Ex Parte Griffin et al

Patent Trial and Appeal Board

Jan 3, 2018

13334468 (P.T.A.B. Jan. 3, 2018)

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.
13/334,468 12/22/2011 James Martin Griffin 10038S-US 2891
8015 7590 01/05/2018
CYTEC INDUSTRIES INC.
1937 WEST MAIN STREET
STAMFORD, CT 06902
EXAMINER
FUNG, CHING-YIU
ART UNIT PAPER NUMBER
1787
NOTIFICATION DATE DELIVERY MODE
01/05/2018 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):
S tamfordPatent @ solvay.com
Cheryle. Telesco @ solvay. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAMES MARTIN GRIFFIN, MARK BONNEAU, and
GORDON EMMERSON
Appeal 2017-005252
Application 13/334,468
Technology Center 1700
Before LINDA M. GAUDETTE, KAREN M. HASTINGS, and
JANE E. INGLESE, Administrative Patent Judges.
INGLESE, Administrative Patent Judge.
DECISION ON APPEAL
Appellants1 request our review under 35 U.S.C. § 134(a) of the
Examiner’s decision to finally reject claims 16, 20, 21, and 23—27. We have
jurisdiction over this appeal under 35 U.S.C. § 6(b).
We AFFIRM.
STATEMENT OF THE CASE
Appellants claim a composite article. App. Br. 2—3. Claim 16
illustrates the subject matter on appeal and is reproduced below:
16. A composite article comprising:
1 Appellants identify the real party in interest as Cytec Technology Corp.
Appeal Brief filed October 25, 2016 (“App. Br.”), 2.
Appeal 2017-005252
Application 13/334,468
a composition comprising at least one epoxy resin, a
curing agent, a first type of toughening particles which are
insoluble in said epoxy resin upon curing thereof, and a second
type of toughening particles which are swellable or partially
soluble in said at least one epoxy resin upon curing thereof, and
layers of structural fibers impregnated with said
composition,
wherein said first type of toughening particles and said
second type of toughening particles are in an interleaf layer
between the layers of structural fibers,
wherein the amount of the first type of toughening
particles is about 1% to 15% by weight of the composition, and
the amount of the second type of toughening particles is about
1% to 15% by weight of the composition, and
wherein the first type of toughening particles are
polyamide particles, and the second type of toughening
particles are (i) crosslinked thermoplastic particles comprising
crosslinked thermoplastic polymer or (ii) polyimide particles.
App. Br., Claims Appendix (emphasis added).
The Examiner sets forth the rejection of claims 16, 20, 21, and 23—27
under 35 U.S.C. § 103(a) as unpatentable over Wei et al. (US 2010/0305239
Al, published December 2, 2010) in view of Nagata et al. (US 6,117,551,
issued September 12, 2000) in the Final Office Action entered April 26,
2016 (“Final Act.”), and maintains the rejection in the Examiner’s Answer
entered December 12, 2016 (“Ans.”).
DISCUSSION
Upon consideration of the evidence relied upon in this appeal and
each of Appellants’ contentions, we affirm the Examiner’s rejection of
claims 16, 20, 21, and 23—27 under 35 U.S.C. § 103(a) for the reasons set
forth in the Final Office Action, the Examiner’s Answer, and below.
2
Appeal 2017-005252
Application 13/334,468
Claims 16, 20, 21, 23, and 25—27
Appellants argue claims 16, 20, 21, 23, and 25—27 together on the
basis of claim 16. App. Br. 3—9. Therefore, we decide the appeal as to
claims 16, 20, 21, 23, and 25—27 based on claim 16 alone. 37 C.F.R.
§ 41.37(c)(l)(iv).
Wei discloses forming prepregs by impregnating sheets or lamina of
fibers (structural fibers) with a resin system or matrix (composition)
comprising an epoxy thermosetting resin and from 1% to 50% by weight of
cross-linked thermoplastic polymer particles. Wei Tflf 3, 17, 31, 36, 38, 51—
53. Wei discloses that the cross-linked thermoplastic polymer particles are
partially insoluble in the thermosetting resin upon curing (second type of
toughening particles). Wei 3, 14, 27, 88. Wei discloses forming
composite articles by placing the prepregs adjacent to one another, and
discloses that the cross-linked thermoplastic polymer particles provide
interleaf toughening to such composite articles. Wei H 3, 14, 56.
