Ex Parte Hochstetter et al

Patent Trial and Appeal Board

Jan 30, 2018

14353849 (P.T.A.B. Jan. 30, 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.
14/353,849 04/24/2014 Gilles Hochstetter 0078840-000114 7790
21839 7590 02/01/2018
BUCHANAN, INGERSOLL & ROONEY PC
POST OFFICE BOX 1404
ALEXANDRIA, VA 22313-1404
EXAMINER
BUTCHER, ROBERT T
ART UNIT PAPER NUMBER
1768
NOTIFICATION DATE DELIVERY MODE
02/01/2018 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):
ADIPDOCl@BIPC.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GILLES HOCHSTETTER, THIERRY BRIFFAUD,
MICHEL GLOTIN, PIERRE NOGUES, and MALIHA KHUSRAWY
Appeal 2017-004293
Application 14/353,849
Technology Center 1700
Before ROMULO H. DELMENDO, CHRISTOPHER L. OGDEN, and
MERRELL C. CASHION, JR., Administrative Patent Judges.
CASHION, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134 from a final rejection of
claims 1—11, 13—26, and 28—31. We have jurisdiction under 35 U.S.C. § 6.
We AFFIRM-IN-PART.
Appeal 2017-004293
Application 14/353,849
Claims 1 is illustrative of the subject matter on appeal and is
reproduced below:
1. A process for the manufacture of a composite
material, the composite material comprising an assemblage of
one or more synthetic reinforcing fibers, which is impregnated
with at least one thermoplastic polymer having a glass
transition temperature Tg of greater than or equal to 80°C, said
process comprising:
i) a stage of impregnation of said assemblage with a
precursor composition in the molten state, the impregnation
being carried out at a temperature such that the viscosity of said
precursor composition in the molten state does not exceed 100
Pa.s, with said precursor composition comprising:
a) at least one prepolymer of said thermoplastic polymer,
comprising a molecular chain having, at its ends, n identical
reactive functional groups X, said prepolymer being of
semiaromatic and/or semicycloaliphatic structure, with X being
a reactive functional group from: OH, NH2 or COOH, with n
ranging from 1 to 3,
b) at least one chain extender, which can be represented
by Y-A-Y, comprising two identical Y functional groups which
react with at least one of said X functional groups, wherein A is
a carbon-based spacer or radical carrying the two Y groups,
ii) a stage of bulk polymerization by (poly)addition in the
molten state of said prepolymer with said chain extender, with
said thermoplastic polymer being the result of said bulk
polymerization by polyaddition.
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Appeal 2017-004293
Application 14/353,849
Appellant1 requests review of the following rejections from the
Examiner’s Final Office Action (App. Br. 4—5):
I. Claims 1—11, 13—24, 26, 28, 30, and 31 rejected under
35 U.S.C. § 103(a) as unpatentable over Orange and Douhi (CA 2,101,215
Al, published January 25, 1994).2
II. Claims 25 and 29 rejected under 35 U.S.C. § 103(a) as
unpatentable over Orange, Douhi, and Lottiau (US 4,927,583, issued May
22, 1990).
The Examiner’s Final Action (Final Act. 4—5) also includes the
following rejection that was not reproduced in the Appeal Brief by
Appellants and was not withdrawn by the Examiner in the Answer:
III. Claims 1—7, 9, 10, 13—15, 18, 25, 26, and 28—30 rejected on the
ground of nonstatutory double patenting as unpatentable over claims 1, 2, 8,
10, 12, 13, 17, 19, 21, 26, and 29 of Hochstetter (US 9,139,707 B2, issued
September 22, 2015) and Orange (US 2010/0215920 Al, published August
26, 2010).
1 ARKEMA FRANCE is the Applicant and is also identified as the real party
in interest. App. Br. 2.
2 The statements of rejection in the Final Action and the Answer include
claims 33^42. Final Act. 2; Ans. 2. Appellant does not appeal claims 33—
36, 41, and 42 because, as noted by Appellant, these claims were withdrawn
from consideration. App. Br. 2. With respect to claims 37-40, the
prosecution record shows these claims were cancelled via an amendment
filed on April 24, 2014. Accordingly, we find the Examiner’s inclusion of
claims 33—42 in the statement of rejection to be harmless error.
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Appeal 2017-004293
Application 14/353,849
OPINION
Obviousness-type Double Patenting
The Examiner rejected claims 1—7, 9, 10, 13—15, 18, 25, 26, and 28—
30 on the ground of nonstatutory double patenting as unpatentable over
claims 1, 2, 8, 10, 12, 13, 17, 19, 21, 26, and 29 of Hochstetter in view of
Orange.
Appellant has not identified any reversible error in the Examiner’s
obviousness-type double patenting rejection. See generally App. Br.3
Therefore, we summarily affirm the Examiner’s obviousness-type double
patenting rejection. Hyatt v. Dudas, 551 F.3d 1307, 1314 (Fed. Cir. 2008)
(“In the event of... a waiver, the PTO may affirm the rejection of the group
