Ex Parte Dijt et al

Patent Trial and Appeal Board

Dec 22, 2016

12002320 (P.T.A.B. Dec. 22, 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.
12/002,320 12/14/2007 Jacob Cornelis Dijt PPG 2174A1
(32961-352069)
5874
7590
J. Jason Link, Esquire
Kilpatrick Stockton, LLP
1001 West Fourth Street
Winston-Salem, NC 27101
12/22/2016 EXAMINER
CHRISS, JENNIFER A
ART UNIT PAPER NUMBER
1786
MAIL DATE DELIVERY MODE
12/22/2016 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 JACOB CORNELIS DIJT,
JACOB HENDRICUS ANTONIUS VAN DER WOUDE, and
RONALD BOELMAN
Appeal 2015-000888
Application 12/002,320
Technology Center 1700
Heard: December 12, 20161
Before PETER F. KRATZ, MARK NAGUMO, and JAMES C. HOUSEL,
Administrative Patent Judges.
HOUSEL, Administrative Patent Judge.
DECISION ON APPEAL2
1 A copy of the transcript of this oral hearing will be made of record upon its
availability.
2 Our decision refers to the Specification (Spec.) filed December 14, 2007,
Appellants’ Appeal Brief (Appeal Br.) filed April 11, 2014, the Examiner’s
Answer (Ans.) mailed August 14, 2014, and Appellants’ Reply Brief (Reply
Br.) filed October 13, 2014. In addition, Appellants rely on two
Declarations of Dr. Jacob Comelis Dijt under 37 C.F.R. § 1.132, the first
filed March 21, 2011 (1st Dec.), and the second filed April 11, 2013 (2nd
Dec.). Dr. Dijt is a named co-inventor of the subject Application.
Appeal 2015-000888
Application 12/002,320
Pursuant to 35 U.S.C. § 134(a), Appellants3 appeal from the
Examiner’s decision finally rejecting as unpatentable under 35 U.S.C.
§ 103(a), claims 1, 3—27, 32—37, 42, 45^47 over Beerda4 in view of either
Killmeyer5 or McWilliams,6 with flexion7 as evidence of the state of the art,
and claims 43, 44, and 48, adding Maaghul.8 We have jurisdiction over the
appeal under 35 U.S.C. § 6(b).
We REVERSE.
STATEMENT OF THE CASE
The invention relates to a sizing composition for use with glass fiber
reinforced polyamide composites, wherein the composition comprises three
components: 1) a maleic anhydride copolymer or acrylic polymer; 2) a
coupling agent; and 3) a reaction product of an alkoxylated amine (or amide)
and a polycarboxylic acid, which is further reacted with an epoxy
compound. See claims 1, 42, and 43. Appellants define a sizing
composition as meaning “a coating composition that can be applied to the
glass fibers after formation of the fibers.” Spec. 1:14—16. After application
of the sizing composition, the sized glass fibers can be gathered into bundles
or strands which are used to reinforce thermoplastic resins including
3 According to Appellants, the real party in interest is PPG Industries Ohio,
Inc. Appeal Br. 3.
4 WO 2005/066237 A2, published July 12, 2005 (“Beerda).
5 US 3,459,585, issued August 5, 1969 (“Killmeyer”).
6 US 3,803,069, issued April 9, 1974 (“McWilliams”).
7 Technical Data Bulletin, “RP: 3075 EPON™ Resin 828”, Hexion Specialty
Chemicals, Inc., Houston, TX, 2005, pp. 1—8.
8 US 4,049,865, issued September 20, 1977 (“Maaghul”).
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Application 12/002,320
polyamide resins. Id. at 1:17—18. According to Appellants, the sizing
composition can serve as a lubricant for protecting intra-fiber abrasion, and
to enhance compatibility between the fibers and the resins they reinforce.
Id. at 1:19-22.
Claim 1, reproduced below from the Claims Appendix to the Appeal
Brief, is illustrative of the subject matter on appeal.
