Ex Parte Mehta et alDownload PDFPatent Trial and Appeal BoardMay 18, 201613134100 (P.T.A.B. May. 18, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/134, 100 05/27/2011 8131 7590 05/19/2016 MCKELLAR IP LAW, PLLC 784 SOUTH POSEYVILLE ROAD MIDLAND, MI 48640 FIRST NAMED INVENTOR Veerag Mehta 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. MSH-662 1412 EXAMINER MOORE, MARGARET G ART UNIT PAPER NUMBER 1765 MAILDATE DELIVERY MODE 05/19/2016 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 VEERAG MEHTA, DAVID ROMENESKO, and ANAND MISHRA 1 Appeal2014-001680 Application 13/134, 100 Technology Center 1700 Before RICHARD E. SCHAFER, CATHERINE Q. TIMM, and SALLY GARDNER LANE, Administrative Patent Judges. TIMM, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134 from the rejection of claims 1-10 and 12-20 under 35 U.S.C. § 102(b) as anticipated by Beckley2 and the rejection of claims 1, 2, 4, 6, 7, 9, 12, 13, 15, 17, 18, and 20 under 35 U.S.C. § 102(b) as anticipated by Yamada. 3 We have jurisdiction under 35 U.S.C. § 6(b ). 1 Appellants identify the real party in interest as Polymer Dynamix. Br. 2. 2 Beckley et al., US 5,612,399, issued Mar. 18, 1997 ("Beckley"). 3 Yamada et al., US 2005/0004305 Al, published Jan. 6, 2005 ("Yamada"). Appeal2014-001680 Application 13/134, 100 Based upon the findings of fact advanced by the Examiner in the Final Rejection and the response to arguments advanced in the Answer, we affirm. 4 We add the following for emphasis. CLAIMED SUBJECT MATTER The claims are directed to a process for preparing materials having enhanced pull through lubricity. Claim 12 is illustrative: 12. A process for preparing materials having enhanced pull through lubricity, the process comprising: A. providing a curable silicone system and a catalyst for the curable silicone system; B. partially curing the curable system to a semi-fluid, gum-like gel. Claims Appendix, Br. 12. OPINION Anticipation by Beckley There is no dispute that Beckley teaches silicone materials that are partially cured. Compare Final 2 with Br. 5. Beckley also teaches a curing process that causes the silicone composition to gel. Beckley, col. 8, 11. 24-- 48. The first question raised by Appellants' arguments is whether Beckley's process of at least partially curing the silicone blend such that it gels amounts to "partially curing the curable system to a semi-fluid, gum-like gel" as required by Appellants' claims. 4 In our opinion below, we refer to the Specification filed May 27, 2011 (Spec.), Final Office Action mailed December 31, 2012 (Final), the Appeal Brief filed June 21, 2013 (Br.), and the Examiner's Answer mailed August 30, 2013 (Ans.). 2 Appeal2014-001680 Application 13/134, 100 Appellants contend that Beckley's gel is different because it forms a 3-dimensional polymer network, which would be a conventional silicone cured material as evidenced by the curing temperature and other disclosures of using conventional curing that do not lead to partial cures. Br. 6-7. But Beckley's composition is a blend where just one of the silicone polymers may be cured. Beckley, col. 7, 11. 46-48 ("The shaped blend may then be cured or at least partially cured, such that at least one of the silicone polymers is cured'' (emphasis added).). Nor is the cured blend intended to be the end product. Instead, the curing is performed on a shaped blend such that curing provides enough structural integrity to allow the shaped blend to be used or affixed to an article before at least one of the silicone polymers is ceramitized to form an end product. Beckley, col. 2, 1. 61---col. 3, 1. 2; col. 3, 11. 18--40 and col. 7, 11. 43-50. Beckley teaches that curing may be by any conventional method, and then describes a preferred method involving a condensation reaction using a condensation catalyst. Beckley, col. 7, 11. 54-- 55 and 62-64; col. 8, 11. 24--27 and 38-51. The reaction is preferably carried out at from about 350°--400°F. The reaction causes the silicone composition to gel and form the 3-dimensional polymer network that provides the needed structural integrity to allow it to retain its shape before the ceramitizing process. Beckley, col. 8, 11. 43--48. We do not agree that Beckley's silicone blend is merely a conventionally cured silicone that is fully cured and not a partially cured material that forms a gel. The language "at least one of [the silicone polymers of the blend] may be at least partially cured," Beckley, col. 3, 11. 21-23, and the characterization of the curing reaction as causing the silicone blend composition to gel, indicate that the result is a gel. 3 Appeal2014-001680 Application 13/134, 100 Although the cured silicone polymer forms a network, the other silicone polymer of the blend is not said to do so. The presumption is that the other silicone polymer remains liquid. This presumption is supported by the known meaning of "gel." According to the Examiner, "taken from bing.com, to 'become gel' means to 'become semi-solid'. Semi-solid indicates semi-fluid as well. As such the gel will be semi-fluid." Ans. 5. Appellants do not dispute this. No reply brief was filed. Moreover, dictionary.com supports the Examiner's finding. Dictionary.com defines "gel" as: "Physical Chemistry. a semirigid colloidal dispersion of a solid with a liquid or gas, as jelly, glue, etc." Dictionary.com/browse/gel (accessed May 10, 2016). Of course, if Appellants' Specification contained a definition or other evidence indicating that "a semi-fluid, gum-like gel" is to be interpreted to be different than what is conventionally known as a gel, there might be a distinction. But Appellants do not point to any convincing evidence that they so defined or characterized "a semi-fluid, gum-like gel." The Specification describes "semi-fluid, gum-like gel" as "a snotty, gel-like material." Spec. 4:5---6. This description does not distinguish over the gel of Beckley, particularly because the material need only be snotty and gel-like; it need not actually be a gel. A preponderance of the evidence supports the Examiner's finding that Beckley describes a step of