The Examiner finds that Wei does not disclose including polyamide
particles (first type of toughening particles) in the resin system described in
the reference, and the Examiner relies on Nagata for suggesting this feature.
Final Act. 5—7. Nagata discloses a carbon fiber prepreg comprising carbon
filaments impregnated with a matrix resin comprising an epoxy
thermosetting base resin and thermoplastic resin particles. Nagata col 2,11.
40-59; col. 3,11. 29-46. Nagata discloses that polyamides are especially
preferred resins for forming the thermoplastic resin particles (first type of
toughening particles). Nagata col. 4,11. 54—55. The Examiner finds that
Nagata discloses that including 10% or less by weight of the thermoplastic
resin particles in a prepreg improves the handling convenience of the
3
Appeal 2017-005252
Application 13/334,468
prepreg, while including 1% or more by weight of the particles imparts high
impact resistance and compressive strength to cross-laminated panels
produced by laminating a plurality of prepreg layers. Ans. 14; Nagata col. 2,
11. 5—10; col. 6,11. 30-36. Based on these disclosures, the Examiner finds
that one of ordinary skill in the art would have been led at the time of
Appellants’ invention to include polyamide particles in an amount of
between 1% and 10% by weight as disclosed in Nagata in the resin system
comprising cross-linked thermoplastic polymer particles disclosed in Wei to
allow formation of a prepreg having “better handling with high impact
resistance and high compressive strength.” Final Act. 6; Ans. 13—14.
Appellants argue that the “Examiner’s position with respect to Wei is
confusing.” App. Br. 3^4. Appellants contend that Wei does not disclose
the first type of toughening particles recited in claim 16, and instead
discloses the second type of toughening particles recited in the claim. App.
Br. 4.
However, the Examiner makes clear in the Answer that the Examiner
relies on Wei’s disclosure of a resin system comprising an epoxy resin and
cross-linked thermoplastic polymer particles that are partially insoluble in
the epoxy resin upon curing—the second type of toughening particles recited
in claim 16. Ans. 10-11. As discussed above, the Examiner acknowledges
that Wei does not disclose that the resin system includes polyamide
particles—the first type of toughening particles recited in claim 16—and the
Examiner relies on Nagata’s disclosure of a matrix resin comprising an
epoxy resin and polyamide thermoplastic resin particles. Final Act. 5—6.
Appellants also argue that the “Examiner fail[s] to provide an
adequate reason for why one skilled in the art would have added the
4
Appeal 2017-005252
Application 13/334,468
polyamide particles of Nagata to Wei’s particle-toughened composite
article” because Wei already discloses improving the impact resistance of
prepregs and composite materials by incorporation of cross-linked
thermoplastic particles. App. Br. 5 (citing Wei 14, 27); Reply Br. 3.
Appellants further contend that the “improved impact resistance” discussed
by Nagata “is in comparison with a composite laminate without any
interlaminar toughening particles.” App. Br. 5 (emphasis omitted) (citing
Nagata col. 1,11. 54—58; col. 6,11. 22—36).
However, as discussed above, the Examiner finds that Nagata not only
discloses that incorporating 1 % or more by weight of thermoplastic resin
particles such as polyamide particles into prepregs used to form cross-
laminated panels imparts high impact resistance and compressive strength to
the panels, but the Examiner finds that Nagata also discloses that including
10% or less by weight of the thermoplastic resin particles improves the
handling convenience of the prepregs. Ans. 14. In view of these
disclosures, one of ordinary skill in the art reasonably would have been led
to incorporate thermoplastic resin particles, such as polyamide particles, in
the amounts disclosed in Nagata into Wei’s resin system to improve the
handling convenience of prepregs formed with the resin system, as well as
provide high impact resistance and compressive strength to cross-laminated
panels formed with the prepregs.
