Ex Parte Meng et al

Board of Patent Appeals and Interferences

Apr 30, 2010

11029115 (B.P.A.I. Apr. 30, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JIAN MENG, RAPHAEL O. KALLAH, PAUL A. WESTBROOK,
and RAMASUBRAMAN NARAYANAN
____________

Appeal No. 2009-003822
Application 11/029,115
Technology Center 1700
____________

Decided: April 30, 2010
____________

Before CHUNG K. PAK, TERRY J. OWENS, and MARK NAGUMO,
Administrative Patent Judges.

PAK, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1 through 32, all of the claims pending in the above-
identified application. See page 2 of the Appeal Brief (“App Br.”) filed
March 25, 2008 and page 2 of the Reply Brief (“Reply Br.”) filed August 12,
2008. We have jurisdiction under 35 U.S.C. §§ 6 and 134.
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STATEMENT OF THE CASE
The subject matter on appeal is directed to “compacted chopped fiber
strands” (Spec. 1, para. 0001 and claims 1, 15, and 27). Details of the
appealed subject matter are recited in representative claims 1, 15, and 271
reproduced from the Claims Appendix to the Appeal Brief as shown below:

1. A compacted chopped strand, comprising:

a plurality of fiber glass filaments; and

a residue of a sizing composition at least partially coating at least one
of the filaments, the sizing composition comprising:

a film-former;

a coupling agent;

and at least one alkylene oxide polymer, the alkylene oxide polymer
comprising polyethylene oxide, polypropylene oxide, polybutylene oxide, or
combinations thereof, wherein the compacted chopped strand has a cross-
sectional area that is larger than the cross-sectional area of the continuous
strand that was chopped prior to forming the compacted chopped strand.

15. A compacted chopped strand, comprising:

1Appellants only argue the common limitations recited in claims 1, 15, and
27 as a basis for patentability (App. Br. 17-22). Therefore, for purposes of
this appeal, we select claims 1, 15, and 27 and decide the propriety of the
Examiner’s § 103(a) rejection set forth in the Answer based on these claims
alone. See 37 C.F.R. § 41.37(c)(1)(vii) (“When multiple claims subject to
the same ground of rejection are argued as a group by appellant, the Board
may select a single claim from the group of claims that are argued together
to decide the appeal with respect to the group of claims as to the ground of
rejection on the basis of the selected claim alone.”).

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a plurality of fiber glass filaments; and

a residue of a sizing composition at least partially coating at least one
of the filaments, the sizing composition comprising:

a film-former; a coupling agent; and

at least one alkylene oxide polymer, the alkylene oxide polymer
comprising polyethylene oxide, polypropylene oxide, polybutylene oxide, or
combinations thereof, wherein the compacted chopped strand comprises a
larger number of filaments per unit of cross-sectional area than the
continuous strand that was chopped prior to forming the compacted chopped
strand.

27. A compacted chopped strand, comprising:

a plurality of fiber glass filaments; and

a residue of a sizing composition at least partially coating at least one
of the filaments, the sizing composition comprising:

at least one film-former in an amount up to about 90 weight percent on
a total solids basis;

at least one coupling agent in an amount up to about 50 weight percent
on a total solids basis; and

up to about five weight percent polyalkylene oxide on a total solids
basis.

According page 7 of the Specification:
[0021] It is further noted that, as used in this specification,
the singular forms “a,” “an,” and “the” include plural referents
unless expressly and unequivocally limited to one referent.

[0022] Further, when the phrase “up to” is used in
connection with an amount of a component, material, or
composition in the claims, it is to be understood that the
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component, material, or composition is present in at least a
detectable amount (e.g., its presence can be determined) and
may be present up to and including the specified amount.

