Ex Parte Gijsman et al

Patent Trial and Appeal Board

May 8, 2018

13981434 (P.T.A.B. May. 8, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/981,434 10/08/2013
23117 7590 05/10/2018
NIXON & V ANDERHYE, PC
901 NORTH GLEBE ROAD, 11 TH FLOOR
ARLINGTON, VA 22203
FIRST NAMED INVENTOR
Pieter Gijsman
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.
BHD-4662-2595 8091
EXAMINER
VO, HAI
ART UNIT PAPER NUMBER
1788
NOTIFICATION DATE DELIVERY MODE
05/10/2018 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):
PTOMAIL@nixonvan.com
pair_nixon@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PIETER GUSMAN, MARTIN PIETER VLASBLOM,
GERARDUS ABEN, and HANS SCHNEIDERS
Appeal2017-005904
Application 13/981,434
Technology Center 1700
Before BRADLEY R. GARRIS, JEFFREY B. ROBERTSON, and
JANEE. INGLESE, Administrative Patent Judges.
INGLESE, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 request our review under 35 U.S.C. § 134(a) of the
Examiner's decision to finally reject claims 1---6, 8-13, and 16-19. We have
jurisdiction over this appeal under 35 U.S.C. § 6(b ).
We AFFIRM.
1 Appellants identify DSM IP Assets B.V. as the real party in interest.
Appeal Brief filed June 29, 2016 ("App. Br."), 2.
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Application 13/981,434
STATEMENT OF THE CASE
Appellants claim a coated high strength fiber. App. Br. 4. Claim 1
illustrates the subject matter on appeal and is reproduced below:
1. A coated high strength fiber comprising
an ultrahigh molecular weight polyolefin fiber, and
a coating composition coated on the fiber,
wherein the coating composition comprises
a UV absorber in an amount between 2 wt.% and
80 wt.% compared to the total weight of the coating
composition based on solids, and
a cross-linked silicone polymer as a carrier for the
UV absorber.
App. Br. 12 (Claims Appendix) (spacing added).
The Examiner sets forth the following rejections in the Final
Office Action entered January 29, 2016 ("Final Act."), and maintains
the rejections in the Examiner's Answer entered December 22, 2016
("Ans."):
I. Claims 1, 3, 4, 6, 8-13, and 162-19 under 35 U.S.C. § 103(a) as
unpatentable over Bosman (US 2009/0165637 Al, published July 2, 2009)
in view of Ching (US 4,316,033, issued February 16, 1982) and Kuck3 (US
2002/0122946 Al, published September 5, 2002); and
II. Claims 2-5 under 35 U.S.C. § 103(a) as unpatentable over
2 It is apparent that claim 16 was inadvertently omitted from the heading for
Rejection I because the subject matter of this claim is discussed in the body
of the rejection. Final Act. 8. This inadvertent omission is harmless,
particularly because Appellants do not present separate arguments
specifically directed to claim 16. App. Br. 5-10.
3 The Examiner acknowledges in the Answer that Kuck was erroneously
omitted from the heading for Rejection I on page 6 of the Final Action, and
confirms that the rejection is based on a combination of Bosman, Ching, and
Kuck. Compare Final Act. 6, with Ans. 6.
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Application 13/981,434
Bosman in view of Ching, Kuck, and Stueber (Ultraviolet Stabilizers of the
2-(2 '-Hydroxyphenyl)-1,3,5-triazine Class: Structural and Spectroscopic
Characterization, 99 J. Phys. Chem. 10097 (1995)).
DISCUSSION
Upon consideration of the evidence relied upon in this appeal and
each of Appellants' contentions, we affirm the Examiner's rejections of
claims 1-6, 8-13, and 16-19 under 35 U.S.C. § 103(a) for the reasons set
forth in the Final Action, the Answer, and below.
Rejection I
Appellants argue claims 1, 3, 4, 6, 8-13, and 16-19 as a group. App.