In addition, contrary to Appellants’ contention that the “improved
impact resistance” disclosed in Nagata “is in comparison with a composite
laminate without any interlaminar toughening particles,” the portion of
Nagata cited by Appellants discusses prior art identified by Nagata in which
a laminate comprised of a plurality of particle-reinforced prepreg layers is
5
Appeal 2017-005252
Application 13/334,468
referred to as an “interlaminer particle reinforced” composite. Nagata col. 1,
11. 45—62. Thus, the disclosures in Nagata cited by Appellants do not
compare a laminate without interlaminar toughening particles to Nagata’s
laminate produced with prepregs formed from a matrix resin comprising
thermoplastic resin particles. Accordingly, Appellants’ arguments are
unpersuasive of reversible error in the Examiner’s rationale for combining
the relied-upon disclosures in Wei and Nagata. Ex parte Frye, 94 USPQ2d
1072, 1075 (BPAI 2010) (precedential) (cited with approval in In re Jung,
637 F.3d 1356, 1365 (Fed. Cir. 2011) (explaining that “it has long been the
Board’s practice to require an applicant to identify the alleged error in the
examiner’s rejections”)).
Appellants further argue that “the combination of Wei and Nagata
does not provide any guidance for selecting the specific toughening particles
recited in claim 16. The fact that each type of particles is known is
insufficient to establish that the combination of particles would have been
obvious.” App. Br. 6.
However, one of ordinary skill in the art would have been led to
utilize any of the cross-linked thermoplastic polymer particles disclosed in
Wei as suitable for the prepreg resin system described in the reference, in
combination with any of the thermoplastic resin particles disclosed in
Nagata as suitable for the carbon fiber prepreg matrix resin described in the
reference, in a resin system as disclosed in Wei to form a prepreg having
improved handling and high impact resistance and compressive strength, as
disclosed in Nagata.
Wei’s disclosure of a multitude of effective materials for the cross-
linked thermoplastic polymer particles disclosed in the reference does not
6
Appeal 2017-005252
Application 13/334,468
render any particular material less obvious. Likewise, Nagata’s disclosure
of a multitude of effective materials—including polyamides—for the
thermoplastic resin particles disclosed in the reference does not render any
particular material less obvious. Moreover, the references’ disclosures of a
multitude of effective materials for each type of particle does not render any
less obvious particular combinations of materials used to form each type of
particle, because Wei and Nagata are available for all they would have
suggested to one of ordinary skill in the art at the time of Appellants’
invention. Merck & Co., Inc. v. Biocraft Labs., Inc., 874 F.2d 804, 807
(Fed. Cir. 1989) (“That the ’813 patent discloses a multitude of effective
combinations does not render any particular formulation less obvious. This
is especially true because the claimed composition is used for the identical
purpose.”); In re Susi, 440 F.2d 442, 445 (CCPA 1971) (obviousness
rejection affirmed where the genus of the prior art was “huge, but it
undeniably include[d] at least some of the compounds recited in appellant’s
generic claims and [was] of a class of chemicals to be used for the same
purpose as appellant’s additives”). Therefore, Appellants’ arguments are
unpersuasive of reversible error in the Examiner’s rejection.
Appellants further argue that Example 1 of their Specification shows
that a combination of swellable/partially soluble particles and insoluble
particles produced an unexpected synergistic increase in Gnc as compared to
one type of particle alone, while maintaining a good balance of open hole
tensile strength and open hole compression strength. App. Br. 7 (citing
Spec. 1 68).
Appellants’ Example 1 describes preparation of five matrix
compositions that differed only in the type of particles included in the
7
Appeal 2017-005252
Application 13/334,468
compositions. Spec. Tflf 66—67, Table 1. Composition 1 included only
polyphthalamide particles (a type 1 toughening particle), composition 2
included only PILT 101 particles (a type 2 toughening particle), composition
3 included only polyimide particles (a type 2 toughening particle),
composition 4 included polyphthalamide particles (a type 1 toughening
particle) and PILT 101 particles (a type 2 toughening particle), and
composition 5 included polyphthalamide particles (a type 1 toughening
particle) and polyimide particles (a type 2 toughening particle). Spec. 1 67,
Table 1. Appellants’ Table 2 shows that Gnc values for compositions 1—5
were 9.1, 9, 6.9, 10.4, and 11.3, respectively. Spec. 1 67, Table 2.
