Ex Parte Quantrille et al

Patent Trial and Appeal Board

May 5, 2016

13225661 (P.T.A.B. May. 5, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/225,661 09/06/2011 Thomas E. Quantrille
22907 7590 05/09/2016
BANNER & WITCOFF, LTD.
1100 13th STREET, N.W.
SUITE 1200
WASHINGTON, DC 20005-4051
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.
002018.00035 2035
EXAMINER
RODD, CHRISTOPHER M
ART UNIT PAPER NUMBER
1766
NOTIFICATION DATE DELIVERY MODE
05/09/2016 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):
eofficeaction@bannerwitcoff.com
PTOL-90A (Rev. 04/07)
STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte THOMAS E. QUANTRILLE and LEWIS A. SHORT
Appeal2014-005423
Application 13/225,661
Technology Center 1700
Before TERRY J. OWENS, CATHERINE Q. TIMM, and
AVEL YN M. ROSS, Administrative Patent Judges.
OWENS, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
The Appellants argue that the rejections under 35 U.S.C. § 103 over
Kim in view of Kambe and over Murata in view of Kambe are separate
rejections of different claims with different primary references and are
addressed in the Appellants' Appeal Brief under separate headings
(App. Br. 7-10) and that, therefore, we erred in stating that the claims in
those rejections stand or fall together and discussing only the rejection of
claim 9 (Dec'n 5) (Req. Reh'g 2-3). The Appellants do not allege any error
in our decision to affirm the rejection of that claim (Req. Reh'g 2--4).
The Appellants do not dispute that the Appellants argued the claims
together with respect to each rejection (App. Br. 7-10). The only difference
between the sole independent claim in each rejection, i.e., claim 1 in the first
rejection and claim 9 in the second rejection, is that claim 1 requires silicon
Appeal2014-005423
Application 13/225,661
carbide whiskers whereas claim 9 more broadly requires inorganic whiskers.
The Appellants did not argue in their briefs that the use of silicon carbide
whiskers provides any patentable distinction over the use of inorganic
whiskers generally and the Appellants, at one point in their Appeal Brief,
referred to "functionalized silicon carbide, as defined in claims 1 and 9"
(App. Br. 6) as though both claims require silicon carbide whiskers. Hence,
although the Appellants addressed the rejections under separate headings,
they did not argue the claims separately.
The claim requirement which the Appellants rely upon for
patentability is the copolymerizing requirement common to claims 1 and 9,
i.e., the Appellants assert regarding the rejection of claim 1 over Kim and
Kambe that "neither [of the] references teaches or suggests a polymeric
composite material formed by copolymerizing polymer precursors,
oligomers, or crosslinking agents with functionalized SiC whiskers"
(App. Br. 7-8), and with respect to the rejection of claim 9 over Murata and
Kambe that "[ n ]one of Murata, Kambe, and Silquest describes or suggests a
polymeric composite material formed by copolymerizing polymer
precursors, oligomers, or crosslinking agents with functionalized inorganic
whiskers" (App. Br. 10). The reference which is relevant to the
copolymerizing limitation is Kambe (wherein the preferred inorganic
particles include metalloid carbide particles) (col. 5, 11. 18-20, 59-62; col. 8,
11. 11-13; col. 10, 11. 14--18; col. 15, 11. 11-15) (Dec'n 5---6) which is
common to both rejections.
Moreover, in the Reply Brief the Appellants refer to "functionalized
whiskers" regarding both claims 1and9, i.e., "[c]laims 1and9 do not
2
Appeal2014-005423
Application 13/225,661
simply refer to 'copolymerizing' reactions generally, but rather refer to
specific reactions in which the functionalized whiskers are copolymerized
with polymer precursors, oligomers, or crosslinking agents. . . . [b Jut when
functionalized whiskers are copolymerized with polymer precursors,
oligomers, or crosslinking agents, the functionalized whiskers play an active
role in determining the number of reactive sites on the polymer chain"
(Reply. Br. 4). The Appellants also refer to "functionalized whiskers" when
addressing all rejections together, i.e., "[t]he Answer does not establish- or
even allege - that any of Mori, Kim, Kambe, Murata, or the remaining cited
references discloses or suggests a polymeric composite in which
functionalized whiskers are copolymerized with polymer precursors,
oligomers, or crosslinking agents" (Reply Br. 5). Thus, in the Reply Brief
the Appellants again rely for patentability upon the copolymerization
limitation, not upon using silicon carbide whiskers instead of inorganic
whiskers generally.
Because Kambe is the relevant reference regarding the
copolymerizing limitation relied upon by the Appellants for patentability and
both that limitation and Kambe are common to both rejections, our
discussion of claim 9 as representative of the claims in both rejections was
the most efficient and effective approach for properly addressing both
rejections.
The Appellants point out that the following two sentences appear in
their Appeal Brief under the heading in which they address claim 1 but not
under the heading in which they address claim 9 (Req. Reh' g 3): "In
addition, the high length-to-diameter ratio of the SiC whiskers, coupled with
3
Appeal2014-005423
Application 13/225,661
the copolymerizing effect, provides an interconnected network of particles
arranged in the X-Y plane of the coating. This combination provides
properties that are not envisioned, let alone achieved in prior art"
(App. Br. 8).
The Appellants do not accompany those sentences with any argument
that the use of silicon carbide whiskers provides a patentable distinction over
the use of inorganic whiskers generally. Moreover, the Appellants'
Specification does not indicate that such a patentable distinction exists. The
Specification states, regarding the length-to-diameter ratio, that "[i]norganic
whiskers typically have a diameter of from about 0.2 to about 10 µm, often
from about 0.3 to about 3 µm, more often from about 0.4 to about 2 µm, and
usually from about 0.5 to about 1.5 µm" (Spec. i-f 19). Silicon carbide
whiskers merely are disclosed as an example of the inorganic whiskers
(Spec. i-fi-1 18-20). The Specification, therefore, indicates that our addressing
of claim 9 as representative of not only the claims requiring inorganic
whiskers but also the claims requiring silicon carbide whiskers was proper.
Regardless, our Decision addresses not only the Appellants' argument
regarding the rejection of claim 9 over Murata in view ofKambe and
Silquest but also the Appellants' argument with respect to the rejection of
claim 1 over Kim in view of Kambe:
The Appellants assert, regarding the rejection over Kim
and Kambe, that "neither [of the] references teaches or suggests
a polymeric composite material formed by copolymerizing
polymer precursors, oligomers, or crosslinking agents with
functionalized SiC whiskers" (App. Br. 7-8) and, with respect
to the rejection over Murata and Kambe, that "[n]one of
Murata, Kambe, and Silquest describes or suggests a polymeric
composite material formed by copolymerizing polymer
4
Appeal2014-005423
Application 13/225,661
precursors, oligomers, or crosslinking agents with
functionalized inorganic whiskers" (App. Br. 10).
Those assertions are not well taken in view of Kambe' s
above-stated disclosures that the functionalized inorganic
particles can bond covalently to monomers to form a polymer
comprising repeat units formed from the functionalized
inorganic particles (col. 5, 11. 18-20, 59---62; col. 8, 11. 11-13;
col. 10, 11. 14--18). [Dec'n 6-7]
Thus, we are not persuaded of error in our decision. Accordingly, the
Appellants' request for rehearing is denied.
DENIED
5