11778681 (P.T.A.B. Apr. 8, 2014)

Ex Parte Schlichting et al

Patent Trial and Appeal BoardApr 8, 2014

11778681 (P.T.A.B. Apr. 8, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE 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. 11/778,681 07/17/2007 Kevin W. Schlichting 67097-819; 4274 1873 54549 7590 04/08/2014 CARLSON, GASKEY & OLDS/PRATT & WHITNEY c/o CPA Global P.O. Box 52050 Minneapolis, MN 55402 EXAMINER PRAGER, JESSE M ART UNIT PAPER NUMBER 3745 MAIL DATE DELIVERY MODE 04/08/2014 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 KEVIN W. SCHLICHTING, MELVIN FRELING and JAMES O. HANSEN ____________ Appeal 2012-003981 Application 11/778,681 Technology Center 3700 ____________ Before: MICHAEL W. KIM, WILLIAM A. CAPP and BEVERLY M. BUNTING, Administrative Patent Judges. CAPP, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants seek our review under 35 U.S.C. § 134 of the final rejection of claims 1-4 and 6-23. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. Appeal 2012-003981 Application 11/778,681 - 2 - THE INVENTION Appellants’ invention relates to burn resistant composite materials. Spec. 1, para. [0002]. Claim 1, reproduced below, is illustrative of the subject matter on appeal. 1. A burn resistant composite article comprising: at least one composite layer including first fibers within a first organic resin matrix, the composite layer having a first thermal resistance; and at least one burn resistance layer adjacent the at least one composite layer and including second fibers within a second organic resin matrix, the burn resistance layer having a second thermal resistance that is greater than the first thermal resistance of the composite layer, and wherein the second fibers include a continuous burn resistant coating thereon that is between the second fibers and the second organic resin matrix. THE REJECTIONS The Examiner relies upon the following as evidence in support of the rejections: The following rejections are before us for review: 1. Claims 1-4, 6, 8-10, 13, 14, and 21 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Li and McCullough. Bozzacco Chee Trask Li McCullough Wojtyczka Miyamoto Sherwood Murakami US 3,047,442 US 4,767,656 US 4,780,359 US 5,480,706 US 5,858,530 US 6,652,222 B1 US 2005/0256227 A1 US 2006/0004169 A1 US 2007/0105466 A1 July 31, 1962 Aug. 30, 1988 Oct. 25, 1988 Jan. 2, 1996 Jan. 12, 1999 Nov. 25, 2003 Nov. 17, 2005 Jan. 5, 2006 May 10, 2007 Appeal 2012-003981 Application 11/778,681 - 3 - 2. Claim 7 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Li, McCullough and Bozzacco. 3. Claims 11-12 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Li, McCullough and Bozzacco. 4. Claims 15-17 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Chee, Wojtyczka and McCullough. 5. Claim 18 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Chee and McCullough. 6. Claims 19 and 20 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Chee, McCullough and Murakami. 7. Claim 22 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Li, McCullough and Sherwood. 8. Claim 23 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Li, McCullough and Miyamoto. OPINION Unpatentability of Claims 1-4, 8-10, 13, 14, and 21 Appellants argue claims 1-4, 8-10, 13, 14, and 21 as a group. App. Br. 4. We select claim 1 as representative. See 37 C.F.R. § 41.37(c)(1)(vii) (2011). The Examiner finds, and Appellants do not dispute, that the combination of Li and McCullough disclose all of the limitations of claim 1. Ans. 4-5, App. Br. 4. Appellants traverse the rejection arguing that one of ordinary skill in the art would not have an expectation of success of making an article more fire resistant by combining the applied references. Ans. 4. Appellants argue that McCullough uses bi-regional fibers that are coated with an Appeal 2012-003981 Application 11/778,681 - 4 - organosilicone polymer, and that a synergistic relationship between the fiber and coating renders the fibers more fire retardant. Id., citing McCullough, col. 21, 50-61 and col. 23, ll. 15-18. Appellants argue that, because McCullough’s fire resistance is attributable to the synergy between the bi- regional fibers and the coating, one of ordinary skill in the art would not expect that the coating alone would provide better fire resistance. Ans. 4. The Examiner responds that McCullough is not limited to coating bi- regional fibers. Ans. 