell. Accordingly, the modified method of Abell
includes the "applying" step recited in claim 1.
For the foregoing reasons, we sustain the rejection of claim 1, and of
claims 2, 5, 7, and 14 depending from claim 1, which are not separately
argued.
Rejection 2- Claim 3
Claim 3 depends from claim 1 and recites that "zeolites or silica gels
are used as solvents." Appeal Br. (Claims App. 1 ). The Examiner finds that
Abell teaches carbon as the sorbent, "but does not teach it may also
comprise zeolite." Final Act. 4 (emphasis added). The Examiner finds that
Dunne teaches zeolites used as sorbents on an aluminum substrate. Id. at 4--
5 ( citing Dunne ,r 10). The Examiner reasons that it would have been
obvious "to add zeolite to the composition disclosed in Abell" because
"zeolites are taught by Dunne to be useful as a sorbent on aluminum
substrates." Id. at 5.
Appellants contend that the Examiner has erred in finding that
"Abell's carbon could be replaced with zeolites or silica gels," as this
substitution "would render Abell unsatisfactory for it intended purpose of
utilizing activated carbon as a sorbent." Appeal Br. 11 (emphasis added).
This contention does not address the Examiner's rejection, which does not
substitute Abell' s carbon with zeolites, and thus, is not persuasive.
8
Appeal2016-006412
Application 13/254,483
Appellants also contend that it would not have been obvious to utilize
a blend of carbon/zeolite in Abell. Id. Appellants note Abell discloses that
carbon is the "sorbent of choice" in solid sorption compressors, particularly
those using ammonia as the working fluid. Appeal Br. 11. Appellants assert
Abell discloses that "the efficiency of activated carbon as a sorbent is even
greater when the carbon is formed into a high density matrix," but "the
Examiner's suggestion of introducing zeolites into such a carefully
constructed matrix" has no reasonable expectation of success, is likely to
render Abell' s system unsatisfactory for its intended purpose, and would
change the principle of operation of Abell. Id. at 11-12.
The Examiner responds that zeolites are known to be functionally
equivalent to the sorbent in Abell and it would have been obvious to utilize a
blend of zeolite/ carbon sorbents in Abell' s composition." Ans. 11. The
Examiner states there is no evidence of record supporting Appellants'
position that a blend ( of activated carbon and zeolites) would render Abell
inoperable or change its principle of operation. Id. at 12. The Examiner
adds that Abell teaches that the coating may contain "additives" including
fillers. Id. (citing Abell, col. 5, 1. 22+, 1. 48+).
Appellants' contentions are more persuasive. There does not appear
to be any disclosure in Abell of using a sorbent other than activated carbon
in the coating method. Indeed, Abell states that "[t]his invention resides in
the field of activated carbon and its use as a sorbent in heat transfer
systems." Abell, col. 1, 11. 4--5. Appellants point out that Abell discloses a
compressor having ammonia as a working fluid, and assert that zeolites are
known to trap ammonia, which would diminish the amount of working fluid
in the compressor and/or reduce the amount of available sorbent. Reply Br.
9
Appeal2016-006412
Application 13/254,483
13; see also Abell, col. 1, 11. 19-31 ( describing why "[ a ]ctivated carbon is
the sorbent of choice" in compressors using ammonia as the working fluid).
Accordingly, Appellants contend that activated carbon and zeolites would
not be functional equivalents in Abell.
Regarding the Examiner's position that Abell also discloses
"additives," Appellants point out that Abell teaches only the addition of
thickeners, thinners, and carbon fillers, which would not have led a person of
ordinary skill in the art to add another sorbent, let alone one known to trap
ammonia. Id. at 14 (citing Abell, col. 5, 11. 22-57). Appellants note that
Abell discloses the use of additives, but only when an emulsion is used as
the binder. Id. n. 1 (citing Abell, col. 5, 11. 22-24). We agree with
Appellants that this disclosure does not provide any teaching or suggestion
to combine activated carbon with zeolites as the sorbent in Abell' s method.
Accordingly, the Examiner has not articulated an adequate reason
with some rational underpinning to further modify the method taught by the
combination of Abell and Conrad or Ramanathan to utilize both carbon and
zeolites as the sorbent. Thus, we do not sustain the rejection of claim 3.
Rejections 3-7 - Claims 8-12 and 15-17
For claims 8-12 and 15-1 7, which depend from claim 1, Appellants
contend that the addition of one or more of Karandikar, Nakada, Siemonsen,
and Davisson does not cure the deficiencies of Abell and Conrad or
Ramanathan with respect to claim 1. Appeal Br. 12-15. However, as
Appellants have not apprised us of any error in the rejection of claim 1, we
also sustain the rejections of claims 8-12 and 15-1 7 for the same reasons as
those discussed for claim 1.
10
Appeal2016-006412
Application 13/254,483
DECISION
We reverse the rejection of claim 3 and affirm the rejections of claims
1, 2, 5, 7-12, and 14--17.
No time period for taking any subsequent action in connection with
this appeal may be extended according to 3 7 C.F .R. § 1.13 6( a)( 1 )(iv).
AFFIRMED-IN-PART
11