As evidence of unpatentability of the claimed subject matter, the
Examiner relies on the following prior art references at page 3 of the
Answer. (“Ans.”) dated June 12, 2008:
Pollet 5,387,468 Feb. 7, 1995
Strait 5,945,134 Aug. 31, 1999

Appellants request review of the Examiner’s § 103(a) rejection of
claims 1 through 32 as unpatentable over the combined disclosures of Strait
and Pollet (App. Br. 5 and Reply Br. 3).
Appellants traverse the Examiner’s § 103(a) rejection, arguing that
one of ordinary skill in the art would not have been led to employ the
claimed sizing composition in the compacted chopped glass strand taught by
Strait (App. Br. 5-12 and Reply Br. 4-8). Appellants contend, inter alia,
“one of ordinary skill in the art would have no apparent reason to look to the
disclosure of Pollet for identifying compositions to use as sizing
compositions or hydrating fluids in implementing the system of Strait”
(App. Br. 11).
ISSUE AND CONCLUSION
The dispositive question is: Would one of ordinary skill in the art
have been led to employ the claimed sizing composition taught by Pollet as
the first sizing composition and/or the second sizing composition of the
hydrating fluid of Strait’s compacted chopped glass strand? On this record,
we answer this question in the affirmative.

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RELEVANT FACTUAL FINDINGS
The following relevant factual findings are supported by at least a
preponderance of the evidence. Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427
(Fed. Cir. 1988) (explaining the general evidentiary standard for proceedings
before the Office):
1. Strait teaches forming densified glass fiber pellets via coating glass
fiber strands with a first sizing composition, chopping the sized glass fiber
strands into segments, hydrating the chopped glass fiber strands with a
hydrating fluid containing those typically included in glass fiber sizing
compositions, e.g., film formers, coupling agents, wetting agents, lubricants,
to obtain a desired moisture content for the strand binding purpose, and
tumbling and compacting the chopped segments, wherein the first sizing
composition employed is a suitable aqueous sizing composition, such as one
known in the art (col. 3, l. 63 to col. 6. l 66).
2. Strait describes its hydrating fluid as containing a binder or a second
sizing composition, with an exemplified binder composition containing
water, a coupling silane, and block copolymer of ethylene oxide and
propylene oxide (col. 5, l. 59 to col. 6, l. 30).
3. Appellants do not dispute the Examiner’s finding that “Strait teaches
that his pellets comprise a larger number of filaments than the continuous
strand and thus comprises a larger number of filaments per unit of cross-
sectional area.” (Compare Ans. 3 with App. Br. 5-12 and Reply Br. 4-8.)
4. Pollet teaches “a size composition useful for impregnating a highly
loaded, impregnated fibrous strand” and more particularly “a thermoplastic
powdered impregnated glass fiber strand” (col. 1, ll. 12-17).
5. Pollet teaches (col. 1, ll. 20-63) that:
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…Sizing compositions typically employed as coatings for glass
fibers have conventionally been applied to the surface of the
glass fibers after the glass fiber has been formed….it would be
beneficial if a size composition could be employed which,
when directly blended with the thermoplastic resin during the
glass fiber forming process, produces a substantially pure
thermoplastic impregnated glass strand.

6. Pollet teaches using an aqueous sizing composition containing water,
a coupling agent, such as a silane, and fugitive processing aids such as a
binder or film former material, a thickener or rheology modifier, together
with thermoplastic powder particles, to impregnate glass fiber strands (col.
2, l. 58 to col. 3, l. 38).
7. According to Pollet, the binder or the thickener comprises
polyethylene oxide and the thickener can also be used as a rheology modifier
(col. 3, ll. 17-30 and col. 4, ll. 1-10)
8. Appellants do not dispute the Examiner’s finding that Pollet teaches
the claimed sizing composition containing “a film former, [a] coupling
agent, and at least one alkylene oxide, such as polyethylene oxide having the
instant claimed average molecular weight…” (Compare Ans. 4 with App.
Br. 5-12 and Reply Br. 4-8.)

PRINCIPLES OF LAW
As stated in KSR Int’l. Co. v. Teleflex Inc., 550 U.S. 398, 417-18
(2007) :
[A]nalysis [of whether the subject matter of a claim
would have been obvious under § 103] need not seek out
precise teachings directed to the specific subject matter of the
challenged claim, for a court can take account of the inferences
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and creative steps that a person of ordinary skill in the art
would employ. [(Emphasis added.)]

KSR, 550 U.S. at 417 (quoting Sakraida v. Ag Pro, Inc., 425 U.S. 273, 282
(1976) instructs us that:
[W]hen a patent ‘simply arranges old elements with each
performing the same function it had been known to perform’
and yields no more than one would expect from such an
arrangement, the combination is obvious.

