Ex Parte Ludwig

Patent Trial and Appeal Board

Nov 7, 2018

14110991 (P.T.A.B. Nov. 7, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/110,991 10/10/2013
32692 7590 11/09/2018
3M INNOVATIVE PROPERTIES COMPANY
PO BOX 33427
ST. PAUL, MN 55133-3427
UNITED ST A TES OF AMERICA
FIRST NAMED INVENTOR
Bret W. Ludwig
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.
67220US004 5571
EXAMINER
DION, MARCEL T
ART UNIT PAPER NUMBER
3723
NOTIFICATION DATE DELIVERY MODE
11/09/2018 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):
LegalUSDocketing@mmm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BRET W. LUDWIG 1
Appeal2017-009885
Application 14/110,991
Technology Center 3700
Before KEN B. BARRETT, WILLIAM V. SAINDON, and
JAMES P. CALVE, Administrative Patent Judges.
CAL VE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Office Action
finally rejecting claims 1--4, 6-8, and 10-12. See Appeal Br. 1. We have
jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
1 3M Innovative Properties Company is identified as the real party in
interest. Appeal Br. 2.
Appeal2017-009885
Application 14/110,991
CLAIMED SUBJECT MATTER
Claim 1, the sole independent claim, is reproduced with claim 12.
1. A nonwoven abrasive article comprising:
a nonwoven web;
agglomerates comprising formed ceramic abrasive
particles bound together by a first flexible binder, the first
flexible binder comprising a polyurethane, wherein
a modulus of elasticity of the first flexible binder is
less than 28,000 psi, and
a ratio of the formed ceramic abrasive particle size
divided by the agglomerate size is 0.0033 to 0.5; and
a second binder binding the agglomerates to the
nonwoven fiber web.
12. The nonwoven abrasive article of claim 1, wherein the
nonwoven abrasive article provides a finer finish on a substrate
abraded with the nonwoven abrasive article as compared to a
corresponding nonwoven abrasive article with a binder having a
modulus of elasticity of greater than 28, 000 psi tested under
the same conditions.
Appeal Br. 16, 17 (Claims App.).
REJECTIONS
Claim 12 is rejected under 35 U.S.C. § 112, fourth paragraph, for
failing to further limit the subject matter of claim 1.
Claims 1--4, 6-8, 11, and 12 are rejected under 35 U.S.C. § I03(a) as
unpatentable over Culler (US 5,942,015, iss. Aug. 24, 1999), Gebhardt (US
2011/0183142 Al, pub. July 28, 2011), and Benner (US 1,953,983, iss. Apr.
10, 1934).
Claim 10 is rejected under 35 U.S.C. § I03(a) as unpatentable over
Culler, Gebhardt, Benner, and Carman (US 2003/0205003 Al, pub. Nov. 6,
2003).
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Appeal2017-009885
Application 14/110,991
ANALYSIS
Claim 12 For Failing To Further Limit Claim 1
The Examiner determines that claim 12 does not limit the structure of
the abrasive article recited in claim 1, from which claim 12 depends, because
claim 12 recites an intended result of using the abrasive article of claim 1 to
provide a finer finish compared to other abrasive articles. Final Act. 2. The
Examiner finds claim 12 "merely states that the abrasive article provides a
finer finish than one with a binder having a higher modulus of elasticity" and
"[t]his does not actually define any materials, configuration or composition
of the abrasive article." Ans. 2. As a result, the Examiner determines that
"[t]here is no structural difference between the abrasive article defined in
claim 1 and the abrasive article defined in claim 12. Id. at 3.
Appellant argues that claim 12 requires the nonwoven abrasive article
to provide a finer finish than a corresponding article having a binder with a
modulus of elasticity of greater than 28,000 psi, and this feature is not
required by claim 1. Appeal Br. 8; Reply Br. 2. Appellant also argues that
claim 12 recites a structural feature of the abrasive article by characterizing
the structure of claim 1 "as capable of providing a finer finish than a
comparable abrasive article containing a binder with a modulus of elasticity
of greater than 28,000 psi." Reply Br. 2.
The Examiner has the better position. Appellant discloses that using a
flexible binder such as a polyurethane binder to make agglomerates out of
formed ceramic abrasive particles significantly improves the surface finish
of the work piece. Spec. 1:31-33. In fact, flexible bound agglomerates of
formed abrasive particles produce a finer finish than abrasive articles made
with identical abrasive particles that are not agglomerated. Id. at 2:5-8.
