Ex Parte Jolley et al

Patent Trial and Appeal Board

May 4, 2018

13523806 (P.T.A.B. May. 4, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/523,806 06/14/2012
25190 7590 05/07/2018
NASA JOHN F. KENNEDY SPACE CENTER
MAIL CODE: CC-A/OFFICE OF CHIEF COUNSEL
ATTN: PATENT COUNSEL
KENNEDY SP ACE CENTER, FL 32899
Scott T. Jolley
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.
KSC-13366 6690
EXAMINER
SHUKLA, KRUPA
ART UNIT PAPER NUMBER
1787
MAILDATE DELIVERY MODE
05/07/2018 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SCOTT T. JOLLEY, MARTHA K. WILLIAMS,
TRACY L. GIBSON, TRENT M. SMITH,
ANNE J. CARACCIO, and WENY AN LI
Appeal2017-006974
Application 13/523,806 1
Technology Center 1700
Before CATHERINE Q. TIMM, WESLEY B. DERRICK, and
BRIAND. RANGE, Administrative Patent Judges.
RANGE, Administrative Patent Judge.
DECISION ON APPEAL
SUMMARY
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 10-16 and 52---60. We have jurisdiction.
35 U.S.C. § 6(b).
We REVERSE.
1 According to Appellants, the real party in interest is the United States of
America as represented by the Administrator of the National Aeronautics
and Space Administration. Appeal Br. 3.
Appeal2017-006974
Application 13/523,806
STATEMENT OF THE CASE2
Appellants describe the invention as relating to a "self-healing"
polymer that could be used for wire insulation or as part of a healing
inflatable structure to prevent gas leakage. Spec. i-f 8; Abstract. Claim 10 is
the only independent claim on appeal and is illustrative of the claimed
subject matter:
10. A polymer material comprising:
a polymer matrix that flows at approximately 23 °C, or
about room temperature, wherein the polymer of the polymer
matrix is formed by polymerization of monomers comprising:
(a) a diamine monomer comprising repeating
alkyleneoxy segments of 2 to 6 carbon atoms or repeating
siloxy segments and having a molecular weight of
between 250 and 3,000; and
(b) a dianhydride monomer;
wherein if the polymer material is cast as a film and the
film is cut into two pieces, and the two pieces placed laterally in
contact with or near to each other, the pieces of the film flow
back together at approximately 23°C, or about room
temperature within 30 days and molecularly combine.
Appeal Br. 14 (Claims App.).
REFERENCES
The Examiner relies upon the prior art below in rejecting the claims
on appeal:
N aksen et al. US 2006/0038745 Al Feb.23,2006
("N aksen")
2 In this Decision, we refer to the Final Office Action dated May 26, 2016
("Final Act."), the Appeal Brief filed October 12, 2016 ("Appeal Br."), the
Examiner's Answer dated January 31, 2017 ("Ans."), and the Reply Brief
filed March 27, 2017 ("Reply Br.").
2
Appeal2017-006974
Application 13/523,806
Terada et al.
("Terada")
Minar et al.
("Minar")
Whiteker et al.
("Whiteker")
Sakaguchi et al. 3
("Sakaguchi")
US 2006/0141258 Al June 29, 2006
US 2006/0271135 Al Nov. 30, 2006
US 2008/0058476 Al Mar. 6, 2008
JP 11246824 A Sept. 14, 1999
REJECTIONS
The Examiner maintains the following rejections on appeal:
Rejection 1. Claims 10, 12-16, 52-54, and 57---60 under 35 U.S.C.
§ 103(a) as unpatentable over Whiteker in view of Terada. Ans. 3.
Rejection 2. Claim 11 under 35 U.S.C. § 103(a) as unpatentable over
Whiteker in view of Terada further in view of Minar or Naksen. Id. at 5-6.
Rejection 3. Claims 55 and 56 under 35 U.S.C. § 103(a) as
unpatentable over Whiteker in view of Terada further in view of Sakaguchi.
Id. at 7.
The Examiner withdraws the prior rejection under 35 U.S.C. § 112.
Id. at 8.
ANALYSIS
The Examiner rejects independent claim 10 as unpatentable as
obvious over Whiteker in view of Terada. Ans. 3. The Examiner finds that
Whiteker teaches a prepolymer blend comprising a diamine component and
a dianhydride. Id. (citing Whiteker). The Examiner finds that Whiteker
3 The Examiner relies on a machine translation of Sakaguchi's disclosure
(Final Act. 8; Ans. 28), which use is not contested (see generally Appeal Br.;
Reply Br.). Thus, we also rely on the translation.
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Appeal2017-006974
Application 13/523,806
teaches the dianhydride can be the aromatic dianhydride 2,2,-bis-(4-(3,4-
dicarboxyphenoxy)phenyl)propane dianhydride ("BP ADA"). Id. at 3--4.
The Examiner finds that Whiteker does not teach the claimed diamine
monomer. Id. at 4. The Examiner finds that Terada discloses polyether
diamine that provides production "of highly thermoresistant polyimide resin