Br. 5-10. We accordingly select claim 1 as representative, and decide the
appeal as to claims 1, 3, 4, 6, 8-13, and 16-19 based on claim 1 alone.
37 C.F.R. § 41.37(c)(l)(iv).
Bosman discloses a load-bearing rope used in marine and commercial
fishing applications that contains a plurality of strands comprising fibers
made from ultra-high molecular weight polyethylene. i-fi-13, 24. Bosman
discloses that a coating can be applied to the rope to enhance its resistance to
abrasion and improve its bending fatigue life. i136, 37, 45. Bosman
discloses that suitable coating materials include silicone compounds. i-fi-137,
40.
The Examiner finds that Bosman is silent regarding inclusion of a UV
absorber in the silicone coating applied to Bosman's rope, and relies on
Ching for suggesting this feature. Final Act. 6-7. Ching discloses a silicone
coating composition containing a UV stabilizer that imparts improved
abrasion resistance and UV stabilization to thermoplastic organic polymer
substrates coated with the composition. Abstract; col. 1, 11. 34--4 7. The
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Examiner determines that it would have been obvious to one of ordinary
skill in the art at the time of Appellants' invention to substitute the silicone
coating comprising a UV absorber taught by Ching for the silicone coating
disclosed in Bosman to provide Bosman's "coated ultrahigh molecular
weight polyolefin fibers with improved abrasion resistance and UV
stabilization." Final Act. 7.
The Examiner finds that this proposed combination of Bosman and
Ching is "silent regarding a cross-linked silicone polymer," and the
Examiner relies on Kuck to address this feature. Final Act. 7-8. Kuck
discloses a tear-resistant strongly adherent coating composition comprising
cross-linked silicone polymers. i-fi-12, 7, 8, 44, 45. The Examiner determines
that it would have been obvious to one of ordinary skill in the art at the time
of Appellants' invention to cross link the silicone in Ching's coating
composition comprising a UV absorber-applied to Bosman's rope-to
produce a more tear-resistant coating as taught by Kuck. Final Act. 8.
Appellants argue that Bosman is silent regarding inclusion of a UV
absorber in the coating described in the reference, and contend that
paragraph 29 of Bosman makes clear that any additive, such as a
stabilizer/UV absorber, may be incorporated in small amounts into the fibers
of the rope, rather than the coating. App. Br. 5-7. Appellants assert that one
of ordinary skill in the art would have incorporated the UV stabilizer
disclosed in Ching into the ultra-high molecular weight polyethylene fibers
of Bosman's rope instead of the coating, because "that is what ... Bosman[]
instructs one to do." App. Br. 7.
However, as the Examiner correctly finds, Ching's disclosure of a
silicone coating composition containing a UV absorber that imparts
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improved abrasion resistance and UV stabilization would have led one of
ordinary skill in the art to substitute such a coating composition for the
silicone coating disclosed in Bosman to provide improved abrasion
resistance and UV stabilization to Bosman's rope. Final Act. 7. We find no
disclosure in Bosman indicating that the coating composition disclosed in
Ching could not be successfully utilized to coat the rope comprising fibers
made from ultra-high molecular weight polyethylene described in Bosman.
Rather, Bosman broadly discloses that "[t]he rope can also further comprise
any customary coating or sizing, which coating may protect the rope or act
as lubricant to further enhance resistance to abrasion," and indicates that
suitable coatings contain "silicone compounds." i-fi-135, 37, 40. In view of
Ching's disclosure that the UV-absorber-containing silicone coating
composition described in the reference imparts improved abrasion resistance
as well as UV stabilization, one of ordinary skill in the art would have been
led to apply such a "customary" silicone coating to Bosman's rope "to
further enhance resistance to abrasion" and provide UV stabilization.