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Appeal2017-009885
Application 14/110,991
Appellant defines a "flexible binder" as a cured material having a
modulus of elasticity of less than 28,000 psi. Id. at 3 :9--13. Flexible binders
include polyurethane. Id. at 3: 13-14. Appellant discloses that, for purposes
of defining an agglomerate binder resin as "flexible" or "rigid," a transition
occurs when the modulus value decreases to less than 30,000 psi measured
by ASTM D882. Id. at 25: 1-3.
Test results show that agglomerating ceramic abrasive grains with a
flexible urethane binder yields a finer finish compared to identically-shaped
ceramic abrasive grains agglomerated with a rigid binder such as a phenolic
binder. Id. at 20:19--26. Flexible urethane agglomerates with a modulus of
elasticity less than 28,000 psi thus provide finer finishes. Id. at 23:9-12.
The Examiner therefore has a sound basis to find that the nonwoven
abrasive article recited in claim 1 provides a finer finish on a substrate when
compared to a corresponding nonwoven abrasive article having a modulus of
elasticity of greater than 28,000 psi. See Ans. 2-3. Appellant discloses the
finer finish feature as a property of agglomerates recited in claim 1, i.e., by
agglomerates formed with a flexible polyurethane binder having a modulus
of elasticity less than 28,000 psi. Id. at 3:9--14, 20: 19--26, 23:9-12, 25: 1-3.
It is well-settled that "[a] claim in dependent form shall be construed
to incorporate by reference all the limitations of the claim to which it refers."
35 U.S.C. § 112, fourth paragraph. Because claim 12 recites a feature that
already is present in the structure recited in claim 1, claim 12 does not limit
the scope of claim 1 any further. Indeed, Appellant asserts that "the ability
to provide a finer finish using a binder with a modulus of elasticity of less
than 28,000 psi than a comparable article with a binder having a modulus of
elasticity greater than 28,000 is due to the advantageous structural features
of the abrasive article recited in claim 1." Reply Br. 2-3.
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Appeal2017-009885
Application 14/110,991
Appellant also argues that the property recited in claim 12 "does not
automatically flow from the express text of claim 1." Id. at 2. We are not
persuaded by this argument because Appellant does not identify a structure
in claim 12 that is not also present in claim 1. Id.; Ans. 2.
Instead, Appellant argues that "[ c ]laim 12 recites a structural feature
of the abrasive article of claim 1 because it characterizes the structure of
claim 1 as capable of providing a finer finish than a comparable abrasive
article ... having a modulus of elasticity of greater than 28,000 psi."
Appeal Br. 2 (emphasis added). This argument supports the Examiner's
finding that claim 12 merely recites features that already are present in the
article of claim 1, which has a modulus of elasticity less than 28,000 psi.
Ans. 2-3 (the result of having such a modulus does not further limit claim
12). The Examiner's finding is supported by the Specification's disclosure
that binders with such a modulus provide finer finishes as discussed above.
Thus, we sustain the rejection of claim 12 under 35 U.S.C. § 112,
fourth paragraph.
Claims 1-4, 6-8, 11, and 12
Unpatentable over Culler, Gebhardt, and Benner
Appellant argues claims 1--4, 6-8, 11, and 12 as a group. Appeal Br.
9-14. We select claim 1 as representative, with claims 2--4, 6-8, 11, and 12
standing or falling with claim 1. 37 C.F.R. § 4I.37(c)(l)(iv).
The Examiner finds that Culler teaches a nonwoven abrasive article as
recited in claim 1, including agglomerates of particles bound together by a
flexible polyurethane binder, but lacks the claimed modulus of elasticity and
ratio. Final Act. 3--4. The Examiner finds that Gephardt teaches the claimed
ratio, and Benner teaches a flexible abrasive agglomerate and binder with a
modulus of elasticity of about 10,000 psi. Id.
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Appeal2017-009885
Application 14/110,991
Appellant raises two principal arguments. First, Appellant argues that
Benner mentions a modulus of elasticity of 10,000 psi for a rubber-bonded
agglomerate but fails to teach a modulus of elasticity for the binder. Appeal
Br. 9. Appellant argues that the modulus of elasticity of Benner's rubber
binder cannot be extrapolated from the agglomerate' s modulus of elasticity
because Benner attributes the properties of the agglomerate to the degree of
adhesion between the binder and abrasive particles. Id. at 9--10. Appellant
argues that Benner describes the agglomerate' s low modulus of elasticity as
resulting from the ease with which abrasive particles detach from the rubber
binder (i.e., the strength of the bond between the binder and the abrasive
particles) and never suggests the modulus of elasticity of the binder can be a
result-effective variable. Id. at 10-11; Reply Br. 3--4.