with low stress and small elastic modulus." Id. (citing Terada). The
Examiner finds that Terada teaches polyether diamine with molecular
weights overlapping that recited by claim 10 and with repeating alkyleneoxy
segments of 2 to 6 carbon atoms. Id. Terada provides an example of a
polymer diamine including XTJ-542. Id. BP ADA and XTJ-542 are
preferred dianhydride and diamines in Appellants' Specification. See, e.g.,
Spec. i-f 24, Fig. 2, Table 1. Based on the teachings of Terada, the Examiner
determines that it would have been obvious to use claim lO's diamine
monomer in Whiteker "in order to produce highly thermoresistant polyimide
resin with low stress and small elastic modulus, thereby arriv[ing] at the
claimed invention." Ans. 4--5. Thus, the Examiner's reasoning is not
grounded on one of ordinary skill in the art combining the teachings in order
to obtain a "self-healing" property. See generally Final Act.; Ans.
Instead, although not citing the case law specifically, the Examiner
relies on the reasoning of, for example, In re Best, 562 F.2d 1252, 1255-56
( CCP A 1977), to determine that a polymer matrix combining the teachings
of Whiteker and Terada would be identical to the claimed polymer matrix
and, therefore, would necessarily have claim 10 's recited "wherein if the
polymer material is cast as a film and the film is cut ... the pieces of the
film flow back together ... and molecularly combine" property. Ans. 6.
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Appeal2017-006974
Application 13/523,806
Based on the evidence before us, the Examiner's stated reason why a
person of skill in the art would have combined the selected teachings of
Whiteker and Terada is not well founded. Rather, as Appellants argue,
Whiteker teaches polyimide with a high glass transition temperature and
Terada seeks heat resistant resins with low elasticity. Appeal Br. 7 (citing
Whiteker i-f 12; Terada i-f 4). The Examiner has not adequately explained
why a person of skill in the art would have substituted Whiteker's larger,
aromatic diamines (Whiteker i-fi-123-26) with the smaller diamines of Terada
under these circumstances. The Examiner also has not persuasively
explained why the stated reason to combine the references' teachings ("to
produce highly thermoresistant polyimide resin with low stress and small
elastic modulus") is compatible with the self-healing property that claim 10
also requires. Appeal Br. 7-8 (quoting Final Act. 5---6).
Moreover, Appellants persuasively explain that not all combinations
that meet the chemical recitations of claim 10 will necessarily meet claim
lO's recitation concerning self-healing. Id. at 8. Although Table 1 of
Appellants' Specification is somewhat unclear regarding experimental
conditions, Table 1 nonetheless evidences that not all combinations of
diamine, according to the recited structure and molecular weight, and
dianhydride monomers provide the self-healing property recited by claim 10.
Appeal Br. 8-9. The burden would shift to Appellants to provide evidence
that the art would not result in claim lO's recited self-healing property only if
the Examiner established that "the claimed and prior art products are
identical or substantially identical, or are produced by identical or
substantially identical processes." Best, 562 F.2d at 1255. Here, given the
evidence presented, the Examiner would thus, have to explain why it would
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Appeal2017-006974
Application 13/523,806
be obvious to choose prior art components from Whiteker and Terada such
that the final polymer material would be identical or substantially identical
to a polymer material that Appellants report as having the self-healing
property. On the present record, the Examiner has not adequately explained
why a person of skill in the art would have had reason to choose such
components in particular. Appeal Br. 9.
For the reasons above, we do not sustain the Examiner's rejection of
independent claim 10. Because the remaining claims on appeal depend from
claim 10 and because the Examiner's additional citations to the Minar,
Naksen, and Sakaguchi references do not cure the error discussed above
(Ans. 6-8), we also do not sustain the Examiner's rejection of the other
claims on appeal.
DECISION
For the above reasons, we reverse the Examiner's rejections of
claims 10-16 and 52---60.
REVERSED
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