Appellants argue that the Example 1 data are commensurate with the scope
of claim 16 because the unexpected increase in Gnc for compositions 4 and 5
is attributed to a combination of the two types of particles, “not the specific
epoxy resins or curing agents.” App. Br. 8—9. Appellants further assert that
“it is not necessary to show data for different amounts of particles within the
range of 1% to 15% because the Appellants are not representing that the
claimed range of 1% to 15% produces the synergistic effect relating to Gnc.”
App. Br. 9.
However, the burden of analyzing and explaining Specification data to
support an assertion of non-obviousness rests with Appellants. In re Klosak,
455 F.2d 1077, 1080 (CCPA 1972). In the present case, Appellants do not
meet their burden of establishing that the data provided in Example 1 are
reasonably commensurate in scope with the claimed subject matter. In re
Kao, 639 F.3d 1057, 1068 (Fed. Cir. 2011) (“If an applicant demonstrates
that an embodiment has an unexpected result and provides an adequate basis
to support the conclusion that other embodiments falling within the claim
8
Appeal 2017-005252
Application 13/334,468
will behave in the same manner, this will generally establish that the
evidence is commensurate with the claims.”).
The two inventive compositions of Example 1 both include the same
type and amount of epoxy resin, curing agent, and type 1 particles; include
the same amount of type 2 particles; and differ only in the particular kind of
type 2 particles included in the compositions. Appellants do not
persuasively explain how the limited data for these two compositions
demonstrate that compositions comprising the full scope of epoxy resins,
curing agents, and first and second particles covered by claim 16, impart
unexpected results. App. Br. 7—9. In re Harris, 409 F.3d 1339, 1344 (Fed.
Cir. 2005) (“Even assuming that the results were unexpected, Harris needed
to show results covering the scope of the claimed range. Alternatively
Harris needed to narrow the claims.”); In re Greenfield, 571 F.2d 1185, 1189
(CCPA 1978) (“Establishing that one (or a small number of) species gives
unexpected results is inadequate proof, for ‘it is the view of this court that
objective evidence of non-obviousness must be commensurate in scope with
the claims which the evidence is offered to support.’” (quoting In re Tiffin,
448 F.2d 791, 792 (CCPA 1971))).
It follows that Appellants do not meet their burden of demonstrating
that the composite article of claim 16 imparts unexpected results. Therefore,
considering the totality of the evidence relied upon in this appeal, we find a
preponderance of the evidence supports the Examiner’s conclusion of
obviousness. We accordingly sustain the Examiner’s rejection of claims 16,
20, 21, 23, and 25-27 under 35 U.S.C. § 103(a).
Claim 24
Claim 24 depends from claim 16 and recites that the second type of
9
Appeal 2017-005252
Application 13/334,468
toughening particles are polyimide particles.
Appellants argue that “the Examiner fails to explain why the claimed
combination of polyamide and polyimide particles would have been obvious
in light of Wei and Nagata.” App. Br. 9 (emphasis omitted).
However, in the Answer, the Examiner finds that Wei discloses that
suitable thermoplastic polymers for forming the cross-linked thermoplastic
particles described in the reference include polyimide. Ans. 22 (citing Wei
131.) The Examiner also correctly finds that the recitation in claim 24 that
the second type of toughening particles are polyimide particles does not
exclude cross-linked polyimide particles. Ans. 21. The Examiner finds that
in view of Wei’s disclosure of the suitability of polyimide cross-linked
thermoplastic particles for Wei’s resin system, one of ordinary skill in the art
would have been led at the time of Appellants’ invention to include
polyamide particles in an amount of between 1% and 10% by weight as
disclosed in Nagata in a resin system comprising cross-linked thermoplastic
polyimide particles as disclosed in Wei to allow formation of a prepreg
having better handling with high impact resistance and high compressive
strength, as disclosed in Nagata. Ans. 21—22.
Appellants’ arguments are therefore unpersuasive of reversible error
in the Examiner’s factual findings and reasoning, and we accordingly sustain
the Examiner’s rejection of claim 24 under 35 U.S.C. § 103(a).
DECISION
We affirm the Examiner’s rejection of claims 16, 20, 21, and 23—27
under 35 U.S.C. § 103(a).
10
Appeal 2017-005252
Application 13/334,468
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
11