1. A polyamide-compatible sizing composition comprising:
at least one maleic anhydride copolymer, which is
present in an amount greater than 10% by weight on a total
solids basis;
at least one coupling agent; and
a third component that is a reaction product of an
alkoxylated amine and a polycarboxylic acid, which is further
reacted with an epoxy compound;
wherein the third component is present in an amount
greater than about 50 weight percent of the sizing composition
on a total solids basis.
Independent claim 36 recites a method of making a glass fiber reinforced
polyamide composite using a sizing composition as in claim 1 for at least
partially coating continuous glass fibers before disposing these fibers in a
polyamide resin. Independent claim 42 differs from claim 1 only in reciting
that the third component is a reaction product of an alkoxylated amide
instead of an amine. Independent claim 43 differs from claim 1 only in
reciting that the first component is an acrylic polymer rather than a maleic
anhydride copolymer.
ANALYSIS
The Examiner maintains the rejections of claims 1, 3—27, 32—37, 42,
45^47 under 35 U.S.C. § 103(a) as unpatentable over Beerda in view of
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Application 12/002,320
Killmeyer or McWilliams.9 See Ans. 2—7. We select claim 1 to address the
issues raised by Appellants’ arguments.
The Examiner finds Beerda discloses a sizing composition comprising
the first two components of claim 1, i.e., a maleic anhydride copolymer and
a coupling agent, but fails to include the third component of claim 1, i.e., the
amine-carboxylic acid-epoxy reaction product. Id. at 2—3. In addition, the
Examiner finds Beerda teaches a method of coating glass fibers with the
sizing composition, followed by disposing the fibers in a matrix resin
including polyesters, polyamides, polystyrenes, styrene-acrylonitrile
copolymers, or acrylonitrile-butadiene styrene (ABS) copolymers. Id. As to
the third component, the Examiner finds Killmeyer teaches a sizing
composition for coating glass fibers before their disposition in a matrix
material such as polyesters, epoxies, and synthetic rubbers, the composition
comprising a reaction product of an alkoxylated amine or amide with a
polycarboxylic acid and then further reacted with an epoxy compound. Id.
at 3. The Examiner further finds Killmeyer’s sizing composition can
additionally contain coupling agents, lubricants, epoxy resin, and polyvinyl
pyrrolidone. Id.
Alternatively, for the third component, the Examiner finds
McWilliams teaches a sizing composition for coating glass fibers prior to
their disposition in nylon resin matrices. Id. at 8. The Examiner finds
McWilliams’ sizing composition includes, inter alia, polyurethane resin and
a reaction product from an alkoxylated amine or amide with a
9 Although the Examiner’s rejections include citation to Hexion, neither the
Examiner nor Appellants mention or discuss this reference. Accordingly,
we need not address Hexion in our decision.
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Application 12/002,320
polycarboxylic acid that is further reacted with an epoxy compound, wherein
the reaction product overcomes the tendency of the polyurethane resin to
“throw-out and deposit as a solid on the sizing applicator and cause damage
of the [glass] strand.” Id. The Examiner further finds McWilliams
preferably employs about one-half to two percent of the reaction product in
the sizing composition, but includes an example with about 30wt% of
reaction product on a total solids basis.10 Id.
The Examiner concludes it would have been obvious to combine the
Beerda composition with either the Killmeyer or McWilliams compositions
to form a third composition with a reasonable expectation of success, citing
In re Kerkhoven, 626 F.2d 846, 850 (CCPA 1980). Ans. 4 and 9. In
addition, the Examiner concludes that it would have been obvious to modify
the Beerda composition to include the McWilliams reaction product in order
to prevent throw-out of polyurethane resin and strand breakage. Id. at 8.
With regard to the claim 1 requirement that the third component is
present in an amount greater than about 50wt% on a total solids basis, given
that Beerda and Killmeyer teach the components of claim 1 in sizing
compositions and Killmeyer teaches the amount of the reaction product
ranges from 12.5wt% to 100wt%, the Examiner concludes it would have
been obvious to determine the optimal amount of this component in the
sizing composition resulting from the combining the Beerda/Killmeyer
components, citing In re Reese, 290 F.2d 839, 841 (CCPA 1961). Id. at 4—5.
10 We note McWilliams teaches this reaction product is disclosed in detail in
the Killmeyer patent. In particular, McWilliams states that the reaction
product is disclosed in the assignee’s copending application U.S. Serial No.