of claims that the examiner rejected on that ground without considering the
merits of those rejections.”).
The Prior Art Rejections4
After review of the respective positions provided by Appellant and the
Examiner, we reverse the Examiner’s prior art rejections of claims 1—11, 13—
26, and 28—31 for the reasons presented by Appellant. Our reasoning
follows.
Independent claim 1 is directed to process for the manufacture of a
composite material comprising an assemblage of one or more synthetic
reinforcing fibers impregnated with at least one thermoplastic polymer
having a glass transition temperature Tg of greater than or equal to 80°C.
3 We note Appellant merely requested in the Reply Brief filed January 13,
2017 that the rejection be held in abeyance until allowable subject matter is
indicated in the application. Reply Br. 2.
4 We limit our discussion to claim 1.
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Appeal 2017-004293
Application 14/353,849
Spec. 5—6. The claimed process comprises a step of impregnating the
reinforcing fibers with a thermoplastic polymer precursor composition in a
molten state that comprises at least one prepolymer of the thermoplastic
polymer and at least one chain extender and subsequently polymerizing the
thermoplastic polymer precursor composition once it impregnates the
reinforcing fibers. Id. at 6—7.
We refer to the Examiner’s Final Action for a statement of the
rejection of independent claim 1. Final Act. 2—A. The Examiner’s rejection
is principally premised on modifying the process of Orange by substituting
the thermoplastic polymer of Orange with the thermoplastic polymer
precursor composition disclosed by Douhi. Ans. 9.
Appellant argues Orange does not disclose or suggest the claimed
two-steps process. App. Br. 6. According to Appellant, Orange is directed
to impregnation of fibers with an already polymerized material, such as
polyamides, while the claimed invention is directed to contacting the
reinforcing material with a thermoplastic polymer precursor composition.
App. Br. 6—7; Orange Tflf 7—9, 12—14, 55, 56. Appellant further argues that
Douhi fails to cure the deficiencies in the teachings of Orange because
Douhi is directed to polymers and copolymers that reach high molar masses
for reaction injection molding and is completely silent with respect to
any impregnation of an article with thermoplastic polymer precursor
composition, followed by bulk polymerization of the precursor (after
impregnation) as required by the subject matter of claim 1. App. Br. 7—8;
Douhi 1.
We agree with Appellant. Orange describes using a polyamide
thermoplastic polymer that is obtained from a polycondensation reaction.
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Appeal 2017-004293
Application 14/353,849
Orange Tflf 23—24. Orange also describes the polyamide thermoplastic as a
reaction product of polyamide monomers with monomers which modify the
length of the chains (chain extenders). Id. 125. One skilled in the art,
reading this disclosure, would reasonably infer that the polyamide used in
Orange’s impregnation of reinforcing material is the polyamide
thermoplastic resulting from the reaction product and not the components
used to form the thermoplastic. Id. 111. Therefore, we agree with
Appellant that there is no mention in Orange, and the Examiner directs us to
none, of impregnating a reinforcing material with anything other than a
polyamide thermoplastic polymer. App. Br. 6—7. While the Examiner
reasons that the thermoplastic polymer precursor composition of Douhi can
be used in the process of Orange (Ans. 9), the Examiner has not adequately
explained why one skilled in the art would have modified the process of
Orange to substitute Orange’s thermoplastic polymer with Douhi’s
thermoplastic polymer precursor composition to impregnate the reinforcing
material. The Examiner has not adequately explained how one skilled in the
art would have modified Orange’s method to impregnate the reinforcing
material with Douhi’s thermoplastic polymer precursor composition and still
arrive at the claimed invention.
Accordingly, we reverse the Examiner’s prior art rejections of claims
1—11, 13—26, and 28—31 under 35 U.S.C. § 103(a) for the reasons presented
by Appellant and given above.
ORDER
The Examiner’s rejection of claims 1—7, 9, 10, 13—15, 18, 25, 26, and
28—30 on the ground of nonstatutory obviousness-type double patenting is
affirmed.
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Appeal 2017-004293
Application 14/353,849
The Examiner’s prior art rejections of claims 1—11, 13—26, and 28—31
under 35 U.S.C. § 103(a) are reversed.
TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1).
AFFIRMED-IN-PART
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