Although Benner does not disclose a modulus of elasticity of a binder
per se, Benner teaches that the rubber binder makes the abrasive article soft,
flexible, and compressive (i.e., pliable). Benner, 2:84--91, 2: 117-121. The
binder also provides qualities of softness and cushioning. Id. at 4:34--35.
The Examiner correctly finds that Benner teaches that the abrasive article is
soft, flexible, and compressive to cushion loose grains that are embedded
therein and prevent scratching of a lacquer finish due to the qualities of the
rubber binder. Benner, 2: 120-126; Ans. 3 ( citing id.).
"The modulus of elasticity of a material is a measure of its stiffness."
Definition of modulus of elasticity by Collins English Dictionary at
http://www.collinsdictionary.com/us/dictionary/english/modulus-of-
elasticity ( viewed Oct. 31, 2018). "By definition, a stiffer material has a
higher modulus of elasticity." Id. The abrasive article has a low modulus of
elasticity because the rubber binder deforms easily and elastically under
stress indicating that the binder itself also has a low modulus of elasticity.
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Appeal2017-009885
Application 14/110,991
Benner supports this finding by teaching that the modulus of elasticity
of the abrasive article indicates its greater compressibility and cushioning,
i.e., its lack of stiffness. Benner, 4:22-32; Ans. 3. The Examiner reasonably
finds that the greater compressibility, softness, and pliability of the abrasive
article are attributable to the properties of the rubber binder rather than to the
abrasive grains embedded therein so the 10,000 psi modulus of elasticity of
the abrasive article is a reasonable indication of the modulus of elasticity of
the rubber binder. Final Act. 4; Ans. 3. Specifically, it is reasonable that a
person of ordinary skill in the art would understand that the softness, etc., of
the material is derived from the soft rubber binder, not the hard abrasive
grains. The Examiner also reasonably concludes that Benner teaches the
advantages of a flexible binder with a low modulus of elasticity as a way to
improve the finish of a work piece so that a skilled artisan would have been
motivated to experiment with the modulus of elasticity of a binder to render
obvious the claimed modulus of elasticity. Ans. 3--4; Final Act. 5.
In response, Appellant argues that "just because a binder is pliable
(e.g., easily bent) or soft (e.g., not hard or firm) does not indicate it is
elastically deformable." Appeal Br. 11. This argument is not persuasive
because, as indicated by the definition of "modulus of elasticity" above, a
skilled artisan would understand that the softness, compressibility, and
pliability of a material indicate its modulus of elasticity. A material that
deforms more easily under stress (is more pliable) has a lower modulus of
elasticity. See Ans. 4 (softness or pliability indicate elastic deformability).
Appellant also argues that Benner attributes the properties of the
agglomerate to the degree of adhesion between the binder and the abrasive
particles (friability) so it is "entirely possible that the binder can have a
higher modulus of elasticity than the agglomerate mixture." Reply Br. 4.
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Appeal2017-009885
Application 14/110,991
This argument is not persuasive because Benner discloses that this
"friability" allows abrasive grains to loosen from the rubber binder when the
abrasive article is rotated and pressed against a soft material such as lacquer.
Benner, 2:92-120. Appellant has not explained how the ability of individual
abrasive grains to separate from rubber binder when the abrasive article is
rotated and pressed against a lacquer surface lowers the modulus of elasticity
of the abrasive composition below that of the rubber binder by itself. This is
especially true when Benner teaches "the abrasive article is soft and flexible
and compressive" (id. at 2: 121-122) to provide "softness or cushioning" in
addition to friability (id. at 4:34--35). The Examiner reasonably finds that
these properties are attributable to the rubber binder rather than the abrasive
grains, such that the modulus of elasticity of the abrasive article indicates a
low modulus of elasticity of the rubber binder within the claimed range of
less than 28,000 psi. Ans. 3--4; In re Peterson, 315 F.3d, 1325, 1329 (Fed.
Cir. 2003) (holding that a prima facie case of obviousness exists when the
claimed range overlaps ranges in the prior art). Even if the modulus of
elasticity of the rubber binder is higher than the 10,000 psi modulus of
elasticity of the abrasive-rubber article, as Appellant argues, there is no basis
to conclude that it is greater than 28,000 psi, which would be comparable to
the modulus of a rigid resin according to the Specification. Spec. 25: 1-3.
The Examiner's findings are supported by a preponderance of the
evidence, and the Examiner's obviousness determination is supported by a
rational underpinning based on the express teachings of Benner that a binder
with a low modulus of elasticity (soft, flexible, compressive) improves the
finish and reduces scratches. Benner, 2: 117-130. This teaching provides
motivation for a skilled artisan to experiment with the binder's modulus of
elasticity modulus to render obvious the claimed range.
