Ex Parte Fjare

Board of Patent Appeals and Interferences

May 23, 2007

10151746 (B.P.A.I. May. 23, 2007)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DOULAS E. FJARE
____________

Appeal 2007-1559
Application 10/151,746
Technology Center 1700
____________

Decided: May 23, 2007
____________

Before EDWARD C. KIMLIN, CHUNG K. PAK, and JEFFREY T.
SMITH, Administrative Patent Judges.

KIMLIN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal from the final rejection of claims 12-15 and 27-36.
Claim 12 is illustrative:
12. A fiber reinforced composite comprising from about 35 to about
60 volume percent carbon fibers, based upon the total volume of the
composite, imbedded in the resin reaction product of a mixture comprising:

from about 30 to about 50 parts by weight of ethylenically unsaturated
liquid monomer;
Appeal 2007-1559
Application 10/151,746

from about 70 to about 50 parts by weight of an unsaturated polyester
having a reactive hydroxyl group content represented by a hydroxyl number
of from about 30 to about 120 mg KOH/g or resin; and

an amount of an organic polyisocyanate sufficient to provide from
about 0.05 to about 0.65 moles of isocyanate groups per mole of said
reactive hydroxyl groups.

The Examiner relies upon the following references as evidence
obviousness:
Butler US 5,998,510 Dec. 7, 1999
Yamada JP 56-55247 May 15, 1981

Appellant's claimed invention is directed to a carbon fiber reinforced
composite comprising an ethylenically unsaturated liquid monomer, an
unsaturated polyester having reactive hydroxyl groups, and an amount of
organic polyisocyanate sufficient to provide a molar ratio of isocyanate
groups to hydroxyl groups of from about 0.05 to about 0.65.
Appealed claims 12-20 and 27-36 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Butler in view of JP '247.1
Appellant's principal Brief fails to provide separate arguments for any
particular claim on appeal. Accordingly, all the appealed claims stand or fall
together with claim 12. Although Appellant presents separate arguments in
the Reply Brief, it is fundamental that arguments not raised in the main Brief
are considered waived. See Cross Med. Prods., Inc. v. Medtronics Sofamor

1 The Examiner's statement of the rejection at page 3 of the Answer
referencing only claim 12-20 is inadvertent, harmless error. Appellant's
principal Brief acknowledges the § 103 rejection of claims 27-36 as well
(see page 3 of principal Brief).
2
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Application 10/151,746

Danek, Inc., 424 F.3d 1293, 1320-21 n.3, 76 USPQ2d 1662, 1683 n.3 (Fed.
Cir. 2005).
We have thoroughly reviewed each of Appellant's arguments for
patentability. However, we are in complete agreement with the Examiner
that the claimed subject matter would have been obvious to one of ordinary
skill in the art within the meaning of § 103 in view of the applied prior art.
Accordingly, we will sustain the Examiner's rejection for essentially those
reasons expressed in the Answer, and we add the following primarily for
emphasis.
There is no dispute that Butler discloses a fiber reinforced composite
comprising an ethylenically unsaturated liquid monomer, an unsaturated
polyester having an amount of reactive hydroxyl groups within the claimed
range, and an amount of organic polyisocyanate sufficient to provide a molar
ratio of isocyanate group to hydroxyl group within the claimed range. Butler
teaches that the polymerizable composition can have fibrous reinforcing
materials added thereto, but a list of examples of the fibrous materials does
not include the claimed carbon fibers (see col. 7, ll. 29 et seq.). However, as
explained by the Examiner, JP '247 teaches that compositions comprising
unsaturated polyester resins of the type presently claimed and disclosed by
Butler can be reinforced with carbon fibers by adding to the composition a
polyisocyanate compound as a thickener in a molar ratio of 0.7 to 1.3 with
respect to the reactive hydroxyl group. Hence, since the fiber reinforced
composition of Butler may comprise a molar ratio of isocyanate to hydroxyl
groups taught by JP '247, we agree with the Examiner that it would have
been obvious to one of ordinary skill in the art to incorporate carbon fibers
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Application 10/151,746

