Ex Parte Halfar et al

Patent Trials and Appeals Board

Jun 24, 2019

14237499 - (D) (P.T.A.B. Jun. 24, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/237,499 02/06/2014
13897 7590 06/26/2019
Abel Schillinger, LLP
8911 N. Capital of Texas Hwy
Bldg 4, Suite 4200
Austin, TX 78759
FIRST NAMED INVENTOR
Ronnie Halfar
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.
6509-PSOl 17 3900
EXAMINER
ZHANG,HAIY
ART UNIT PAPER NUMBER
1717
NOTIFICATION DATE DELIVERY MODE
06/26/2019 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):
mail@Abel-IP.com
hmuensterer@abel-ip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte RONNIE HALFAR, SASCHA TOEDTER-KOENIG,
KLAUS-W. LIENERT, SIMON ROST,
STEFAN HARTKOPP, and HANS-ULRICH MORITZ
Appeal2018-009140
Application 14/237,499
Technology Center 1700
Before BRADLEY R. GARRIS, MICHAEL P. COLAIANNI, and
JANEE. INGLESE, Administrative Patent Judges.
COLAIANNI, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) the final rejection of
claims 9, 11-14, 19, 21-24, 29-31, and 35-39. We have jurisdiction over
the appeal pursuant to 35 U.S.C. § 6(b).
We REVERSE.
Appellants' invention is directed to methods of applying a solvent-
free enamel composition to a wire. (Spec. 1: 4; claims 9 and 19 (the only
independent claims)).
Claim 9 is illustrative of the subject matter on appeal:
1 The Appeal Brief on page 3 indicates that "Elantas GmbH" is the real party
in interest.
Appeal2018-009140
Application 14/237,499
9. A method of applying an enamel composition to a wire, wherein the
method comprises melting the enamel composition in an extruder, applying
the melted composition to the wire and subjecting the applied composition to
post-crosslinking, the enamel composition being a solvent-free wire enamel
composition comprising an extrudable, polyesterimide-containing binder
prepared from (i) polyols, (ii) polycarboxylic acids, (iii) imide-forming
components, and (iv) structural elements which are crosslinkable after
extrusion, and wherein components (iii) are catenary imide-forming
components and structural elements (iv) are unsaturated carboxylic acids and
the composition comprises 30-60 wt% of catenary imide-forming
components and 2-20 wt% of unsaturated carboxylic acids.
Appellants appeal the following rejections:
1. Claims 9, 11, 12, 19, 21, 22, 29, and 30 are rejected under 35 U.S.C.
§ 103 as unpatentable over Kertscher (US 4,145,474; issued Mar. 20,
1979) in viewofKarkoski (US 4,075,179; issued Feb. 21, 1978).
2. Claims 35-37 are rejected under 35 U.S.C. § 103 as unpatentable over
Kertscher in view ofKarkoski and Hase (US 2010/0230158 Al;
published Sept. 16, 2010).
3. Claims 38 and 39 are rejected under 35 U.S.C. § 103 as unpatentable
over Kertscher in view ofKarkoski and Huber (US 4,731,398; issued
Mar. 15, 1988).
4. Claims 13, 14, 23, 24, and 31 are rejected under 35 U.S.C. § 103 as
unpatentable over Kertscher in view of Karkoski, Huber, and Hase.
FINDINGS OF FACT & ANALYSIS
The Examiner's findings and conclusions regarding Kertscher and
Karkoski with regard to claims 9 and 19 are located on pages 2 to 5 and 7 to
9 of the Final Office Action.
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Appeal2018-009140
Application 14/237,499
Appellants argue that Kertscher teaches away from using Karkoski' s
curable polyesterimide coating (App. Br. 11 ). Appellants contend that
Kertscher discloses in the paragraph bridging columns 1 and 2 that cross-
linkable thermoplastics in the extrusion coating of wire where the
thermoplastics are crosslinked (hardened) after extrusion by electronic
radiation or by heat-treatment does not result in a satisfactory insulation of
the wires (App. Br. 10). Appellants contend that Kertscher's invention uses
thermoplastic polycondensates which require no hardening operation (App.
Br. 11).
The Examiner responds that Kertscher's teaching in the paragraph
bridging columns 1 and 2 is not considered a teaching away because
Kertscher does not disclose that post-cross-linkable thermoplastics cannot be
used as wire coating materials (Ans. 25).
We understand Appellants to argue that based upon Kertscher' s
teachings there would have been no reason to combine Karkoski' s
thermoplastic polyesterimide coating composition, which is cured after
application, with Kertscher' s process. We agree. Kertscher recognizes that
cross-linkable thermoplastics that are post-cured do not provide adequate
insulation to meet the German industry standards sought by Kertscher ( col.
1, 11. 64---68; col. 2, 11. 1-9). Kertscher addresses this problem by using a
thermoplastic polycondensate that does not require a hardening (i.e., post-
cure) operation ( col. 2, 11. 3 5-3 7). In light of Kertscher' s disclosures
regarding the use of thermoplastic polycondensates that do not require a
cross-linking step as a substitute for the thermoplastic cross-linkable coating
materials, the Examiner has not adequately explained why one of ordinary
skill in the art would have substituted Karkoski' s thermoplastic cross-
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Appeal2018-009140
Application 14/237,499
linkable polyesterimide for Kertscher' s thermoplastic polycondensate. The
Examiner's reasoning for substituting Karkoski' s coating for Kertscher' s is
based upon Karkoski' s teaching that the coating provides excellent
flexibility, heat shock, dielectric and thermal properties (Final Act. 3). The
Examiner's reasoning does not, however, explain why one of ordinary skill
in the art would have substituted Karkoski's cross-linkable polyesterimide
for Kertscher' s thermoplastic polycondensate in light of Kertscher' s
teaching that cross-linkable thermoplastics would not provide the requisite
insulation properties necessary for Kertscher's wires.
On this record, the Examiner has not dispensed with the initial burden
of establishing a prima facie case of obviousness. We reverse the § 103 (a)
rejections of record.
DECISION
The Examiner's decision is reversed.
ORDER
REVERSED
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