Ex Parte Hochgesang

Board of Patent Appeals and Interferences

Oct 9, 2009

11188973 (B.P.A.I. Oct. 9, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte PAUL J. HOCHGESANG
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Appeal 2009-008428
Application 11/188,973
Technology Center 1700
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Decided: 9 October 2009
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Before EDWARD C. KIMLIN, ADRIENE LEPIANE HANLON, and
MARK NAGUMO, Administrative Patent Judges.

NAGUMO, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2009-008428
Application 11/188,973

A. Introduction1
Paul J. Hochgesang (“Hochgesang”) timely appeals under
35 U.S.C. § 134(a) from the final rejection2 of claims 1-20, 23, and 26,
which are all of the pending claims. We have jurisdiction under
35 U.S.C. § 6. We AFFIRM.
The subject matter on appeal relates to sealing members such as
gaskets made from solventless EPDM (elastomeric “ethylene-propylene-
diene monomer” terpolymer) liquid compounds by curing with various
curing agents.
Representative Claim 1 is reproduced from the Claims Appendix to
the Principal Brief on Appeal:
1. A sealing member made by a process comprising pressing,
applying, or molding a solventless liquid EPDM compound in
the form of a sealing member and then curing the compound,
wherein the compound comprises:
a liquid EPDM rubber; and
a curing agent selected from the group consisting of
sulfur, sulfur donors, and mixtures thereof,
wherein

1 Application 11/188,973, Solventless Liquid EPDM Compounds,
filed 25 July 2005, as a continuation of an application
filed 23 December 2002, which in turn claims the benefit of a provisional
application filed 21 December 2001. The specification is referred to as
the “973 Specification,” and is cited as “Spec.” The real party in interest is
listed as Freudenberg-NOK General Partnership of Plymouth, MI. (Appeal
Brief, filed 24 July 2008 (“Br.”), 1.)
2 Office action mailed 3 July 2007 (“Final Rejection”; cited as “FR”).
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Application 11/188,973

the curing agent is present in an amount of at least about
3% by weight of the compound;
the compound contains substantially no solvent, and
the liquid EPDM rubber is present in an amount of at
least 50% by weight of the compound.
(Claims App., Br. 13; indentation and paragraphing added.)
Claim 7 is similar, but recites “a non-sulfur curing agent present in an
amount of at least about 5% by weight of the compound.”
The Examiner has maintained the following ground of rejection:3
Claims 1-20, 23, and 26 stand rejected under
35 U.S.C. § 103(a) in view of the teachings of Guillot.4
Hochgesang contends the Examiner erred because “Guillot does not
disclose a ‘sealing member’ or a ‘cure in place gasket’ as claimed.” (Br. 7.)
More particularly, Hochgesang urges that the recitation of “pressing,
applying, or molding a solventless liquid EPDM compound in the form of a
sealing member” (id.) in the body of the claim is “sufficient to establish that
the claimed structure was different from that of Guillot” (id. at 7-8).
According to Hochgesang, Guillot teaches an insulation sheet for a rocket
motor, which sheet, in Hochgesang’s view, is not, and does not suggest,
“any type of sealing member.” (Id. at 9.) Finally, Hochgesang urges that
insufficient weight has been given to the high level of curative compound
recited in the claims, i.e., the 3% or more by weight of sulfur curative, or

3 Examiner’s Answer mailed 20 October 2008. (“Ans.”).
4 David G. Guillot, Method of Insulating a Case of a Solid Propellant
Rocket Motor, U.S. Patent 6,893,597 B2 (17 May 2005), based on an
application filed 21 December 2000.
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Application 11/188,973

the 5% by weight or more of a non-sulfur curing agent recited in the claims,
both of which values are said to be “increased” relative to conventional
rubber compounds. (Id. at 10-11.)
B. Findings of Fact
Findings of fact throughout this Opinion are supported by a
preponderance of the evidence of record.
The 973 Specification
1. According to the 973 Specification, EPDM rubbers are conventionally
used in minor amounts as a plasticizer or processing aid in combination with
a solid elastomer, rather than as the base elastomer. (Spec. 1, ¶ [0003].)
2. In the words of the 973 Specification, “[s]urprisingly, the compounds
are made with substantially no solvent, e.g., not more than about 2%
solvent.” (Spec. 3, ¶ [0008].)
3. The 973 Specification teaches that “[t]he solventless liquid EPDM
compounds can be processed in any suitable manner.” (Spec. 7, ¶ [0032].)
4. After suitable mixing, the mixed compound is “applied, pressed, or
molded depending on the particular use,” and then “cured using any suitable
time and temperature profile.” (Spec. 7-8, ¶ [0032].)
5. Non-limiting examples of typical applications are said to “include use
as sealing members (e.g., gaskets, O-rings, pickings or the like),” for sealing
with respect to various automotive oils and fluids, as well as a robotically
dispensed sealing bead (Spec. 8-9, ¶ [0035]), and rubber-coated metal and
rubber-coated plastic products (id. at 9, ¶ [0037]).
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Application 11/188,973

