Ex Parte Tadepalli et al

Patent Trial and Appeal Board

Jun 14, 2016

12913326 (P.T.A.B. Jun. 14, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/913,326 10/27/2010
29602 7590 06/14/2016
JOHNS MANVILLE
10100 WEST UTE A VENUE
PO BOX 625005
LITTLETON, CO 80162-5005
FIRST NAMED INVENTOR
Rajappa Tadepalli
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.
7811CIP3 3674
EXAMINER
LISTVOYB, GREGORY
ART UNIT PAPER NUMBER
1765
MAILDATE DELIVERY MODE
06/14/2016 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 RAJ APP A TADEP ALLI, JAWED ASRAR,
KLAUS FRIEDRICH GLEICH, and KIARASH ALA VI SHOOSHTARI
Appeal2014-007305
Application 12/913,326
Technology Center 1700
Before CHUNG K. PAK, PETER F. KRATZ, and JULIA HEANEY,
Administrative Patent Judges.
HEANEY, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 seek our review pursuant to 35 U.S.C. § 134(a) of a
decision of the Examiner to reject claims 32, 34-41, 43-51, and 62 of
Application 12/913,326. We have jurisdiction under 35 U.S.C. § 6(b). We
affirm-in-part.
1 Appellants identify the real party in interest as Johns Manville. Br. 3.
Appeal2014-007305
Application 12/913,326
BACKGROUND
The subject matter on appeal relates to a fiber-reinforced composite
article formed from surface-treated fibers bonded to a polymer matrix. Br.
3--4. The composition of the fiber surface treatment includes one or more
polymerization compounds that initiate or catalyze a pre-polymerized
composition to form the polymer matrix. Spec. 5.
Claims 32 and 40, reproduced below from the Claims Appendix of the
Appeal Brief, are illustrative:
32. A treated fiber that promotes a polymerization reaction to
form a fiber-reinforced composite article, the treated fiber
having at least one treated surface comprising a polymerization
compound, wherein the polymerization compound initiates the
polymerization of a pre-polymerized composition, wherein the
polymerization compound includes an initiator compound
having a formula:
R-X-(I)n
wherein n is an integer with a value of 1 to 5;
R comprises a terminal moiety selected from the group
consisting of a hydrogen and a hydrocarbyl group;
X comprises a linking moiety that links the R moiety
with the one or more I moieties; and
(I)n comprises one or more polymerization initiator
moieties, wherein each of the initiator moieties is capable of
initiating a polymerization of one or more lactam monomers,
and wherein each of the initiator moieties is the same or
different.
40. A fiber-reinforced composite article comprising:
a plastic polymer matrix; and
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Application 12/913,326
treated fibers bonded to the plastic polymer matrix by a first
polymerization compound comprising a reacted coupling-
initiator compound with a reacted coupling moiety covalently
bonded to the treated fiber, and a reacted initiator moiety that
participated in the polymerization of the plastic polymer matrix;
and
a reacted second polymerization compound that also
participated in the polymerization of the plastic polymer
without being covalently bonded to the treated fiber, wherein
the reacted second polymerization compound was non-
covalently coupled to at least a portion of the treated fibers
prior to the polymerization of the plastic polymer.
REFERENCES
The Examiner relied upon the following prior art in rejecting the
claims on appeal:
Tierney et al.
Masao et al.
Koichi et al.
us 3,833,534
JP 04-122774
JP 08-291186 i\.
THE REJECTION
Sept. 3, 1974
("Tierney")
Apr. 23, 1992
("Masao")
Nov. 5, 1996
("Koichi")
Claims 32, 34--41, 43-51, and 62 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Masao in view ofKoichi and Tierney.
DISCUSSION
Appellants separately argue only claims 32, 34--35, 46, 49, 40, and 62.
We limit our discussion to those claims; the remaining claims will stand or
fall with the claims from which they depend.