Although Bosman does disclose that the fibers of the rope described
in the reference may contain a customary additive such as a thermal
stabilizer (i-f 29), this disclosure does not negate Bosman's teaching of
coating the rope with "any customary coating"-such as the coating
disclosed in Ching-"to further enhance resistance to abrasion." In re
Mercier, 515 F.2d 1161, 1165 (CCPA 1975) ("[A]ll of the relevant teachings
of the cited references must be considered in determining what they fairly
teach to one having ordinary skill in the art."). Therefore, even if one of
ordinary skill in the art would have included a thermal stabilizer in the fibers
of Bosman's rope, the ordinarily skilled artisan would have recognized that
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also applying the UV-absorber-containing silicone coating disclosed in
Ching to the rope as the "customary coating" taught in Bosman would
provide the benefits of resistance to abrasion and UV stabilization. Cf In re
Kerkhoven, 626 F.2d 846, 850 (CCPA 1980) ("It 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.").
Appellants also argue that Kuck's disclosure of cross-linked silicone
coatings would not have led one of ordinary skill in the art to use such a
coating as a carrier for a UV absorber because Bosman teaches that any such
additive/stabilizer should be in the fibers of Bosman's rope, not in the
coating applied to the rope. App. Br. 8.
However, as discussed above, one of ordinary skill in the art would
have utilized the UV-absorber-containing silicone coating composition
disclosed in Ching as the "customary coating" for Bosman's rope to provide
resistance to abrasion and UV stabilization. As the Examiner correctly
finds, Kuck's disclosure of a tear-resistant, strongly adherent coating
composition comprising cross-linked silicone polymers reasonably would
have led one of ordinary skill in the art to cross link the silicone in Ching's
UV-absorber containing coating composition (applied to Bosman's rope) to
enhance the tear-resistance and adherence of the coating. Final Act. 7-8.
Appellants further argue that the Examiner's assertion that the lack of
disclosure in Bosman of specifically excluding additives from the fibers of
Bosman's rope would have suggested including such additives in the coating
applied to the rope "amounts to mere erroneous speculation that is not
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Application 13/981,434
supported by the facts" and "can only be derived from the present
applicant's disclosure." App. Br. 6-7, 10; Reply Br. 1.
However, Appellants appear to misapprehend the Examiner's
statements, which are set forth in the Response to Arguments section of the
Final Action and the Answer. Final Act. 3; Ans. 6. Rather than indicating
that lack of disclosure in Bosman of excluding additives from the fibers of
Bosman's rope would have suggested including such additives in the coating
as Appellants assert, the Examiner correctly finds that paragraph 29 of
Bosman does not limit use of a stabilizer/absorber to only the fibers of
Bosman's rope, and further correctly finds Bosman does not disclose
excluding the stabilizer/absorber from the silicone coating. Id.
Therefore, considering the totality of the evidence relied upon in this
appeal 4, a preponderance of the evidence weighs in favor of the Examiner's
conclusion of obviousness. We accordingly sustain the Examiner's rejection
of claims 1, 3, 4, 6, 8-13, and 16-19 under 35 U.S.C. § 103(a).
Rejection II
To address this rejection, Appellants rely on the arguments presented
for Rejection I (discussed above), and argue that the additional reference
applied in this rejection-Steuber-fails to cure the deficiencies of the
combination of Bosman, Ching, and Kuck. App. Br. 10-11. Because we are
unpersuaded of reversible error in the Examiner's rejection of claim 1 for the
4 We do not consider the arguments that Appellants present for the first time
at pages 2-3 of their Reply Brief because Appellants do not show good
cause for raising these arguments in their Reply Brief. 37 C.F.R. §
41.37( c )(1 )(iv); 37 C.F.R. § 41.41 (b )(2) (arguments raised for the first time
in the Reply Brief that could have been raised in the Appeal Brief will not be
considered by the Board unless good cause is shown).
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reasons discussed above, Appellants' position as to this rejection is also
without merit. We accordingly sustain the Examiner's rejection of claims 2-
5 under 35 U.S.C. § 103(a).
DECISION
We affirm the Examiner's rejections of claims 1-6, 8-13, and 16-19
under 35 U.S.C. § 103(a).
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
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