Ex Parte Mehta et al

Patent Trial and Appeal Board

May 18, 2016

13134100 (P.T.A.B. May. 18, 2016)

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").
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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.).
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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.
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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
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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.
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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.
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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).
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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
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