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Appeal2017-009885
Application 14/110,991
The second argument presented by Appellant is that Gebhardt is
directed to abrasive grain agglomerates that are bonded together via an
inorganic binder and Gebhardt criticizes and disparages organic binders,
such as the claimed polyurethanes, as having weak bonds. Appeal Br. 12;
Reply Br. 5. As a result, Appellant argues that a skilled artisan would not
combine the claimed organic polyurethane binder with the ratio of abrasive
grain size to agglomerate size disclosed in Gebhardt because Gebhardt
teaches away from organic binders such as polyurethanes. Appeal Br. 13.
This argument is not persuasive primarily because it amounts to an
individual attack on the references where the Examiner relies on Culler to
teach a polyurethane first binder as claimed and Gebhardt to teach a ratio of
individual grain size to agglomerate size that overlaps the claimed range and
thereby renders it obvious. Final Act. 3--4. The Examiner also relies on the
teaching of Gebhardt that this range of ratios improves fracture resistance of
the agglomerates to provide a rational basis for providing the agglomerates
of Culler with such a size ratio that is within the claimed size ratio to provide
similar improvements in Culler. Id. at 4 (citing Gebhardt ,r,r 36, 37); KSR
Int'! Co. v. Teleflex Inc., 550 U.S. 398,417 (2007) ("if a technique has been
used to improve one device, and a person of ordinary skill in the art would
recognize that it would improve similar devices in the same way, using the
technique is obvious unless its actual application is beyond his or her skill").
We find no teaching in Gebhardt that the benefits of the particle size
to agglomerate size ratio taught therein are limited to agglomerates formed
with inorganic binders nor does Appellant present arguments to that effect.
Instead, Gebhardt teaches that organic and inorganic binders have
different advantages and disadvantages. Gebhardt ,r,r 7-11.
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Appeal2017-009885
Application 14/110,991
Gebhardt teaches that abrasive grain agglomerates are easy to produce
by mixing single grains with a binding agent to form an agglomerate that is
heat treated. Id. ,r 8. Organic binders have the advantage that they can be
heat treated at relatively low temperatures (between 200Q C and 300Q C) but
the bond is less strong. Id. ,r,r 9, 11. Inorganic binders form very strong
bonds but they require relatively high temperatures (above 500Q C), which
are unsuitable for temperature-sensitive abrasive grains. Id. ,r,r 9, 10.
Gebhardt teaches to use inorganic geopolymers of aluminum silicate
material that form strong, stable agglomerates at temperatures below 450Q C
but still retain firmness comparable to known inorganic binders. Id. ,r,r 15,
1 7, 25. Gebhardt teaches how to form agglomerates of varying sizes from
abrasive particles of different sizes that exhibit a high degree of fracture
resistance. Id. ,r,r 26, 27, 29, 36, 37. The Examiner reasonably applies the
general teachings of size ratios that improve fracture resistance to Culler for
similar benefits with Culler's agglomerates.
We are not persuaded by Appellant's arguments that Gebhardt's
teaching of the relative merits of organic and inorganic binders would have
dissuaded a skilled artisan from using Gebhardt's particle to agglomerate
size ratio in Culler to improve the fracture resistance of Culler similarly.
This is particularly true where the prior art discussed in Culler uses an
organic binder to form agglomerates with abrasive grain sizes of .05 µm to
10 µm and agglomerate sizes of 10 µm to 15 0 µm. Id. ,r 7 ( discussing DE
10 2005 007 661 Al). These particle and agglomerate sizes yield ratios of
0.005 (.05 µm + 10 µm) to 0.00033 (.05 µm + 150 µm) and 1.0 (.10 µm + 10
µm) to 0.0667 (.10 µm + 150 µm) that are comparable to those of Gebhardt
and which overlap and render prima facie obvious the claimed ratio range.
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Appeal2017-009885
Application 14/110,991
For all the foregoing reasons, we sustain the rejection of claims 1--4,
6-8, 11, and 12.
Claim 10
Unpatentable over Culler, Gebhardt, Benner, and Carman
Appellant argues that Carman fails to remedy the deficiencies of
Culler, Gebhardt, and Benner as to claim 1 from which claim 10 depends.
Appeal Br. 14. Because we sustain the rejection of claim 1 as unpatentable
over Culler, Gebhardt, and Benner, there are no deficiencies for Carman to
remedy. Therefore, we sustain the rejection of claim 10.
DECISION
We affirm the rejections of claims 1--4, 6-8, and 10-12.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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