599,180, which corresponds to the Killmeyer application.
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Application 12/002,320
Alternatively, the Examiner determines, given McWilliams’ teaching of
about 30wt% of the reaction product in the sizing composition, that it would
have been obvious to determine the optimal amount of this component in the
sizing composition resulting from combining the Beerda/McWilliams
components, again citing In re Reese. Id. at 9.
Appellants contend that the Examiner has failed to articulate a reason
to combine the teachings of Beerda and either of Killmeyer or McWilliams,
and that, quite the contrary, there is no reason to combine these teachings.
Appeal Br. 8 and 12—13. In particular, Appellants argue that there is nothing
in Killmeyer “that suggests that the reaction product could be used
successfully in combination with a polyamide matrix,” especially in an
amount of at least about 50wt% of the composition. Id. at 8, citing 2nd Dec.
111. Appellants assert that Killmeyer teaches only a narrow range for the
reaction product in the composition. Id., citing Killmeyer 2:4—7.
Appellants further contend that Killmeyer specifically limits the sizing
composition to the reaction product by use of the phrase “consisting
essentially of,” thereby suggesting that the sizing composition should not
include any additional components that would substantially affect the
composition’s chemistry. Appeal Br. 9. Appellants argue that adding a
maleic anhydride copolymer to a sizing composition containing the reaction
product would be expected to have a substantial effect on the resulting
composition’s chemistry and that Killmeyer, therefore, teaches away from
such a combination. Id. at 9—10, citing 2nd Dec. 110.
Moreover, Appellants argue that the purpose McWilliams provides for
the reaction product, i.e., to help overcome the tendency to throw-out
polyurethane emulsions and deposit on a sizing applicator causing strand
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Application 12/002,320
damage, was no longer a problem as of 2006 and, therefore, there would
have been no reason to modify Beerda to include McWilliams’ reaction
product. Id. at 12—13, citing 2nd Dec. 117. Appellants further argue there is
nothing in McWilliams that suggests use of 50wt% of the reaction product
on a total solids basis, noting that McWilliams fails to suggest amounts
greater than about 30wt%. Id. at 13. Indeed, Appellants assert that the
skilled artisan would expect to use lower amounts given that the maleic
anhydride copolymer is also acidic. Id., citing 2nd Dec. 119.
Finally, Appellants contend that the objective indicia of
nonobviousness as set forth in the two Rule 132 Declarations not only
establish the impropriety of the Beerda/Killmeyer combination, but also
establish unexpected results in the sizing composition of claim 1. Appeal
Br. 10-11. In particular, Appellants assert this evidence establishes that
sizing compositions containing the Killmeyer/McWilliams reaction product
are not generally compatible with polyamide resins. Id. at 11 and 13, citing
1st Dec. 1 6 and 2nd Dec. H 12 and 20). Appellants contend that only when
the reaction product is combined with “a maleic anhydride copolymer does
the resulting glass-reinforced polyamide have particularly beneficial
properties.” Id.
After review of the opposing positions articulated by Appellants and
the Examiner and the evidence of obviousness adduced by the Examiner in
light of the countervailing Declaration evidence proffered by Appellants, we
determine that the Appellants’ arguments and evidence are sufficient to
outweigh the evidence of obviousness marshalled by the Examiner. In doing
so, we recognize Appellants’ declaration evidence was submitted by one of
the named inventors in this application. However, this fact does not negate
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Application 12/002,320
the probative value of expert opinion presented therein where such opinion
is underpinned by factual evidence in the record. We first note that
Declarant Dijt states that one skilled in this art would not have expected the
Killmeyer reaction product to perform well, i.e., be compatible with,
polyamide resins based on their chemical structure and on experimental data.
1st Dec. H 5 and 6. Declarant Dijt further states that when the reaction
product is combined with maleic anhydride copolymer, the sizing
composition unexpectedly performed well and was compatible with a
polyamide resin. Id. at 17. While the Examiner correctly notes that the data
presented is of limited scope relative to the claim scope, that data
nonetheless supports Declarant Dijt’s statement that the ordinary artisan
would not have expected Killmeyer’s reaction product to perform well and
be compatible with polyamide resins.