partially curing to "a semi-fluid, gum-like gel" as required by the claims. Appellants further contend that the Examiner skipped another important limitation, i.e., the limitation that the process is "for preparing materials having enhanced pull through lubricity." Br. 6; claim 12 (emphasis added). According to Appellants, the materials Beckley considers 4 Appeal2014-001680 Application 13/134, 100 to be "gels" would not have the structural integrity to provide "pull through." Br. 7. But as pointed out by the Examiner, it is the partial curing of the silicone that results in improved pull through lubricity. Ans. 6, citing Spec. 3 :26-31. Beckley partially cures silicone and thus the material formed has the claimed property of enhanced pull through lubricity. According to Appellants' Specification, pull through lubricity is a property needed when manufacturing coated wires. Although Beckley is not directed to forming such wires, Appellants are not claiming a process of forming a coating on wires or cables, the wires or cables having enhanced pull through lubricity. Appellants are only claiming a process of preparing materials. Beckley forms materials by the process of the claims. Moreover, the word "enhanced" is a relative term. One can interpret "enhanced" to mean enhanced over materials without silicone. Beckley' s material includes silicone. Appellants further contend the Examiner erred by finding Beckley's heat resistant filler material inherently meets the requirement of a fire retardant material. Br. 7. As pointed out by the Examiner, claims 12-20 do not require the material be fire retardant. Thus, Appellants have not shown the Examiner reversibly erred in rejecting claims 12-20. Claims 1-10 are directed to "[a] process for preparing fire retardant materials." But the Examiner finds Beckley adds "heat resistant filler" material such as alumina to the silicone blend. Final 2. Appellants do not dispute that alumina, as found by the Examiner, is fire retardant. Br. 7. Nor is there any convincing evidence that the silicone blend containing the filler is anything other than fire retardant. 5 Appeal2014-001680 Application 13/134, 100 Anticipation by Yamada To supporttherejectionofclaims 1, 2, 4, 6, 7, 9, 12, 13, 15, 17, 18, and 20 as anticipated by Yamada, the Examiner finds that Yamada teaches a silicone putty that is a semi-cured silicone gel. Final 3. Appellants contend that Yamada uses the word "cure" inconsistently and that the process of Yamada would lead to a product that would not have the integrity to be used as "pull through" material. Br. 9--10. First we agree with the Examiner that a complete reading of Yamada indicates that Yamada describes a semi-cured silicone gel. Ans. 7. Yamada is directed to a thermal conductive composition, a heat- dissipating putty sheet including the composition, and a heat-dissipating structure using the sheet. Yamada i-f 12. Yamada forms the putty from a mixture of liquid silicone and thermal conductive filler. Yamada i-f 15. In one embodiment, the liquid silicone is a liquid silicone gel consisting of a solution A and solution B. Yamada i-f 14. Both solution A and solution B contain a vinyl group-contammg dimethyl polysiloxane, but solution A contains a catalyst while solution B contains a crosslinker. Id. Yamada adds a minimum amount of solution B so that the amount of crosslinker "is suppressed to the lowest level so as to provide an incompletely cured or semi-cured state, thereby keeping the putty in an unvulcanized/uncured state." Yamada i-fi-1 14 and 19. Yamada specifically defines "unvulcanized" as denoting an incompletely cured state, namely, "an uncured, a partially cured or semi-cured state." Yamada i-f 19. Yamada includes uncured in this definition because another embodiment uses a straight silicone oil free of crosslinking agent. Yamada i-f 16. But the embodiment disclosed in paragraph 14 includes crosslinker such that the solutions A and B are crosslinked to an incompletely cured or semi-cured state. Yamada i-f 14. 6 Appeal2014-001680 Application 13/134, 100 When discussing the heat dissipating composition, sheet, and structure, Yamada states that these products "are not crosslinked further or cured at a normal temperature, thereby keeping the putty state," and "the term 'putty' indicates that crosslinking of a composition does not proceed and thus the composition is not cured even after 2000 hours at a normal temperature, or that crosslinking does not proceed to cause curing or vulcanization does not proceed even under a condition of heat of 25° C. to 180° C. and pressure of2xl04 to 7xl05 Pa." Yamada i-fi-f 12, 13. In other words, the normal working heat and pressures occurring when the putty is used in the heat-dissipating end use will not further cure or crosslink the putty, the putty will remain in its semi-cured state. A preponderance of the evidence supports the Examiner's finding that Yamada describes partially curing the silicone liquid solutions to a semi- cured gel. Appellants contend that the putty of Yamada would not lead to a product that would have the integrity to be used as a "pull through" material. Br. 10. But the claims are directed to a process for preparing materials "having enhanced pull through lubricity," not a product having the integrity to be used as a "pull through" material. As pointed out by the Examiner, it is the incomplete cure of the silicone that leads to the property of "enhanced pull through lubricity." Ans. 7. Because Yamada's composition includes a semi-cured silicone, it has the claimed property. The basic problem here is that the claims, when given their broadest reasonable interpretation, sweep in the processes disclosed by Beckley and Yamada. The name of the game is the claim, and claims that sweep in the prior art are unpatentable. See In re Hiniker Co., 150 F.3d 1362, 1369 (Fed. Cir. 1998). 7 Appeal2014-001680 Application 13/134, 100 DECISION The decision of the Examiner is affirmed. TIME PERIOD FOR RESPONSE 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 8 Copy with citationCopy as parenthetical citation