13. The Examiner states that McCullough’s bi- regional fiber has some degree of fire resistance, and that the coating merely further improves this fire resistance. Id. Li is directed to ballistic resistant composite armor such as bullet- proof vests. Li, col. 1, ll. 10-11, and col. 2, ll. 29-54. Li is comprised of one or more first layers 12 of flammable polymeric fibers in a matrix and one or more second layers 14 of fire resistant fibers. Id., col. 3, ll. 33-35; col. 5, ll. 47-61; Fig. 1. Layers 12 and 14 may be composed of multiple layers of coated fibers. Li, col. 7, l. 62-col. 8, l. 11. The fibers are coated by or embedded in the matrix material. Id. In certain instances, the fibers in layers 12 and 14 are treated chemically, physically or by a combination of chemical and physical action prior to being coated or embedded in the matrix material. Li, col. 7, l. 62 – col. 8, l. 27. Li’s matrix material may include fire retardants. Li, col. 9, 46-48. McCullough discloses ignition resistant bi-regional fibers (“BRF fibers”). McCullough, col. 21, ll. 35-37. The BRF fibers can be blended into assemblies with other natural or polymeric fibers to form fire retarding Appeal 2012-003981 Application 11/778,681 - 5 - assembles.1 McCullough, col. 21, ll. 48-61. The fibers or assemblies can be provided with an organosilicone polymer coating that renders the fibers or assemblies more fire resistant. Id. The Examiner has set forth a sufficient finding as to expectation of success. As persons of scientific competence in the fields in which they work, examiners are responsible for making findings, informed by their scientific knowledge, as to the meaning of prior art references to persons of ordinary skill in the art and the motivation those references would provide to such persons. In re Berg, 320 F.3d 1310, 1315 (Fed. Cir. 2003). Absent legal error or contrary factual evidence, those findings can establish a prima facie case of obviousness. Id. The law does not require the Examiner to establish an absolute expectation of success, but rather only that such expectation be reasonable. See, e.g., Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1364 (Fed. Cir. 2007). Here, the Examiner finds that McCullough’s teaching regarding the use of an organosilicone polymer coating would have lead one of ordinary skill in the art to expect that such coating, alone, would improve the fire retarding capabilities of the article. Ans. 14. We are persuaded this finding is reasonable. Appellants’ argument to the contrary is not persuasive. App. Br. 4. Appellants contend that, because McCullough’s BRF fiber and coating provide fire retardation synergistically, a person of ordinary skill in the art would not reasonably expect McCullough’s coating to contribute fire retardation capability to a non-BRF fiber. Id. This argument relies entirely 1 The natural fibers include cotton, wool, flax, silk or mixtures thereof. McCullough, col. 23, ll. 17-19. The polymeric fibers include cellulose, polyester, polyolefin, aramid, acrylic, flouroplastic, polyvinyl alcohol and glass. McCullough, col. 23, ll. 19-23. Appeal 2012-003981 Application 11/778,681 - 6 - on logic, and is otherwise not supported by either evidence or technical reasoning. We disagree with Appellants that, just because McCullough’s coating acts synergistically with a BRF fiber, it necessarily logically follows that one would not expect the coating to provide fire retardation capability to a non-BRF fiber. In addition, claim 1 merely claims first and second fibers. Appellants do not operationally define the term “fiber” in a manner that excludes BRF fibers, and Appellants have not directed us to any disclosure in the Specification that otherwise limits the term fiber to non-BRF fibers. Thus, Appellants’ claim scope is broad enough to read on McCullough’s BRF fibers. In view of the foregoing discussion, we believe the Examiner's findings of fact are supported by a preponderance of the evidence and that the Examiner's legal conclusion of unpatentability is well-founded. Accordingly, we sustain the Examiner’s rejection of claims 1-4, 8-10, 13, 14, and 21. Unpatentability of Claim 6 Claim 6 depends from claim 1 and adds the limitation: “wherein the burn resistant coating comprises an inorganic material.” Clms. App’x. The Examiner finds that McCullough’s organosilicone polymer coating is an inorganic material. Ans. 