Guillot
6. Guillot describes processes in which carbon fibers are mixed with an
EPDM liquid, substantially free of solvent, and cured to make a material
said to be useful as a rocket motor insulation. (Guillot, col. 3, ll. 55-67.)
7. The insulation composition is said to contain at least about 50% by
weight, preferably at least about 90% by weight of liquid EPDM, based on
all EPDM ingredients. (Guillot, col. 5, ll. 40-44.)
8. Suitable curing agents are said to include sulfur curing agents and
peroxide curing agents (Gullet, col. 6, ll. 17-36), in amounts comprising
from about 0.5 phr to about 8 phr, where “phr” means parts by weight per
one hundred parts by weight polymer (id. at ll. 41-45).
9. According to Guillot
[t]he casting of the inventive insulation into a case and curing
of the inventive insulation may be performed in accordance
with techniques known in the art. . . . the inventive
composition can be, inter alia, either applied by casting into a
rocket motor case and then cured, or cured, optionally cut
into appropriate geometry and size, and then applied into the
rocket motor case.
(Guillot, col. 8, ll. 22-25.)
10. Guillot teaches further that the compound may be extruded after
kneading, which is said to provide “improvements over conventional
techniques, in which the insulation composition is calendered into sheets,
then cut.” (Guillot, col. 10, ll. 31-34.)
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C. Discussion
As the Appellant, Hochgesang bears the procedural burden of
showing harmful error in the Examiner’s rejections. See, e.g., In re Kahn,
441 F.3d 977, 985-86 (Fed. Cir. 2006) (“On appeal to the Board, an
applicant can overcome a rejection [under § 103] by showing insufficient
evidence of prima facie obviousness”) (citation and internal quote omitted).
Arguments not timely filed have been waived. 37 C.F.R. § 41.37(c)(1)(vii)
(2009), second sentence.
As the Examiner well and clearly explained (FR 2; Ans. 4-5),
Hochgesang’s arguments for patentability are based on intended uses that do
not distinguish the claimed product from products taught or obvious in view
of the teachings of Guillot. Hochgesang has not explained how a sheet of
cured EPDM filled with carbon fibers is distinguished from the “sealing
member” recited in independent claims 1 and 7, or how the process of curing
that sheet differs from the process recited in claim 14. Rubber-like sheets
and formed members, cut or intact, are commonly used as sealing members
for items ranging from jars to shower stalls to the Solid Rocket Boosters of
the Space Shuttle. Although Hochgesang argues that the Examiner has not
given sufficient weight to the high levels of curative compound (more
than 3% by weight of sulfur-based curatives or more than 5% by weight of
non-sulfur based curatives), Hochgesang has not explained why the upper
limit of “about 8% phr” curative relative to the polymer taught by Guillot
does not teach or suggest the recited amounts. Similarly, Hochgesang has
not explained why the cure-in-place, inject-in-place, and form-in-place
gaskets recited in various dependent claims would not have been obvious to
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the person having ordinary skill in the art in view of Guillot’s teachings that
the compound may be extruded after kneading, cast into a case, or
calendered into sheets. Hochgesang appears to be asserting, without
supporting credible evidence of record, an unduly low level of skill to
workers in relevant fields, which, as shown by Guillot, includes designers of
sheets used to insulate rocket motors. Finally, we note that Hochgesang has
not urged substantial evidence of unexpected results in rebuttal of the prima
facie case of obviousness established by the Examiner.
D. Order
We AFFIRM the rejection of claims 1-20, 23, and 26 under
35 U.S.C. § 103(a) in view of the teachings of Guillot.
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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FREUDENBERG-NOK GENERAL PARTNERSHIP
LEGAL DEPARTMENT
47690 EAST ANCHOR COURT
PLYMOUTH, MI 48170-2455
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