Ex Parte Scherzer et al

Patent Trial and Appeal Board

Nov 15, 2017

13382782 (P.T.A.B. Nov. 15, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/382,782 01/06/2012 Dietrich Scherzer 074048-0138-US-286218 9695
123223 7590 11/17/2017
Drinker Biddle & Reath LLP (WM)
222 Delaware Avenue, Ste. 1410
Wilmington, DE 19801-1621
EXAMINER
EMPIE, NATHAN H
ART UNIT PAPER NUMBER
1712
NOTIFICATION DATE DELIVERY MODE
11/17/2017 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):
IPDocketWM @ dbr.com
penelope. mongelluzzo @ dbr. com
DB RIPDocket @ dbr. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DIETRICH SCHERZER, GAD KORY,
and MARTIN WEBER
Appeal 2017-002100
Application 13/382,782
Technology Center 1700
Before ROMULO H. DELMENDO, CHRISTOPHER C. KENNEDY,
and MERRELL C. CASHION, JR., Administrative Patent Judges.
CASHION, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF CASE
Appellants1 appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision to finally reject claims 11, 17, 19, 21, 23, 25, 28—31, and 33—39.
We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 BASF SE of Ludwigshafen, Germany is identified as the real party in
interest. Br. 1.
Appeal 2017-002100
Application 13/382,782
Claim 112 illustrates the subject matter on appeal and is reproduced
below:
11. A method for producing fiber-reinforced
composite materials, wherein a multiplicity of continuous
filaments or woven fabric is
impregnated, optionally together with reinforcing
materials, with a mixture comprising caprolactam and other
starting materials for polyamide 6,
passed through at temperatures of 70° to 100°C that are
above the melting temperature of the system,
and thereafter, as a prepreg, cooled below the melting
temperature of 70°C,
and subsequently anionically polymerized at
temperatures of 100° to 160°C,
and optionally repolymerized at temperatures of 90° to
170°C.
Appellants (see generally Appeal Brief) request review of the
following rejections from the Examiner’s Final Office Action:
I. Claims 11, 17, 19, 21, 25, 28—31, 34—37, and 39 rejected under
35 U.S.C. § 103(a) as unpatentable over Tsuya (US 5,310,600, issued May
10, 1994).
II. Claims 21 and 23 rejected under 35 U.S.C. § 103(a) as
unpatentable over Tsuya and DuPont (GB 1 265 383, published March 1,
1972).
2 The language of claim 11 recites that the impregnated reinforcing materials
are “passed through.” The claims appears to lack a recitation of the element
(i.e., shaping die, etc.) through which the impregnated reinforcing materials
pass through. See Spec. 2,1. 21.
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Appeal 2017-002100
Application 13/382,782
III. Claim 33 rejected under 35 U.S.C. § 103(a) as unpatentable
over Tsuya and Ishida (US 5,294,461, issued March 15, 1994).
IV. Claims 38 and 39 rejected under 35 U.S.C. § 103(a) as
unpatentable over Tsuya and Sakai (US 5,679,456, issued October 21,
1997).
OPINION
Prior art rejections
After review of the respective positions provided by Appellants and
the Examiner, we REVERSE the Examiner’s prior art rejections of claims
11, 17, 19, 21, 23, 25, 28-31, and 33-39 under 35 U.S.C. § 103(a)forthe
reasons presented by Appellants and add the following.3
Independent claims 11 and 35 are directed to a method of producing
fiber-reinforced composite materials comprising the step of cooling a
prepreg below a melting temperature of 70°C after impregnation.
The Examiner finds Tsuya teaches a method of producing fiber-
reinforced composite material comprising a step for cooling a prepreg that
differs from the claimed invention in that Tsuya does not recite the duration
and temperature of the cooling step or the temperature of the prepreg. Final
Act. 2—3; col. 3,11. 1—61. The Examiner finds Tsuya discloses that,
following the cooling bath, the intermediate product prior to polymerization
can be stored indefinitely. Final Act. 3; Tsuya col. 3,11. 58—64, col. 4,11.
13—23. The Examiner asserts that this disclosure of Tsuya suggests that the
stored material would naturally assimilate to room temperature (less than
70°C). Final Act. 3. Thus, the Examiner determines it would have been
3 We limit our discussion to independent claims 11 and 35.
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Appeal 2017-002100
Application 13/382,782
obvious to one of ordinary skill in the art to cool the Tsuya’s prepreg below
70°C. Final Act. 3.
Claims 11 and 35 require subjecting the impregnated fibers or fabric
to “temperatures of 70° to 100°C that are above the melting temperature of
the system” and an affirmative step of cooling a prepreg below a melting
temperature of 70°C after impregnation. Appellants correctly point out that,
in Tsuya, “[t]he thermoplastic resin coating layer solidifies at temperatures
below 120°C.” App. Br. 6; Tsuya col. 3,11. 26—27 (“the thermoplastic resin
is selected from those which have a softening point above 120-C.”).
Therefore, Tsuya’s thermoplastic resin has a melting point that is higher than
that recited for the “system” in the claims. Based on the foregoing,
Appellants argue, and we agree, that Tsuya does not disclose or suggest the
cooling step because higher cooling temperatures are sufficient. App. Br. 6-
7; col. 5,11. 30—33 (disclosing cooling to solidify the thermoplastic resin
coating layer). Further, the Examiner has not identified a section of Tsuya
that supports the Examiner’s assertion that Tsuya’s prepreg would reach
room temperature (a temperature below a melting temperature of 70°C) if
stored indefinitely. Final Act. 3; Ans. 3. The Examiner’s assertion is
speculative at best, and in any event, Tsuya relates to cooling a system
including a thermoplastic resin with a melting temperature higher than
100QC.
Accordingly, we reverse the Examiner’s prior art rejections under
35 U.S.C. § 103(a) for the reasons presented by Appellants and given above.
We need not reach the evidentiary data presented in the Declaration of
Dietrich Scherzer under 37 C.F.R. § 1.132, entered into the record on July
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Appeal 2017-002100
Application 13/382,782
24, 2015, because the Examiner did not establish a prima facie case of
obviousness.
ORDER
The Examiner’s prior art rejections of claims 11, 17, 19, 21, 23, 25,
28—31, and 33—39 under 35 U.S.C. § 103(a) are reversed.
REVERSED
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