Ex Parte Soliman et al

Patent Trial and Appeal Board

Jun 26, 2017

12808990 (P.T.A.B. Jun. 26, 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.
12/808,990 09/02/2010 Maria Soliman 24496-US-PCT 6554
102091 7590 06/28/2017
Cantor Colburn LLP - SABIC Americas
20 Church Street
Hartford, CT 06103
EXAMINER
OCHYLSKI, RYAN M
ART UNIT PAPER NUMBER
1743
NOTIFICATION DATE DELIVERY MODE
06/28/2017 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):
usptopatentmail@cantorcolbum.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARIA SOLIMAN,
RAMON HUBERTUS ANNA MARIA MEIJERS,
JOSEPH PAULUS HUBERTUS BOYENS, and
JOHANNES HENRICUS THEODORUS DAALMANS
Appeal 2016-003924
Application 12/808,990
Technology Center 1700
Before CHUNG K. PAK, CHRISTOPHER C. KENNEDY, and
JEFFREY R. SNAY, Administrative Patent Judges.
SNAY, Administrative Patent Judge.
DECISION ON APPEAL1
Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1—17 and 19. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
1 We cite to the Specification (“Spec.”) filed June 17, 2010; Final Office
Action (“Final Act.”) dated February 6, 2015; Appellants’ Appeal Brief
(“Br.”) dated July 6, 2015; and Examiner’s Answer (“Ans.”) dated
December 8, 2015.
2 Appellants identify SAUDI BASIC INDUSTRIES CORPORATION as
real party in interest. Br. 2.
Appeal 2016-003924
Application 12/808,990
BACKGROUND
The subject matter on appeal relates to “a process for producing a long
glass fibre-reinforced thermoplastic composition.” Spec. 1. Claim 1 is
reproduced from the Claims Appendix of the Appeal Brief as follows, with
emphasis added to highlight the recitations in dispute:
1. A process for producing a long glass fibre-
reinforced thermoplastic polymer composition, which
comprises the subsequent steps of:
a) unwinding from a package of at least one continuous
glass multifilament strand containing at most 2% by mass of a
sizing composition;
b) applying from 0.5 to 20% by mass of an impregnating
agent to said at least one continuous glass multifilament strand
to form an impregnated continuous glass multifilament strand;
and
c) applying a sheath of thermoplastic polymer around the
impregnated continuous glass multifilament strand at a line
speed of at least 250 m/min to form a sheathed continuous glass
multifilament strand;
wherein the impregnating agent is non-volatile, has a
melting point of at least 20°C below the melting point of the
thermoplastic polymer, has a viscosity of from 2.5 to 100 cS at
application temperature, and is compatible with the
thermoplastic polymer.
Independent claims 8 and 17 contain the same disputed recitations as
claim 1. Each of the remaining claims on appeal depends from claim 1, 8, or
17.
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Application 12/808,990
REJECTION
The Examiner maintains the following ground of rejection:3
Claims 1—17 and 19 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Kashikar4 and Taguchi.5
DISCUSSION
Appellants argue the claims as a group, focusing on recitations that
are common to each of the independent claims. Br. 6—14. In accordance
with 37 C.F.R. § 41.37(c)(l)(iv), we select claim 1 as representative and
decide the appeal based on the representative claim alone.
Appellants do not dispute the Examiner’s findings that Kashikar
discloses a process for producing a long glass fiber-reinforced thermoplastic
composition comprising: (a) unwinding a sized continuous glass
multifilament strand; (b) applying about 5 to about 10% by weight of a
coating composition to the strand; and (c) applying thermoplastic polymer
sheath around the coated strand. Compare Final Act. 3^4 (citing Kashikar
THf 71, 72, Fig. 2) with Br. 6-14. The Examiner also finds that Kashikar
refers to use of a “conventional sizing composition,” and that Taguchi
teaches use of a particular sizing composition at a concentration of 0.5 wt.%.
Final Act. 3^4 (citing Kashikar 171; Taguchi col. 4,1. 61—col. 5,1. 20 and
col. 9,11. 12—30). The Examiner’s findings are supported by a
3 Final Act. 3—5; Ans. 2. The Examiner mistakenly included canceled claim
18 in the statement of rejection. See Ans. 2.
4 US 2008/0143010 Al, published June 19, 2008 (“Kashikar”).
5 US 6,045,912, issued April 4, 2000 (“Taguchi”).
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Application 12/808,990
preponderance of evidence as found in the passages of Kashikar and Taguchi
cited by the Examiner.
Appellants argue that neither Kashikar nor Taguchi teaches a line
speed of at least 250 m/min, as is recited in claim 1 in connection with the
polymer application step. Br. 7—9. Appellants argue that Taguchi’s
Example 1 teaches a line speed of 30 m/min and, on that basis, contend that
“if one skilled in the art modified Kashikar ‘010 in view of Taguchi as
suggested by the Examiner, the process would appear to be at a line speed