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Application 12/913,326
Claim 32
Masao discloses a reinforced polyamide composition containing glass
fibers treated with a sizing, which is chosen from a group of polymers
including polyamide. Masao Abstract. Masao further discloses that the
composition containing polyamide and glass fibers treated with polyamide is
prepared by anionic polymerization of a lactam in the presence of the glass
fibers. Id. The Examiner acknowledges that Masao does not disclose that
the polymerization compound includes an initiator. 2
To account for this missing feature, the Examiner relies upon the
disclosure of Koichi. Final Act. 3--4; Ans. 3--4. Koichi discloses a silane
coupling agent "excell[ing] in adhesion properties, and capable of producing
a product having a high mechanical strength from a glass substrate with a
synthetic resin by heat-treating an isocyanatesilane with epsi[lon ]-
caprolactam." Koichi Abstract. Koichi shows the following formula for the
epsilon caprolactam, where n is an integer with a value of 2 to 4 (Koichi i-f
9):
2 Although the Examiner also finds that Masao teaches the residual catalyst
of polyamide, i.e., alkali metal and/or lactamate, that can initiate the
polymerization of lactam and would be economically and environmentally
beneficial (Final Act. 2-3; Ans. 3), the Examiner determines that this finding
is not necessary or relevant because claim 32 does not require the presence
of the residual catalyst. Ans. 9.
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Application 12/913,326
u
11
c
/~
(CH:t) n N-H
\_____,)
The Examiner determines that a person of ordinary skill in the art would
have understood that Koichi' s isocyanatesilane and Appellants' initiator
have the same lactam structure, and that Koichi's compound can be used as
an initiator for ring opening polymerization. Ans. 4--5, citing Koichi i-fi-17-9,
20. Further, the Examiner determines that it would have been obvious to a
person of ordinary skill in the art to use Koichi' s initiator in Masao' s system,
because the initiator is capable of producing a product having high
mechanical strength from a glass substrate with a synthetic resin by heat-
treating isocyanatesilane with caprolactam. Ans. 6.
Appellants argue that Masao does not support the Examiner's
• • 1... • ,..I ,..I. • • • 1 1... 1 • ,..I rejectwn uecause it uoes not uiscuss an imtia1 treatment uy po1yamiue or
formation of a residual catalyst. Br. 5. These "arguments fail from the
outset because ... they are not based on limitations appearing in the claims."
In re Self, 671 F.2d 1344, 1348 (CCPA 1982). Nor do these arguments
respond to or address the Examiner's findings as to Koichi, including
Koichi's disclosure of an initiator having a lactam structure capable of
initiating ring opening polymerization, and the Examiner's determination as
to why one of ordinary skill in the art would have been led to include
Koichi's initiator in Masao's system. Compare Ans. 4--6 and 9 with Br. 5-
6. Having reviewed the cited evidence in the appeal record and the
Examiner's position, we adopt the Examiner's findings and reasoning in the
Answer (id.) as our own. Thus, we are not persuaded of reversible error in
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Application 12/913,326
the Examiner's determination that a person of ordinary skill in the art would
combine Koichi and Masao with a reasonable expectation of success, to
obtain the polymer composite of claim 32. Ans. 10.
Claims 3 4 and 3 5
Claims 34 and 35 depend from claim 32 and recite, respectively, that
the initiator compound "is not covalently bonded to the treated surface of the
fiber" and that "the polymerization compound comprises a coupling-initiator
compound covalently bonded to the treated surface of the fiber." Claims
App'x.
Appellants argue that Masao does not discuss bonding of any type,
and therefore "there is nothing to support a conclusion of any specific
bonding, such as the non-covalent bonding" recited in claim 34. Br. 7. In
the Answer, the Examiner finds that Koichi teaches covalent bonding of a
lactam-based polymer to silanol groups on the surface of the glass fibers
(Ans. 10), and further finds that Koichi teaches a second polymer (i.e. Nylon
6,6) which is not covalently bonded to the glass fibers. Id. at 10-12, c1tmg
Koichi i-f 20. Although Appellants argue in their appeal brief that there is no
evidence that Koichi' s silane coupling agent would bond covalently with
glass fibers as recited in claim 35, Appellants do not dispute the Examiner's
specific findings that Koichi's second polymer corresponding to the recited
initiator compound is not covalently bonded. Br. 6-7. Therefore, we are not
persuaded of reversible error in the Examiner's rejection of claim 34.