6. Appellants traverse the rejection by arguing that one of ordinary skill would not consider McCullough’s coating to be an inorganic material. App. Br. 5, Reply Br. 3. In support of this contention, Appellants cite a chemical dictionary in support of the proposition that the prefix “‘organo-’” refers to a compound that contains organic groups. Id. Appeal 2012-003981 Application 11/778,681 - 7 - In response, the Examiner states that the terms “organic” and “inorganic” are not defined in the Specification. Ans. 14. The Examiner states that the distinction between “organic” and “inorganic” compounds in the chemical field is blurred. Id. The Examiner contends that McCullough’s silicone polymers are inorganic because they are of inanimate origin, contain silicone, lack carbon compounds, and contain the same elements as silicate, which Appellants characterize as inorganic. Id. at 14-15. In their Reply Brief, Appellants distinguish the silicate compound in the Specification from the organosilicone polymer disclosed in McCullough. Reply Br. 3. Appellants challenge the Examiner’s contention that organosilicone polymers are inorganic because there are inanimate and contain silicone. Id. We are not persuaded by Appellants’ argument that any chemical compound that is characterized by an “organo-” prefix necessarily places that chemical compound within the category of “organic” chemical compounds as opposed to “inorganic” compounds.2 Appellants’ argument relies entirely on a dictionary definition of a prefix. Appellants otherwise offer no evidence regarding how a skilled chemist would classify the entire compound. Accordingly, Appellants have failed to rebut the Examiner’s prima facie case of unpatentability. We sustain the rejection of claim 6. 2 McCullough’s Specification discloses that the organosilicone polymer is preferably selected from the group consisting of trimethoxymethylsilane and trimethoxyphenylsilane. McCullough, col. 24, ll. 26-28. Appeal 2012-003981 Application 11/778,681 - 8 - Unpatentability of Claim 7 Claim 7 depends from claim 1 and adds the limitation: “wherein the burn resistant coating comprises a silicate material.” Clms. App’x. The Examiner finds, and Appellants do not dispute, that Bozzacco discloses a burn resistant coating of silicate material. Ans. 7. The Examiner concludes that it would have been obvious to a person of ordinary skill in the art at the time of the invention to further modify the composite article of Li with a burn resistant coating of silicate material, as taught by Bozzacco. Id. According to the Examiner, a person of ordinary skill in the art would have done this because Bozzacco’s burn resistant coating has good fire resistance and could have been applied to Li with predictability. Id. Appellants traverse the rejection by arguing that one of ordinary skill would not have an expectation of success in combining Bozzacco with Li. App. Br. 6. Appellants argue that Bozzacco’s burn resistance is attributable to a synergistic relationship with the other components of Bozzacco’s laminated structure. Id. We are not persuaded by Appellants’ argument. The argument amounts to no more than speculative attorney argument that is not supported by any scientific evidence. Invitrogen Corp. v. Clontech Laboratories, Inc., 429 F.3d 1052, 1068 (Fed. Cir. 2005) (unsubstantiated attorney argument is no substitute for competent evidence). Bozzacco discloses a burn resistant coating comprising a silicate material. Bozzacco, claim 1. The Examiner’s finding of a reasonable expectation success is based on sound reasoning. Ans. 15; Berg, supra; Pfizer, supra. We sustain the rejection of claim 7. Appeal 2012-003981 Application 11/778,681 - 9 - Unpatentability of Claims 11, 12, 15-20, 22 and 23 Apart from arguments that we have previously considered with respect to claim 1, Appellants do not separately argue for the patentability of claims 11, 12, 15-20, 22 and 23, which stand rejected as being unpatentable over McCullough in combination with additional references. Ans. 7-13, App. Br. 6-8. For the reasons discussed with respect to claim 1, we are not apprised of error in the Examiner’s rejection of these claims. Accordingly, the rejections of claims 11, 12, 15-20, 22 and 23 are sustained. DECISION The decision of the Examiner to reject claims 1-4 and 6-23 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)(1)(iv). AFFIRMED rvb