much lower than claimed by Applicants.” Id. at 9. Appellants also argue
that “[tjhere is no motivation to even try higher throughput rates, and no
expectation that a constant product quality could be attained.” Id.
In response to Appellants’ arguments, the Examiner points to
paragraphs 19 and 54 as evidence that a high line speed was considered
desirable. Ans. 3. Kashikar identifies “high speed wire coating” as an
“advantage.” Kashikar 119. Kashikar also identifies an embodiment of the
disclosed invention as being useful in a “high speed wire coating process.”
Id. 1 54. Although Appellants refer to Taguchi’s one exemplified
embodiment involving the use of a lower speed wire coating process, they
do not identify any teaching in Taguchi which would have negated the use of
the advantageous “high speed wire coating process” taught by Kashikar. In
light of the combined disclosures of Kashikar and Taguchi, Appellants do
not persuade us of reversible error in the Examiner’s determination that one
of ordinary skill would have been motivated to maximize line speed in
Kashikar’s process. See DyStar Textilfarben GmbH & Co. Deutschland KG
v. C.H. Patrick Co., 464 F.3d 1356, 1368 (Fed. Cir. 2006) (explaining that
“an implicit motivation to combine exists . . . when the ‘improvement’ is
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Application 12/808,990
technology-independent and the combination of references results in a
product or process that is more desirable, for example because it is stronger,
cheaper, cleaner, faster, lighter, smaller, more durable, or more efficient”).
The fact that Taguchi mentions a slower line speed in one example does not
negate the implicit motivation to maximize line speed in Kashikar’s process
in order to improve speed and efficiency.
Appellants further argue that “line speed can affect the resultant
product and the ability to apply the sheath” (Br. 10), and that “[f]rom the
disclosures of Kashikar ‘010 and Taguchi, there is no basis to believe that
the presently claimed line speeds are possible” {id. at 12). According to
Appellants, the claimed line speed is enabled by the “use of a limited
amount of the sizing composition in combination with the use of a specified
range for the impregnating agent.” Id. Appellants do not dispute the
Examiner’s findings that the combined teachings of Kashikar and Taguchi
suggest use of the claimed sizing composition and impregnating agent in
amounts within the recited ranges. Compare Final Act. 3^4 with Br. 6—14.
As such, Appellants do not persuade us of reversible error in the Examiner’s
determination that maximizing line speed in Kashikar’s process reasonably
would have been expected to yield a line speed within Appellants’ recited
range. See also In re Boesch, 617 F.2d 272, 276 (CCPA 1980)(“[D]iscovery
of an optimum value of a result effective variable ... is ordinarily within the
skill of the art.”). Moreover, even if operating the prior art process at a line
speed of at least 250 m/min were to result in some loss of quality relative to
a slower line speed, that result alone would not negate the desire to operate
at the higher line speed in order to achieve a faster process. See Medichem,
S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006) (“a given course
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Application 12/808,990
of action often has simultaneous advantages and disadvantages, and this
does not necessarily obviate motivation to combine.”).
Appellants also argue that neither Kashikar nor Taguchi teaches that
the impregnating composition exhibits a viscosity within the recited range of
“from 2.5 to 100 cS at application temperature.” Br. 13—14 (emphasis
added). However, as the Examiner correctly points out (Ans. 5—6), claim 1
does not recite any temperature value. We agree with the Examiner’s
reasoning that the broadest reasonable interpretation of the phrase,
“application temperature,” in claim 1 encompasses “any temperature suited
for application.” Ans. 6. Moreover, Appellants do not dispute the
Examiner’s finding that Kashikar teaches the same impregnating agent
(VYBAR 260 hyperbranched polyethylene wax) as that which is identified
in the Specification as an embodiment of the claimed invention. Compare
Final Act. 4 with Br. 6—14; see also In re Papesch, 315 F.2d 381, 391
(CCPA 1963) (“a compound and its properties are inseparable”). On this
record, Appellants’ argument does not persuade us of reversible error in the
Examiner’s finding that Kashikar’s impregnating agent would have
exhibited the same physical viscosity property as is recited in claim 1.
For the foregoing reasons, we sustain the Rejection.
DECISION
The Examiner’s decision rejecting claims 1—17 and 19 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.
AFFIRMED
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