As to claim 3 5, Appellants argue that the Examiner has not cited to
any section of Koichi that specifies whether Koichi' s silane coupling agent
bonds covalently to the treated surface of the fiber. Br. 7-8. As noted
above, however, Appellants do not dispute that Koichi describes a coupling-
initiator compound that is structurally the same as the lactam structure of
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Application 12/913,326
Appellants' initiator. Koichi i-fi-1 7-9. Because there is no dispute that
Koichi's structure is the same as the claimed structure, Appellants have the
burden to prove that Koichi's silane coupling agent does not inherently
possess the claimed characteristics, i.e., covalent bonding between the
coupling-initiator compound and the treated surface of the fiber. In re Best,
562 F.2d 1252, 1255 (CCPA 1977) ("Where, as here, the claimed and prior
art products are identical or substantially identical, or are produced by
identical or substantially identical processes, the PTO can require an
applicant to prove that the prior art products do not necessarily or inherently
possess the characteristics of his claimed product."); see also In re Papesch,
3 15 F .2d 3 81, 3 91 ( CCP A 1963) ("a compound and its properties are
inseparable"). On this record, Appellants have offered no evidence to the
contrary and thus this argument lacks persuasive merit.
Appellants further argue that the Examiner has not established a
reasonable expectation of success in combining the materials of Koichi in
the system of iviasao, because Koichi' s polymer is not included among the
listed acceptable polymers of Masao for polymerization of lactam (Br. 8).
The Examiner correctly finds, however, that Koichi discloses polymerized
caprolactam (i.e., a polyamide) as a polymeric matrix. Ans. 10, citing
Koichi i-f 18. Thus, Appellants do not persuade us of reversible error in the
rejection of claim 35.
Claim 46
Claim 46 depends from claim 32 and recites that the polymerization
compound includes an initiator compound have the following structure:
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Application 12/913,326
Claims App'x. The Examiner finds that Tierney discloses acetyl
caprolactam as an initiator for base-catalyzed lactam polymerization (Ans.
11, citing Tierney 12:5 and 13:55) and that acetyl caprolactam has the
following formula:
The Examiner further finds that Tierney's structure as shown above is
identical to the structure in Appellants' claim 46, when m=O. Ans. 11.
Appellants have not filed a Reply Brief to dispute this finding. Nor have
Appellants disputed this finding in the Appeal Brief. Br. 9. Therefore, we
are not persuaded of reversible error in the Examiner's rejection.
Claim 49
Claim 49 depends from claim 32 and recites that the linking moiety X
comprises -(H)N-(CH2)m-N(H)-, wherein mis an integer with a value of 0 to
12. The Examiner finds that Koichi teaches heat lamination with Nylon 6,6
which consists of adipic acid and hexamethylenediamine residues, and that
the diamine moiety of the compound has the structure of claim 49. Ans. 11,
citing Koichi i-f 20. Although Appellants argue in their appeal brief that
Koichi i-f 6 (chemical formula 4 relating to a silane coupling agent) does not
include an additional nitrogen group as recited by the claim, Appellants do
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Application 12/913,326
not dispute the Examiner's specific findings that Koichi discloses Nylon 6,6
comprising a diamine moiety having the structure of claim 49. Br. 10. Nor
have Appellants submitted a Reply Brief to dispute any deficiency in this
specific finding. Thus, having reviewed the cited evidence in the appeal
record and the Examiner's position, we are not persuaded of reversible error
in the Examiner's rejection.
Claim 40
Appellants again argue that Masao "does not discuss that any
polymerization compound is not covalently bound to the fibers to which it is
applied" and that the Examiner has not shown that Koichi' s silane coupling
agent "would necessarily be covalently bound to the fibers to which it is
applied." Br. 11. Thus, for the reasons discussed above in connection with
claims 34 and 35, we are not persuaded of reversible error in the rejection of
claim 40.
Claim 62
Claim 62 recites that "the polymerization compound comprises a first
initiator precursor comprising ethyl benzoate." Claims App 'x. Appellants
argue that the applied references "fail to teach or suggest a compound
comprising a first initiator precursor comprising ethyl benzoate." Br. 11.
The Examiner responds that Masao' s Abstract discloses ethyl benzoate as an
initiator for anionic polymerization. Ans. 12. Masao's Abstract, however,
does not disclose ethyl benzoate. Thus, we find reversible error in the
rejection of claim 62.
SUMMARY
We affirm the rejections of claims 32, 34--41, and 43-51 as
unpatentable under 35 U.S.C. § 103(a), for the reasons set forth above.
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Application 12/913,326
We reverse the rejection of claim 62 as unpatentable under 35 U.S.C.
§ 103(a), for the reasons set forth above.
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-IN-PART
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