Declarant Dijt further supports this statement by noting that
Killmeyer’s reaction product is disclosed to be compatible with resins that
are generally hydrophobic. 2nd Dec. 19. Declarant Dijt states that because
such hydrophobic resins differ chemically from more hydrophilic resins,
including polyamides, the ordinary artisan would expect Killmeyer’s
reaction product not to be polyamide-compatible. Id. at 111.
As to McWilliams’ teachings, Declarant Dijt notes that the reaction
product is added in order to address a problem of polyurethane throw-out
and deposition, and is never used in amounts greater than about 30wt% on a
total solids basis. 2nd Dec. 116. In other words, the reaction product is used
as a minor component for a very specific purpose when polyurethane is part
of the sizing composition. Id. at 118.
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It is in this context that we evaluate the Examiner’s reliance on In re
Kerkhoven in support of the combination of Beerda and either of Killmeyer
or McWilliams. The Examiner fails to provide any specific teaching or
incentive in Killmeyer to the claimed combination. The Examiner’s finding
with regard to McWilliams presumes that the sizing composition will have a
polyurethane resin for which the addition of the reaction product would then
be necessary to prevent throw-out and deposition of the resin. However, the
Examiner fails to provide any specific teaching or incentive in McWilliams
to the use of greater than about 50wt% of the reaction product in such a
composition.
In the absence of such support, the Examiner cites to Kerkhoven
which stated, “[i]t is prima facie obvious to combine two compositions each
of which is taught by the prior art to be useful for the same purpose, in order
to form a third composition which is to be used for the very same purpose.”
Kerkhoven, 626 F.2d at 850. In Appellants’ claim 1, the sizing composition
includes a maleic anhydride copolymer, a coupling agent, and a reaction
product. In the prior art, different sizing compositions were separately
formed with either the maleic anhydride copolymer (Beerda) or the reaction
product (Killmeyer and McWilliams), and it is not unreasonable, without
more, to view a mixture of the copolymer and the reaction product, i.e., a
third composition, as used for the same purpose as a sizing composition.
While there is at least that parallel to Kerkhoven, the “rule” the rejection
cited only states what might be prima facie obvious; the case does not stand
for the proposition that a prima facie case is established without considering
a claim as a whole or without weighing all of the relevant evidence of
record. The claims at issue in Kerkhoven, defining a process for preparing a
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spray-dried detergent composition, required no more than mixing together
two conventional spray-dried detergents for the same purpose that each
individual detergent was used. Moreover, in that case, there appears to be
no reason to think that where would have been any significant chemical
interactions between the components of the resulting detergent composition.
Here, in contrast, Appellants provide evidence that the purpose of
Killmeyer’s reaction product is not the same as Beerda’s maleic anhydride
copolymer — each is disclosed to be compatible with a set of resins that
differ significantly in their hydrophobic and hydrophilic characteristics.
Moreover, McWilliams teaches the reaction product has a specific purpose
distinct from that of Beerda’s maleic anhydride copolymer. Under these
circumstances, we agree with Appellants that, when the record as a whole is
considered, the Examiner’s proposed combinations involved more than
merely mixing two known compositions together, where each had the same
purpose individually as the combination. Accordingly, the Examiner’s
reliance on Kerkhoven as controlling here is in error.
We will not sustain the Examiner’s obviousness rejections of 1, 3—27,
32—37, 42, and 45—47 based on Beerda combined with either Killmeyer or
McWilliams. Further, as the Examiner does not rely on Maaghul to remedy
the deficiency in the Beerda/Killmeyer and Beerda/McWilliams
combinations as discussed above, we likewise will not sustain the
obviousness rejection of claims 43, 44, and 48.
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Application 12/002,320
DECISION
Upon consideration of the record, and for the reasons given above and
in the Appeal and Reply Briefs, the decision of the Examiner rejecting
claims 1, 3—27, 32—37, and 42-48 under 35 U.S.C. § 103(a) as unpatentable
over Beerda, either Killmeyer or McWilliams, and Hexion, alone or further
in view of Maaghul, is reversed.
REVERSED
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