in polymeric compositions embraced by the Butler disclosure. We agree
with the Examiner that one of ordinary skill in the art would have found it
obvious, based on the collective teachings of Butler and JP '247, to
formulate a composition comprising the claimed components wherein the
molar ratio of isocyanate-hydroxyl groups is optimally within the range of
0.7 to 1.3. We also agree with the Examiner that one of ordinary skill in the
art would have understood that a carbon fiber reinforced composition can
also be achieved by using molar ratios of isocyanate/hydroxyl groups
outside the optimal range disclosed by JP '247 without achieving all the
benefits taught by JP’247.
Appellant maintains that the claimed molar ratio of isocyanate/
hydroxyl groups of "about 0.05 to about 0.65" is not taught by JP '247. We
disagree. As correctly pointed out by the Examiner, it has long been held
that the claim term "about" permits some tolerance with respect to the
recited value. In re DeVaney, 185 F.2d 679, 683, 88 USPQ 97, 101 (CCPA
1950); In re Ayers, 154 F.2d 182, 185, 69 USPQ 109, 112 (CCPA 1946);
In re Perkins, 346 F.2d 981, 984, 146 USPQ 63, 65 (CCPA 1965).
Consequently, we agree with the Examiner that there is no patentable
distinction between the claimed molar ratio of "about 0.65" and the ratio
of 0.7 disclosed by JP '247. Also, we find that Appellant's Specification
attaches no criticality to the claimed range for the molar ratio. To wit, the
Specification discloses that the amount of diisocyanate is contingent upon
the reactive hydroxyl content of the unsaturated polyester component, and
that "[g]enerally, the composition will comprise from about 5 to about 65
mole percent, preferably from about 35 to about 50 mole percent, of the
4
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Application 10/151,746

amount of diisocyanate needed to react with all of the reactive hydroxyl
groups in the polyester" (page 7, ll. 6-10). While Appellant contends in the
Reply Brief that "unexpected results are obtained when lower ratios of
isocyanate to hydroxyl are used" (page 6, last para.), Appellant fails to point
to any specific evidence of unexpected results, let alone provide the requisite
analysis of any such results. It is well-settled that the burden of
demonstrating unexpected results rests on the party asserting them and,
manifestly, it is not within the province of this Board to ferret out such
evidence that may be in the record. In re Merck & Co., 800 F.2d 1091,
1099, 231 USPQ 375, 381 (Fed. Cir. 1986); In re Klosak, 455 F.2d 1077,
1080, 173 USPQ 14, 16 (CCPA 1972).
Appellant asserts in the Reply Brief that "[t]he Examiner's assertion
that the hydroxyl groups to isocyanate groups range of from 0.7 to 1.3 taught
by JP '247 overlaps with the Appellant's claimed hydroxyl groups to
isocyanate groups range of from 0.05 to about 0.65 for the first time in the
Examiner's Answer amounts to a new ground of rejection" (page 3, para. 3).
However, this argument is not availing to Appellant. First, the proper
recourse for an applicant perceiving a new ground of rejection is a petition to
the Director. Secondly, it is our view that the Examiner's Answer does not
constitute a new ground of rejection. The Examiner's articulation of a long-
held principal of patent jurisprudence pertaining to the term "about" is
simply responsive to Appellant's arguments. Also, Appellant has not been
denied due process on this issue since the Reply Brief presents an argument
on this point. Specifically, Appellant argues that "[b]ecause of the
unpredictability of the chemistry involved in the present application, the
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Application 10/151,746

disclosure of JP '247 reciting a ratio of 0.7 simply cannot anticipate or render
obvious the ratio of 'about 0.65' required in the Appellant's claims" (page 4,
Reply Br., third para.). However, we find no merit in this argument because
the unpredictability of chemistry has no bearing on the issue of whether the
claim term "about 0.65" encompasses the value of 0.7.
In conclusion, based on the foregoing and the reasons well stated by
the Examiner, the Examiner's decision rejecting the appealed claims 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)(iv)(2006).
AFFIRMED

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