The fact that a prior art reference “discloses a multitude of effective
combinations does not render any particular formulation less obvious.”
Merck & Co., Inc. v. Biocraft Labs, 874 F.2d 804, 808 (Fed. Cir. 1989); see
also In re Corkill, 771 F.2d 1496, 1500 (Fed. Cir. 1985) (obviousness
rejection of claims affirmed in light of prior art teaching that “hydrated
zeolites will work” in detergent formulations, even though “the inventors
selected the zeolites of the claims from among ‘thousands' of compounds”)
ANALYSIS
Appellants do not dispute the Examiner’s finding at page 3 of the
Answer that Strait teaches densified glass fiber pellets corresponding to the
claimed compacted chopped strands, which are produced by coating glass
fiber strands with a first sizing composition, chopping the sized glass fiber
strands into segments, hydrating the chopped glass fiber strands with a
hydrating fluid to obtain a desired moisture content for the strand binding
purpose, and tumbling and compacting the chopped segments. Nor do
Appellants argue that Strait does not teach “the compacted chopped strand
has a cross-sectional area that is larger than the cross-sectional area of the
continuous strand that was chopped prior to forming the compacted chopped
strand” as required by claims 1 and 15. Appellants only contend (pages 5
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through 12 of the Appeal Brief) that one of ordinary skill in the art would
not have been led to employ a sizing composition comprising a film-former,
a coupling agent and at least one alkylene oxide polymer as recited in the
rejected claims in the densified glass fiber pellets taught by Strait. We
disagree.
Although Strait does not specifically mention the claimed sizing
composition, it does teach that the first sizing composition employed is any
suitable aqueous sizing composition, such as one known in the art, and the
hydrating fluid contains a second sizing composition or those typically
included in glass fiber sizing compositions, e.g., film formers, coupling
agents, wetting agents, and lubricants. Pollet teaches an aqueous sizing
composition used to impregnate glass fiber strands during the fiber forming
operation. Pollet also teaches that such sizing composition can also be used
to coat glass fiber after the glass fiber is formed as taught by Strait.
Specifically, Pollet teaches (col. 1, ll. 20-63) that:
…Sizing compositions typically employed as coatings for glass
fibers have conventionally been applied to the surface of the
glass fibers after the glass fiber has been formed….it would be
beneficial if a size composition could be employed which,
when directly blended with the thermoplastic resin during the
glass fiber forming process, produces a substantially pure
thermoplastic impregnated glass strand.

Pollet describes using an aqueous glass fiber sizing composition containing
water, a coupling agent, such as a silane, and fugitive processing aids such
as a binder or film former material, a thickener or rheology modifier,
together with thermoplastic powder particles, to impregnate glass fiber
strands. According to Pollet, the binder or the thickener comprises
polyethylene oxide and the thickener can also be used as a rheology
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modifier. Indeed, Appellants do not dispute the Examiner’s finding at page
4 of the Answer that Pollet teaches a glass fiber sizing a film former, a
coupling agent, and at least one alkylene oxide, such as polyethylene oxide
having the instant claimed average molecular weight.
Given the above teachings, we determine that one of ordinary skill in
the art would have been led to employ the known aqueous glass fiber sizing
(binding) composition taught by Pollet as the first aqueous glass fiber sizing
composition and/or the second aqueous glass fiber sizing composition of the
hydrating fluid used for forming Strait’s densified glass fiber pellets
corresponding to the claimed compact chopped strands, with a reasonable
expectation of successfully forming such pellets. KSR, supra; see also Merck
& Co., Inc. v. Biocraft Labs, supra; In re Corkill, supra. One of ordinary
skill in the art would have reasonably expected to form the claimed compact
chopped strand having the aqueous glass fiber sizing (binding) composition
taught by Pollet even if the glass fiber sizing composition taught by Pollet is
used during the formation of glass fibers of Strait for the beneficial reason
stated in Pollet. KSR, supra.
Accordingly, based on the totality of record, including due
consideration of Appellants’ arguments, we determine that the
preponderance of evidence weighs most heavily in favor of obviousness
within the meaning of 35 U.S.C. § 103.
ORDER
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In view of the foregoing, the decision of the Examiner is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

PL Initial:
sld

J. Jason Link, Esq.
Kilpatrick Stockton LLP
1001 West Fourth Street
Winston-Salem NC 27101